It is with immense pleasure and pride that we inform you that our founder, Prof. (Dr.) Shamnad Basheer has been identified as one of the 50 Most Influential People in IP 2019 by Managing IP (MIP) for his outstanding contribution to the world of IP. This is the second time he has been included in this annually published list, the first time being in 2015.

The list is divided into 5 categories, namely, industry leaders, IP authorities, notable individuals, public officials and judges. The individuals category includes 11 people, one of them being Prof. Basheer. His entry reads as follows:

“The work of late Shamnad Basheer….cannot go unnoted. The scholar and writer was well known on the IP circuit and taught at various universities including George Washington University in Washington, DC and Kolkata’s National University of Juridical Sciences. His passing this year reminds us, however, of one of his most significant contributions to IP – his intervention in the landmark patent case in 2013 of Novartis v Union of India & Others. The Swiss pharma company had taken its attempt to patent the cancer-treatment drug Gleevec (imatinib), which is also sold by generic drug makers at a lower price, all the way to India’s Supreme Court. Basheer argued against Novartis’ attempt – for which he won many plaudits. According to Indian legal news website Legally India, this was the first time an academic had intervened in a case in India. Not just a highly intelligent man but also a kind-hearted, caring man, Basheer founded Increasing Diversity by Increasing Access to Legal Education, a programme that empowers students from under privileged backgrounds to pursue a career in law. Basheer was also the founder of the popular SpicyIP blog, covering IP law developments in India…”

The only other Indian who has been included in the list is Justice Ravindra Bhat, who was recently appointed to the Supreme Court. As noted by Prashant in his post here, Justice Bhat “has made an extraordinary contribution to Indian IP jurisprudence through cogent and well-reasoned judgments” during his tenure as a judge of the Delhi High Court. In particular, his entry makes a reference to two significant judgments delivered by him. The first is the one in Roche v. Cipla (2008) wherein Roche was refused an interim injunction on the grounds of public interest. The second is the one in Monsanto v. Nuziveedu (2018), wherein Monsanto’s Bt cotton patent was declared invalid under Section 3(j) of the Patent Act which prohibits patenting of plants including seeds. This is the second time that Justice Bhat has also been included in this list, the first time being in 2010.

The other Indians that have made it to the previous editions of this annual list include Justice Gautam Patel of the Bombay High Court (2015), Justice Prabha Sridevan (former IPAB Chairperson and Madras High Court Judge) (2012, 2013 & 2015), P.H. Kurian (2009 & 2010) and Chaitanya Prasad (2014) (former Controller Generals), Nirmala Sitharaman (former Commerce Minister), Javed Akhtar (2011), Lalit Mahajan of J Mitra & Co. (2011) & SpicyIP (2011 & 2014).

The entire list is available on the MIP website here, though unfortunately it can be viewed only by subscription (or its trial).

Image from here

In this post, I intend to provide my views on the recent judgment of the Superior Court of Brazil (the highest Court in Brazil) dated October 9, 2019 on the overlap (or non-existence thereof) between patent law and plant variety law.

Disclaimer

1. I represent Monsanto in India in ongoing litigations on related and unrelated issues. Accordingly, I will not express any views on the position in India;

2. This post is based on a rough/uncertified translation of the judgment, which I have on file. While not the most accurate, I believe the copy I have is not a palpably wrong version and would suffice for this short comment.     

The judgment concerns a claim by an association of farmers on their right to use, replant, sell, donate and exchange Roundup Ready® Soybean Seeds and produce therefrom, without paying any royalties to Monsanto. The undisputed fact was that the Roundup Ready® Soybean Seeds contained technology patented by Monsanto (Note: the judgement referred to the patent number as PI 110008-82; I have not studied this patent because the details thereof are not relevant to this post).  The judgment holds that the farmers are obligated to pay Monsanto for use of the patented technology contained in seeds and that the farmers’ privilege under plant variety law cannot be applied to limit the rights of a patentee under patent law.

The Plant Variety Protection Law (or the Cultivar Protection Law) is Law No.9.456/97 in Brazil (here).  Article 10 of this Law No. 9.456/97, reproduced below in its relevant part, inter alia, contains the farmer privileges:

 “The breeder’s right in the plant variety shall not be deemed infringed by a person who:

…

(iv) being a small rural producer, multiplies seed, for donation or exchange in dealings exclusively with other small rural producers, under programs of financing or support for small rural producers conducted by public bodies or non-governmental agencies, authorized by the Government.”

(Note: there was some difference in the version I accessed from WIPO and the version reproduced in the judgment; however, this was immaterial for the purposes of this post)

The patent law of Brazil is contained in Law No. 9.279/96 (Industrial Property Law) (here). As per Article 8, every invention that needs requirement of novelty inventive step and industrial application is deemed patentable.  Articles 10 and 18 of this Law No. 9.279/96 declare what are not inventions and thus, not patentable.  The relevant portions of said Articles 10 and 18 of Law No. 9.279/96 are reproduced below:

 “Article 10.  The following are not considered to be inventions or utility models:

[….]

IX-     all or part of natural living beings and biological materials found in nature, even if isolated therefrom, including the genome or germplasm of any natural living being, and the natural biological processes.

The Article 18. The following are not patentable:

[….]

III-     all or part of living beings, except transgenic microorganisms that satisfy the three requirements of patentability—novelty, inventive step and industrial application—provided for in Article 8 and which are not mere discoveries.

Sole Paragraph. For the purposes of this Law, transgenic microorganisms are organisms, except for all or part of plants or animals, that express, by means of direct human intervention in their genetic composition, a characteristic normally not attainable by the species under natural conditions.”

There is also a provision for patent infringement under right to seek appropriate civil remedies. It was in this context that the issue arose whether farmers can exercise their rights under the Plant Variety Law to replant seeds etc. containing the patented technology, without having to pay royalties (pursuant to exercise of rights under patent law). The Appellant believed that the rights conferred on farmers under the Plant Variety Law would trump and supersede patent rights. Several arguments were raised to support the proposition.

The court rejected the first argument that if the farmers claims are not allowed, it would amount to conferment of double protection. Factually, the court noted that there was lack of information whether the specific Monsanto entities before the court had any plant variety right in the first place and therefore, the question was considered as an abstract one. On a point of law, however, the court categorically held that patent and plant variety protection are “different kinds of intellectual property right aimed at protecting different intangible assets”.  The question of double protection did not arise because what was protectable under both laws was not the same object – the plant variety law protects the variety/cultivar, the patent law does not protect the variety but only the gene created and the insertion process. Based on the scheme of the two laws, the Court noted there are differences in the protected object, the protection comprehensiveness, the exceptions and limitations, the grant criteria, the term and so on. The court concluded that there was no incompatibility between the statute concerning such different subject matters and no question of overriding or supersession would arise. I found the following paragraph important:

“The protection scope the technology developed by the appellees [sic] [Monsanto] is subject to cannot be confounded with the object of the protection provided for in the Cultivar Law : patents do not protect the vegetal variety, but the insertion process and the very gene inoculated thereby in the RR [sic] [Roundup Ready] soybean seeds. The intellectual property protection in the form of cultivars comprises the whole plant vegetative reproduction or multiplication material, while the patent system specifically protects the inventive process or the genetically modified material”

The next argument of the Appellant farmers that was rejected by the court was the principle of exhaustion.  Article 42 of the Patent Law entitled the patent holder to prevent third parties from infringing the patent. Article 43 contains the exceptions to the same. The exhaustion principle appears to be present in Article 43 (IV) and (VI), reproduced below:

“Article 43    The provisions of the previous Article do not apply:

…

IV. to a product manufactured in accordance with a process or product patent that has been introduced onto the domestic market directly by the patentholder or with his consent;

…

VI. to third parties who, in case of patents related to living material, use, place in circulation, or market a patented product that has been legally introduced into commerce by the patentholder or the holder of a license, provided that the patented product is not used for commercial multiplication or propagation of the living material in question.”

The Court held that the exhaustion principle cannot be extended to situation where the patented product is used for commercial multiplication or propagation or living matter. In one paragraph, the judgment even goes on to note that permitting the actions of the farmers under this exception would tantamount to rendering the rights meaningless.

The Court then proceeds to address the nub of the issue and concludes that that limitations prescribed on plant variety certificate holders cannot be imposed or applied to the rights of patent holders, both being regulated by separate laws that are not incompatible with each other.  The court appears to cite with approval the following views from an authoritative commentary:

“If the inventor inserts a new attribute into an existing plant, such as a new gene with new function, his industrial property right is limited to the attribute inserted therein, so it is not extended to the entire modified plant.  The other plants of the same species that have not received such new attribute shall remain not belonging thereto. From such right, three situations arise […] 

1. If such plant, with the new attribute, is replicated, conserving in the offspring the attribute originally inserted, the holder of the [patent] owns such attribute. If such replicated plant is used because of the protected attribute, it is clear that such attribute given to tis holder the right to charge its use. 

2. However, is such plant, with the new attribute, is cultivated, and the attributed inserted therein does not remain in the plant, or is not used by the plant user, we can conclude that the inventor of the attribute cannot charge royalties for the use of the new protected attribute.

3. Moreover, if such plant, with the new attribute, or the products derived therefrom, are used, and, in such use, the new attribute is irrelevant, the inventor has no right to charge for its use […] However, we must let clear that, if the protected attribute exists in a plant, even though such plant, per se, is protected by third party, the existence of such attribute grants to its holder the right to charge royalties for its use, as well as to the holder of the cultivar protection.  (BRUCH, Kelly Lissandra; VIEIRA, Adriana Carvalho Pinto and DEWES, Homero. A Propriedade industrial: duple protecao ou protecoes coexistentes sobre uma mesma planta. In propriedade intellectual e inovacoes na agricultura. Organization: Antonio Marcio Buainain, Maria Beatriz Machado Bonacelli, Cassia Isabel Costa Mended. Brasilia; Rio de Janeiro: CNPq, FAPERJ, INCT/PPED, IdeiaD; 2015, page 314).”

In responding to (and rejecting) the policy argument that a ruling against the Appellant Farmers would result in a monopoly in an important socio-economic area, the Court found:

“The intellectual property can offer an important advantage, but it is not a monopoly. In monopoly, especially when it is created by a government initiative, as it often occurs in many communist and developing countries, the company, in fact, does not fail for being protected.  The intellectual property protects the idea, the invention, the creating expression, not the company.  In the case of the intellectual property, the product from the mind can fail or be supplanted in the market. In the case of a monopoly, the very company is the object of protection (SHERWOOD, 1992, Page 61)

Further, it cannot be cogitated, by the Judicial Branch, the legal regime of intellectual property protection for, indirectly, correcting possible imperfections related to the market operations.  Results, to such effect, are to be sought in proper sphere, intended to competition and economic order defense, subject to otherwise imposing on the patent system a function it does not have.

And finally, it should be registered, that as highlighted in the appealed collegiate decision, nothing prevented the farmers represented by the appellants to employ conventional soybean in their plantation, without the cost of royalties or know-how fee; but from the moment they opted for cultivating seeds modified by the patented invention, the consideration obligation for the used technology becomes unavoidable. If they chose to use such specific variety was because it seemed economically advantageous thereto, so they must bear the consequences of such option.”           

The final conclusion of the Court was formulated in the following manner:

“the limitations to the intellectual property right included in Article 10, of the Law no. 9.456/97 – only and solely applicable to the holders of Cultivar Protection Certificates – cannot be enforced against the holders of product and/or process patents connected with transgenics, the technology of which appears in reproductive material of vegetal varieties.”

There are several references to the obligations under the TRIPs agreement as well guidance drawn from UPOV sourced references, though, ultimately, it is clear that the judgment turns more on the interpretation of the domestic statute. The Court did note that to allow the Appellant farmers’ claims would frustrate commitments assumed by Brazil under Article 28.1 of the TRIPS Agreement.

Given my conflict of interest on the subject, I will obviously refrain from raising any pointers to the position in India. However, undoubtedly, this judgment rendered by the highest authority in one of the BRICS countries would have significant influence across the globe.

The World Intellectual Property Organisation has called for public comments as part of its process to develop a policy on Artificial Intelligence and Intellectual Property Rights. The call is available here.

The call is concurrent with the release of WIPO’s issues paper where it has outlined the following core issues concerning the relationships between AI and IP: (a) Patents (b) Copyright (c) Data (d) Designs (e) Technology Gap and Capacity Building and; (f) Accountability for IP Administrative Decisions.

Submissions are invited until February 14. We have previously written about the relationships between AI technologies and IP rights here.

In its judgement in Google India Pvt. Ltd. vs M/s Visakha Industries, delivered on December 10, 2019, the Supreme Court denied to quash defamation proceedings against Google for its failure to expeditiously remove allegedly defamatory material from its ‘Google Group’ service.

The case is significant for online intermediaries operating in India, as it holds that online intermediaries may be liable as a ‘publisher’ in criminal defamation proceedings under the Indian Penal Code in certain circumstances.

Background

Google, the appellant company, offers a service known as Google Groups, which hosts third party content posted by individuals. In July and November of 2008, two articles were posted on a Group called ‘Ban Asbestos India’, which allegedly contain defamatory statements linking the complainant, M/s Visakha Industries, a prominent asbestos manufacturer, with corruption charges. Visakha sent a notice to Google India, demanding the takedown of defamatory content (but not providing the URLs of the content), which was forwarded to Google Inc. for action. Google Inc. wrote back to the complainant asking for specific URL’s at issue.

Visakha then filed a criminal complaints against the administrator of the Group, as well as against Google India alleging criminal defamation under Section 499 of the Indian Penal Code (IPC) as well as conspiracy to commit an offence under Section 120B. Taking cognizance of the matter, the Magistrate at a Secundarabad Court who assumed jurisdiction issued a summons to Google India. Google subsequently filed a petition under Section 482 of the Code of Criminal Procedure, before the Andhra Pradesh High Court. The High Court rejected Google’s petition and Google subsequently appealed to the Supreme Court.

Supreme Court on Intermediary Liability for Criminal Defamation

At the outset, it is important to note that no finding or judgement has been entered of Google’s guilt by any court so far. Section 482 of the CrPC provides for discretionary powers of the High Court to ‘secure the ends of justice’. The provision is frequently used to ask a Court to quash criminal proceedings or FIRs which are frivolous or without merit. The contours of this power have developed through judicial precedent, and essentially only permit a court to quash criminal proceedings in cases where it is prima facie apparent that no offence is made out or that the proceedings are frivolous and vexatious. In a matter under 482, therefore, determinations of fact are not entered into, only what is apparent from the record itself.

Moreover, this complaint pertains to an offence committed prior to the enactment of the amended Section 79 of the IT Act, which provides expanded safe harbour to any intermediary from liability under any law, subject to certain conditions. The unamended Section 79, however, only exempted intermediaries (or Network Service Providers) from liability for offences under the IT Act itself.

In light of this, the following issues were framed by the Court:

(1) First, whether Google India was the relevant intermediary, since the control over the Groups feature was with Google Inc., a US corporation which had not been impleaded.

On this count, the Court held that it could not interfere because the question of control and the relationship between Google India and Google Inc., for the purposes of determining the actual responsible party under criminal proceedings was a disputed fact which could not be adjudicated under a Section 482 petition. Therefore, the Court left this issue to be argued and tried at the appropriate stage.

(2) Second, whether Google could avail of intermediary safe harbour for defamation under Section 79 of the IT Act.

The Supreme Court held that since the complaint was filed and cognizance of the matter was taken prior to the substitution of Section 79 with the expanded scope of safe harbour, the adjudication of intermediary liability needed to be done as per the unamended Section 79

Google argued exemption under the unamended Section 79 on the basis of the Sharath Babu case before the Supreme Court, where the criminal charge of obscenity had been made against an intermediary, both under the IT Act as well as under IPC. The Court held that because the IT Act was a latter and a special enactment which specifically covered obscene publication of electronic material, it would apply over and above provisions of the IPC. Further, since Section 79 exempted the intermediary from any liability under the IT Act, there was not further cause of action under the IPC.

The Supreme Court in Visakha distinguished the above from the facts at hand, stating that since there was no special provision under the IT Act that dealt with criminal defamation, the special provisions of the IT Act would not apply to the exclusion of the IPC. Therefore, criminal defamation in the present matter would have to be adjudged under Section 499 of the IPC, and Section 79 of the unamended IT Act would not apply to the facts of this case.

(3) Third, and most importantly, whether Google could in any event be foisted with liability for criminal defamation, as an aggregator or host of an online service.

This is perhaps the most significant development by the Supreme Court, both for intermediary liability specifically as well as for criminal defamation jurisprudence more generally. The question was whether Google’s actions meet the standard of ‘publication’ required under Section 499 of the IPC. Relying upon the decisions of English courts, particularly on Byrne v Deane, the Court held that the relevant test for a criminally defamatory publication was ‘whether the defendant really made himself responsible for its continued presence in the place where it has been put?’. The Court in Visakha went on to state the law on the subject of intermediary liability for criminal defamation as follows:

“…In other words, there may be publication within the meaning of Section 499 of the IPC even in the case of an internet operator, if having the power and the right and the ability to remove a matter, upon being called upon to do so, there is a refusal to do so.”

Where Now for Intermediary Liability?

The key practical takeaway from the judgement are these:

First, in complaints on criminal defamation filed prior to the substitution of Section 79 (that is, October 27, 2009), Section 79 does not offer any exemption from liability. This is also true for all offences not specifically traceable to a special offence under the IT Act.

Second, online intermediaries and service providers may be held to be the publishers of (and liable for) defamatory content under Section 499 of the IPC, if, having the ability and upon being called upon to remove such content, the intermediary refuses to do so. The scope of such power and refusal are a matter of trial – for example, whether the intermediary can demand specific URLs or not. Under the prevailing norm of intermediary liability under Section 79, however, such liability would be exempt, provided the intermediary acts upon a court order or the order of an appropriate government for removal of content.

Therefore, while the judgement may not have immediate consequences given the amended scope of Section 79, it is a crucial reminder that common law standards of criminal and civil law relating to liability for publication can easily extend to internet service providers, potentially resulting in the chilling effect on speech and overblocking, that the Supreme Court has itself warned against in Shreya Singhal v Union of India. The judgement takes us back to the infamous Avnish Bajaj case relating to obscene publications under Indian law and the imprisonment of the director of bazee.com, which in fact led to subsequently stronger intermediary safe harbour protections. It is also an apt warning, as impending regulation looms large over internet intermediaries, of the need to tread cautiously when upsetting online safe harbours and regulating online speech.

Topical Highlight

Divij wrote a post on a recent order of the Supreme Court in Google India v Visakha Industries. Through this order, the Supreme Court denied to quash defamation proceedings against Google for its failure to expeditiously remove allegedly defamatory material from its ‘Google Group’ service. Divij notes that this decision is important for online intermediaries operating in India, as it holds that online intermediaries may be liable as a ‘publisher’ in criminal defamation proceedings under the Indian Penal Code in certain circumstances.

Thematic Highlights

In her post, Latha Nair discussed the opinion of the Advocate General (AG) of the European Court of Justice in Sky Plc v Sky Kick UK in light of the Indian Supreme Court’s decision in the Charminar case of 1996. She noted that both cases discuss the width of specifications of a trademark, and their relevance to ‘non-use’ claims and infringement proceedings generally.

Other Posts

Adarsh wrote a post on the decision of the highest court of Brazil on the overlap between patents and protection of plant varieties. The judgment concerns a claim by an association of farmers on their right to use, replant, sell, donate and exchange Roundup Ready® Soybean Seeds and produce therefrom, without paying any royalties to Monsanto. The judgment holds that the farmers are obligated to pay Monsanto for use of these seeds and that the farmers’ privilege under plant variety law cannot limit rights under patent law. They noted that patent law protected only the gene and the insertion process, and was distinct from the plant variety protection, which extended only to the variety. Further, the court noted that the exhaustion principle is inapplicable and that exceptions within the plant variety law cannot extend to patent law because the two are separate, incompatible laws.

Divij brought to our notice the sale of the ‘.org. domain registry to a private equity organisation. In his post, he discusses the ramifications of this move, with widespread concerns over the privatization of internet commons and possibly increased censorship owing to the change in the non-profit status of the domain name registrar.

Pankhuri informed us that Prof. (Dr.) Shamnad Basheer has been identified as one of the 50 Most Influential People in IP 2019 by Managing IP (MIP) for his outstanding contribution to the world of IP. He was one of only two Indians on the list, the other being Justice Ravindra Bhat, who was recently elevated to the Supreme Court.

Divij brought to our notice WIPO’s Public Consultation on AI and Intellectual Property, the deadline for which is February 14, 2020.

Rishabh wrote a tidbit on the recent press release by the Ministry of Commerce and Industry, which clarified that any order of the Intellectual Property Appellate Board and any decision of intellectual property offices can be challenged before High Courts by way of a writ petition under Article 226 of the Constitution and before the Supreme Court by way of Special Leave Petition under Article 136 of the Constitution.

In a guest post, Mathangi provides a comparative analysis of the requirement of ‘originality’ under design law. She notes that both the Indian and European jurisdictions give paramountcy to the requirement of originality, but the EU has been far more successful in ensuring this assessment is objective in nature.

Adarsh Ramanujan wrote a two-part post on the latest Draft Access and Benefit Sharing Guidelines. In the first part, he provides a short summary of the regulations, set up under Section 21(4) of the Biological Diversity Act 2002. He notes that making State Biodiversity Boards bound by regulations for benefit-sharing when exercising powers conferred under Sections 23 (b) and 24 is a positive change, as it prevents arbitrariness on their part. In the second part, he discusses the difficulties that may arise due to the proposed definition of ‘convention breeding’ in the context of exemptions under Section 2(f).   He also critically analyses the changes made to exemptions under Section 40 and value-added products. Further, he notes the problem of appointing the NBA as the checkpoint for the Nagoya Protocol.

Other Developments

Indian

Judgments

ITC Limited v. Ganesh Flour Mills and Another – Madras High Court [November 1, 2019]

The Court granted a permanent injunction restraining the Defendants from infringing the Plaintiff’s copyright in its label for its product sold under the mark “AASHIRVAAD” by using a label containing identical elements for its mark “GANESH”. In arriving at this decision, the Court noted that the label used by the Defendants was identical to that of the Plaintiff, and may create a confusion in the mind of customers. The Court went on to note that the label used by the Defendants was the clear label of the Plaintiff.

Dhanam Textiles v. Gowri Textiles and Others – Madras High Court [November 4, 2019]

The Court granted an ex parte injunction restraining the Defendants No. 1 and 2 from infringing and passing off the Plaintiff’s marks, namely “MUBARAK” and “360 BRAND”, along with infringing the “THILLANA” label by using deceptively similar marks and labels in respect of selling lungies. The Court noted that the evidence submitted by the Plaintiff was uncontroverted and unchallenged, and accordingly passed an order for it.

M/s. N.A. Thangarajan & Sons v. M/s. 1^st Choice Food Products – Madras High Court [November 5, 2019]

The Court granted a permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “HANUMAN” with device of a flying Hanuman by using an identical device. The Court observed that the evidence filed by the Plaintiff clearly established the nature of its business running with reputation and goodwill. Accordingly, the Court noted that the Plaintiff had proved its claim.

Rajdeep Energies Private Limited v. ResQ Technologies Private Limited – Madras High Court [November 7, 2019]

The Court dismissed an application for vacating an interim injunction against the Applicant and granted a permanent injunction by restraining the Applicant from infringing and passing off the Respondent’s mark “RESQ” by using an identical mark in respect of selling UPS and inverters. In arriving at this decision, the Court noted that the examination report issued by the Registry to the Applicant contained the Respondent’s mark. Accordingly, the Applicant’s adoption of the mark could not have been honest and bona fide. Furthermore, the Court observed that the Respondent had a user date three months prior to the Applicant’s registration, and was prima facie the prior user of the mark. Ultimately, the Court noted that mere delay without anything more does not indicate acquiescence, and that latches and delay in equity could only be furthered by a person who fairly and honestly adopted the mark.

M/s. Power Soaps Limited and Another v. M/s. J.K. Cosmetics and Another – Madras High Court [November 7, 2019]

The Court granted a permanent injunction restraining the Defendant from using the mark “POWER PAX” in infringing and passing off the Plaintiff’s mark “POWER MAX”, along with its copyright in the artistic work contained in the label. The Court observed that the evidence of the Plaintiff was unchallenged and accordingly, the Plaintiff had proved its case that it was the registered owner of the marks.

Merck Sharp and Dohme Corp. & Anr. v. Sanjeev Gupta and Others – Delhi High Court [November 18, 2019]

The Court affirmed the prior grant of an interim injunction restraining the Defendants from infringing the Plaintiffs’ patent in its drug “SITAGLIPTIN”. In arriving at this decision, the Court noted that the Defendants manufactured the patented products in India, which was in violation of the patentee’s exclusive rights. Additionally, the Court rejected the Defendants’ argument that the Drug Controller had granted them a licence to manufacture the drug under the Drugs and Cosmetics Act, 1940, and noted that the Drug Controller did not conduct an enquiry into whether a prior patent-protected such a drug. Accordingly, the Court observed that the interim injunction would continue in favour of the Plaintiffs until the final disposal of the suit.

Arun Chopra v. Kaka-Ka Dhaba Private Limited and Others – Delhi High Court [November 18, 2019]

The dispute between the Parties arose on account of the Defendants’ alleged use of the marks “KAKA DA DHABA”, “KAKA KA RESTAURANT” and “KAKA KA GARDEN” in infringing and passing off the Plaintiff’s mark “K-D-H KAKE DA HOTEL”. The Courts granted interim injunctions in favour of the Plaintiff on previous occasions. Having filed a suit for cancellation of the Defendants’ marks, the Plaintiff sought a stay of the proceedings in the infringement case filed by it. The Court noted that the rival marks were phonetically and structurally similar and that its plea was prima facie tenable. However, it noted that the case would be stayed until the disposal of the rectification application filed by the Plaintiff.

Super Cassettes Industries Private Limited v. M/s. ATL News; Super Cassettes Industries Private Limited v. Shri Krishna Cable Network; Super Cassettes Industries Private Limited v. My News/ My TV News; Super Cassettes Industries Private Limited v. Rashmi Vision – Delhi District Court [November 18, 2019]

The Court granted ex parte permanent injunctions restraining the Defendants 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 Defendants without valid licences. The Court observed that the Defendants had committed continuous infringement by ignoring communications from the Plaintiff and failing to pay licence fees. The Plaintiff was further granted damages of Rupees 5 lakhs, considering the substantial loss and damage caused by the Defendants on account of its continuous infringement.

M/s. Elofic Industries (India) v. Mr. Viney Kumar Rai and Another – Delhi District Court [November 18, 2019]

The Court granted an ex parte decree of permanent injunction restraining the Defendants from infringing the Plaintiff’s copyright in its artistic work bearing the mark “ELOFIC” by using an identical artistic work on the packaging of its product. The Court observed that the Plaintiff was the registered proprietor of the mark “ELOFIC” and had discharged its burden of proving the case through unrebutted testimony. Additionally, the Court granted punitive damages to the tune of Rupees 5 lakhs in favour of the Plaintiff on account of the continuous infringement of its copyright.

Nike Innovate CV v. Shoesnation and Another – Delhi District Court [November 18, 2019]

The Court granted a decree of permanent injunction restraining the Defendants from infringing and passing off the Plaintiff’s trademark in its “SWOOSH DEVICE” by using a deceptively similar device on its footwear. In arriving at this decision, the Court noted that the Plaintiff was the registered proprietor of its mark, and the Defendants’ use of the same would lead to confusion of an average person with average intelligence. Additionally, the Court awarded damages of Rupees 40,000 to the Plaintiff after the Defendants’ admission of the sales made under the mark.

Hindustan Unilever Limited v. Brijesh Nepokar – Calcutta High Court [November 19, 2019]

The Court granted a decree of interim injunction restraining the Respondent from using the Petitioner’s artistic work in respect of its product, stating that it was deceptively similar to that of the Petitioner.

Sharma Ayurved Private Limited v. B.N. Sharma Ayurved Private Limited – Calcutta High Court [November 19, 2019]

The Court refused the grant of an interim injunction in favour of the Plaintiff from restraining the Defendant from using an identical artistic work for the sale of hair oil. The Court noted that on the partition of the partnership firm constituting the Parties, the Defendant was not precluded from using the label. Furthermore, the Court observed that the case involved piercing of the corporate veil of the Plaintiff so that members of the same family (including the Defendant) could not be prevented from using the artistic work for carrying out the family business.

Intex Enterprises Private Limited and Another v. Sawariya Telecom – Delhi District Court [November 19, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from selling products under the mark “SINTEX”, being deceptively similar to the Plaintiff’s registered mark “INTEX”. Additionally, the Court noted that the goods sold by the Defendant under the mark “INTEX” were not counterfeit goods, as the Plaintiff had failed to prove the same through any lab report or expert opinion.

Novex Communications Private Limited v. Gipsy Hospitality and Destinations Private Limited – Bombay High Court [November 21, 2019]

The Court granted an interim injunction restraining the Defendant from infringing the Plaintiff’s copyright in its sound recording, “APNA TIME AAYEGA”. The Court observed that the Defendant was aware of the Plaintiff’s copyright in its sound recording and had obtained licences on previous occasions. Accordingly, the subsequent deliberate use of the recording without obtaining a licence amounted to a prima facie case of copyright infringement.

Novex Communications Private Limited v. N.S. Hospitality Private Limited and Others – Bombay High Court [November 22, 2019]

The Court granted an interim injunction restraining the Defendant from infringing the Plaintiff’s copyright in its sound recording by performing it on-ground. The Court observed that the Defendant was aware of the Plaintiff’s copyright in its sound recording and had obtained licences on previous occasions. Accordingly, the subsequent deliberate use of the recording without obtaining a licence amounted to a prima facie case of copyright infringement.

Anurag Sanghi v. State and Others – Delhi High Court [November 25, 2019]

The dispute between the Parties arose on account of the Petitioner’s alleged infringement of the Respondent’s copyright in its needles. Though the Parties subsequently entered into an agreement, the Respondent claimed that the Petitioner continued to deal in infringing products. The Local Commissioner seized the allegedly infringing products from Petitioner’s premises and the Chief Metropolitan Magistrate passed an order stating that there should be an interim stay against it. The same was upheld by the Additional Sessions Judge subsequently. The Petitioner challenged the aforementioned orders on the sole ground that the offence under Section 63 of the Copyright Act, 1957 was not a cognizable and non-bailable offence, and prayed for quashing the FIR filed against him. The Court noted in respect of Section 63, that its classification as cognizable or non-cognizable should be guided by the period of maximum punishment which can be imposed for the offence contained therein. Applying this rationale, the Court observed that Section 63 would be a cognizable offence as the offence may extend to three years and a fine, and should be classified as falling under the second prong of Part II of the First Schedule of the CrPC. The Court further relied on the Supreme Court’s decision in Avinash Bhosale, where leave was granted on similar grounds under Section 63. Accordingly, the Court set aside the orders of the Chief Metropolitan Magistrate and the Additional Sessions Judge and directed the FIR to be quashed.

PVH Corpoation v. Mr. Manoj – Delhi District Court [November 26, 2019]

The Court granted an ex parte permanent injunction restraining the Defendant from using the mark “VAN HEUSEN” in infringing the Plaintiff’s identical mark, along with its copyright in the artistic work contained in the mark. The Court noted that the Defendant had been carrying on infringing activities surreptitiously without any authority. Furthermore, the Court granted damages of Rupees 1 lakh in favour of the Plaintiff, considering that the Defendant had caused substantial loss and damage to the Plaintiff on account of its continuous infringement.

Royal International Company and Others v. Arun Mohanlal Joshi – Bombay High Court [November 27, 2019]

The dispute between the Parties arose on account of the Appellants’ alleged infringement and passing off of the Respondent’s mark “MUSAFIR” by using a deceptively similar mark “CHAL MUSAFIR”, along with an infringement of the Respondent’s copyright in the artistic work contained on its pouches. Accordingly, an ex parte interim injunction was granted in favour of the Respondent, and the Single Judge directed the Court Receiver to seize infringing pouches from the Appellants’ premises. Appellant No. 1 and Appellant No. 2 appealed against the order stating that the goods seized by the Court Receiver did not belong to them, and they were merely packaging the products. The aforementioned Appellants further challenged the findings of the Single Judge on the basis that they were not served a notice in Himachal Pradesh, that their goods were not spurious in nature and that they could not appear in Mumbai due to delay in the planes on the day of the hearing. The Court dismissed these challenge and noted that the Appellants were blatantly involved in infringement of the copyright of the Plaintiff in its mark “MUSAFIR” and the goodwill contained therein. Accordingly, the appeal was dismissed.

Levi Strauss & Co. v. Rajiv Sachdeva and Manoj Khurana and Another – Delhi District Court [November 27, 2019]

The Court granted a permanent injunction restraining the Defendants from using the mark “LECI STRAUSS AND CO.” in infringing and passing off the Plaintiff’s mark “LEVI’S” in respect of readymade garments as well as allied and cognate goods. In arriving at this decision, the Court observed that the Plaintiff’s goods were adjudged to be counterfeit in nature by the Plaintiff’s expert.

M/s. Himgiri Enterprises Private Limited v. M/s. Shree Balaji Electrical – Delhi District Court [November 30, 2019]

The Court granted a permanent injunction restraining Defendant No. 1 from infringing and passing off the Plaintiff’s mark “GIRISH” with or without the device of “TRISHUL”, by using it in respect of its goods. In arriving at this conclusion, the Court noted that the Plaintiff was the registered proprietor of the mark, and Defendant No. 1 had specifically signed an undertaking to cease infringing activities. In violating the terms of the undertaking, Defendant No. 1 had also violated the Plaintiff’s right in its mark.

Dystar Colours Distribution GmbH v. Jay Chemical Industries Limited – Calcutta High Court [December 2, 2019]

The Court noted that the valuation of the suit was at 10 crore Rupees and the cause of action concerned the infringement of the patent. Accordingly, the Court directed the suit to be treated as a ‘Commercial Suit’ and transferred the same to the ‘Commercial Division’ of the Court.

Shri Balaji Industrial Products Limited v. AIA Engineering Limited – Rajasthan High Court [December 4, 2019]

The Petitioner filed an application for stay of the suit concerning the Respondent’s patent rights on the ground that it had filed a revocation application before the IPAB. The Court observed that the Petitioner had not proceeded to the IPAB well in time, considering that an order was issued in favour of the Respondent in the patent suit. Relying upon the case of Alloys Wobben and Another v. Yogesh Mehra and Others, the Court observed that the power to stay a suit was discretionary and to be exercised on the basis of equitable principles. Accordingly, the Court dismissed the Petitioner’s application for a stay of the patent proceedings.

Raymond Limited v. Shahi Libas and Another – Bombay High Court [December 4, 2019]

The Court granted an interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “RAYMOND” by its unauthorized use. In arriving at this decision, the Court noted that the photographs of the Defendants’ shop indicated the use and display of the Plaintiff’s registered mark “RAYMOND” on the signboard.

Hakimuddin Bhemat v. Supreme Sales Agency – Calcutta High Court [December 4, 2019]

The Court granted an ex parte ad interim injunction restraining the Defendant from infringing the Plaintiff’s copyright in its artistic work “BHARAT SHAKTI” by using a deceptively similar label “BHARAT SUPREME SHAKTI”. The Court noted that a prima facie case in favour of the Plaintiff was made out, and ordered the appointed Receiver to make an inventory and submit its report in respect of the infringed products.

Sajeev Pillai v. Venu Kunnapalli – Kerala High Court [December 11, 2019]

The dispute between the Parties concerned release of the film “MAMANKAM”, a Malayalam film. The Appellant claimed that though he was the scriptwriter, the shooting of the film resulted in mutilating, distorting and modifying the script. Respondent No. 1 claimed that the Appellant assigned his work, and accordingly lost copyright ownership over the same. The Court noted that the claim for moral rights made by the Appellant could only be adjudged after a full-fledged trial. Additionally, it noted that the Appellant was the author of the screenplay and script of the film, and if his name was replaced by that of another, it would cause unimaginable harm to him. In view of the expenditure incurred and the arrangements made by Respondent No. 1 in producing and distributing the film, the Court noted that the film was permitted to release. However, it was ordered that the name of no scriptwriter or screenplay writer was to be included in credits until then.

News

• Guidelines for filing PPH (Patent Prosecution Highway) request under the PPH pilot program between IPO (Indian Patent Office) and JPO (Japan Patent Office) have been published.
• Filmmaker wins copyright infringement case against Google and YouTube.
• Madras HC quashes proceedings against Vijay, Lyca Production in copyright infringement case.
• ‘Mahanadhi’ Shobana moves court over copyright violations.
• Hyderabad court bars digital release of ‘Bigil’.
• Injunction order passed against Messe Berlin, organisers of ITB India.
• Delhi HC dismisses plea alleging plagiarism against JNU Associate Professor.
• Current patent laws are inadequate for artificial intelligence-related Intellectual Property: Report.
• Bombay HC clears Panipat for release on December 6.
• 1,031 facilitators empanelled for startups for free filing, facilitation of IP applications.
• India has far fewer researchers than China, US, according to a think tank.
• Netflix faces copyright fight over controversial documentary ‘Bikram: Yogi, Guru, Predator’.
• USV in talks with Novartis to buy Jalra Trademark for Rs. 200 Crore.
• Bombay HC restrains Chinese firm in a copyright case.
• Surrogate tobacco advertisement: Maharashtra government seeks trademark information on brand.
• Health activists oppose Sanofi’s patent applications for TB medicine in India.
• AstraZeneca’s Johansson seeks further easing of IP rules in India.
• Government notifies 6th June 2019 as the date on which section 2 of the Patents (Amendment) Act, 2002 in so far as it amends section 71 of the Patents Act.

On 17th December, a three-judge bench of Supreme Court of India in Genentech Inc. & Ors. v. Drug Controller General of India & Ors., set-aside the interim order of the Division Bench of the Delhi High Court dated 18.09.2019 and restored the earlier order of the single judge dated 25.04.2016. This relates to the biosimilar dispute concerning the drug ‘Trastuzumab’, between Genentech and Roche on the one hand, and Reliance, Mylan and Biocon on the other. The litigation saga has been previously covered on this blog on several occasions (see here, here, here and here). This specific order on the Supreme Court only concerns Reliance.

The interim order set aside by the Supreme Court had directed that Reliance be placed on parity with Mylan and Biocon as far as interim orders are concerned. At the single judge stage, Biocon, Mylan and Reliance, were allowed to sell their respective biosimilar drugs subject to certain conditions (vide separate orders dated 25.04.2016). In the appeal filed by Biocon and Mylan, the Division Bench of the High Court permitted them to sell their biosimilar drugs without complying with the additional directions imposed by the Single Judge. This was by way of an order dated 28.04.2016 (as later clarified vide order dated 03.03.2017). However, it seems that Reliance’s appeal against the Single Judge order and the corresponding Genentech’s appeal qua Reliance, were not heard/disposed off on 28.04.2016; in fact, it is only on 28.07.2016 that the Division Bench observes that Reliance’s appeal raises identical issues as the others and directed them to be listed together (though I’m sure if that happened immediately because I see a lot of daily orders on different dates). Thus, at that point in time, similar interim relief was not granted to Reliance. Subsequently, the Division Bench took up Reliance’s appeal and their application for stay, and disposed off the stay application on 18.09.2019, effectively putting Reliance in the same position as Mylan and Biocon. It is this order that has been set-aside by the Supreme Court.

The nature of the suit filed by Genentech/Roche has always been questioned, but the Supreme Court summarized that this suit was for “extended passing off and to prevent the defendants from using the plaintiffs’ data and improper reference to its drug ‘Trastuzumab’”. Therefore, the fact that the patent right on the drug had already expired, which has been an issue raised by the Defendants and has been often raised on this blog, was held irrelevant by the Supreme Court, effectively setting aside the observation of the Division Bench that prima facie considered this to be an issue to be tried.

(N.B.: I think the other point concerning whether DCGI approvals can be questioned in a civil suit, which is also part of the suit initiated here, has been missed in this summarization by the Supreme Court. However, one way to look at the matter is to state that the suit involved joinder of different causes of action against different defendants, but the relief sought is in respect of or arising out of a same act/transaction or series of acts/transactions, which may involve common questions of fact or law. I am not commenting on whether this is possible and whether this would permit a statutory body performing statutory functions to be questioned in a suit)

On a reading of the Supreme Court’s dated 17.12.2019, it appears that the court has placed emphasis on the following two critical factors in coming to this conclusion:

• The failure of the Division Bench to account for the order dated 8.03.2019 issued by the Supreme Court, inter alia, between the same parties, which directed that the appeals and application by both sides, be heard and disposed off at the same time:
• The position prevailing since the last three and a half years (basically since the Single Judge’s order) has been upset by the division bench without considering the balance of convenience.

On the first consideration above, the Supreme Court rejected the contention of Reliance that Genentech’s application was effectively addressed by the Division Bench because the submissions of Genentech were recorded and dealt with. The Supreme Court, however, disagreed since the division bench had specifically noted (@Para 51) that it was only considering the stay application of Reliance. The Supreme Court also took note of the fact that there was a common order passed on 16.07.2019 by the Division Bench on all the appeals concerning this dispute except Reliance’s appeal; in contrast, there is a separate order of the same date in Reliance’s appeal where orders were reserved. The Supreme Court concluded that all of this only meant that the division bench had failed to consider Genentech’s application.

I will be the first to admit that it was confusing to fully understand what occurred at the Division Bench level. I am not exactly sure how and why not all the appeals were consolidated, or heard separately; perhaps, I am missing something. Nevertheless, I ask myself this question – is this not something that needs to be seen by looking at the substance of the matter? I keep wondering the converse – if, by chance, the impugned order of the Division Bench mentioned Genentech’s Appeal No. and Application No. without changing anything else in the order, would the Supreme Court still have reached the same conclusion? I seriously doubt it. I think it would have been prudent to have considered this from a more substantive perspective at the second appeal stage at the Supreme Court level. Therefore, if Genentech’s contentions were truly addressed in the order, then I am not sure the issue goes to the root of the matter. Of course, the question remains whether the contentions in Genentech’s appeal/stay application was properly addressed. Honestly, I don’t want to comment on this in a detailed manner without knowing more. However, @Para 26, the Supreme Court itself notes that the Division Bench had considered and rejected the submissions of Genentech and thus, it would be futile to remand the matter back to the Division Bench. Well….if this is true, does this not indicate that the Division Bench had indeed effectively considered Genentech’s application as well?

The other point observed by Supreme Court, concerns “balance of convenience”. As most would know, the settled position is that appeal courts should be circumspect in interfering interim orders and “balance of convenience” would play a big role.  A perusal of the Division Bench order does not even mention the word “balance of convenience”. This is just technical – what matters is whether the Division Bench had substantively considered “balance of convenience” even if did not mention it. When I read through the Division Bench order again, @Para 57, the Division Bench noted: (i) the fact that Reliance has admittedly been in the market and selling its biosimilar for over 3 years and (ii) that even the Single Judge did not completely injunct Reliance from manufacturing and selling – it was only a matter of what conditions were to be imposed. The Division Bench also prima facie found @Para 56 that the condition on Reliance (but not on Mylan or Biocon) was contrary to law (Rule 96 of D&C Rules, 1945). On whether the approval to Reliance was illegal (and connected issues), the Division Bench holds that these issues required trial. Once again, I ask myself – would not an interim direction that would put the Defendant in violation of the law be relevant in the matrix of “balance of convenience”? Ultimately, even the Supreme Court, by restoring the Single Judge order has allowed Reliance to sell, just subject to conditions more stringent that applicable to Biocon and Mylan. If, therefore, throughout the fight is on the conditions to be imposed, would it not have been prudent for the Court to have considered whether Reliance is being asked to comply with a condition contrary to law? Strangely, I could not see a finding on this point in the Supreme Court orders.

In the ultimate analysis, all this may not be of much consequence because (i) Reliance has been allowed to sell, (ii) the suit has been expedited and more importantly, (iii) there is a specific direction that Reliance should be allowed to participate in any tenders, “without any impediment”. Even if there is any alleged violation of Rule 96 of the D&C Rules, 1996, given the Court orders, it is doubtful if Reliance would be hauled up by the authority.

We’re pleased to bring to you a guest post by Simrat Kaur. Simrat is a New Delhi based IP lawyer. She pursued her undergraduate law course from Rajiv Gandhi National University of Law, Punjab and masters law course from National University of Singapore. After having worked with leading Indian law firms (Anand & Anand and Luthra & Luthra Law Offices), she is currently practicing under the banner “The Endretta”. Simrat has written several guest posts for us in the past as well (see here, here, here, here and here).

In this post, Simrat argues against statutory licensing of music (sound recordings) in all forms, including internet broadcasting, under Section 31D of the Copyright Act, 1957. Our previous posts on this issue (statutory licensing for internet broadcasting, in particular) can be viewed here.

Why Such Small Pittance For Our Music ? : Music Industry Lifts Up Its Voice Against Statutory Licensing

Simrat Kaur

While speaking at the Indian Music Industry (IMI) Convention, 2019, Vikram Mehra (IMI chairman) said – “The biggest raw material for the radio industry is music, and they pay the music industry Rs 60 crores. We don’t get paid more than 2% of the topline……when we ask for a legitimate share, are we being unfair?” Questioning the fairness of the overall legal framework, he further mentioned that Section 31D is a “threat” to music industry.

Section 31D of the Copyright Act embodies a statutory licensing scheme, according to which any ‘broadcasting organization’ may obtain a statutory license to communicate a sound recording to public, provided it pays the royalty rates to the copyright owners, at rates fixed by the IPAB (notably, there is no requirement of showing unreasonable denial of license by the copyright owner). Originally designed for radio and television, it has recently been used as a sword against the recorded music industry (“Industry”) by internet platforms like Spotify, too. The industry did get the much needed relief in the case of Tips v. Wynk wherein the Bombay High Court interpreted Section 31D in a narrow fashion and held that the provision does not include internet platforms. However, since the Draft Copyright Amendment Rules, 2019 propose to provide a clarification to the contrary, the Industry is still placed at a critical juncture.

Analysis of the current situation and the arguments made by Mr. Mehra raise the critical question – does the regime of statutory licensing of sound recordings need re-evaluation?

On tracing the foundational principles of the law on statutory licensing, we find that it basically stems from the need to ensure adequate / unimpeded access of content to public and to support new technologies which enhance such access. As regards the economic factors, first primary reason it found its way to copyright legislations worldwide, is the solution it offered to transaction cost related market failures. This is because it does away with the need to track down multiple copyright owners to seek licenses, thereby saving the cumbersome process as well as negotiation/contract/legal costs for licensees. Second reason relates to competition, because this form of regulation discourages monopolistic behavior of copyright owners who are considered to hold extremely high bargaining power.

But does statutory licensing reflect current realities and continue to serve the purposes for which it was designed?

Transaction Costs Reduction – Isn’t Private Ordering through CMO’s, with a “Tiered System” of Licensing, a Better Option?

As regards the problem of seeking licenses in bulk from disperse copyright owners entailing high compliance burden and transaction costs, we seem to have a solution today in the form of collective management organizations (“CMOs”). Efficiently and transparently working CMO’s solve the problem of transaction cost related market failures, without government intervention. They collect payments, disburse royalties to rights holders and also keep the records. Professor Merges says (here and here) that CMO’s work better than statutory licensing when it comes to reduction of transaction costs because they provide for “expert tailoring” – royalty rates are set by industry experts unlike in the case of statutory licensing where court/tribunal sets the rates. Also, the rules of licensing followed by CMO’s are much more “flexible”, as compared to those prescribed by a statute which are difficult to change. He also emphasizes on the susceptibility of statutory licensing regime to political lobbying and the “influence costs” associated with it.

Given the above, it seems better to have a tiered-system wherein platforms approach CMOs to license music from smaller labels (this will improve licensing efficiency), and for the larger labels, licensing deals could be negotiated directly.

Competition Issues – Isn’t Statutory Music Licensing an Over Aggressive Antitrust Remedy?

Competition is an understandable concern in the case of music industry where content is concentrated in the hands of a few players / licensing organizations – unreasonably high licensing rates and holdout effects remain major concerns. But the key question is – What should be the form of antitrust oversight? Is it sensible to adopt an aggressive and preventive approach like statutory licensing? Can’t we address actual anticompetitive behaviour, through injunctive reliefs and fines? It’s apt to quote Makan Delrahim (Assistant Attorney General, Antitrust Division, US Department of justice) here, who asserted – “We don’t want to kill the goose that lays the golden egg….antitrust enforcers should approach the systems which reward innovations with some humility.” Further, US Copyright Office says “where particular actors engage in anticompetitive conduct in violation of antitrust laws, that conduct should be addressed. But compulsory licensing does more than that—it removes choice and control from all copyright owners that seek to protect and maximize the value of their assets”.

Supporting New Technologies Enhancing Public Access to Music – Do Streaming Services, Television or Radio (Internet or Terrestrial) Actually Need Govt. Support, Today?

Gone are the days when music distribution platforms needed support (just to recall, while fixing radio royalties at 2% of Net Advertising Revenues (“NAR”) ten years back, Copyright Board said  FM radio industry, being in bad state of health, cannot be allowed to die in harness). It must be taken into consideration that television/radio/internet streaming platforms are all too big in size, revenues and investor valuations, today, when compared to the music industry. They do not need govt. assistance to thrive. On the other hand, music industry which has humungous potential of growth is currently struggling (for facts and figures, see the IMI – Deloitte report here). So, isn’t it the time to shift the balance in favour of music industry?

Access – Is Subsidized and Easy Public Access to Music at the Cost of Underproduction Thereof, a Sensible Policy Goal?

Current compulsory licensing regime is causing loss of legitimate potential revenues to music industry, thereby impacting the incentive to create or invest in new music, which in turn, is likely to lead to underproduction of music. So, even if it is assumed that music is a public good (it’s debatable though – owing to the highly excludable nature of music and other economic factors outside the scope of this article, it is hard to label music as a public good, particularly a “pure” one), does it make sense to have a public utility regulation which is, in effect, depriving public of enough quality and quantity of music? Since music involves technical skills, it is a “skill embodied” good. Policy must ensure its optimum production and fair compensation of those who are skilled in musical art. We can’t afford to underpay them just like in the case of healthcare, we can’t afford to pay doctors and medicine researchers less in order to achieve the social goal of public access to medicines at low rates. Such an approach could prove to be highly counterproductive.

Conclusion

While the debate is on if the internet platforms like Spotify should be included under Section 31D and if there will be a need to clearly differentiate online services on the basis of interactivity; the above arguments, on the contrary, indicate the need to slowly move away from the regime of statutory licensing in all its forms. This is because none of the historical justifications for statutory licensing seem to hold much water in present times. Perhaps, this is the right time to move towards market-based license rates and a system of private ordering of music marketplace, entirely through CMOs. Yes, as a result of this change in regime and implementation of “fair” rates, ad-supported music distribution models may gradually shrink, but wouldn’t that be beneficial? Platforms will be pushed to move towards subscription-based models leaving consumers with no choice but to pay for music. Barring some short-term challenges, this, in the end, is likely to be a win-win situation for all, provided enforcement agencies keep piracy in check.

This post analyses the recent decision of the Singapore High Court in Scotch Whisky Association v. Isetan Mitsukoshi Ltd., that involved the trade mark ‘Isetan Tartan’ owned by the Japanese department store chain, Isetan.

A tartan is a cross-checked repeating pattern of different coloured bands, stripes, or lines of definite width and sequence, woven into woolen cloth. While tartan patterns have existed for centuries in many cultures, there is recorded evidence that are regarded as “peculiarly Scottish”. Many Scotch Whisky brands use the word or the image of tartan as their trademarks. Scotch Whisky is one of the best protected geographical indications (GIs) in India and world over. Protection of Scotch Whisky in India through passing-off actions and trademark oppositions undertaken by the Scotch Whisky Association, UK (SWA) goes back to the 1970s.

In the present case, the Singapore High Court was deciding an appeal against the decision of the Assistant Registrar of Trademarks in an opposition filed by the SWA against registration of the mark ‘Isetan Tartan’ in Class 33 (alcoholic beverages (except beer) and sake) by Isetan Mitsukoshi Ltd. (IML), a century old Japanese department store.

SWA opposed the application mainly on two grounds. First, that it was deceptive as to the geographical origin of the goods due to the presence of the word ‘tartan’. Secondly, that it was prohibited under Singaporean law from registration because it contained a GI. The Assistant Registrar dismissed the opposition. SWA filed an appeal before the High Court, which mainly dealt with the two issues discussed below.

Whether ‘Isetan Tartan’ is a Deceptive Mark?

On this issue, SWA argued before the High Court that:

• Tartan is an iconic symbol of Scotland and Singaporean consumers recognise tartan as such; and
• Courts around the world have prohibited the use of the word ‘tartan’ on whiskies which do not originate from Scotland.

IML, on the contrary, argued that:

• It would be Japan, and not Scotland, that the public would recall on seeing the mark ‘Isetan Tartan’, as Isetan was strongly evocative of Japan; and
• Greater significance must attach to the first word of the mark, namely, ‘Isetan’.

Based on the evidence filed by SWA, the Court upheld the argument that ‘Isetan Tartan’ is a deceptive mark and found that:

• Use of Tartan on non-Scotch whisky products is deceptive as to the product’s geographical origin as Scotland is globally renowned for its whisky and hence evocative of Scotland;
• The prefix ‘Isetan’ would not evoke Japan but Scotland for the consumers because Isetan, a departmental store, sells all kinds of products and it would be unlikely that consumers would associate all products to originate from Japan;
• An average whisky consumer would attach greater significance to the second word “Tartan” and would, therefore, be likely to be deceived that the product is from Scotland.

 The Indian Scenario

Now, such a finding is not something new for SWA in India. The 1979 decision of the Delhi High Court in Dyer Meakin Breweries v. Scotch Whisky Association raised a similar issue as that before the High Court of Singapore. The defendant in that case used the mark “Highland Chief” along with the device of the head and shoulders of a Scottish gentleman wearing a feather bonnet, plaid and a tartan edging. The Court held that the device, being a well-known symbol of Scottish origin, would enhance the impression made by the words ‘Highland Chief’ as having some nexus with Scotch Whisky produced in Scotland. Indian Courts have also prevented use of marks that contain words or names that evoke Scotland such as “Drum Beater”, “Glen” (meaning a ‘valley’ in Gaelic), “Ben” (meaning a ‘mountain’ in Gaelic) etc., in respect of Indian whiskies with or without other terms as deceptive of origin.

Whether ‘Isetan Tartan’ is Prohibited from Registration Because It Contains a GI?

The Singaporean trademark law has a provision similar to Section 11(3)(a) of the Indian Trade Marks Act, 1999 that prevents the registration of a trade mark if its use in India is liable to be prevented by virtue of any law.  Additionally, the Singapore Trade Marks Act prevents the registration of a mark that contains a GI which is used for a wine or spirit. For applying these provisions in its favour, SWA had to first prove that ‘tartan’ is a GI in Singapore and then establish that its use was prohibited under the law.

To persuade the Court to accept its argument, SWA relied on the decision of the European Court of Justice (ECJ) in Scotch Whisky Association v. Klotz (“Klotz”) that held that the word “use” should also include other forms of use than direct “use”.  SWA further argued that just like the EU law, even the Singaporean law was enacted pursuant to the TRIPs Agreement and hence it does not necessarily follow that the ambit of the word “use” must mean precisely the same thing in both jurisdictions.

The Court was not persuaded by the said argument after examining the provisions of the relevant European law [Article 16 of the Council Regulation 110/2008 which prohibits “indirect commercial use” as well as “evocation” of a GI], because the scope of protection offered by the said law is significantly wider than that offered under Singapore’s equivalent legislation. Accordingly, the Court was guided by the plain and ordinary meaning of the word “use” in the Singapore Trade Marks statute and held that what is being “used” by IML is the trade mark ‘Isetan Tartan’ and not ‘Scotch Whisky’.

The Indian Scenario

Contrast this finding with the Indian scenario. The Indian GI Act defines a GI under Section 2(1)(e) as:

“geographical indication, in relation to goods, means an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.”

Section 2(1)(g) defines an indication as:

“indication” includes any name, geographical or figurative representation or any combination of them conveying or suggesting the geographical origin of goods to which it applies.”

A combined reading of these two sections would enable SWA or any GI owner for that matter to argue that use by a third party of any indication that conveys or suggests a geographical origin of goods would also amount to use of the GI.  For instance, if SWA were to oppose ‘Isetan Tartan’ in India, it would be able to successfully argue that since TARTAN evokes Scotland, its use on whisky conveys the geographical origin thereof as Scotland and is hence a GI under the GI Act. Further, SWA would be able to use that as a ground for opposition under Section 11(3)(a) of the Trade Marks Act, 1999, namely, a use that is contrary to the GI Act.

Indeed, Indian courts have come a long way in the protection of GIs.

Image from here

This post covers the judgement delivered by the Kerala High Court in Sajeev Pillai v. Venu Kunnapalli & Anr., earlier this month.

‘Mamankam’ is a grand festival which used to be held once in 12 years on the banks of the Bharathapuzha river in Kerala during the 14th to 19th century. The appellant, Sajeev Pillai, a film director and a script writer, claims to have researched the history of Mamankam and to have written a script for a film. Stated to be his dream project, Pillai met Venu Kunnapalli, the first respondent while searching for a producer to make a film based on the script. Thereafter, he signed an MoU with Kavya Film Company which was associated with Kunnapalli.

Though Pillai was appointed as the director, after completion of two shooting schedules, his services were terminated and he was replaced by someone else. The shooting of the film was thereafter completed, allegedly by mutilating, distorting and modifying his script. Pillai, therefore, filed a suit seeking various reliefs. An interim injunction application was also filed to restrain the respondents from releasing, publishing, distributing or exploiting the film’ Mamankam’ and issuing pre-release publicity without providing adequate authorship credits to Pillai as per film industry standards. The District Judge denied the interim injunction application triggering Pillai to appeal before the Kerala High Court. The order in the appeal was rendered a day before the slated release of the movie.

In the appeal, the respondents took the stand that Pillai had assigned his work which includes the story, script, screenplay and dialogue to the respondents and hence he lost his authorship over the same. As such, they argued that no credit needs to be given to Pillai.

In deciding the issues, the Court analysed Section 57(1) of the Copyright Act which prescribes that even after assignment of the copyright in a work, the author of a work will have special rights to claim the authorship of the work. It noted that:

a) the first sub-section thereof entitles the author to restrain third parties from making any distortion, mutilation or modification or any other act in relation to the said work that would be prejudicial to his honour or reputation; and

b) the second sub-section thereof entitles the author to claim damages in respect of any distortion, mutilation or other modifications to his work or any other action, in relation thereto which would be prejudicial to his honour or reputation.

The Court noted that Pillai had a strong, prima facie case against the respondents and that the assignment of the work by him would not exhaust his legal right to claim authorship over it.  However, it had to balance Pillai’s apprehension that the film is a distorted version after mutilation and modification of the original script by the respondents, with the respondents’ concern regarding the imminent release date of the film. It, therefore, took a balanced view and noted the following:

a) As all arrangements for the release of the film have been made by the producer, postponement of the same for displaying the name of the scriptwriter as one Sanker Ramakrishnan would definitely cause huge damage to Kunnapalli;

b) In the film industry, the work and effort of so many persons are involved in making a film and if it is postponed, it would definitely cause untold difficulties to all those persons who rendered their effort and service for making the film ready for release;

c) However, the right of Pillai and his concerns could not be ignored.

Based on the above, the Court held that the film may be released without exhibiting anyone’s name as the script writer or as writer of the screen play thereof till the disposal of the suit. The Court also noted that the issue whether the respondents mutilated or modified the script was a larger question which could be decided after the trial.

Here’s wishing all our readers a very happy new year! Or happy ‘now’ year as Prof. Basheer would have said!

As always, on this occasion, we look back at the year gone by and take stock of all the significant IP developments that kept the Indian IP landscape action packed throughout the year.

We have divided these developments into two categories: a) top 10 judgments/orders, and b) top 10 legislative and policy developments. The developments have been chosen owing to their impact on the industry or the stir they created in terms of public perception owing to the importance of parties litigating or the significance of the change they brought about to the Indian IPR regime. We’ve tried to represent a diversity of subject matter also in this list, so we have a fair sprinkling of cases dealing with patents, trademarks, copyright, GI, plant variety, biodiversity etc. We’ll also strive to soon bring you another post listing the developments in two other categories that we’ve included in the past, i.e., top 10 judgments/orders based on their jurisprudential rigour and/or legal lucidity and top 10 other notable developments.

We hope that 2020 brings us more spicy IP developments that result in a more evolved and effective IP regime in India!

Before you read on and check if your top ten for 2019 matches ours, we would like to once again wish you a very happy new year in the beautiful words penned by Prof. Basheer:

“What once was new is now old
And what is now new will soon be old
And so it goes
With friends and foes
Once a friend, now a foe
And now a friend, but foe before

1.  Monsanto Technology LLC v. Nuziveedu Seeds Ltd. [Supreme Court]

The year got off to a particularly interesting start for IP enthusiasts as the Supreme Court set aside a Delhi High Court decision which had revoked Monsanto’s patent for Bt.Technology. To retrace briefly, the High Court had, in 2018, decided against Monsanto without the benefit of a trial court’s findings on evidence. This, in turn, was apparently grounded on a waiver by both the parties to have a trial. As Prashant reported, the Supreme Court though held that the High Court had misunderstood the scope of waiver by Monsanto. It held that Monsanto had only consented to a waiver for trial on patent infringement and not patent invalidity. On this ground, it set aside the High Court order and remanded the matter back to the trial court for a decision on merits.

2. UTV Software Communication Ltd. & Ors. v. 1337X.TO & Ors. [Delhi High Court]

In an innovative move, the Delhi High Court fashioned India’s first ‘dynamic injunction’ to tackle online piracy. This remedy enables right holders to avoid the cumbersome process of obtaining a judicial order in order to issue blocking orders to ISPs. Instead, as per this ruling, the plaintiffs have been allowed to approach the Joint Registrar of the Delhi High Court (an administrative position), to extend an injunction order already granted against a website, and similar ‘mirror/redirect/alphanumeric’ website which contains the same content as the original website.     

3. Bayer Corporation v. Union Of India & Ors. [Delhi High Court]

In a decision that is likely to have a significant impact on pharmaceutical patents and access to medicines, a Division Bench of the Delhi High Court upheld a Single Judge’s decision and ruled that the ‘export’ of a patented invention for experimental purposes is also covered under Section 107A of the Patents Act, 1970 (India’s Bolar exception), and thus does not amount to patent infringement. Having held that, the Court also took note of the fact that if exports are not regulated, the Bolar exception could be misused to export beyond what is ‘reasonably related’ to the purpose of developing information for obtaining regulatory approval. However, it made it clear that there could be no “iron clad rule” (such as that related to the volume of the patented invention etc.) to determine whether the export is ‘reasonably related’ to the research purpose or not, and each case would have to be determined on its individual facts. It laid down an indicative list of factors for helping with such a determination. It accordingly dismissed Bayer’s appeal and left it to the trial court to decide if the end use and the purpose of export of Bayer’s patented drug ‘Sorafenib Tosylate’ by Natco and Alembic was reasonably related to research, experiment or was for submission of information to regulatory authorities in a foreign country, as permissible under Section 107A (a) of the Act.

4.  Tips Industries v. Wynk Music Ltd. & Anr. [Bombay High Court]

In an impactful decision for the music industry, a single judge of the Bombay High Court held that online streaming services are not eligible for statutory licenses for broadcasting under Section 31D of the Copyright Act, 1957. The decision came in the context of a dispute between Tips Industries Ltd., a music label, and Wynk Music Ltd., an online music streaming service. After attempts to renegotiate licensing terms for allowing Wynk to offer downloading and streaming of musical works owned by Tips broke down, Wynk took refuge under Section 31D of the Copyright Act. Section 31D of the Copyright provides for a statutory licensing scheme, as per which any ‘broadcasting organisation’ desirous of ‘communicating to the public’ any sound recording, may obtain a statutory license to do so, provided they pay the royalty rates to the copyright owners, at rates fixed by the IPAB. The Court held that Wynk’s feature of allowing users to download songs and store for unlimited future use constituted ‘sale’ and not ‘communication to the public’, and therefore, did not constitute a ‘broadcast’ for the purpose of Section 31D. Further, Court noted that Section 31D was an exception to copyright, and must be strictly interpreted. Upon a strict reading of the statutory scheme – Section 31D(3), as well as the rules framed under it, – it is clear that statutory licensing was intended to cover only ‘radio’ and ‘television’ broadcasting, and not internet broadcasting. The decision though attracted criticism for its incompleteness in reasoning as well as for its failure to follow the text of the Copyright Act.

5.  Raj Rewal v. Union of India & Ors. [Delhi High Court]

In a significant judgment for moral rights’ jurisprudence under Indian copyright law, Delhi High Court held that an architect’s moral rights over a building does not take precedence over the rights of the building owner to destroy or modify the building. The Court was adjudicating a dispute between Raj Rewal, architect of the Hall of Nations Building, and Indian Trade Promotion Organisation, which demolished the structure. The Court framed the issue as a conflict of two distinct rights – the author/architect’s rights under Section 57, and the property or landowner’s rights to their property. Rejecting the architect’s claim, Court held that were the plaintiff allowed to prevent the destruction of the building by the defendant, it would amount to a restriction of the defendant’s constitutional right under Article 300A to deal freely with their property and land.

6. MRF Ltd. v. Metro Tyres Ltd. & Yash Raj Films Pvt. Ltd. v. Sri Sai Ganesh Productions & Ors. [Delhi High Court]

These two significant judgments from the Delhi High Court deviated from the position laid down by the Madras and Bombay High Courts on what infringement of copyright over a cinematographic film means. In both cases, the plaintiffs had sued on the ground that the defendants had made a substantially similar copy (not a physical copy) of their cinematographic films. Unlike the Madras and Bombay High Courts, which had held that as far as cinematograph films are concerned, the Copyright Act, 1957 only protects the physical recording itself and not the contents of the film, the Delhi HC was of the opinion that making a deceptively similar/unauthorized remake was a violation of the copyright in the cinematograph film itself. Swaroop argued that such an interpretation may not do justice to the text of the Copyright Act.

7. Amway India Enterprises Pvt. Ltd. v. 1MG Technologies Pvt. Ltd. & Anr. [Delhi High Court]

In a blow to e-commerce platforms (Amazon, Flipkart and Snapdeal), the Delhi High Court restrained them from enabling sale of products of ‘direct selling’ companies without their consent. While arriving at the decision, as Eashan notes in his post, the Court returned four findings: (a) the Defendants are in violation of the 2016 Direct Selling Guidelines, (b) the Defendants are liable for trade mark infringement, (c) the Defendants ought to comply with due diligence requirements to sustain access to safe harbour protections under the IT Act, and (d) the Defendants’ actions constitute tortious interference with the Claimants’ contractual relationships with their direct sellers.  

8. Mylan Laboratories Ltd. v. Union Of India & Ors. [Delhi High Court]

In a rather curious decision, the Delhi High Court permitted the IPAB to adjudicate “urgent matters relating to Patents, Trade Marks and Copyright”, despite the IPAB lacking the statutorily mandated quorum to hear these disputes. As per Section 84 of the Trade Marks Act, the IPAB requires a quorum of two members, one judicial member and one technical member, the latter being the member appointed for the relevant practice area i.e. patents or trademarks. Currently, the IPAB has only one technical member, appointed under the Plant Varieties Protection & Farmer’s Rights Act to hear matters under that specific legislation. Strangely, the Court invested this “technical member” (for Plant Varieties) with the power to adjudicate upon other IP disputes, over which he/she may possess no special expertise whatsoever. In addition, it has permitted IPAB Chairperson, Justice Manmohan Singh (whose tenure was recently extended for another year by the Supreme Court) to hear these cases just by himself if the technical member for plant varieties is unavailable or recuses for any reason.

9. Natco Pharma Ltd. v. Bayer Healthcare LLC & Natco Pharma Ltd. v. Bristol Myers Squibb Holdings [Delhi High Court]

In a very welcome development, a Division Bench of the Delhi High Court set aside two interim injunction orders granted by a Single Judge against Natco, for having been passed without the Court forming an opinion on the three elements of the well-settled test for interim injunctions i.e. prima facie case, balance of convenience and irreparable harm. The Court noted that an order in an interim injunction application must necessarily indicate that the court has considered these three elements in arriving at the conclusion as to the grant or non-grant of the injunction. It further emphasised that in case of patent infringement suits, particularly those involving pharma patents, the court must also consider the additional elements that have been discussed in various cases. It accordingly directed the Single Judge to decide both the interim injunction applications afresh, without being affected by the order in Sterlite Technologies case (discussed below) which had been blindly relied upon to grant the injunctions straight away.

10. Rojer Mathew v. South Indian Bank Ltd. & Ors. [Supreme Court] – In a significant decision, the Supreme Court struck down the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2017 (‘Rules’) framed under the Finance Act, 2017 (‘Act’) to govern the eligibility, appointment, and service conditions of the members of the tribunals merged by the Act, including IPAB. The Court observed that the Rules grant the Government overly broad powers as regards the appointment and service conditions of tribunal members and thus impinge on judicial independence and are contrary to the guidelines laid down in cases like RK Jain and Madras Bar Association. It accordingly directed the Government to frame a fresh set of Rules. In the interim, the appointment to the tribunals and the terms and conditions of appointment shall be in terms of the respective statutes that applied before the enactment of the Act, which is the case of IPAB would be Trade Marks Act. It’s unclear though as to what would be the required qualifications for the Technical Member (Copyright). Also, while it appears that appointments already made would not be affected, there’s no clarity on what happens to the appointments which are underway. As to the validity of the Part XIV of the Act (merging a number of tribunals including the Copyright Board with IPAB), which was challenged for having been passed as a Money Bill despite it containing non-finance/taxation related provisions, the question has now been referred to a larger bench.

Other than these ten developments, there are three other Delhi High Court decisions which, in our readers’ opinion, deserve to be included on this list :

(a) Ferid Allani v. Union of India & Ors. on patentability of computer programmes under Section 3(k) of the Patents Act (which we’ll soon be bringing you a post on),

(b) Pharmacyclics LLC v. Union of India & Ors. on general principles to followed for post-grant opposition of patents, and

(a) Communication Components Antenna Inc. v. Ace Technologies Corp & Ors. on transborder prosecution history estoppel in patent litigation (which was covered on the blog here).

B. Top 10 Legislative and Policy Developments

1. Cinematograph Act (Amendment) Bill, 2019

The Government introduced the Cinematograph (Amendment) Bill, 2019 in the Rajya Sabha with the stated objective of countering film piracy. The Bill proposes to criminalise unauthorised use of an audio-visual recording device for making or transmitting a copy of a film or any part of it, with a punishment of three years of imprisonment or a fine of 10 lakh rupees or both. It proposes to mandate the same punishment for even attempting or abetting the same. As argued by Divij in his post, the proposed amendment is disproportionate and stifles fair use rights under the Copyright Act. An anti-piracy measure should ideally be aimed to prevent abuse of rights at a commercial scale but the amendment disproportionately criminalises the mere act of making a copy of a film or any part thereof, which would include even making a short clip of a film on your phone for any purpose. Even when it comes to transmission, it does not provide any exception, thereby criminalizing even benign acts such as that of sending a short clip to a friend over WhatsApp. By overriding the provisions of the Copyright Act, the amendment fails to consider users’ rights under Section 52 of the Copyright Act, which permits unauthorised use of copyrighted works for certain purposes, such as for private use, criticism or review.

2. Draft National E-Commerce Policy

The Government released the Draft National E-Commerce Policy which, inter alia, recommends that e-commerce platforms (intermediaries) be mandated to undertake certain anti-counterfeiting and anti-piracy measures. While many of the anti-counterfeiting measures are well-balanced and promote transparency of e-commerce platforms towards their sellers as well as towards trademark owners who choose to register on such marketplaces, some anti-counterfeiting measures and the anti-piracy measures are very concerning. Some of these proposals include: (a) obligation on platforms to take TM owners’ permission for high value goods (b) directly liability to refund customers and delist ‘counterfeit goods’ upon receiving complaints from individuals (c) return to the notice and takedown approach for copyrighted content (d) allowing an ‘industry body’ to identify so-called ‘rogue websites’ which host pirated content, and forward such a list to intermediaries including ISPs, search engines and payment gateways, which will have a legal obligation to block access to such websites.

3. Draft Amendment to Form 27 (Statement on Working of Patents)

Pursuant to the Delhi High Court’s direction in the patent working PIL filed by Prof. Basheer in 2015, the Government published a draft Form 27 proposal for comments under the Draft Patent (Amendment) Rules, 2019 in May, although it was meant to have done it before September, 2018 as per its undertaking before the Court. While the proposed Form does contain some improvements over the current one, these are pale in comparison to the other changes proposed that really damage the core essence of the patent working requirement and the Form 27 format. While the current Form calls for extensive information on working from patentees and their licensees, the proposed one dispenses with a lot of this information, including quantum of the patented product manufactured in India or imported into India, country wise details of the value and quantum of the patented product imported into India, steps being taken towards working (if patent has not been worked), the licenses and sub-licenses granted during the year, statement on whether public requirement has been met at a reasonable price. The revised Form also sets an arbitrary word limit of 500 words for the statement on justification for not working the patent. The proposed amendment to the Form was, however, dropped from the final Patent (Amendment) Rules, 2019 which were notified in September and the Government is yet to finalise the revisions to the Form, after taking into account the comments submitted/representations made to it on the draft revisions.

4. Draft Copyright (Amendment) Rules, 2019

The Government notified the Draft Copyright (Amendment) Rules, 2019 with the said aim of ensuring “smooth and flawless compliance of Copyright Act in the light of technological advancement in digital era and to bring them in parity with other relevant legislations.” The Amendment Rules, inter alia, propose substitution of any reference to radio and television broadcasting in Copyright Rules, 2013 with ‘each mode of broadcast’. As discussed above, in Tips v. Wynk, the Bombay High Court held that the statutory licensing scheme under Section 31D of the Copyright Act does not apply to internet broadcasting. In Court’s opinion, its view is supported by Rules 29 and 31 of the Copyright Rules which contemplate issuance of notice and determination of royalties (respectively) only in respect of radio and television broadcasting. The proposed amendment is seen as a clarification by the Government that the statutory licensing scheme under Section 31D applies to all types of broadcasting including internet broadcasting and is not restricted to only radio and internet broadcasting.

5. Draft Guidelines for permitting the use of Geographical Indication (GI) Logo and Tagline

In order to encourage the promotion and marketing of Indian GI products, the Government launched a common GI logo and tagline which could be used as a certifying mark on all Indian GI products registered in India or abroad. This is aimed to make it easier for consumers to identify authentic GI products and thereby protect the interests of genuine GI producers. In order to ensure correct usage of this logo and tagline, the Government published Draft Guidelines for stakeholder comments. The Guidelines lay down certain terms and conditions for the use of the logo and tagline, the categories who are allowed to use them without permission, activities for which they could be allowed to use with prior approval of DPIIT, procedure for grant of permission and the application format. Although this is a welcome step in promotion of the Indian GI products, there are a few issues with the Guidelines such as non-specification of a time limit within which the permission must be granted, lack of an effective grievance redressal mechanism (both against misuse of logo/tagline and denial/withdrawal of permission), prohibition on use on undefined highly subjective grounds such as usage against ‘public interest’ and in a ‘derogatory fashion’, disconnect with GI Act and Rules and lack of legal force. One hopes that these issues are addressed in the final Guidelines.

6. Trade Marks Registry’s Proposal to Restrict Access to Certain Documents

The Trade Marks Registry (TMR) issued a public notice requesting suggestions from stakeholders on its proposal to classify documents displayed on its website into two categories: (a)
one that will consist of documents that will be fully accessible and can be viewed / downloaded by the public, and (b) the other that will contain only the name of the document but viewing / downloading will be restricted. This proposal appears to be based on representations received from stakeholders raising concerns regarding the display of confidential information, proprietary information and personal information on the website. The notice also clarifies that the Registry does not require applicants / opponents to submit bank account details, PAN or Aadhar numbers. As argued by Aparajita in her post, the categorization proposed appeared to be artificial, having the potential to impact the prosecution process, increase the workload of TMR and against the spirit of the RTI Act.

7. Patent Office’s Publication of A New List of Scientific Advisors after 9 years

The Patent Office released a list of 37 newly enrolled/ retained scientific advisors, who the courts have the power to appoint for assisting them in any proceedings, or report upon any questions of fact or opinion (not involving a question of interpretation of law). It is strange that when the Patent Rules, 2003 mandate the Patent Office to not only maintain a roll of scientific advisers but also update it annually, an update to the 2010 list was published only in 2019 i.e. 9 years later. Further, the list includes two Patent Agents in the list but interestingly it doesn’t specify if a particular advisor is a Patent Agent, which also is a potential violation of Rules as they require the list to include their designations and their technical and practical experience. It is welcome though that their number has been limited to just 2 in contrast to around 6 in the 2010 list as there might be a conflict of interest for them to appear on such a list. Furthermore, the list also does not contain the advisors’ specimen signatures and photographs as required by the Rules.

8. Patent Office’s Signing of Pilot Programme on Patent Prosecution Highway with Japan Patent Office

In a step forward for Patent Prosecution in India, the Government approved the proposal for Bilateral Patent Prosecution Highway (PPH) program between Indian Patent Office and Patent Offices of other interested countries/regions. PPH refers to bilateral arrangement between patent offices that aims to: a) promote work-sharing and b) enable accelerated processing of patent applications. The maiden initiative under the PPH was mooted in association with Japanese Patent Office (JPO) on a pilot basis for three years. As per the official notification, PPH is expected to bring about “reduction in disposal time and pendency of patent applications, consistency in quality of granted patents and an opportunity for Indian inventors including MSMEs and Start-ups of India to get accelerated examination of their patent applications in Japan”. Similarly, the notification claims that the “Japanese inventors seeking patent protection in India will now be able to take the benefits of expedited examination in India under the pilot programme on PPH”.

9. Revised Draft Access and Benefit Sharing (ABS) Guidelines, 2019

In a move towards updating the 2014 guidelines for the sharing of benefits arising from the access and use of genetic/biological resources, the National Biodiversity Board (NBA) has proposed the draft Access and Benefit Sharing Guidelines (ABS Guidelines) in April 2019. These are proposed as regulations under the Biological Diversity Act, 2002. The draft mostly borrows from the existing ABS Guidelines 2014 as far as the options of monetary and non-monetary benefits are concerned. However, as summarized here and here, the draft attempts to go beyond the statute in several instances, such as issuing binding directions to State Biodiversity Boards on benefit sharing and in defining what is exempt by “conventional breeding”. Such extravagant provisions are likely to render the draft ultra vires if and when implemented.

10. Two Public Notices under PPV&FR Act, 2001 – one under Sections 7 & 28 and the other under Section 20(1) of PPV&FR Act, 2001

The Registrar General under the PPV&FR Act, 2001 issued a public notice under Sections 7 and 28 thereof, purportedly to clarify the extent and scope of rights/power under the Act. Among others, as per this Notice, the power of price fixation of seeds of registered varieties as well as fixation of license fee/royalty for technology that may go into such registered varieties, vests in the Plant Variety Authority; the general legislations of Seeds Act and Essential Commodities Act would only cater to varieties not registered under the PPV&FR Act.

Further, in a clearly ultra vires move, the Registrar General also issued a public notice under Section 20(1), placing new restrictions on registration of hybrid varieties. Among others, the public notice restricted the type of hybrids that can be registered, tied the grant criteria between hybrids and parents, and declared the term of the rights conferred on such hybrids to be co-terminus with that of the parental lines. A writ challenging the same has already been filed challenging this before the Delhi High Court and a limited interim protection has been granted.

(A big thanks to Balu Nair & Adarsh Ramanujan for helping summarise these developments and Divij Joshi &  Bhavik Shukla for helping shortlist them!)

We’re pleased to bring to you an interesting post by Kaveri Jain on the scope of moral rights of an artist vis-à-vis destruction and alteration of its original artwork. Kaveri Jain is an attorney at Ira Law. She graduated from Amity Law School in 2018 and worked at a boutique IP firm in New Delhi prior to joining Ira Law.

Distortion or Destruction of Artistic Works : Scope of Moral Rights of Artists

Kaveri Jain

Does an artist being the creator of an original piece of art have the right to object to the alteration or destruction of its work by the purchaser of the art work?

In a recent order passed by the Danish Maritime and Commercial High Court, the Court issued a ruling which explored the fine line between destruction and alteration of an existing artwork.

In the case at hand, a luxury watch making company was injuncted from using the canvas it purchased from the artist to make decorative faces for its line of designer wristwatches. The Danish artist, Tal Rosenzweig (“Rosenzweig”) moved the Court praying for a preliminary injunction restraining the Danish watch making company Kanske Denmark ApS (“Kanske”) from slicing up his original piece of art for insertion in its line of watches.

In the injunction request made by Rosenzweig, he claimed that the intended use of his artwork by Kanske would amount to infringement of copyright as the same would violate the exclusive rights granted to him under section 2(1) of the Consolidated Act on Copyright, 2014 (copyright law of Denmark), which provides the artist the right “to control the work by reproducing it and by making it available to the public, whether in the original or in an amended form …” as well as his rights under section 3(2) of the Act, which provides that “the work must not be altered nor made available to the public in a manner or in a context which is prejudicial to the author’s literary or artistic reputation or individuality”.

In response, Kanske argued that the wristwatches would not be a reproduction of the painting in an amended form but a complete destruction of the painting, followed by the creation of a new and original artwork from the pieces. Kanske further argued that each watch would only contain 0.04% of the original painting and thus, the wristwatches faces would not be recognisable as pieces of the original artwork.

In its ruling, the Danish Maritime and Commercial High Court ruled in favour of Rosenzweig, expressly holding that the insertion of pieces of a painting into wristwatches did not amount to destruction of the work but reproduction of the work in an amended form. The Court further noted that Kanske had itself explained on its website that the very idea of the project was to transform Rosenzweig’s artwork and thus it would make no difference if the artwork, once incorporated into the wristwatches, would no longer be recognizable.

The Court further ruled that the project would indeed constitute an alteration and making available the artwork “in a manner or in a context which is prejudicial to the author’s literary or artistic reputation or individuality,” would be violative of section 3(2) of the Danish Copyright Act.

The Indian Scenario

Interestingly, the view taken by Indian Courts on destruction and distortion of copyrighted work is in line with the view taken by the Danish court in the case discussed above.

Earlier this year, the Delhi High Court in the case of Jatin Das v. Union of India, while upholding the moral rights of the artist, restrained the defendant, the Steel of Authority of India (“SAIL”) from carrying out any further distortion of the artist’s iconic art installation ‘Flight of Steel’.

In 1995, the Plaintiff, Jatin Das (“Das”) was invited by SAIL to create a welded sculpture. Das created a 30 feet high and 30 feet round steel sculpture, “Flight of Steel” in November 1995 and it was installed at CEZ Square, Bhilai (now in Chhattisgarh). In March 2012, much to his dismay Das was informed that his iconic art installation had been removed, dismantled and relocated by SAIL to a zoo. Das rushing to the zoo, found disfigured, twisted bits and pieces of the sculpture dumped and scattered.

Das then obtained an interim order from the Delhi High Court in 2012, restraining SAIL from carrying out any further destruction of the sculpture. Das alleged infringement of his special rights, namely ‘moral rights’, being the author of the sculpture and prayed for a permanent injunction to restrain SAIL from causing further destruction of the sculpture. SAIL contested the suit on the ground that the sculpture was being relocated as the same was a hinderance in the construction of a flyover to be built passing over the CEZ square. The Court after hearing substantive arguments from both sides, was of the prima facie view that the matter could be resolved by constituting a Committee to examine the matter and suggest a fair solution.

After a rigorous round of litigation spanning over 7 years, the matter was recently decided by the Court on the basis of recommendations put forth by the Committee, according to which the sculpture would be relocated where Das would repair and restore the sculpture with assistance from SAIL.

This case bears a striking similarity to the seminal Delhi High Court litigation in the case of Amar Nath Sehgal v. Union of India (2000)(“Amar Nath Sehgal”) where too, an important sculpture described as an ‘Indian national treasure’ had been damaged and, indeed, mutilated by negligent mishandling of the work. After a rigorous litigation spanning over two decades, the Court held that destruction of an artwork affects the moral right of integrity of an artist as the existence and integrity of the overall corpus of the artist is the very foundation of his or her reputation.

In this respect, the Court in the case of Amar Nath Sehgal took a firm stand on an issue that has divided international copyright experts – “whether destruction of an artwork qualifies as a violation of the artist’s moral rights of integrity” and answered the same with a resounding “yes”. India’s current provisions on moral rights are similar to those granted to artists and other creative professionals under the Danish Copyright Act. In both legislations, the owner of a copyright is required to establish that the mistreatment of his/her work amounted to a “distortion, mutilation, or modification” that would in turn negatively affect his/her reputation or honour.

Though upon a reading of the Danish Copyright Law it can be seen that authors have limited the scope of moral rights only to cases where the original work is altered or made available to the public in a manner or in a context which is prejudicial to the author’s literary or artistic reputation or individuality, the approach taken by the Danish Court to injunct Kanske from chopping up Rosenzweig’s original piece of art, thus amounting to destruction of the artwork, is a view in consonance with the view taken by the Delhi High Court in ruling that the author of a work can prevent any changes being made to his/her work including complete destruction of the same.

However, an analysis of the Indian position on moral rights would be incomplete without a reference to the recent judgement of Justice Endlaw in the case of Raj Rewal v. Union of India (“Raj Rewal”) wherein the Court rejected the claim that an author’s moral rights take precedence over the rights of the building’s owner to destroy or modify the building. The Court while rejecting the artist’s prayer for an injunction held that preventing the destruction of the building would amount to restriction of a property owner’s right to deal freely with his own property and land.

The Court held that the author’s right to prevent ‘distortion, mutilation or modification’ of its work under Section 57 did not permit an author to prevent the destruction of a work in its entirety, since “what cannot be viewed, seen, heard or felt, cannot be imperfect and cannot affect the honour or reputation of the author.” The Court took the view that architect’s rights are restricted to prevent the building owner from making changes to the building and proclaiming that the architect is the author of the modified building.

It is pertinent and important to mention here that the case of Raj Rewal cannot be read in line with the cases discusses hereinabove as the subject matter in this case was a work of architecture which is at a different footing than a work of art. The protection granted to actual buildings is lesser than architectural plans for the building under the Indian copyright law.

Reading the three cases discussed above, it is evident that Indian courts seem to be divided in their opinion on one of the most controversial topics concerning copyright law, “Does complete destruction of a piece of art amount to infringement of an artist’s moral rights”? Though in Amar Nath Sehgal, the Delhi High Court answered this question with a resounding “yes”, the position taken in Raj Rewal seems to be a complete contrast to the established principles of law upheld by the courts for the last 20 years.

While Das’ suit before the Delhi High Court has been decreed in terms of the recommendations made by the Committee, the question of law regarding ‘moral rights of an artist’ is yet to be decided in this particular case and it would be interesting to see which view the Delhi High Court agrees with. Will it uphold Amar Nath Sehgal in holding destruction to mean violation of an artist’s moral rights or will it side with the approach taken in Raj Rewal to mean that a copyright owner can only prevent modification of its work and destruction of an original piece of art is beyond the scope of rights guaranteed under Section 57 of the Act?

Currently, the Indian jurisprudence on moral rights is reassuring for artists since courts have largely protected the moral rights of artists and can also award damages after trial in cases with facts similar to these, where the work has already been substantially altered.

[This post has been authored by Bhavik Shukla, a 5th year student at NLIU, Bhopal]

Topical Highlight

Adarsh wrote a post on the recent order of the Supreme Court of India in Genetech Inc v Drug Controller General of India. Through this order, the Supreme Court set aside the interim order of the Division Bench of the Delhi High Court and restored the earlier order of the Single Judge. He notes that in restoring the earlier order, the Court relied upon its previous order requiring the Division Bench to hear both sides to the appeals together, along with the change in the status quo maintained by the Single Judge’s order without considering the balance of convenience. In his conclusion, Adarsh notes that the order does not make a marked difference to the position of Reliance as it has been allowed to sell the drug along with being given the go-ahead to participate in tenders. He ends the post on an apprehensive note, doubting whether Reliance would be pulled up for its violation, if any, under the Drug and Cosmetics Rules, 1996.

Thematic Highlight

In her post, Latha Nair analysed the recent decision of the Singapore High Court in Scotch Whisky Association v. Isetan Mitsukoshi Ltd. The Singapore High Court noted that the use of ‘Isetan Tartan’ essentially indicated a connection with Scotland. Contrasting this with the Indian scenario, she notes that India has decided in favour of non-registration of such Scottish words as trademarks on numerous occasions. From a GI-specific angle, she argues that a Tartan would not be registered as a trademark in India in the first place, considering that it is a GI which evokes a geographical connection with Scotland.

Other Posts                                                                                       

In an interesting piece, Simrat discussed the non-applicability of Section 31D of the Copyright Act, 1957 to internet platforms. She traces the foundational principles of statutory licensing to examine whether it meets the present realities and sets forth a four-step argument aimed at indicating how statutory licensing in case of music does not offer the most appropriate solution. Rather, she suggests that ostensibly, most streaming services are financially strong, and the grant of a statutory license results in chilling of innovation. She concludes by supporting a movement towards market-determined royalty rates along with the music being made available to listeners through collective management organizations (CMOs) for fees, in order to tackle the menace of piracy.

Latha Nair also wrote about the decision in the gripping case of Sajeev Pillai v. Venu Kunnapalli. She notes that this case involved an angle of moral rights of the scriptwriter, where his script was used to produce the movie ‘Mamankam’. Furthermore, she notes that the Court balanced the rights of both parties i.e. the costs incurred by the producer to make the film ready for release and the inextinguishable moral right of the scriptwriter. Subsequently, the Court ordered that the movie be released without naming anyone as the scriptwriter till the final disposal of the suit.

In her first post of 2020, Kaveri discussed the decision of the Danish Maritime and Commercial High Court, where it ruled that insertion of an author’s artwork in wristwatches would not constitute its destruction, but merely reproduction. She notes that the Indian position on the subject is varied, but reassuring for artists in light of recent trends towards awarding damages to authors for violation of their moral rights.

The yearly review of 2019 was co-authored by Pankhuri, Balu and Adarsh with assistance in shortlisting from Divij and Bhavik. Beginning with the sublime poem of Prof. Basheer which galvanizes the heart and soul to keep going, the post listed out India’s top IP developments which have been covered on the blog. The review has been divided into 2 sections: 1) Top 10 Judgments/Orders; and 2) Top 10 Legislative and Policy Developments.

Other Developments

Indian

Judgments

M/s. Lancome Parfums et Beaute and Cie v. M/s. Impressions – Delhi District Court [December 11, 2019]

The Court granted a permanent injunction in favour of the Plaintiff thereby restraining the Defendant from infringing and passing off the Plaintiff’s mark “LANCOME” by using an identical mark in respect of perfumes and other accessories. The Court noted that the Defendant was dealing in an identical mark as that of the Plaintiff, and had failed to show that the goods had been obtained from an authorized source. Furthermore, the Court noted that the Defendant had adopted the Plaintiff’s mark with an aim to take advantage of its reputation and goodwill. Accordingly, the Court granted damages to the Plaintiff to the tune of Rupees 50,000 for loss of profits, goodwill and reputation.

Pidilite Industries Limited v. E.C. Industry – Bombay High Court [December 11, 2019]

The Court granted an ad-interim injunction restraining the Defendant from infringing the Plaintiff’s mark “LW” and “LW+” through using identical marks in respect of adhesives, along with the Defendant’s breach of the Plaintiff’s copyright in its artistic work on the receptacles and packaging of its adhesives.

Hatsun Agro Product Limited v. A.Z. Arogya Milk – Madras High Court [December 11, 2019]

The Court granted a permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “AROKYA” by adopting a deceptively similar mark “AZ AROGYA” in respect of milk. The Court observed that the Defendant’s mark was prima facie deceptively similar and would easily mislead the public due to its similarity of colour scheme with the Plaintiff’s mark.

Hindustan Unilever Limited v. Introx Chemicals Private Limited – Calcutta High Court [December 16, 2019]

The Court granted a decree of ex parte interim injunction restraining the Respondent from infringing and passing off the Petitioner’s registered trademark “SURF EXCEL” by using a deceptively similar mark “SURF” in respect of detergent powder. The Court noted that the mark used by the Respondent were prima facie infringing of the Petitioner’s mark. Moreover, the Court observed that the artistic work of the Respondent was a colourable and deceptive imitation of the Petitioner’s artistic work.

M/s. Thalappakatti Naidu Anandha Vilas Biriyani Hotel v. Star Thalapakattu Biriyani – Madras High Court [December 16, 2019]

The Court granted a permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “THALAPPAKATTI” by using a deceptively similar mark “THALAPAKATTU” in respect of a biryani restaurant. The Court observed that the Defendant had deliberately adopted the Plaintiff’s mark with an intent to ride on its goodwill and reputation.

Gurdeep Singh v. Vinit and Others – Delhi District Court [December 17, 2019]

The Court granted a permanent injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “KAKE DI HATTI” through use of an identical mark and deceptively similar mark “SHAHI KAKE DI HATTI”. The Court noted that the Plaintiff is the registered proprietor of the mark and has been using the same since 1996. The Court also granted damages to the tune of Rupees 50,000 in favour of the Plaintiff, considering that it had been drawn into litigation.

Shanavas v. State of Kerala – Kerala High Court [December 17, 2019]

The Court noted that seizure of an infringing material could be made only by an officer not below the rank of a sub-inspector under Section 64 of the Copyright Act, 1957. Accordingly, seizure by a civil police officer was noted to be illegal, and the accused was discharged.

Merwans Confectioners Private Limited v. M/s. Sugar Street and Others – Bombay High Court [December 17, 2019]

The dispute between the Parties arose on account of termination of a Franchise Agreement entered into between them in respect of selling bakery and confectionery articles. The Applicant alleged that the Defendants continued to use its trade dress in the décor, layout and design of the shop even after such termination. The Court noted at the onset that there was no clause in the Agreement which prevented the Defendants from carrying on an identical business. Further, the Court observed that there was no prima facie similarity in the get-up of the Applicant’s shops and that of the Defendants. It was noted that the Defendants’ shops had different colour scheme, entrance, seating arrangement etc. Accordingly, the Court stated that the Applicant had failed to make a prima facie case for an interim application, and dismissed the suit.

Super Smelters Limited and Others v. SRMB Private Limited – Calcutta High Court [December 18, 2019]

The dispute between the Parties arose on account of the Respondent’s allegation that the Appellant had infringed its TMT bars and rods carrying the pattern of “X” at regular intervals, by using a deceptively similar double “Y” pattern. The Single Judge ruled in favour of the Respondent, and noted that the Appellant’s use of the double “Y” pattern was deceptively similar to the Respondent’s mark. Moreover, the Single Judge observed that the Respondent could resort to the common law remedy of passing off to protect its unregistered mark. The Appellant, being aggrieved by the order of the Single Judge filed an appeal before the Court claiming that the “X” ribbed mark of the Respondent could not be trademarked as it was it was embossed on the TMT bar to achieve a “technical result”. The Court indulged extensively in tracing the scope of what a “technical result” is under Section 9(3)(b) and finally relied upon the continuity of the Respondent’s use of its mark. The Court noted that the Respondent had used its mark continuously since 2001, and that its mark had attained goodwill and reputation over that period of time. Accordingly, the Court noted that a passing off action was valid for an unregistered trademark. Furthermore, the Court observed that just because a design registration in respect of a mark had been cancelled was not an enough reason to deny it a trade mark protection, as it would militate against the purpose of the Trade Marks Act, 1999. The Court refused to vacate the ad-interim order, and stated that there was no reason to interfere with the order of the Single Judge in a case where the Appellant intended to thrive and prosper at the cost of the Respondent.

Novex Communications Private Limited v. Saya Grand Club and Spa Resort LLP – Bombay High Court [December 20, 2019]

The Court granted an interim injunction restraining the Defendant from infringing the Plaintiff’s copyright in its sound recording by performing it on several occasions. The Court observed that the Defendant was aware of the Plaintiff’s copyright in its sound recording and had failed to reply to the cease and desist notices served on it. Accordingly, the subsequent deliberate use of the recording without obtaining a licence amounted to a prima facie case of copyright infringement.

Shyam Steel Industries Limited v. Shyam SEL and Power Limited and Another – Calcutta High Court [December 24, 2019]

The dispute between the Parties arose on account of the Respondents’ alleged infringement and passing off of the Appellant’s mark “SHYAM”. The Single Judge however, noted that that the Respondents could not be restrained from using the mark as it was a part of their business name. The Court noted that the Parties use the mark “SHYAM” on their goods and also on its packaging. The Respondents forwarded the argument that “SHYAM” referred to God and not just a person or name. The Court rejected this argument of the Respondents, and stated that the Respondents had to prove this claim through cogent evidence. Moreover, the Court noted that the Respondents had failed to furnish any documents to show its mark being senior to the Appellant’s mark or depicting sales under its mark. The Court noted that there was no acquiescence on part of the Appellant but merely a delay in filing in petition. Accordingly, the Court granted an interim injunction in favour of the Appellant.

News

• Supreme Court extends tenure of Justice (Retd.) Manmohan Singh as IPAB Chairman for another year.
• Bombay High Court restrains over 600 hotels, restaurants and pubs from playing copyrighted songs during New Year’s eve without obtaining a license.
• Trade Marks Registry invites submissions from stakeholders indicating difficulties/ problems faced by them regarding technical and procedural issues.
• Delhi High Court rules that a computer program which makes ‘technical contribution’ patentable is not hit by Section 3(k) of the Patents Act, 1970.
• Modi government gives a green signal to pharmaceutical companies to raise prices by 15-20% in respect of drugs which show “incremental innovations”.
• Luxury brands, namely Salvatore Ferragamo and Hermes have recently acted against rampant infringement through initiating cases before the Delhi High Court.
• Delhi High Court rejected plea to summon Nitish Kumar, the CM of Bihar as a witness in a suit concerning infringement of copyright.
• The Commerce and Industry Ministry called a meeting between copyright societies and music users to discuss possible ways to license songs.
• PM Modi urged young scientists to “innovate, patent, produce and prosper” through his speech, after inaugurating the 107^th Session of Indian Science Congress.
• Natco Pharma has launched a cut price version of anti-cancer drug, Ibrutinib in India.
• Punjab and Haryana High Court has noted that no coercive action shall be taken against Google and YouTube in relation to infringement of copyright of Shree Krishna International in relation to Hindi movies.
• Order by Justice Pratibha Singh provides guidelines for post-grant opposition of patents.

International

• Facebook is currently pursuing rights to music videos in an attempt to take on YouTube.
• Meghan Markle and Prince Harry seek to register “Sussex Royal” as a UK trade mark.
• Workday sues Washington State University to stop leaking trade secrets which were shared on a previous occasion to provide the University with software products.
• Lengthy 9-year patent dispute between InterDigital and ZTE reaches settlement with a licensing agreement.

Who would have thought a Tunisian citizen would end up having a couple of major impacts on the Indian IP landscape? Yet, Ferid Allani, in his quest to get a patent on a “method and device for accessing information sources and services on the web” has inadvertently done just that. Back in 2008, in the course of an appeal against the IPO’s deeming of the patent to have been abandoned, Justice Gita Mittal of the Delhi High Court, passed an order remanding the matter to the Patent office, directing it to give reasons for its rejection of the application, and in the course of the order, brought some much needed clarity to the scope of “deemed abandonment” under Section 21 (read Shwetasree’s earlier post here for more). Fast forward 11 years, and Justice Pratibha Singh of the Delhi High Court has issued another noteworthy order to the same petitioner regarding the same patent, directing the Patent Office to re-examine the application in the context of developments that have occurred post the filing of the patent – namely “settled judicial precedents which have now laid down the interpretation of Section 3(k), the Guidelines [for Examination of Computer Related Inventions, 2016] and other material including the legislative material.”  Read on for a quick discussion on the order (available here), as well as several queries that seem to arise from a reading of the order. [Long post ahead!]

Technically, true!

In essence, the order seems to contain 3 points of reasoning as described below, along with the relevant excerpts:

1. Many inventions today are based on computer programs, and it would be retrograde to say that all such inventions would not be patentable

“In today‟s digital world, when most inventions are based on computer programs, it would be retrograde to argue that all such inventions would not be patentable. Innovation in the field of artificial intelligence, blockchain technologies and other digital products would be based on computer programs, however the same would not become non-patentable inventions – simply for that reason. It is rare to see a product which is not based on a computer program. Whether they are cars and other automobiles, microwave ovens, washing machines, refrigerators, they all have some sort of computer programs in-built in them. Thus, the effect that such programs produce including in digital and electronic products is crucial in determining the test of patentability.”

2. Computer programs ‘per se‘ are not excluded from patentability

“The words `per se‟ were incorporated so as to ensure that genuine inventions which are developed, based on computer programs are not refused patents.” 

“The use of `per se’ read along with above extract from the report [Report of the Joint Committee on the Patents (Second Amendment) Bill, 1999] suggests that the legal position in India is similar to the EU which also has a similar provision.”

“Across the world, patent offices have tested patent applications in this field of innovation, on the fulcrum of `technical effect‟ and “technical contribution‟. If the invention demonstrates a “technical effect‟ or a “technical contribution‟ it is patentable even though it may be based on a computer program”  

3. New Guidelines were issued post the IPAB decision, therefore this should be sent back to the patent office to re-check for technical contributions or technical advancement, which would make it eligible for a patent.

“Insofar as Computer Related Inventions are concerned, there are three sets of guidelines that have been published by the Patent Office. The initial Guidelines are termed as “Draft Guidelines‟, the second document is described as “Guidelines‟ and the one issued in 2017 is termed `Revised Guidelines’. While the initial 2013 Draft Guidelines defines “technical effect”, the said definition is not to be found in the later guidelines. The meaning of “technical effect‟ is no longer in dispute owing to the development of judicial precedents and patent office practices internationally and in India. There can be no doubt as to the fact that the patent application deserves to be considered in the context of settled judicial precedents which have now laid down the interpretation of Section 3(k), the Guidelines and other material including the legislative material.”

“Accordingly, considering the fact that the term of the patent would be ending very soon – in one year, it is deemed appropriate to direct that the Petitioner‟s patent application is re-examined in the light of the above observations and in accordance with the judicial precedents, settled practices of patent offices in examining such patent applications, including the Guidelines which have been issued for Computer Related Inventions.”

For convenience, I am also reproducing Section 3(k) below:

“(3) The following are not inventions within the meaning of this Act,— (k) a mathematical or business method or a computer programme per se or algorithms;” 

Comments

What the order does clearly do, is re-iterate that there is no absolute bar on patentability of computer programs, and that technical effect and technical advancement must be looked into in determining the eligibility of a computer program for patenting. However, in the context of the case in question, there are some questions that arise. While I can see (though disagree with) the policy reasoning in the order, I am unable to follow the legal reasoning. The order traces out the arguments of the petitioner as well as the respondent. However, as far as I can tell – the reasoning given for this order, follows from a separate (and un-presented) argument altogether. As stated in the order (para 5), the IPAB had earlier rejected this application because it did not disclose any technical effect or technical advancement. And the current petition has argued that the rejection is in error as the specification does actually disclose a technical effect and technical advancement. i.e., the argument is not that the IPAB did not consider technical effect/advancement, but rather the argument is that that the IPAB erred in its judgment on those factors.

However, as seen above, in sending the application back for re-examination, the reasoning for the order does not discuss whether the IPAB erred. The order focuses on new interpretative guidelines being present, along with policy-type reasoning for the importance of granting computer program based inventions patents – however it does not state what exactly should be re-examined, or why a re-examination is required in this specific case.The contents and context of the order, seem to imply that the Patent office has been too strict in it’s rejections of the patent application under Section 3(k). However, the question still remains why this specific case was sent back for re-examination.

(As a side-note, I am making an assumption that the 2013 IPAB’s confirmation of rejection of application, took place prior to the issuance of the 2013 draft guidelines. However, as I have not been able to find the 2013 IPAB decision, I haven’t been able to check the date of that order).

Has there been a clarification of the term ‘technical effect’ subsequent to the rejection, which would now render it valid? Is it to be re-examined because of a factual flaw in the basis for the rejection? Or is it to be re-examined because many CRIs are significant? If the substantive reason is solely that interpretative guidelines subsequent to the rejection are now present, then does this mean that any and all applications rejected prior to any of these guidelines can now ask for a re-examination? For that matter, does this also open the door to re-examination of patents that have been granted prior to the guidelines, opening them up to possible rejection? Further, without any case specific detail present in the ratio of the order, surely it can be used as precedent for any other application that has been decided prior to the guidelines. Pushing it even further –  aside from applications already decided in the past – what happens when (not if) a new set of guidelines are published in the future! Will that mean that applications decided up till the new set, are once again open to re-examination? This would be absurd, yet, surely this order opens up this possibility now?

What Exactly is the Legal Validity of these Guidelines? 

It may in fact turn out to be true that this specific patent application did have a technical effect or technical advancement that subsequent guidelines have clarified as making such an application eligible for a patent – however, if this is so, this should be pointed out as the reason for sending it back for re-examination. And even if it had been pointed out as a reason – there still remains another question: As guidelines are not legally binding, can disagreement over interpretation of a guideline be a valid legal reason for sending it back for re-examination once it has been rejected on the basis of a technical tribunal’s application of the Patent Act? The guidelines explicitly state that in case of conflict between the Patent Act and the Guidelines, then the provisions of the Patent Act would prevail.

Its worth noting the argument raised by the respondents here – that “the present case does not call for any interference under Article 227 inasmuch as the IPAB, which is a technical Tribunal has taken a view in the matter and in writ jurisdiction, the Court is not to re-appreciate the technical arguments raised before the Tribunal.” 

It would have been interesting to know the Court’s holding on this question of scope under Article 227. The order, technically, does not re-appreciate the technical arguments. However, by sending it back for re-examination of ‘technical effects/advancement’, when the IPAB has already explicitly rejected this, is this in effect, dismissing the IPAB’s earlier rejection of these claims? It may be the case that the Court has the power to do this under Art 227, however, it would have been useful if the order directly addressed this argument by mentioning this, if so.

And finally, and on a different (and minor) note – the order also mentions that in addition to 8 claims being hit by Section 3(k), the Patent Office also found lack of novelty in 5 claims. I was not able to find the IPAB order on this, so I don’t know what the IPAB held regarding novelty. My assumption is that the IPAB must’ve resolved the lack of novelty claims, since otherwise, this would render the re-examination under 3(k) meaningless.

On the Policy Reasoning

It is true that computer programs are a bigger part of innovations around us than ever before. As we continue to progress, one will be hard-pressed to find technological innovations that don’t have a software component. A big part of this, will presumably be Artificial Intelligence (AI) related. However, despite how the crux of AI is the algorithm involved – does this mean we should start looking to ensure more and more algorithms are made patent-eligible? The reason why most (all?) jurisdictions allow some degree of patentability exemptions for algorithms, mathematical methods, etc is not because of how unimportant they are – but precisely because of how crucial they are! Allowing private exclusion rights over fundamental building blocks is simply a terrible way of getting more people to use building blocks, as well as a severely inefficient way of bringing innovation and its benefits to society at large.

In an effort to highlight the severe problem of low-quality patents in US (“tens of thousands low quality software patents”), EFF had instituted a monthly ‘award’ highlighting a “Stupid Patent of the Month”. See more on EFF’s page. This is exactly the type of situation India should seek to avoid.

This does not mean that nothing should be allowed patents, but rather, that our legislation (and interpretations of it) should focus on incentive mechanisms for innovation – what types of incentives translate into the most innovation, the most social benefit. If exclusion rights provide the most benefit in certain situations (after accounting for the static inefficiencies inherent in all exclusion rights) – sure, they should be allowed for in those situations and with appropriate limitations. (for eg: a 20 year term for a software patent, when even most computer hardware, forget software, is considered super outdated after just 10 years!?)

However, if such inefficiencies retard the growth and rate of innovation even while allowing certain private players to profit from government granted market distortion rights, then surely this is an unwise policy move. If other mechanisms like ‘ease of doing business’, technical education, increased FDI, improved public infrastructure, improved public education, innovation rewards, improving manufacturing capacity, etc etc can all provide those benefits (or more), without the inherent static inefficiencies, then surely it is better policy to focus on those mechanisms. Whichever mechanism it is – evidence should decide! After all, importing the understanding of software patents from other jurisdictions, also risks importing the misunderstanding as well!

(Thanks to Pankhuri for her inputs on this post!)

Image from here

In an intriguing case last week, the Delhi High Court directed the makers of the film ‘Chhapaak’ to acknowledge the inputs by Aparna Bhat, the lawyer who represented the acid attack survivor whose life the film is based on, in the film’s opening credits. The decision came in an appeal against the interim order granted by the trial court. The Court noted that since the inception of the making of the film, the Defendants represented to the Plaintiff that her contribution would be acknowledged and thus under the doctrine of promissory estoppel, they were bound to give her credit for her role. Interestingly, the Court also observed (or at least seems to have suggested) that even otherwise, a person who makes any contribution to a work has a moral right to be recognized for it, although it left the question as to whether the Plaintiff would be entitled to such a moral right to be decided at a subsequent stage.

It is extremely unfortunate that after having provided such valuable assistance to the filmmakers without expecting any monetary compensation for it, the Plaintiff had to go the legal way to demand credit for it, when it’s something that one should do as a matter of ethics. However, it is important to ask if there exists a legal remedy for it in the first place. In this particular case, the doctrine of promissory estoppel was found to apply by the Court. However, in absence of any obligation arising under contract law, does a person who makes any contribution or provides any assistance in the creation of a work have a legal right to be (publicly) acknowledged for it? Or is it, at best, only an ethical obligation for one to make such acknowledgment? Before we delve into this question, let’s first look at the Court’s reasoning as to the application of the promissory estoppel principle in this case.

Promissory Estoppel Without a Promise or An Action on a Promise? 

In order for the doctrine of promissory estoppel to apply, it is necessary that: (a) one party made a clear and unequivocal promise which is intended to create a legal relationship, and (b) the other party acted upon that promise and thereby, altered their position. Although the Court made a long analysis on the the first issue that whether the Defendants made any promise to the Plaintiff, it failed to examine the second issue that whether the Plaintiff acted upon the alleged promise and altered her position. Even its conclusion on the first issue that the Defendants did make a promise to the Plaintiff that her contribution will be acknowledged in the film is based on shaky grounds.

In reaching this conclusion, the Court relied upon the communications exchanged between the parties, particularly, an e-mail dated 17th November, 2018, the draft screenplay shared along with it and a letter dated 8th January, 2019, all of which only show that the Defendants acknowledged the Plaintiff’s contribution in making of the film and not that they promised to acknowledge it in the film. The Court, however, harped only on the former, suggesting conflation of the two. Although the draft screenplay shared with the Plaintiff indeed included her name in the credits, can it be considered to constitute a promise (that too, a ‘clear’ and ‘unequivocal’ one) that the same would be included in the final film? Couldn’t it have created, at best, a mere hope or possibility in the mind of the Plaintiff? Also, can it be said that the Defendants intended their words/conduct to create a legal relationship with the Plaintiff and knew or intended that it would be acted upon by the Plaintiff?

Even assuming that the Defendants’ words/conduct constituted a promise, did the Plaintiff act upon that promise and alter her position? The Court did not opine or even look into this question. The Plaintiff had been rendering her assistance to the Defendants since 2016 when she was first approached by them, whereas the e-mails and the draft screenplay that were relied upon by the Court (to hold that the Plaintiff was made a promise) were sent only in 2018. Can then the Plaintiff be said to have provided her inputs or in any other way altered her position based on the alleged promise made by the Defendants? One may argue that even if she initially provided her assistance gratuitously, she continued to provide her assistance (including reviewing the draft) after the alleged promise was made to her, only in reliance of that promise? But wouldn’t that be a mere assumption, as there’s nothing that indicates that she intended to otherwise discontinue her assistance or would have done anything differently? 

Therefore, in my opinion, based on the facts laid out in the decision, neither of the two requirements of promissory estoppel, i.e. a promise, and an action on the promise and alteration of position, could be said to have been fulfilled in this case. The Court’s finding of promissory estoppel appears to be driven more by the sympathy towards the Plaintiff who provided her assistance without any monetary consideration, inexplicability of why the film makers didn’t acknowledge her contribution in the film despite unhesitatingly acknowledging so otherwise and even recognising it in the draft screenplay, and also the fact that many other contributors were acknowledged in the credits.

Right to Be Acknowledged for One’s Inputs without a Legal Basis?

Although the Court based its decision only on the principle of promissory estoppel, it also seems to have suggested that the Plaintiff had proprietary rights in the inputs that she provided to the Defendants and in absence of a contract vesting them in the Defendants, she at the least had a right to be acknowledged for them. The relevant part of the decision reads as follows:

“Since there was no contract vesting the Plaintiff’s contribution in the Producer/Director, she does have rights in the inputs that have been provided by her, including in the various scenes of the screenplay.

In the absence of a contract and payment of consideration, her efforts, skill and labour cannot vest with the producer completely gratuitously. She at least has a right to be recognized and acknowledged, to which the Producer/Director had willingly agreed since the beginning of the project.”

However, the Court explained neither the legal basis for such a right in one’s inputs nor the reason as to why one cannot let another use the inputs completely gratuitously. It further went on to look at the issue from a moral rights angle. In pertinent part, it noted:

“It is also the well-settled position in law that in order for any person’s paternity rights in any work to be recognised, a written contract is not required. The right of paternity is an integral part of the moral rights of a person who makes any contribution. Delving into the moral rights of an author, a ld. Single Judge of this Court in Neha Bhasin v Anand Raaj Anand & Anr. (2006) 132 DLT 196 recognized the right of the singer therein to be credited as the lead female singer as against just a singer. The question as to whether the Plaintiff would be entitled to such a moral right would have to be decided at a subsequent stage, after the pleadings are completed….The Supreme Court had the occasion to consider a case, under similar circumstances in Suresh Jindal v Rizsoli Corriere Della Sera Prodzioni
T.V. Spa and Others 1991 Supp (2) SCC 3…The Supreme Court held that even `some part’ that the
Plaintiff therein played in the film, deserves to be acknowledged.”

As we know, the Copyright Act, 1957 grants authors and performers a moral right to be acknowledged as the author of a work or the performer of a performance, as the case may be, which is independent of the exclusive/economic rights granted to them. However, does this right extend to persons who are not authors/performers but only provide assistance or make some contribution to a work/performance? The Court seems to have suggested so by noting that “the right of paternity is an integral part of the moral rights of a person who makes any contribution.” Again, however, it does not explain the legal basis for such a right.

Surprisingly, the SC judgment (Suresh Jindal v. Rizsoli Corriere Della Sera Prodzioni T.V. Spa and Ors.) that it refers to, also did not provide any legal basis for directing the Defendant in that case to acknowledge the Plaintiff’s contribution in making of the film in its ‘credit-titles’. The Court did not refer to any legal right of the Plaintiff that had been infringed by the Defendants or was sought to be enforced. It seems to have based its decision merely on perceived unreasonabless and unfairness of the Defendant’s conduct. The pertinent part of the judgment reads as follows:

“[W]e were firmly of the opinion that the least that the respondents could do was to acknowledge the help given by the appellant…[T]here is no doubt in our minds that, whether there was a concluded contract as claimed by the appellant or not, the appellant did play some part in making the film possible and that the respondents are acting unreasonably in denying him the benefit of the limited acknowledgment he is entitled to have.”

Does there exist such a right in equity? In the other decision (Neha Bhasin v. Anand Raaj Anand) that the Court refers to, the Court had directed the Defendants to credit the Plaintiff as the female lead singer of a song instead of as a mere backup vocalist which had wrongly been shown to be. It noted that “the plaintiff also has a right in equity for being given proper credit for the song sung by her” and “if her voice is used and commercially exploited she has the right to prevent it being attributed to somebody else.” The Court, however, did not cite any English or Indian precedents in support of such a right. It only made a reference to the Suresh Jindal judgment wherein, as discussed above, Plaintiff’s services were directed to be acknowledged without even a mention of the existence of any such right. Nor did the Court elaborate upon the scope of this right. Does this right apply to any and every person who makes a contribution to a work or only to authors and performers? Or does it apply only in limited cases where any person has not been given ‘proper‘ credit i.e. another person has been wrongly given credit for what has been done by that person?

Also, given that authors and performers have been granted a right of attribution under the Copyright Act, would such a right (in favour of any person who makes a contribution to a work) be in conflict with Section 16 of the Copyright Act which provides that “no person shall be entitled to copyright or any similar right in any work…otherwise than under and in accordance with the provisions of this Act or any other for the time being in force…“?

Hopefully, the trial court will look into all these questions and provide clarity in its final decision as to whether there exists, in law or equity, any (independent) right to claim credit for one’s contribution to a work. And if it does, what is the scope of this right? Does it apply in case of any and every contribution, irrespective of its significance?

[I thank all those who have provided their inputs for this post. However, if they wish that their names be acknowledged here, they may approach the Court for relief!]

We’re pleased to inform our readers that the Inter-University Centre for IPR Studies (IUCIPRS), Cochin University of Science and Technology (CUSAT) is organising a two day workshop on Research methods on IPR, scheduled for 28th and 29th February, 2020. The deadline for submitting applications is January 31, 2020. For further details of the workshop, please read the announcement below:

ICSSR Sponsored IInd Hands on Training : Research Methods in Intellectual Property Rights

Intellectual property (IP) law is based on many assumptions about how creators and innovators behave, how markets for inventions operate, and how judges and juries adjudicate IP disputes. Despite the prominence of these assumptions in IP doctrine, their accuracy has rarely been tested. Empirical studies—employing controlled experiments, data collection from real-world cases, and structured interviews—can examine the validity of IP law’s basic assumptions and provide recommendations for promoting innovation and increasing the efficiency of the system. Research methodology comprises of the steps in conducting research beginning from literature review to the creation and analysis of empirical data. Lack of awareness and effective training of tools research methodology is an impediment to carrying out quality research. The workshop aims at addressing this crucial problem by imparting training to IP researchers for properly conducting a research, and analyse the results of empirical study to support their findings in IPR policy research.

About the Workshop

The current workshop is an effort to enrich the research scholars in intellectual property on research methodology with hands-on training. This workshop is open for legal academicians who are working in the areas of intellectual property law in India. There is a clear transition from conceptual to empirical research work in the IP research. The core objective of this workshop is to make the target group more capable of handling IP data. All the sessions will be handled with lectures and practical exercises.

Course Structure

• Necessity of empirical studies in IP
• Introduction to IP data
• Making sense of IP data
• Literature review in IP research
• Use of Web scrapping in IP research

Programme Schedule of Hands-on Training

28th February 2020 – Day 1

9.30. am – 11.00 | Importance of empirical studies in IPR Need of Empirical research in IP – meaningful evidences from IP empirical Research (one class room exercise) | Professor (Dr). N.S Gopalakrishnan

11.00 – 11:15 | Tea Break

11.15 am-1.00 pm | Review of literature in IP research IPR databases and Review of literature in IP research Literature search and writing review (One class room exercise) | Dr Anson C J,
Assistant Professor IUCIPRS, CUSAT

1.00 pm – 2 pm | Lunch break

2.00 pm – 4.00 pm | Critical consumption and responsible production of empirical data in IP research Use of empirical data in research – why we need a more cautious approach – Best practices in empirical research (One class room exercise) | Dr. Arul George Scaria, Assistant Professor, Co-Director, CIPPC

Tea break and Photo session

29th February 2020 – Day 2

9.30 am – 11.00 am | Making sense of IP Data – Microsoft Excel and Web scrapping in IPR research Web scrapping with Octoparse 3, Options in excel, data handling, data formats, how to use excel for data analysis. Making sense of IP Data, web scrapping. Graph, pivot table, correlation of data and representation of data in thesis using excel. (Three class room exercises) | Dr Anson C J, Assistant Professor IUCIPRS, CUSAT

11.15 am -1.00 pm | Making sense of IP Data –Introduction to IP data and R statistics (GUI) Data analysis using R (GUI) IP Data – reconstructing empirical papers in IP (five class room exercises) | Dr Anson C J, Assistant Professor IUCIPRS, CUSAT

1.00 pm – 2.00 pm | Lunch break

2.00 pm – 4 pm | Report writing – Microsoft word and Literature review using Mendeley Using Mendeley, creating personal library, preparing literature review, Pdf Files and bibliography, footnotes, citation formats. Inserting content page, table generation, Auto texting, graphs, navigation pane and report writing Creating personal library, literature review using Mendeley software.(Two class room exercise) Sample report building with provided materials | Dr Anson C J, Assistant Professor IUCIPRS, CUSAT

4.00 pm – 4.30 pm | Certificate distribution and Tea break

Total 13 Exercises

Eligibility
All registered Ph.D. scholars in recognized Indian Law University/legal research institute from any branch of IPR may send their application (online) for the workshop. The candidates should have basic knowledge of IPR and computer applications.

Intake
Since this is workshop in the mode of hands-on training, maximum intake for the Course shall be 30 participants (20 outstation and 10 from Kerala). A selection committee will review the participants for the hands-on training based on the stage of their research work, credentials given in the registration form. The selected participants are requested to bring their own laptops to get hands-on experience on the software applications introduced during the Course.

Application Procedure
Application can be submitted only through the online link provided at the website of the department as well as CUSAT website. No other modes of submission like courier or other offline modes will be accepted. Registration form is available at http://ciprs.cusat.ac.in.

Registration Fee
There is no registration fee for this hands-on training. Eligible participants will get free accommodation at CUSAT guest house on twin sharing basis. No TA/DA shall be provided to the participants. The participants who require accommodation have to intimate along with registration.

Online Registration Form
https://docs.google.com/forms/d/e/1FAIpQLSeQ7S1qk9Ptd1rNJxy6wRRzaXnUz1bTsyyDgduhNo6Yx_D9vA/viewform

Dates to Reckon
• Dates of the workshop are 28th and 29th February, 2020.
• Last date for submission of application form is 31st January, 2020.
• List of selected candidates will be published on 1st February, 2020 and the same shall be communicated to the participants via their e-mail address provided at the time of submission of online application.
• Venue: Conference Hall, Inter University Centre for IPR Studies, Cochin University of Science and Technology, Kochi, Kerala

Contact Details

Workshop Organiser : Dr Anson C J

For any queries/ clarifications, contact:

Faculty Coordinator

Bilal Nazeer
Research Officer
Mob: 8547082805
Inter University Centre for IPR Studies
Cochin University of Science and Technology

Student Coordinator

Naveen Gopal
Research scholar
Mob: 9895897061
Inter University Centre for IPR Studies
Cochin University of Science and Technology

SpicyIP Fortnightly Review (January 6 – 20)

Bhavik Shukla

Last week, Swaraj wrote a post on the paradigm-changing order of the Delhi High Court in Ferid Allani v. Union of India & Ors. Through this order, Justice Pratibha Singh directed the Patent Office to re-examine an application filed for a “method and device for accessing information sources and services on the web”. He notes that the order seems to contain three reasons for such a direction: (i) many inventions today are based on computer programs, and it would be retrograde to say that all such inventions would not be patentable, (ii) only computer programs ‘per se’ are excluded from patentability, but inventions based on them that demonstrate a technical effect/contribution are patentable (iii) three sets of interpretative guidelines in respect of computer related inventions (CRIs) have been issued after the filing of the application which clarify the meaning of technical effect/advancement. Being unconvinced with the aforementioned reasons, he wonders as to why a re-examination was required in this case when the IPAB’s reason for rejection was not that the claimed invention is a CRI but that it did not disclose any technical effect or technical advancement and the court didn’t even examine if IPAB’s reasoning was erroneous. He ponders upon the possibility of this re-examination opening door to challenges against any and all applications decided prior to the issuance of these guidelines. He further points out the Court’s failure to address the jurisdictional argument raised by the Respondent and questions as to whether non-legally binding guidelines could form basis for directing re-examination of a decision under Article 227 of the Constitution. He views this order as part of a policy reasoning where software has become the mainstay of most inventions, more so with the emergence of AI-related software, and further explores methods for incentives to be granted for such innovation. He concludes by stating that India should be careful while adopting such a software patenting approach.

In a riveting piece, Pankhuri analysed the Delhi High Court’s decision in Fox Star Studios v. Aparna Bhat & Ors., wherein the makers of the film ‘Chhapaak’ were directed to acknowledge the inputs of the Defendant, the lawyer who represented the acid attack survivor whose life the film is based on, in the film’s opening credits. She notes that in this particular case the principle of promissory estoppel was found to be applicable, but wonders if otherwise (in absence of any contract law obligation) there exists any legal right (of a contributor who’s neither an author nor a performer) to claim such acknowledgement. She also looks into the court’s finding on promissory estoppel and argues that, based on the facts stated in the decision, the essential requirements of promissory estoppel could not be said to have been fulfilled in this case. Accordingly, she notes that the Court’s decision seems to be driven more by sympathy and other factors than legal reasoning. She then goes on to examine the court’s observations on a contributor having a (proprietary) right in his/her inputs and an independent (moral) right to be acknowledged for them, and also the judgments cited by it in support. She points out that neither this decision nor any of the judgments cited provide any clear basis in law or equity for such a right of contributors (other than authors and performers) in India. Ultimately, she hopes that the trial court in its final decision would look into these issues and provide clarity on the law on (public) acknowledgment of a person’s contribution to a work in India.

SpicyIP Announcements          

Pankhuri also informed us about Cochin University of Science and Technology’s Workshop on Research Methods in IPRs, in collaboration with the Inter-University Centre for IPR Studies to be held in Kochi from February 28-29, 2020. The workshop shall comprise lectures and a total of 13 exercises spread over two days, aimed at imparting training to research scholars in research methodology. The deadline for submitting applications is January 31, 2020.

Other Developments

India

Judgments/Orders

Intex Enterprises Pvt. Ltd. v. Ashu Telecom – Delhi District Court [January 8, 2020]

The Court rejected the grant of an injunction in favour of the Plaintiff from restraining the Defendant from using its mark “INTEX” on goods. The Court noted that the Plaintiff had failed to prove that the items recovered by the Local Commissioner were infringing. Moreover, the seized goods were not produced before the Court during the trial. Accordingly, the Court concluded that the Plaintiff had failed to prove their case by leading cogent and convincing evidence that the Defendant was engaged in infringing activities.

State v. Rahul Gupta – Delhi District Court [January 10, 2020]

The accused in this case was found in possession of various packaging material bearing the mark “SWAGAT GOLD TOBACCO”, without any proper bill or purchase documents. The Court emphasized that it was a principle of criminal law that prosecution is supposed to prove its case beyond reasonable doubts by leading on reliable, cogent and convincing evidence. It was noted in the findings of the Court that the case property was never produced before it, and the details of the raided premises were not correctly recorded. In light of these lapses, the Court noted that the Prosecution had failed to prove the case beyond doubt or that the recovered property was counterfeit in nature as the same was never examined by the witnesses. The Court noted that an offence under Section 63 of the Copyright Act, 1957 could only be made out when the accused “knowingly” commits an act, and such knowledge of the accused has to be proved through clear and conclusive proof.

M/s. Fun World and Resorts (India) Pvt. Ltd. v. Nimil K.K. – Kerala High Court [January 13, 2020]

The dispute between the Parties arose on account of the Appellant’s alleged infringement of the Respondent’s copyright in its “UNDERWATER MOBILE GLASS TUNNEL AQUARIUM”, exhibited by the Respondent at various exhibitions. The District Court granted a temporary injunction in favour of the Respondent, and restrained the Appellant from using its design in fairs. However, the Court vacated the injunction temporarily for the period of the “Onam Fair”. Subsequently, the Court noted that pending disposal of the appeal, the Appellant would not be entitled to seek further extensions on the vacation of the injunction. The Court noted that the Plaintiff had applied for registration of its design in the “UNDERWATER MOBILE GLASS TUNNEL AQUARIUM”, and the same was under consideration. The Court noted that the registrability of the design had to be decided at trial, and at the interlocutory stage only a finding of a prima facie case is sufficient to grant an injunction. Accordingly, the Court noted that the Respondent had made out a prima facie case for infringement of its copyright in the tunnel, and granted a temporary injunction in its favour.

Marico Limited v. Abhijeet Bhansali – Bombay High Court [January 15, 2020]

The Court granted an interim injunction restraining the Defendant from making disparaging and denigrating statements against the Plaintiff’s mark “PARACHUTE” through its videos posted on YouTube. The Court noted that the Defendant was not a competitor of the Plaintiff, but a “social media influencer”, and accordingly had a higher responsibility to ensure that his statements did not mislead the public and that he was disseminating correct information. With respect to the statements made by the Defendant, the Court observed that the Plaintiff had to establish that the statements in the video were false to the knowledge of the Defendant or were made with reckless disregard to the truth. The Court noted in respect thereof that the Defendant had compared the Plaintiff’s oil with ‘virgin coconut oil’ in contrast to his claimed ‘organic coconut oil’. Furthermore, the Court noted that the Plaintiff marketed its product as merely coconut oil, and not virgin coconut oil and hence the comparison drawn by the Defendant was incorrect. Accordingly, the Court noted that neither the test relied upon nor the articles used by the Defendant were true, and the resultant effect of the video was disparagement/slander of the Plaintiff’s goods. The Court further dealt with the ancillary defences of the Defendant, and further noted that misleading information which disparages someone or influences consumers to buy a product cannot be disseminated under the garb of education by the Defendant. The Court subsequently noted that the balance of convenience lay in favour of the Plaintiff, as the Defendant’s video was detrimental to its reputation and commercial health. Therefore, the Court ordered the video to be taken down during the pendency of the case.

M/s. S. Oliver Bernd Freier GmbH & Co. v. Sushant – Delhi District Court [January 15, 2020]

The Court granted a permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “OLIVER” by using an identical mark in respect of apparels. In arriving at this decision, the Court noted that the Plaintiff was the registered proprietor of the mark, and the Defendant had no right to use it. Moreover, the Court noted that the Defendant’s use of the mark was with the intent to unjustly enrich from the Plaintiff’s reputation and goodwill. Accordingly, the Court granted damages in favour of the Plaintiff to the tune of Rupees 50,000, in light of the Defendant’s continuous infringement since 2012 coupled with the Plaintiff’s loss of reputation.

Astrazeneca AB & Anr. v. Emcure Pharmaceuticals Ltd. & Anr. – Delhi High Court [January 15, 2020]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of the Plaintiffs’ patented compound “TICAGRELOR”. At the outset, the Court dealt with the objection raised by the Defendants under Section 3(d) of the Patents Act, 1970. In respect thereof, the Court accepted that the Plaintiffs had been successful to demonstrate that “TICAGRELOR” was produced under its patent No. IN 209907 and not anticipated by its previous patent numbered IN 241229. Moreover, the Court noted that the patent no. IN 209907 had not been anticipated by any previous patent. Regardless of having proven this, the Court refused to grant an injunction in favour of the Plaintiffs, as its patent expired on December 2, 2019. Additionally, the Defendants had already launched their product and the balance of convenience lay in their favour. The Court merely directed the Defendants to maintain the accounts of sale of its drug.

Arg Outlier Media Asianet News Pvt. Ltd. v. Shailputri Media Pvt. Ltd. – Calcutta High Court [January 15, 2020]

The Court granted an interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “REPUBLIC” by using a deceptively similar mark “REPUBLIC HINDI” in respect of a television channel. The Court noted that the Defendant was aware of the Plaintiff’s mark when it purchased the domain name “www.republichindi.com”, and there was nothing on record to suggest that the Defendant concurrently conceptualized its mark. Additionally, the Court noted that the Defendant’s mark had a similar colour combination and font to that of the Plaintiff to note the deceptive similarity between them.

Giant Rock Media and Entertainment Private Limited v. Priyanka Ghatak & Ors. – Delhi High Court [January 7, 2020]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of the Plaintiff’s exclusive right to make adaptations of the Defendant No. 3’s literary work titled “CBI INSIDER SPEAKS: BIRLAS TO SHEILA DIKSHIT”. The Defendants were subsequently restrained ex parte by an order of the Court from communicating its web series to the public over the internet. The Court noted that on an examination of the book chapter alleged to be infringed by the Defendants, it could not be ascertained whether the same was original or merely a reproduction of the case files of the CBI. In this regard, the Court observed that the Plaintiff had failed to provide any document for comparison to determine the originality of the book chapter. Moreover, the Court noted that the Plaintiff had not even attempted to draw a comparison between the book chapter and the Defendants’ web series. Accordingly, there could not be any claim for infringement of copyright. The Court rejected the Plaintiff’s plea of breach of confidentiality on the basis that its pleadings did not contain any reference to it. Furthermore, the Court observed that the Plaintiff could not prove its case prima facie and the Defendant No. 2 would suffer irreparable loss as it had already released its web series. Therefore, the Court vacated the previously granted ex-parte interim order in favour of the Plaintiff.

News

• The Intellectual Property Office in collaboration with the Confederation of Indian Industries has invited applications for National IP Awards 2020.
• Bombay High Court allowed release of ‘Umeed’ movie, noting that there can be no monopoly of copyright in the idea or subject of a film.
• Usilampatti police arrested three partners of a local television channel for unauthorized telecasting the recent Rajnikant-starrer Darbar.
• A Bangalore court granted an interim stay on the release of web-series titled ‘Afsos’ in a copyright infringement suit.
• Spotify and Warner Chappell Music (WCM) ended their nearly year-long copyright licensing dispute in India, thereby making WCM’s catalogue available to Indian customers.
• IPAB officially launched a new website under the government domain name- www.ipab.gov.in.
• Delhi High Court barred Cipla, Torent, Emcure and Alkem from launching a generic version of Bristol Myer’s drug, Apixaban.
• Madras High Court restrained B. Firdous Ahmed from using the trademark and symbols of Ambur Star Biriyani.
• Patent Office rejected Tata Chemicals’ patent application for its water purifier, Swach on grounds of it being ‘obvious’ and lacking an ‘inventive step’.
• Bombay High Court refused to grant an interim stay on the release of film ‘Chhapaak’ in a copyright infringement suit filed by writer, Rakesh Bharti.

International

• A court in Shenzhen, China ruled that an article written by artificial intelligence (AI) is protected by copyright.
• German Ministry of Justice published draft amendment to Patent Act.
• UK Advertising Standards Authority banned vaping products from being promoted on Instagram.

Image from here

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

Bol Ree Kathputli [Tell Me O Kathputli], What IP Rights Do I Have in You?

Dr. Sunanda Bharti

Introduction

The art of making kathputli was given life by the Bhaat community of Rajasthan as a form of entertainment ages ago. The word ‘kathputli’ is a combination of two words ‘kaath’ meaning wood and ‘putli’ meaning a doll. The inner body frame of the puppet is made from wood and then it is given adornments in the form of metal jewellery, clothes and some metal work. Often however, the word ‘kathputli’ is used, and incorrectly so, for any kind of puppet. This piece maps the intellectual property rights framework for both puppets of the ordinary variety and kathputlis in particular. First, let’s understand where the traditional kathputlis are placed in the panorama of IP rights.

Kathputli as Traditional Knowledge and Its Protection as GI

Kathputli, as the unique art of Indian puppetry would fall under what we now refer to as ‘traditional knowledge’ or TK. Due to the various shortcomings of protecting TK as such (for example lack of documentation, lores and processes being oral, unidentifiable creator etc), kathputlis have been protected by India under its GI regime in the class of ‘handicrafts’. The protection is available till 2026, after which its continued protection would be subject to the payment of a registration fee. The certificate declares the Development Commissioner (Handicrafts), Ministry of Textiles, Government of India, New Delhi to be the registered proprietor.

The truth that emerges does not present a promising picture if the socio-economic status of the community involved with kathputlis is taken as an indication. The registration details of the GI certificate for kathputlis reveal 6 odd authorised users, mostly based in the Makrana and Dedwana districts of Rajasthan. All are in penury. Bhaat, the community mentioned above, for instance, comes under the Dalit domain and is grappling with the change of taste amongst contemporary patrons of art and also the rebellion within the community youth who want a more economically viable profession with a regular income. Clearly, an art which has lost its patrons is a dying one and it is unlikely that the stakeholders involved would be aware of their intellectual property rights.

Kathputlis, being registered as a GI, of course, get legal protection but what about ordinary puppets? After having briefly looked at the status of kathputlis under the GI regime, it is useful to examine the copyright protection of puppets in general, which would operate concomitantly with the GI protection of kathputlis. Two statutes that may be of some relevance here are the Copyright Act, 1957 and the Designs Act, 2000.

Are Puppets Protected under the Copyright Act?

Are puppets protectable as artistic work under the copyright law? What rights does one have in a purchased puppet? What if the puppet is mass produced, ‘more than 50 times’?

Firstly, copyright would subsist in puppets if they meet the criterion of being a work with a ‘modicum of creativity’. But, if the puppets are commonplace and of ‘run-off-the-mill’ variety, they may not qualify to be original.

Copyright however, does not protect purely utilitarian aspects of a work. So, a crucial question is that  would a puppet which is nothing more than a toy, often hand-made, meant to be played with hands, strings, rods and other such props, not classify as a utilitarian object; hence not amenable to copyright protection?

We do not have any Indian case law that throws light on copyrightability of toys. Thankfully however, we do have a plethora of US cases which have held in favour of their copyrightability. In Gay Toys Inc. v. Buddy L. Corp., 703 F.2d (6th Cir. 1983), the court declared that the toy plane was not a ‘useful article’ possessing utilitarian and functional characteristics. It held that toys do not have any intrinsic function other than the portrayal of the real item and are protectable by copyright. The recent (July 2019) case of LEGO A/S v. Best-Lock Construction Toys Inc., D. Conn., No. 3:11-cv-01586-CSH, 7/25/19 also reiterates the same stand. Mini-figures of LEGO usually have movable torso and hands. This was alleged to be a functional element by Best-Lock. Rejecting this claim, the US district court declared that LEGO torso shapes were a creative element and nothing more.

It can, hence, safely be said that puppets, being toys, cannot be considered as utilitarian and their creative element can definitely be considered as artistic work meriting copyright, if found to be original.

Coming to the second question—what if the concerned copyrighted puppet is mass produced, more than 50 times? Here, section 15(2) of the Copyright Act, 1957 creates a distinct linkage with the Designs Act, 2000 to provide a clear answer. It states that “copyright in any design, which is capable of being registered under the Designs Act, 2000 but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other person.”

Transposing the above understanding to the situation of puppets, if the outer appearance of the puppets is replicated more than 50 times, the copyright which might have subsisted in the puppets’ artistic work would cease. This would leave them unprotected under both copyright law and design law.

Performer’s Rights in Puppeteering

Would the use of a puppet for a public performance be an infringement of the artist’s copyright?

For example, if I purchase a few puppets from a maker ‘M’ and do a show (for money) with them, weaving a storyline of my own, would I be violating any copyright of the maker?

The doctrine of first sale entitles a purchaser of a copy of a copyrighted work to use or dispose of that copy freely without paying a royalty to the copyright holder. However, although the purchaser of the concerned puppet may freely dispose it by using or reselling it, they are still bound by the other exclusive rights granted to the author under the Copyright Act, including the right to communicate the work to the public under section 14(c)(ii); and to make any adaptation of the work under section 14(c)(v).

Firstly, the author of an artistic work has the right to communicate the work to the public. Communication to the public, as per section 2(ff) of the Copyright Act can be—a) directly; b) through a display; and c) through diffusion whether simultaneously or otherwise. Therefore, merely purchasing a copy of the work will not entitle the purchaser to publicly ‘communicate’ the art work (subject to any fair use rights under section 52 of the Act).

Secondly, the author also has the right of adaptation, which, in the case of an artistic work means:

1) ‘conversion of the work into a dramatic work by way of performance in public or otherwise’ under section 2(a)(ii)–this, in the submission of the author, would cover within its realm, any monetised puppet show that one does with the puppets so purchased, provided the scenic arrangement or acting form of it is fixed by me in writing or otherwise.

CAUTION: The above explanation is skeptically offered by the author, considering the unfortunate absence of any case law or comparative jurisprudence on the matter. Comments are welcome.

2) ‘rearrangement or alteration’ of any work. This also possibly forecloses any modification of the puppet in order to convert it into a dramatic work.

Additionally, if such modification is proved to be ‘prejudicial to the honour or reputation’ of the maker, the latter has a special right to claim damages u/s 57 (moral rights).

In relation to point 1 above, the author’s submission (in the hope of convincing the readers) is that while adaptation of literary works into dramatic works by way of performance in public or otherwise [as stated in s 2(a)(ii)] is easy to understand if we look at a novel being adapted into a play/nukkad natak etc; however, by contrast, the examples of artistic works being adapted through conversion into dramatic works by way of performance in public, are not easy to fathom. Nonetheless, they do exist—for example the Odissi and Bharatnatyam dance forms (dramatic works) owe a lot to the dance sculptures (artistic works) found in various Hindu temples.

In fact, Dr. Kanak Rele, Director, Nalanda Dance Research Center and a recipient of Padmabhushan Award, Fellow of Sangeet Natak Akademi maintains that “Odissi is characterised by simplicity of grace and redolent with sculpturesque poses which are reminiscent of the glorious stone sculptures of Konark and other temples”.

MF Hussain’s Gaja Gamini, the cinematograph film had an 80 feet long visual script which was in fact a sequence of paintings or artistic work by Hussain interspersed later with written words/lines here and there. The script of Gaja Gamini may serve as an apt example of adaptation of an artistic work into a dramatic work.

Likewise, kathputlis being used to give a stage performance is another example befitting the league (in the submission of the author).

Also, any alteration of the traditional kathputli puppet is also likely to invite an infringement action, albeit under Geographical Indications of Goods (Registration and Protection) Act, 1999 (GIGA). Considering that kathputlis are registered as a GI, section 22(4) of GIGA would come into play to hold any ‘impairment of goods after being put in the market’ as infringement.

Conclusion

Simply put, it seems that whether it’s a purchase of the traditional kathputli (as protected under GI) or a simple puppet which is a copyrightable subject matter as an artistic work – the rights that the purchaser has in them are quite limited, some even dubious.

Whether the owner of rights in those puppets would be eager to vindicate them or even have the means to achieve that, is a different matter altogether. For instance, coming back to the Bhaat community to which kathputli making is now confined, it is safe to assume that given their socio-economic status, illiteracy and lack of zeal to establish their rights, it is unlikely that any such infringement as above would ever come to light.

Indeed, the current tendency might just be to tolerate many types of infringement. Also, one must not forget that adaptation is an enabling right and not a stifling one. So any stringent reading of the rights may not find favour even legally.

The endeavour of this post was just to highlight how the world of IP interacts with puppets – both the kathputlis as well as the ‘ordinary’ ones. On a positive note, it is hoped that the Entrepreneurship Development Institute of India (EDII) which has been set up to develop entrepreneurial competencies in weavers, artisans and traders to promote hand-made art, would cover within its fold the almost lost art of kathputli making. This would not only give some respite to the Bhaat community but also give the necessary impetus and encouragement to other artisans/makers of puppets to enable them to establish their rights.

We’re pleased to inform you that Gridlogics will be holding a free to attend IP symposium, PatSight on February 28 in Mumbai. For further details, please see the announcement below

Join us for PatSight Mumbai on Friday, 28^th Feb at Hotel Orchid Mumbai!

Gridlogics is pleased to bring you 9th edition of PatSight – An IP Symposium dedicated to discussing innovative techniques in IP search and analysis via examples and case studies.

The event will be a great opportunity to come along and learn from the recognized international and Indian IP experts. Speakers and panelist include who’s who from Patinformatics LLC, Bodkin IP, Basck UK, Fleetguard Filters, BASF, Dow, Johnson Controls, Hero Moto Corp, MV KINI, Bajaj Electricals, TCS, Encube Ethicals, Bots4ip and more (see detailed agenda below).

Learn from renowned international speakers, discussing various topics from future of patent analytics, use of semantic and machine learning in search and analysis technologies, smart approaches for efficient searching, patent circumvention using TRIZ, European vs Indian patent laws and much more.

PatSight is free to attend but has limited seating, so secure your place at the earliest. You can do so by filing up the registration form at https://patseer.com/patsight/.

Symposium Sessions at a Glance

Top 5 Reasons to Attend PatSight

• Meet and network with our notable International speakers from the IP Industry
• Learn the latest and innovative IP tools and techniques being used for powering IP strategies
• Gain insights into best practices in patent searching, analysis and collaboration via real-world examples and case-studies
• Ask questions on challenges related to patent search and analysis directly to end-users in other companies and legal firms
• Network with senior IP professionals in the industry and your peers

Event Details                                 

Date: Friday, February 28, 2020
Time: 09:00 AM – 08:00 PM
Venue:  Hotel Orchid, 70-C Nehru Road, Near Mumbai Domestic Airport, Vile Parle, Mumbai

Thank you and Gridlogics team looks forward to your confirmation of participation!

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We’re pleased to bring to you a guest post on the recent judgment of the Delhi High Court in Astrazeneca v. Emcure and Astrazeneca v. MSN Labs. The author of this post wishes to remain anonymous.

It is “Covered”, Yes, but is It “Disclosed”? Delhi HC Gives a Huge Shot in the Arm to Pharma Patents in India

In a judgment with far-reaching consequences for enforcement of species patents in India, the Delhi High Court in Astrazeneca v. Emcure and Astrazeneca v. MSN Labs held that even though a product may be covered by a previous genus patent, if the drug is produced and marketed under a species patent, the patentee is entitled to enforce the species patent. The High Court further went on to hold that the Supreme Court in the Novartis decision did not foreclose the possibility of grant of species patents, even if a genus patent has been granted. To be sure, this is a significant decision which will undoubtedly give a huge boost to pharma patents in India. However, in my view, it suffers from some serious fundamental flaws.

Facts and Key Arguments

The facts are rather straightforward: the cases concern TICAGRELOR, a drug for treating cardiovascular events in ACS patients. According to the Plaintiffs, the drug is covered by four patents, namely:

• the genus patent i.e. IN 241229 for the “Markush” formula;
• a species patent i.e. IN 209907;
• the “crystalline form” patent i.e. IN 247984; and
• the “finished formulation” patent i.e. IN 272674.

The Plaintiffs claimed that the genus patent is for a Markush formula which disclosed the possibility of individual permutations and combinations of making 1.5 X 10²⁰ (quintillion) compounds. Thus, merely because the Markush formula covered the drug TICAGRELOR, this did not automatically lead to the conclusion that the said drug is disclosed by the patent. As readers familiar with patent law would know, had the drug TICAGRELOR been disclosed by the genus patent, no subsequent patent could be granted for the said compound since subsequent patents over this compound would be considered anticipated/ lacking novelty.

On the other hand, the Defendants argued that once the Plaintiffs admit that the prior genus patent “covers” TICAGRELOR, their argument that this compound was not disclosed is misconceived in law. For this purpose, they relied on the Supreme Court’s decision in Novartis, wherein the Supreme Court held that the law in this country does not permit a vast gap between a patent’s coverage and its disclosure. The Defendants also relied on two types of statements by the patentee:

• statements in the Form 27 filed by the Plaintiffs for the genus patent, which stated that the genus patent had been worked through the manufacture of TICAGRELOR by the Plaintiffs; and
• statements in litigation in the United States enforcing the genus patent against third parties which were manufacturing TICAGRELOR.

The Court’s Holding

The Delhi High Court interpreted the Novartis decision to hold that the Supreme Court had “acknowledged” that scope of the patent should be determined from the intrinsic worth of an invention and not by the artful drafting of the claim. Further the Court held that the Supreme Court had not gone as far as saying that a species patent cannot be granted once a genus patent had been granted.

Thereafter, the Court rendered a factual finding that while TICAGRELOR was covered by the Markush formula in the genus patent, it was produced and marketed under the species patent i.e. IN 209907. Based on these findings, the Court accordingly held that the Plaintiffs had made a prima facie case.

The Court though did not proceed to grant the interim injunction since the patent had already expired by the time the decision was rendered.

While no injunction was granted on the peculiar facts regarding the term of the patent, the legal findings are of great importance and these are analysed below.

Analysis

With great respect to the Court, I find the Delhi High Court’s analysis to be wanting in several respects. The Supreme Court’s finding on “artful drafting” does not further the Plaintiff’s case at all – if anything, it supports the Defendant’s case. The Supreme Court was of the view that merely because a claim was drafted “artfully” or “cleverly”, the patentee could not claim that its patent did not disclose a product, even though the same is covered by the patent. I fail to see how this is an “acknowledge[ment]” which is relied upon by the learned Judge to support her reasoning.

The fact that the Supreme Court did not categorically hold that no species patent can be granted if a genus patent is granted again is not determinative of the issue. If the Supreme Court had held that, it would probably have been bad law. There is no doubt that there may be specific cases where a patent for a drug may be granted even though a broad Markush structure discloses the drug in a previous patent/ document. This would depend on whether or not the prior patent enables a person skilled in the art to make the drug. This is also the well settled requirement for grant of selection patents i.e. the prior patent must not enable a person skilled in the art to make the product claimed in the selection patent (see IG Farbenindustrie AG’s Patents, Dr. Reddy’s Labs v. Eli Lilly and Co.).

The factual finding is similarly cryptic and is irreconcilable with the law laid down in the Novartis decision. It is also important to point out the factual matrix behind the SC’s findings on this issue in Novartis. One of the reasons why the SC rendered these findings was that Novartis had asserted a prior genus patent (a European patent) against a generic company, alleging that the manufacture of IMATINIB MESYLATE by that company infringed the prior genus patent. The court was thus called upon to decide whether Novartis could then allege that IMATINIB MESYLATE was merely covered by the prior genus patent, but not disclosed by the same. The SC categorically and in no uncertain terms held that this could not be permitted.

In my view, the crucial issue that courts need to focus on is not “coverage versus disclosure”. That is not a helpful analysis. This case, in my opinion, turns (or, rather, ought to have turned) on the Plaintiff’s statements and conduct and the legal effect of those.

The Plaintiff had enforced the genus patent against third parties manufacturing TICAGRELOR. In other words, according to the Plaintiffs, TICAGRELOR also infringed the genus patent. In order to maintain such an action, the patentee necessarily must assert that TICAGRELOR is enabled by the genus patent i.e. a person skilled in the art could have made and used TICAGRELOR based on the disclosure in the genus patent. This is because the genus patent would be invalid if it does not enable TICAGRELOR. [See In Re Moore (the scope of enablement must be commensurate with the scope of protection sought), Plant Genetics v. DeKalb (patent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable)]. The Supreme Court in Novartis, in fact, rejected the holding in In re Hogan, which had suggested that a patentee need not enable all the elements of a genus patent. The Supreme Court instead accepted the holdings in Plant Genetics v. DeKalb (supra) and Chiron Corp. v. Genentech (“[t]hus, the public’s end of the bargain struck by the patent system is a full enabling disclosure of the claimed technology”).

In light of this, to enforce the genus patent, the patentee must necessarily make a representation that TICAGRELOR is enabled by the genus patent. Consequently, if TICAGRELOR is enabled by the genus patent, this leaves no doubt that said product is disclosed by the genus patent.

Another way of examining this argument is to consider the doctrine: “what infringes if later, anticipates if earlier”. The United Kingdom Supreme Court has held that “the matter relied upon as prior art must disclose subject matter which, if performed, would necessarily result in an infringement of the patent” (see Synthon BV v. Smithkline Beecham). This is a tacit acknowledgment of the corresponding nature of the tests of infringement and anticipation. Therefore, if the patentee has made a claim for infringement for a particular product based on a patent, how can the patentee thereafter allege that the said patent merely covers the product but does not disclose the same?

The second statement made by the Plaintiffs in their Form 27s with respect to the genus patent are also significant. Form 27 is filed by the Plaintiff under Section 146 of the Patents Act under which the patentee discloses the “extent to which the patented invention has been commercially worked in India”. A patented invention is one in respect of which a patent is in force in India (see Section 2(1)(o) which defines an analogous term “patented article”). The Form 27 claiming that the genus patent has been worked through the manufacture of TICAGRELOR, is, in effect, a statement that TICAGRELOR was protected by the genus patent and a patent “was in force” in India with respect to TICAGRELOR under the genus patent.

The argument that I make is this: if a previous patent protects a compound insofar as a patentee can stop third parties from making the compound under that patent, it should not be open for the patentee to contend that the compound was not disclosed by that patent. If such a course of action is permitted, then patent law would fail to adhere to one of its foundational principles of quid pro quo i.e. the patent gets a monopoly in exchange for the disclosure that they made in patent, so that others can utilize the technology after the expiry of the patent term. This is not to say that follow-on or improvement patents may not be granted. For instance, a crystalline form of compound may be subsequently invented and such an invention may be capable of a separate patent. However, where the question is that of the same compound i.e. the same product being “invented” twice and consequently protected by two different patents, then the subsequent patent must fail.

Image from here

What happens when social media influencers such as bloggers and vloggers comment on the quality of branded products recklessly? Earlier this month, Justice Kathawala of the Bombay High Court had granted an interim injunction against one such vlogger’s video in Marico Limited v. Abhijeet Bhansali. The branded product in issue is PARACHUTE coconut oil sold by Marico Limited, the plaintiff, and the vlogger involved is Abhijeet Bhansali, the defendant.

Background and Facts

Bhansali makes a living solely by creating and publishing video content on his YouTube channel “Bearded Chokra”. The viewership of his content generates revenue for him. One such video landed him before the Court in a suit by Marico where he literally rubbished PARACHUTE branded coconut oil primarily based on a “freeze test”.

For those not well-versed with coconut oil (no worries, even yours truly, a proud Malayali, did not know these nuances till the writing of this blogpost), there is coconut oil (yellowish in colour) and then there is virgin coconut oil (colourless and clear as water). While the former is extracted from dried coconuts or copra, the latter is extracted from wet coconuts. And if you add the prefix ‘organic’ to either of these types, it means that the coconuts used in the respective products are grown without any chemicals or fertilizers.

In the offending video titled, “It’s not as good as you think! I’ll prove it!”, Bhansali is forceful, decisive and assertive with his words and statements against PARACHUTE branded coconut oil. He explains that it is one of the most sold and consumed coconut oils in India and that he was going to “break down all the tiny details” about the product and “bring the truth” to the viewers. After making some initial remarks about the “rotten coconut smell” and “flimsy cap” of the product (which according to Marico won the 2017 INDIA STAR Packaging Award 2017 across 12 categories), he proceeds to conduct a “freeze test”.  In the test, he is comparing PARACHUTE coconut oil with “organic coconut oil” “joh mere pass hai” (“that I have with me”).  The first point to note here is that “coconut oil” and “organic coconut oil” are two separate categories that cannot be compared.

He then pours the respective oils into two separate glasses and freezes them in the refrigerator for some time. When he takes it out, he points out that PARACHUTE coconut oil did not freeze well, that it is greyish in colour with impurities, whereas his sample froze perfectly and is snow white in colour. Conspicuously, Bhansali did not state the details of the product used by him for comparison or its source in the “freeze test”.   The next important point to note is that, beyond the colour of the respective oils in the frozen and liquid forms, Bhansali has not analysed any other parameters of Marico’s product.

Brief Arguments of the Parties

Marico argued before the Court that the video was intended to malign the company and its product, that the “freeze test” was the wrong test, that it amounted to disparagement, slander of goods, and malicious falsehood and that it was entitled to special damages. Bhansali defended the video and his actions stating, among others, that it was an effort to educate the public, that he is not a competitor of Marico, that Marico is not entitled to damages in the absence of proof that its revenues were affected and that he had the freedom of speech in the absence of fetters under existing laws.

Some of the Findings by the Court

Misrepresentation

Interestingly, while Bhansali refers to the product used for comparison as ‘organic coconut oil’ in the video, in his affidavit in reply in the suit, he states that the test in which he compared PARACHUTE coconut oil was with “virgin coconut oil”! Bhansali attempted an ingenious defense that Marico’s product label, which depicted a wet coconut with water splashing out (which is incidentally its registered trademark) tricked consumers into believing that its product was derived from wet coconut instead of copra. The Court found this explanation by Bhansali “astounding” and noted that it is not and could not have been that Bhansali did not know the difference between ‘virgin’ and ‘virgin organic’ coconut oils, because in the latter part of his video, he recommends ‘virgin organic cold pressed coconut oil’ to his viewers as an even higher grade of coconut oil.  The Court, therefore, held that Bhansali has purposely and knowingly misrepresented that he was comparing Marico’s product with ‘organic coconut oil’ when he was actually comparing it with ‘virgin coconut oil’.

Social Media Influencers and their Responsibility

Court noted that social media influencers are individuals who have acquired a considerable follower base on social media along with a degree of credibility in their respective space and their statements have a magnified and profound impact on their audience. However, it pointed out that, with power also comes responsibility and hence a social media influencer cannot deliver statements with the same impunity available to an ordinary person.

Disparagement and Special Damages Suffered by Marico

Based on the review of the video and the insufficient material relied on by Bhansali, the Court noted that his statements were false and were made recklessly. In cases of disparagement or slander of goods, the Court observed that, the reputation of the plaintiff’s product is impacted where customers are induced not to purchase its product. To analyse this further, the Court examined some of the comments on Bhansali’s channel regarding the video, where several customers of Marico had expressed their decision to stop purchasing the product after watching the video. Based on the same, the Court concluded that the damage suffered by Marico could not be underestimated and held that the video met all the three factors of “intent, manner and message sought to be conveyed” as laid down by the Division Bench in Gujarat Cooperative v. Hindustan Unilever, as the factors for deciding the question of disparagement. As such the Court found that Marico suffered special damages.

Accordingly, the Court directed Bhansali to take down the offending video in the interim.

Appeal before the DB

Yesterday, a Division Bench of the Court, while admitting an appeal by Bhansali, asked the parties to resolve the matter amicably.

The LiveLaw article refers to two observations by the Bench. The first one is that, “freedom of speech is always put on a higher pedestal than reputation even though both are fundamental rights”. And the second one is that, “if the society is reposing trust in what they (social media influencers) say, then that trust comes with an obligation. The problem with the internet and social media nowadays is that there is so much information that people mistake it for knowledge”.

Currently, these observations do not give any clue as to the mind of the Division Bench. However, having read the order of the Single Judge, I am hopeful that the Division Bench will see through the bearded Chokra’s video trick.