A post earlier today by Prashant looked at the axing of royalties paid by around 45 seed companies to Bayer (which acquired Monstanto) for its Bt technology, through an order under the Essential Commodities Act. In the post, among other things, he also points out that India’s use of price control under the Essential Commodities Act for medical devices led to the suspension of its GSP trading privileges. We’re very pleased to share a quick follow-up guest post by Prof. Srividhya Ragavan examining the legality of the suspension of these GSP trading privileges. Prof. Ragavan is a Professor of Law at Texas A&M University School of Law and author of Patents and Trade Disparities in Developing Countries, (2012) Oxford Univ. Press and co-editor of Diversity in Intellectual Property: Identities, Interests, and Intersections, (2013), Cambridge Univ. Press.

Examining the Suspension of India’s GSP Trading Privileges

Prof. Srividhya Ragavan

I cite this sentence in the post titled ‘End of the road for Bt licensing royalties in India’:

“From a trade perspective, India’s use of price control under the Essential Commodities Act for medical devices caused the suspension of trading privileges offered by the American government under its GSP program.”

Given COVID-19, these are the countries that have suspended trade based IP protection and made changes to enhance access and provide for economic recovery:

1. Costa Rica
2. Israel
3. Germany!!!
4. Ecuador
5. Argentina
6. Bahrain
7. Canada
8. France
9. Iran
10. Norway
11. South Africa
12. Spain
13. Thailand
14. Switzerland

As it turned out, America was the ONLY country whose FDA went ahead and approved Gilead’s request for orphan drug status for remdesivir originally created using 70 million of public money. With over 2,000,000 active cases of COVID-19, and a projection 1,00,000 deaths in the US, the backlash was so bad that Gilead voluntarily wanted the status suspended. Food is as important as medication during this time. NO one will decry these moves.

Notwithstanding the above, I would think that suspension of GSP status by the US will be considered illegal under the circumstances.

Under the international trade regime of the World Trade Organization, the legal basis for the GSP program is found in the Enabling Clause. The Enabling Clause was the platform for developed countries to offer preferential trade treatment on a non-reciprocal basis to products originating in developing countries. The non-reciprocal arrangement means that even if the developing country did not extend the same favor, the developed countries will offer preferential treatment such as zero or low duties on imports to the developing country. Thus, developed countries such as the US which grant trade concessions cannot expect developing countries such as India to make reciprocal offers in return of the GSP benefits. The reason for the arrangement was that the Enabling Clause meant to provide differential and more favorable treatment to developing countries in order to promote their fuller participation in global trade.  Typically, as a matter of comity, under international trade laws, trade concessions granted to one member should be extended to all members. This principle is termed as the Most Favored Nation Treatment. The MFN principle dictates that any benefit, or trade advantage extended by a member to another member should be applied to all members. Now, the GSP benefits are an exception to the MFN requirement and has been specifically structured such that some developing country members can benefit from non-reciprocal preferential treatment based on economic conditions. Thus, preference-giving countries unilaterally determine which countries, which products and what type of preferences are included in their schemes. Examples of such a preferential treatment can be longer time periods for implementing trade commitments or, providing duty free access to market, special concessions during the dispute settlement process, etc.

Basically, no one country can unilaterally withdraw the GSP benefits of another country unless such removal is proved to “positively and beneficially” lead to financial or trade needs of that country, which, in this case, is India. And, the particular “development, financial or trade need” should be made available on the basis of an objective standard to “all beneficiaries that share that need.” Unfortunately, any withdrawal that is not a benefit to India and is instead, intended as a sanction by the US would be a violation of the World Trade Organization’s Appellate Body (AB) precedent in a dispute titled EC Tariffs. In the dispute, the AB opined that no one country can unilaterally alter the GSP benefits nor can a country unilaterally threaten to do so unless it positively benefits the developing country. In that dispute, EC extended special tariff preferences to 12 of its trading partners to the exclusion of some of the others. The Appellate Body of the WTO specifically noted that GSP preferences should be tailored to the needs of developing countries. At that time, India challenged the EC program which awarded special and additional GSP benefits to select countries that participated in a special drug eradication program. The AB underscored that GSP programs can award different benefits to different developing countries, but that any such differential treatment is subject to the requirement that the treatment is targeted “positively to the development, financial and trade needs of developing countries” and be made available to all similarly situated countries that fit the objective criterion.

So, this is what I think is the bottom-line:

1. Bayer will not bring a dispute using the US at this time unless it wants a kamikaze moment;
2. Given the COVID-19 situation in the US, the USTR will not make any moves that detrimentally affects access to food and/or medication in any country; US trade restrictions with China that has led to shortage of medical equipment is one of THE most criticized aspect of how the administration here is handling COVID-19. There is no way that US will target India for a move where the violation remains suspect.
3. While in 2020, the USTR has made independent designation of some countries including India as “developed,” it still remains unilateral actions by the USTR and does not comport with the multilateral dispute resolution envisaged under the WTO. It is also unclear whether countries can use arbitrary yardsticks to determine the status of other countries such that Country A is a developed country for a small sub-set of countries and remains “developing” for all other countries and for practical purposes. The absurdity of this is astounding at many levels.
4. US has its own issues right now with COVID-19 that is far more serious than India’s suspension of highly questionable royalties at a time when a food crisis is also looming because of country-wide shut-down.

I read with interest, and some puzzlement, Srividya’s speedy rebuttal to my post yesterday where she examines America’s case for suspending GSP benefits. It is in keeping with a tradition that we have where I write a piece and she responds to a couple of lines from my piece. Please click here for the previous edition. I am not quite sure how we went from discussing Bayer’s licensing woes to COVID-19 and food shortages but since the door has been opened, it is only fair that I respond.

Why the repeat references to food?

To begin with, I cannot understand why Srividya keeps referring to “food” in her post while referencing the one line in my post on the American retaliation for India’s price control on medical devices. She states:

“Food is as important as medication during this time. NO one will decry these moves”

“Given the COVID-19 situation in the US, the USTR will not make any moves that detrimentally affects access to food and/or medication in any country;”

“US has its own issues right now with COVID-19 that is far more serious than India’s suspension of highly questionable royalties at a time when a food crisis is also looming because of country-wide shut-down.”

Ignoring, the heavy rhetoric for a moment, I must point out that the Bt technology owned by Bayer has nothing to do with food – the patents in question dealt with genetically modified cotton. I thought that was quite obvious given how much publicity this dispute has got in the media and the fact that I mentioned it in my earlier piece. Cotton is a commercial crop that is used by the Indian textile industry. It is not eaten in India. In fact, it is common knowledge that genetically modified food crops are not permitted in India and that patents are not granted for plants in India – they have to be protected under the Plant Varieties Act.

How does the COVID crisis justify India’s price controls on medical devices for the last few years?

Srividya in her post seems to imply that India’s price control on medical devices, imposed a few years ago is justified because a number of countries have “suspended trade based IP protection” due to the COVID crisis. To begin with this is an inaccurate description of what these countries have done – they have merely invoked exceptions under TRIPS to over-ride patents provided a reasonable royalty is paid. In any event, I am not sure of the link she is drawing between price control and “suspending trade based IP protection”. The Essential Commodity Act, 1955 has nothing to do with intellectual property. It vests in the government enormous power to control the prices of any commodity in India and this is merely the first time that the government has used it in the context of licensing fees for IP. Technically, TRIPS is silent on the legality of price controls on IP. It only controls the use of a patent without the authorization of a patentee.

The suspension of the GSP provisions

Let’s move on to the thrust of Srividya’s post which pertains to the legality, under WTO law, of the withdrawal of GSP benefits by the American government. As Srividya explained in her piece, the general rule of international trade law is non-discrimination between trading partners. Exceptions however may be made in the nature of GSPs, wherein developed countries may grant developing countries certain privileges in order to help them grow their economies and trade. The US’s GSP program involved giving countries like India a waiver or reduced tariffs for certain goods. Over the years, American has been withdrawing these benefits for India under different laws as a part of Trump’s trade strategy.

The first decision was a Presidential Proclamation on May 31, 2019 under the Trade Act, 1974 which allows the American President to extend GSPs to only those beneficiary developing countries that provide equitable and reasonable access to the markets. In this proclamation, Trump without recording any reasons, decided that India was not providing equitable and reasonable access to its market. The media speculation is that the medical devices issue played a role in this decision.

The second decision was on February 10^th, 2020 under the Tariffs Act, 1930. This law requires the USTR to make a determination of the countries that qualify for certain special tariffs under American law pursuant to the WTO Agreement on Subsidies and Countervailing Measures. As per the USTR’s new formula, countries with trade of more than 0.5% of the world trade or countries in the G20 would be considered developed countries. As per this new formula, many countries including India were excluded from the definition of “developing country” under the Tariffs Act, 1930. I’m not sure why Srividya find this determination “arbitrary” or “absurd” because she does not provide any reasons.

Technically neither of the above decisions have anything to do with IP and like you, I am wondering why we are discussing trade law on an IP blog.

Are either of the above determinations under the US Trade Act or Tariff Act violative of GATTs and the Enabling Clause? Going by the tone of Srividya’s piece, I have a feeling that she thinks that America is in violation of international trade law but her reasoning is silent (in fact it is not clear if she is commenting on medical devices or the Bayer dispute) – merely summarizing the EC Tariffs case is not going to cut it. These are fact heavy determinations and the facts are very different from those in the EC Tariffs. At any rate, it is safe to say that her principal argument, that no country can unilaterally withdraw the GSP benefits of any other country unless such a removal is positive for the developing country is flat out incorrect. Developed countries have the leeway to apply their GSP programs to different countries in a different manner – that much is clear from the EC Tariffs case as even she concedes.

More importantly though, it is going to be tough for India to argue these cases without making itself vulnerable for legal retaliation for the manner in which it is discriminating, primarily, against American medical device manufacturers.

Now regarding Srividya’s claim that Bayer or the US will not make this is an issue right now due to COVID. It does not take a genius to figure out that no major trade actions will take place during this pandemic. But this pandemic, like others will end eventually and trade will resume, perhaps in a more protectionist world that is better aligned with the ideologies of the RSS’s trade wing. The entire point of my earlier piece was to highlight how the decision to punish Bayer to benefit crony capitalists in India, may just come back to hurt other Indians through different forms of trade retaliation.

Image from here

We’re pleased to bring to you a post by Aditya Gupta on the Delhi High Court’s recent decision on the interplay between trade secrets and patents. Aditya is an attorney at Ira Law. He graduated from National Law University, Jodhpur and then pursued a master’s in law from Harvard Law School. Before co-founding Ira Law, he was part of another law firm for 7 years and then an associate at the chambers of Mr. Amit Sibal.

Can Patents and Trade Secrets Co-exist? :  Delhi High Court Answers in the Negative

Aditya Gupta

In the midst of all the COVID-19 associated disruption, the Delhi High Court has rendered an important decision on the interplay between trade secrets and patents with potential far reaching consequences. A Single Judge has held that the same innovation cannot enjoy both trade secret and patent protection. While on first blush this finding seems logical, the catch here is that the Plaintiffs argued that the aspects of the innovation that they sought to protect as a trade secret were separate from the aspects that formed subject matter of their patent. The Court rejected this contention holding that once a patent has been applied for and expired, the “innovation” is in the public domain and no trade secret protection can be claimed thereon.

For the purpose of this post, the relevant allegations by the Plaintiffs are as under:

1. Plaintiff No. 1 was an inventor of a US patent over a formulation, the De Simone Formulation. This is a high concentration bacterial formulation useful for dietary and pharmaceutical indications. This US patent had expired in the year 2015. Plaintiff No. 1 did not have any corresponding Indian patent.
2. The Plaintiffs claimed that the strain selection and blending ratio of the bacterial formulation were maintained as trade secrets.
3. Plaintiff No.1 entered into a patent license agreement with Defendant No. 3. These two parties had also entered into a know-how agreement, which was to become effective upon the expiration of the Patent Licence Agreement. This was to ensure that Defendant No. 3 could continue to manufacture the formulation even after the patent expired.
4. For India, where no patent subsisted, Plaintiff No.1 and Defendant No. 3 only entered into a know-how agreement.
5. These agreements were terminated when Defendants allegedly sought to use cheaper ingredients which Plaintiff No. 1 disagreed with.
6. Through reverse engineering the De Simone Formulation, Defendant No. 4 made a counterfeit / spurious formulation for the Defendant Group. However, they were unable to find the exact bacteria used in De Simone Formulation and could not make a copy equivalent to De Simone Formulation;
7. When the Defendant group began to publicise the new formulation as being the same as De Simone Formulation. The Plaintiff sought an injunction to restrain the defendants from linking / relating their new product to Plaintiff No. 1 or to the De Simone Formulation or to tests, research, studies conducted with respect to the De Simone Formulation.

In this background, one of the issues that came up before the Court was “whether an invention which does not qualify as patented product and has no property right therein, can acquire property rights by the third person entering into an agreement of exchange of Know-How and thus claiming confidentiality”.

The Court answered this question in the negative and observed the following:

1. “Know-how, without patent being applied for with respect thereto, was in public domain.” The Court categorically noted that the Plaintiffs are not enforcing a contractual right. The Court also found that confidential information and trade secrets are not equated to property in India.
2. Patent law has sufficiency and best mode requirements which require the patentee to disclose the invention fully and sufficiently as also its best mode. Further, the compulsory licensing regime suggests that the licensee should be able to make the product based on the disclosure in the patent.
3. Since the plaintiffs have no subsisting patent protection in India, and since the patent based in US has expired, the innovation, as noted above, is in public domain.
4. The Plaintiff’s claim seeks impermissible judicial creation of an extra-statutory monopoly for perpetuity. This would be in contrast to the scheme of Patent Act, contrary to public interest and judicial discipline.

With great respect, in my opinion, this analysis overlooks fundamental aspects of trade secret law. It has the potential of having significant impact on valuable trade secrets, if applied broadly and outside the context of the facts of this case.

When an inventor develops a technology, she usually has a choice. She can choose to file a patent or protect the technology as a trade secret.

For patent infringement, it is not relevant whether or not she disclosed the patented technology to her competitors. The competitor may have come up with the invention independently and without any reference to her patent. All that would matter is whether the competitor’s technology falls within the scope of the claims of her patent.

In contrast, for a claim of breach of confidentiality, it would be important for her to show that the technology was disclosed by her to the copier in confidence and that this was being used by the copier in breach of such confidence. If a competitor reverse engineers the product or develops it independently, then no claim for breach of confidentiality/trade secrets would lie.

Several factors inform this choice, an important one being whether or not the technology can be reverse engineered i.e. based on the public disclosures pertaining to the invention, would competitors be able to replicate the technology? If so, then she is unlikely to choose trade secret protection for the reason explained above. For instance, most pharmaceutical companies do not protect the core ingredients (such as the API) through trade secret law. Drugs are easy to reverse engineer, and approval processes and regulatory law require disclosure of the product composition. This makes trade secret protection unviable for such APIs.

Another important factor is the pace of development of the technology. If technology develops rapidly, then she would want instant protection. She would not want to risk disclosure of her technology through publication of the patent document and then having to wait for years before the patent is granted.

However, this choice is not an “all or nothing” one. Most sophisticated patentees now view patents and trade secrets as being complementary to each other. Different aspects of their invention are protected in different ways i.e. a layered protection model – those which are immediately available and disclosed to the public (and hence can be easily reverse engineered) are protected as patents. Other aspects which are harder to reverse engineer or with respect to which patent protection is weaker (for instance, backend software) can be protected as trade secrets. For instance, in the pharmaceutical context, companies would often file a patent over the API but may not disclose excipients in the patent, even though these excipients are added to the commercialized product. These excipients are protected as trade secrets. For instance, Wyeth successfully protected its method of manufacturing a drug as a trade secret, even though the patent on the drug itself had expired (Wyeth v. Natural Biologics Inc., see the District Court’s decision at 2003 U.S. Dist. WL 22282371).

To be sure, if a particular invention has already been patented, the patentee cannot protect the same “invention” i.e. the information which is already disclosed by the patent as a “trade secret”/ “confidential information” through a know-how agreement. To the extent that the invention is already disclosed, after the expiry of the patent, third parties are free to make and use the information disclosed in the patent. The analysis would however be different if the Plaintiffs claim protection over information which is not disclosed in the patent.

The Court’s finding that “know-how” is in the public domain without any patent being applied thereon is troubling, and, in my view incorrect. Numerous decisions have found know-how to be protectable even where no patent has been applied for in respect thereof (for instance, see the landmark and widely followed decision in Seager v. Copydex, where the copier had applied for a patent based on the misuse of the confidential information. The Plaintiff successfully brought a suit against the copier, even though the alleged confidential information was potentially patentable, but was not so patented by the Plaintiff).

Even if the Court rejected confidential information as not being “property”, this does not automatically lead to the conclusion that confidential information ought not to be protected under common law in the absence of patent protection over the same. The Court seems to view the Plaintiffs’ claim regarding know-how as a ruse to overcome the rigours of patent protection or to obtain a perpetual monopoly. However, it possibly ignores the risk an inventor takes by not protecting the invention as a patent and rather chooses to protect it as a trade secret. These include the risk of independent creation and reverse engineering, as also the risk that the technology may leak one day, after which it becomes almost impossible to protect.

As regards the Court’s finding of the know-how being in the public domain, this is not a legal question but a factual one. The correct course of action would have been to examine the patent and determine whether or not the aspects of technology claimed as “know-how” were disclosed. If so, no claim for confidentiality could be made on those aspects. Let’s assume for a moment that the Plaintiffs here failed to disclose the “best mode” or failed to fully and sufficiently describe the invention, by keeping these as trade secrets. In my view, this failure would, at best, affect the validity of the patent (the US Patent) and cannot possibly render the trade secret to be in the public domain. There can’t be any presumptive disclosure of such information.

In my opinion, some of the questions which the Plaintiffs ought to have clarified are:

1. Why were the patent license agreement and the know-how agreement not co-terminus? If the subject matter of the patent and the know-how agreement were separate, presumably any person would need both a license for a patent and a know-how license agreement to make the formulation. This dual licensing structure is also common practice in cases where some aspects of a technology are patented and others protected as a trade secret. The fact that the know-how agreement was entered into only to extend the term of the license granted casts serious doubt on the Plaintiffs’ theory that the subject matter of the patent and the know-how agreement were separate and distinct.
2. The Plaintiffs appear to have claimed that Defendant No. 4 made a counterfeit / spurious formulation for the Defendant Group on the basis of reverse engineering on De Simone Formulation. If the Plaintiffs’ case is that Defendant No. 4 has reverse engineered the product rather than misusing the confidential information, then the claim regarding breach of confidentiality must necessarily fail.

At least from the judgment, it does not appear that these facts were placed before the Court. Thus, while there may be some legal flaws in the Court’s analysis, this doesn’t necessarily mean that the Plaintiffs ought to have succeeded in this case.

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Topical Highlights

Divij wrote on the voluntary initiatives undertaken across the world for facilitating improved access to COVID-19 related IP. First, he provides insight into the ‘Open Covid Pledge’, which aims to grant a ‘royalty-free patent licence’ for any entity to adopt, in order to end or minimize the impact of COVID-19. However, he notes the uncertainty surrounding the position of licensed IP incorporated into products, as the grant of such licence is time-limited. Second, he covers Costa Rica’s proposal for a pool of IP to help in the battle against COVID-19. He notes that the proposed IP pool has a broader coverage than similar patent pools, as it intends to cover copyrights and regulatory data. Third, he notes that the Chief Scientific Advisors of 13 countries have requested publishers to provide access to scientific research published by them. In conclusion, he states that public health and scientific research are highly dependent on patent monopolies and research of commercial firms, and the same should be realized soon.

I wrote on the trademark related issues thrown up in light of the COVID-19 pandemic. In relation to the registration of ‘Coronavirus’ and ‘COVID-19’ related marks, I note that they are most likely to be refused as first, they carry a high potential to deceive the public by misrepresenting the characteristics of goods and services, and second that most marks are descriptive in nature. Further, I note the attempt of companies to rake in profits in light of the pandemic by covering the specific cases of ‘sanitizers’ and ‘food supplements’. Dealing with already registered marks, I discuss that there would be no question of trademark dilution in light of the precedents. I further note that cancellation of marks on the ground of loss of distinctiveness or potential to deceive appears far-fetched. Finally, I note that companies may re-brand themselves in light of their association with a pandemic, and conclude in the hope that indiscriminate filing of trademarks will stop.

Thematic Highlights                                                                        

Prashant wrote on the decision of the Government of India (‘government’) to axe royalties to be paid by Indian seed companies to Bayer under IP licensing agreements. He explains that this decision controls not only the retail price of cotton seeds, but also “trait fees” which cover ‘fee for patented technology, “know-how” and other services.’ He notes that though the ‘trait fees’ have consistently fallen over the past three years, its benefit has not been passed on to the farmers. Further, he suggests that the government’s decision may lead to more restrictive IP licensing agreements in the future. Analysing the government’s decision from a trade perspective, he notes the effect of suspension of U.S.’s GSP trading privileges on Indian industries. He concludes by noting that a trade-off should ideally be between farmer incomes and incentivizing companies like Bayer to make their technologies available in India, rather than between profits of Indian seed companies and profits of MNCs.

This was followed by Prof. Ragavan’s post, where she examined the legality of suspension of GSP trading privileges by the U.S. She notes that the GSP program envisages a ‘non-reciprocal’ basis of preferential trade treatment to developing countries. She further states that the purpose of GSP was to promote the participation of the developing countries. She notes that the GSP benefits cannot be unilaterally withdrawn by countries, unless they ‘positively and beneficially’ promote the needs of a developing country. Subsequently, she clarifies that any withdrawal that cannot be termed a ‘benefit’ to a developing country being affected (India), and aimed at it as a sanction would be a violation of the WTO’s Appellate Body precedent. Contextualizing the discussion, she notes that it is highly unlikely that Bayer will bring a dispute on the suspension of royalties against India using the U.S. or that the USTR will detrimentally move against India affecting ‘food’ or medicines, given the situation of COVID-19 worldwide.

In a quick response to Prof. Ragavan, Prashant notes that his point concerned only the Bt technology owned by Bayer, and not food crops. He further clarifies that the invocation of the Essential Commodity Act, 1955 by the government is not linked to IP, and this is the first time that the government has used it in respect of licensing fees for IP. With respect to the suspension of GSP benefits, he notes two decisions taken by the Trump administration which purely pertain to trade law. Rebutting Prof. Ragavan’s argument on unilateral withdrawal of GSP benefits, he notes that developed countries have the freedom to selectively apply their GSP programs. He concludes by that trading positions will perhaps be more protectionist after the pandemic ends, and there is a possibility of retaliatory trade action by the U.S. then.

Other Posts

Namratha reported on the decision of the Bombay HC in Zee Entertainment Enterprises v. Ameya Vinod Khopkar. Through this judgment, the Court refused to grant an ad-interim injunction restraining the Defendants from making a sequel of the film ‘De Dhakka.’ Namratha states that the parties relied upon the deed of assignment entered into between them to claim that the other party did not have a right over future works in relation to the film. She further notes that the Judge concluded that there was no prima facie case in favour of the Plaintiffs as, first, the words ‘sequel rights’ did not appear in the assignment deed; second, the deed was only meant to transfer ‘negative rights’ in the film; and third, the sequel had completely different script, dialogues, concept etc. Examining the assignment deed, Namratha points out that its language is highly vague, and could not be extended to cover ‘prequels’ or ‘sequels’, as they were not explicitly mentioned therein.

Latha discussed whether the Indian Copyright Act permits sub-licensing by a licensee. She notes the manner in which a valid licence may be granted under the Act. Furthermore, she observes that a licensee cannot justify sub-licensing by stating that she acts as an agent of the licensor as, first, a licensee cannot represent a licensor in contrast to an agent who represents the principal, and second, sections 19(1) and 30 of the Act do not grant any sub-licensing rights to the licensee. However, she notes that an exclusive licensee under the Act may sub-license, but only when there is an express clause granting such rights to it under the licensing agreement.

Raunaq Kamath from Ira Law discussed the discrepancy in registration and subsequent enforcement of generic words as domain names and trademarks. He throws light upon the internet.in domain name dispute in India to conclude that generic domain names are susceptible to cancellation, unless the registrant can demonstrate acquired distinctiveness in its favour. Subsequently, he refers to the ongoing dispute in the case of United States Patent and Trademark Office v. Booking.com in the U.S. concerning the registration of the trademark ‘booking.com’. He points out that though India has been open to grant trademark registrations to generic domain names, courts often do not see the merit in the enforcement of such generic marks in contentious proceedings. He cites the court decisions in relation to various domain names to substantiate his point. In conclusion, he wonders if the mark ‘booking.com’ if granted registration in the U.S. will be enforced in the future.

Aditya Gupta from Ira Law covered the decision of the Delhi HC in the case of Prof. Dr. Claudio De Simone v. Actial Farmaceutica SRL, where the Single Judge held that the same innovation cannot enjoy both trade secret and patent protection. Aditya observes that the decision on the type of protection (patent or trade secret) may involve consideration of various factors namely, the ease of reverse engineering that technology and its pace of development. Subsequently, he points out that ‘sophisticated patentees’ invoke a ‘layered protection model’ for different aspects of their invention. In relation to the decision, he notes that the Court’s holding regarding unpatented know-how being in the public domain is incorrect. He argues that a better course of action would have been for the Court to examine if the aspects of technology claimed as know-how were actually disclosed to the public. He concludes by noting that regardless of the possible flaws in the Court’s analysis, he does not suggest that the Plaintiffs should have succeeded.

SpicyIP Announcements

We informed you about ‘PatSeer’s Hackathon to beat COVID-19’, an initiative aimed at aiding researchers in their ongoing research on medical devices, vaccines or drugs to combat COVID-19. More details regarding the questions which can be asked and the working of the Hackathon can be sought from the post.

Other Developments

India

• Dr. Kumar Vishwas sues Zomato India and Radio City alleging copyright infringement of his copyrighted poem “Koi Dewana Kehta Hai”.
• Badshah and Jacqueline Fernandez’s latest music single ‘Genda Phool’ faces copyright infringement allegations. Boroloker Bitilo, the singer of the Bengali folk song is reported to not have the financial means to initiate proceedings in a court.
• A piece in Business Today discusses if intellectual property will be a hurdle in India’s fight against COVID-19.
• BHU researchers patent new COVID-19 test kit.

World

• Online teaching during pandemic raises copyright concerns in US.
• A piece on Patentology argues that it is unlikely that the Australian government will invoke crown use provisions in light of the COVID-19 crisis.
• A piece in the IPWatchDog discusses that while innovators rush to solve the COVID-19 pandemic, countries contemplate the grant of compulsory licenses.
• A piece in the PatentlyO argues that the CARES Act which gives the USPTO Director the power to extend certain deadlines does not cover original filing deadlines, PCT filing deadlines, non-provisional application deadlines and deadlines for inter parties review petition.
• A piece in Law360 argues a situation in which the U.S. government allows patent infringement for developing and manufacturing COVID-19 drugs.
• A piece in the Stat argues that invocation of Bayh-Dole may be needed to get affordable COVID-19 treatment.
• A piece in the International Policy Digest covers various developments taken place in science and technology in order to mitigate COVID-19.
• South Korea: GemVax and Kael expands GV1001 patent to cover COVID-19.
• R-Pharm files a patent application for an innovative treatment for COVID-19.
• S7 LLC, a developer and manufacturer of diagnostic tests announces a pending patent for a rapid COVID-19 test.
• VBI Vaccines joins the global hunt for the Coronavirus vaccine adopting a pan-Coronavirus approach.
• Health Canada authorizes N8 Medical patent for an endotracheal tube to fight COVID-19.
• Tran and Associates donates patent services for innovative inventions to stop COVID-19.
• Activision wins first amendment-trademark case to depict Humvees in Call of Duty.
• Japan’s Sharp sues Tesla for patent infringement over network gear.
• Amazon wins EU court battle in trade mark dispute with cosmetics firm, Coty.
• Music companies threaten to sue TikTok over copyright infringement.
• Amarin Corp. loses patent lawsuit on its primary heart drug, Vascepa on the ground that its claims are “obvious”.

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We’re pleased to bring to you a guest post by Priyanka Joshi, examining the liability of platforms like ShareChat for copyright infringement in view of the recent dispute between ShareChat and Lahiri Recording Company. Priyanka is the General Secretary at The Indian Music Industry (IMI), an association representing Indian music record companies.

FIR against ShareChat for Copyright Infringement: Time to Introspect the ‘Safe Harbour’ Provision?

Priyanka Joshi

A few weeks ago, the Yashwantpura Police Station in Bengaluru registered an FIR against ShareChat, a mobile application owned by Mohalla Tech Pvt. Ltd. for copyright infringement of sound recordings in furtherance of a complaint made by Lahari Recording Company. Previously, Super Cassettes Industries Pvt. Ltd. (T-series) had filed a civil suit against the same entity wherein they were granted an ex-parte injunction by the Delhi High Court. Instantly following the outbreak of the news of the registration of the FIR, several opinions and tweets poured out in support of ShareChat. The rationale for such support: ShareChat is an ‘intermediary’ and is thus protected by Section 79 of the Information Technology (‘IT’) Act.

As technology evolves, and as always happens to be the story, legislations aren’t able to keep up. The flip-side? There is always someone silently benefiting from a lacuna in law. Such is the case of the new age entrants to the pool of intermediaries a.k.a. media ‘sharing’ platforms.

Who can be classified as an ‘intermediary’?

At the outset, let’s begin with what an intermediary actually is and why every service or platform apparently driven by user-generated content cannot be straight-jacketed as a harmless intermediary.

The IT Act defines an intermediary under section 2(w) as:

“any person who on behalf of another person (emphasis added) receives, stores or transmits that record or provides any service with respect to that record and includes telecom service providers, network service providers, internet service providers, web-hosting service providers, search engines, online payment sites, online-auction sites, online-market places and cyber cafes;”

An intermediary thus can be construed to mean a person or entity that merely facilitates the access of information and provides a platform to third persons for receipt, storage and transmission of such information or data.

If one were to pay attention to the description provided by ShareChat for its application in iOS and Google Play App Stores, one would find the following:

“Features of ShareChat:

….Has a huge album of videos from Tamil movies, Bollywood movies, Telugu Movies, Marathi Movies and Bengali movies…..”  

It becomes fairly undeniable from the aforementioned description provided by ShareChat that it is not an innocent ‘intermediary.’ In fact, it is not an intermediary at all. On the contrary, just like every other platform that on one hand evades its liability under the garb of being an ‘intermediary’ and on the other hand advertises itself as a content sharing platform and builds valuations running into millions of dollars, ShareChat is a platform that is actively and knowingly providing access to third-party copyrighted content, including copyrighted sound recordings and audio-visual recordings, without the express permission or authorization of the legitimate copyright owners and is also commercially benefiting from it.

The question for all of us to ruminate on is this: When an entity develops a robust and flourishing business built on the foundation of and at the cost of third-party intellectual property, is it really equitable in law that such entity be exempted from its liability towards the rightful owners of such intellectual property?

The contours of protection as an ‘intermediary’ under the IT Act

Assuming for the sake of argument, that the likes of ShareChat are in fact categorized as intermediaries, they still cannot be granted any protection under section 79 of the IT Act.

Section 79 specifies the grounds under which an intermediary may be exempted from liability:

“Exemption from liability of intermediary in certain cases –

(1) Notwithstanding anything contained in any law for the time being in force but subject to the provisions of sub-sections (2) and (3), an intermediary shall not be liable for any third party information, data, or communication link made available or hosted by him.

(2) The provisions of sub-section (1) shall apply if–

(a) the function of the intermediary is limited to providing access to a communication system over which information made available by third parties is transmitted or temporarily stored or hosted; or

(b) the intermediary does not–

(i) initiate the transmission,

(ii) select the receiver of the transmission, and

(iii) select or modify the information contained in the transmission;

(c) the intermediary observes due diligence while discharging his duties under this Act and also observes such other guidelines as the Central Government may prescribe in this behalf.

(3) The provisions of sub-section (1) shall not apply if–

(a) the intermediary has conspired or abetted or aided or induced, whether by threats or promise or otherwise in the commission of the unlawful act;

(b) upon receiving actual knowledge, or on being notified by the appropriate Government or its agency that any information, data or communication link residing in or connected to a computer resource controlled by the intermediary is being used to commit the unlawful act, the intermediary fails to expeditiously remove or disable access to that material on that resource without vitiating the evidence in any manner.

Explanation –For the purposes of this section, the expression ―third party information‖ means any information dealt with by an intermediary in his capacity as an intermediary.”

If one were to refer to the rationale behind introduction of section 79 into the IT Act, it becomes amply clear that the exemption of liability was added to safeguard the intermediary against any unwarranted liability arising out of unlawful third-party actions, provided the intermediary had in no manner a part to play in the initiation or transmission of or upon receiving actual knowledge, disabled access to such unlawful material.

However, should a platform, calling itself an intermediary, while simultaneously advertising the availability on its platform of third party copyrighted content such as “audio songs” and “huge album of videos from Tamil movies, Bollywood movies, Telugu Movies, Marathi Movies and Bengali movies” qualify for any exemption at all? If the answer is still yes, then it warrants attention to section 81 of the Act, which reads as follows:

“Act to have overriding effect–

The provisions of this Act shall have effect notwithstanding anything inconsistent therewith contained in any other law for the time being in force.

Provided that nothing contained in this Act shall restrict any person from exercising any right conferred under the Copyright Act 1957 or the Patents Act 1970.”

This clearly means that the exemption granted to an intermediary is not applicable in cases of copyright violations. It is probably for the same reason that the Ministry of Electronics and Information Technology proposed the Draft Information Technology Intermediaries Guidelines (Amendment) Rules 2018, wherein Rule 3(9) states as follows:

“The Intermediary shall deploy technology based automated tools or appropriate mechanisms, with appropriate controls, for proactively identifying and removing or disabling public access to unlawful information or content.”

The said rules were to be notified somewhere in February 2020 but the notification is still awaited.

Conclusion

Most platforms, especially those developed on the user-generated content model like ShareChat, knowingly and deliberately host copyrighted material on their websites/apps and monetise the same, albeit arguing that they should be insulated from liability for the infringing material, owing to the practical inability of identifying the nature of the material being posted. However, the question of identification doesn’t arise when the platform actively participates in and promotes infringement of third-party copyright.

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We’re pleased to bring to you a guest post by our Fellowship applicant, Anupriya Dhonchak on the recent ‘Genda Phool’ row involving the rapper Badshah. Anupriya is a 4th year law student at National Law University, Delhi. She’d written a guest post for us last month as well.

Badshah’s Genda Phool Controversy: Cultural Appropriation, Cumulative Creativity and Copyright Law

Anupriya Dhonchak

In a recent controversy, singer rapper Badshah has been accused of not crediting Ratan Kahar, the original singer and lyricist of the song ‘Boroloker Biti Lo’, which is said to be the inspiration behind Badshah’s new hit song, Genda Phool.

Genda Phool, which released on March 26 features a Durga Puja event and admittedly draws on Bangla folk compositions and lyrics. According to Badshah’s statement in response to the allegations, his team had conducted proper due diligence for the song and did not find any of the previous versions of the song crediting their lyrics to Ratan Kahar.

This could have found favour with fans, however, as per the Indian Copyright law, authors have a near absolute right to “claim authorship of the work” as per section 57(a) of the Indian Copyright Act, 1957 (‘Act’). This is distinct from statutes in other jurisdictions, for instance Canada where the authors only have “the right, where reasonable in the circumstances, to be associated with the work”. Thus, this is likely to boil down to a question of fact. If it can be proven that Ratan Kahar in fact wrote and rendered the song ‘Boroloker Biti Lo’, and the lyrics and/or rendition of Genda Phool is substantially similar to the copyrightable part of the former, Badshah’s actions would fall foul of section 57(a) of the Act. It would even constitute outright infringement under section 51 for violating Ratan Kahar’s exclusive rights over the song under Section 14 of the Act. This would occur regardless of the results of any due diligence, as claimed by Badshah.

Another argument he made in his defence was that all information on the song that he could source during the due diligence revealed that ‘Boroloker Biti Lo’ was a traditional folk song from the Bauls of Bengal. This is crucial because expressions of traditional culture or folklore are open to recreations and sampling. This would also bring under the scanner what parts of ‘Boroloker Biti Lo’ are actually protected under copyright law in the first place.

Policy Implications

First, the appeal to the unprotectable nature of ‘Boroloker Biti Lo’ as traditional folklore reveals copyright law’s preoccupation with the solitary genius of the singular author which leads to devaluing of work which is a product of the cumulative creativity of communities. A more holistic concept of authorship involves situating creative practices in dialogue with and in relation to existing works and cultural discourses. This notion of creativity fosters cultural borrowing and syncretism as a means to enrich society and facilitate human progress. This is crucially distinct from cultural appropriation in the context of copyright law (previously dealt with here on the blog), which allows dominant cultures to claim exclusivity over and reap economic benefits out of the identities, culture and creative works of minorities. Unlike syncretism which is premised on sharing as equals, appropriation occurs within contexts of power differentials. Kembrew McLeod notes that copyright law compels communities that cherish cumulative creativity and do not want their culture to be appropriated by outsiders to forego their communitarian values and “buy in” to copyright’s Eurocentric and individualist notions of authorship and ownership.

Second, it is important to note in this regard scholarship that exposes the vagueness in standards of originality that differentiate works or copies that are regarded as derivative and infringing from those which are considered novel and original. Scholars note that this fiction of pure originality can often be used to appropriate and economically benefit from minority communities’ traditions, identities, ideas, expressions, or bodies to their exclusion and without any equitable sharing of benefits. This kind of control over a people’s culture is akin to controlling “their tools of self-definition in relationship to others.”

There are multiple examples of appropriation of minorities’ work by dominant cultures, particularly in the music industry. It is well documented that when minority communities challenge this appropriation, or draw on previously existing works for downstream uses, they are subjected to moral disdain and legal battles that they are unlikely to emerge victorious in. For instance, Grammy winning musician Beck’s work was described by a Rolling Stone reviewer as a “cross-pollination of styles — from hip-hop to country rock to funky seventies soul —[which] has shown him to be one of the most innovative and forward-looking artists of the nineties.” His work noticeably sampled from blues guitarist Johnny Jenkins. Similarly, Led Zeppelin is one of the multiple white bands that capitalised on the iterative character of blues music and the difficulty in attribution of these iterations. This is relevant to juxtapose against the self-assumed benevolence in Badshah’s statement to use the song as “a new way of introducing forgotten melodies to the new generation, as a celebration of Folk Music, PEOPLE’S MUSIC.”

Badshah’s defensive statement is an appeal to the public domain characteristic of expressions of traditional folklore. This makes one question the concept of the public domain as a space that encourages unfettered creativity by all. Madhavi Sunder and Anupam Chander call the belief that a resource in the public domain by force of law will be open to equal exploitation by all, “the romance of the public domain”. They emphasise the role played by knowledge, power, ability, wealth and access in making some persons more capable of exploiting the public domain than others. Kahar has reportedly responded to Badshah’s statement, which declared that he wanted to help the veteran artist with, “I expect a little monetary help from him (Badshah). I live in a poverty-stricken condition and will be glad to receive his help.” This also brings into stark relief the political actors that copyright law allows the privilege of being benign and charitable alongside those whose work it does not consider valuable enough for protection.

Last, it is important to note the informational value of the right to attribution in a day and age where we are overexposed to a glut of information mostly from “amply funded speech industries”. Attribution, which is made particularly easy and cheap by novel technologies in the digital era, can preserve the diversity of voices crucial for effective free speech. However, if required even when it is difficult to attribute, this right can stifle the creation of downstream works that interact with pre-existing works, which can again impede creation by marginalised communities and benefit copyright owners by overprotecting their rights and expanding the scope of exclusivity available to them therein.

We’re pleased to inform you that SagaciousIP is organizing a webinar in order to provide an insight to IP departments, into how they can deal with the economic impact of COVID-19. For further details, please read the announcement below:

Webinar on Best Practices in Innovation Management – Boosting R&D ROI [April 14, 2020]

Top global economists have hinted the onset of economic recession due to the COVID-19 pandemic. Apart from a direct impact on production and sales there would be an indirect impact on supporting functions such as IP. Thus, R&D centres and CoEs may face budget cuts on NPD and IP activities. However, there is a silver lining – it is the right time for optimization of existing processes and implementation of global best practices, ensuring the IP department survives budget cuts.
IP departments would agree that the process of managing the innovation life-cycle is often an unstructured territory which could benefit from support of experienced external consultants.

Here are some important questions that IP departments often face while managing the innovation life-cycle:

• Are you investing your time, money and energy, just for the sake of creating something or is it really solving a problem that impacts your business and relevant market?
• Does idea submission seem a burden to your team?
• Are your inventors submitting quality disclosures?
• Are your inventors able to comprehend information present in the landscape analysis report?
• Is patent landscape report killing inventors’ motive to invent as all they see is a huge volume of documents disclosing their idea?
• Do you always find your in-house IP team low on bandwidth to pick up additional tasks?

Who should attend?

• Corporate – Chief IP counsels, innovation managers/heads
• IP strategy professionals
• CXOs for SMEs
• R&D heads/process owners
• University IP managers, R&D department and tech transfer professionals

Panelists

• Anchor

Mr. Tanmay Mittal, Head – IP Solutions – India Region, Sagacious IP

• Keynote Speaker

Sumit Prasad, Group Manager, Sagacious IP

When?

• April 14, 2020 | 11 AM EDT | 5 PM CET | 8.30 PM IST

Registration

Please click here to register.

We’re happy to inform you that NALSAR Hyderabad’s Indian Journal of Indian Intellectual Property Law (IJIPL) is inviting papers for publication in Volume 11 of the journal. The deadline for submission is May 31, 2020.  For further details, please see the announcement below:

Call for Papers: Indian Journal of Intellectual Property Law (Vol. 11) 

We are pleased to announce that the Indian Journal of Intellectual Property Law (IJIPL)  is now accepting submissions for its 11th Volume.

The Indian Journal of Intellectual Property Law (IJIPL) is the flagship intellectual property law journal of NALSAR University of Law, Hyderabad. The IJIPL is India’s first student run journal that is wholly devoted to the study of intellectual property. Published annually, it is the combined endeavour of NALSAR University of Law, Hyderabad and the N.C. Banerjee Centre for Intellectual Property Law to address contemporary issues in the field of intellectual property law.

The IJIPL has had distinguished contributors to its previous editions such as Prof. Shamnad Basheer, Prof. Srividhya Ragavan, Dr. Mrinalini Kochupillai, Prof. Michele Boldrin, Prof. David Levine and many other renowned experts of the field.

Authors are encouraged to explore contemporary theoretical and legal controversies relating to intellectual property law and policy. However, fresh and interesting perspectives on IP policy as well as interdisciplinary perspectives on the subject are welcome.

The Journal is presently soliciting submissions for its 11^th Volume, to be released tentatively in December, 2020. Undergraduate students, post-graduate students, practitioners, faculty and other academicians are invited to contribute to the Journal in the form of essays, articles, notes and comments. Guidelines for the submissions are provided below.

The last date for submission of papers is May 31^st, 2020.

Submission Guidelines

1. Text and citations must conform to the rules in THE BLUEBOOK: A UNIFORM SYSTEM OF CITATION (19^th edition). The Journal employs footnotes as the method of citation, with speaking footnotes being discouraged.

2. The text of the submission must be in Times New Roman, size 12 and 1.5 spacing. The footnotes should be in Times New Roman, size 10 and single spacing.

3. All submissions must be accompanied by:

a. Separate document containing the biographical information of the authors, including the following details: Name, E‐mail address, Postal Address, Name and Address of Institution, Course (if applicable), Academic Year. No reference to the name or the affiliations of the author must be present in the text of the submission and must only be provided in this separate document.

b. An abstract of not more than 350 words describing the submission. Please note that there is no requirement of prior submission of the abstract, as papers are selected for publication only on the basis of the full manuscript. The abstract shall serve merely to help the Editorial Board in its review process.

4. The submissions must fall into one of the following categories:

a. Articles

An article must comprehensively analyse the issue that the author seeks to highlight. It must contain a rigorous study of the status quo or a contemporary issue. An article should be between 5,000‐6,000 words.

b. Essays

An essay challenges existing paradigms/norms and provides a fresh outlook to common problems. It is strongly recommended that essays be considerably more concise than articles, in terms of scope and conceptualization. An essay must thus ideally be between 3,000‐5,000 words.

c. Notes

A note is a relatively concise form of an argument advanced by the author. The focus of a note should be on a relatively recent debate or controversy regarding the interpretation or implementation of the law. The word limit for a note is 2,500 words.

d. Comments

A comment allows the author to critique any recent/landmark judicial pronouncement, legislation or a pending bill. The word limit for a comment is 2,500 words.

5. Each submission must be the original work of its author(s). Any submissions found to be plagiarized from another source will be automatically rejected. To this end, a plagiarism check will be conducted as the first stage of evaluation.

6. Submissions must be in accordance with the Submissions Guidelines and Editorial Policy. The contributions accepted for publication and the copyright therein shall remain jointly with the Author(s) and the IJIPL. Any person desiring to use IJIPL’s material for education purposes, research or private study can do so with prior written permission of the Publisher (registrar@nalsar.ac.in).

7. All author(s), by submitting any contribution towards IJIPL, hereby consent to indemnify NALSAR University of Law, Hyderabad and IJIPL from and against all claims, suits and consequences based on any claim of copyright infringement/ unauthorized use / violation of any right which may arise as a result of their contribution being published in IJIPL.

8. Authors must inform the Editorial Board if their manuscripts have been submitted to other journals. Authors may request an expedited review on these grounds, but the granting of the same is within the discretion of the Editorial Board.

Please send the submissions to: ijipl@nalsar.ac.in. The subject line must read ‘Submission for Vol. 11’. Queries may be directed to the same ID, with ‘Query’ in the subject line. Editorial and Peer Review Policy and other information about the Journal can be found on the website www.ijipl.nalsar.ac.in.

We’re pleased to bring to you a riveting guest post by Dr. Sunanda Bharti, exploring issues related to copyright in unpublished works in India. Among others, she looks into the question as to when is a work considered published or what constitutes publication of a work. 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, here and here.

Copyright in Unpublished Works: What Constitutes Publication?

Dr. Sunanda Bharti

What would happen if I write a novel and keep the manuscript in the drawer of my study table? Would it have any copyright? Is infringement possible in such a scenario? What is term of copyright? When would it be considered as published? What is publication — if I give the manuscript for an innocuous reading/inviting comments to a friend, would it tantamount to publication? This post is an attempt to explore answers to these questions.

Publication not a pre-requisite for copyright to subsist in a work

According to Section 13(1) of the Copyright Act, 1957, subject to other clauses of the section and the other provisions of the Act, copyright subsists in original literary, dramatic, musical and artistic work, cinematographic films and sound recordings. There’s no requirement of publication mentioned in the provision for subsistence of copyright in a work. Nor does any other provision of the Act prescribe such a requirement. Therefore, it is clear that unpublished works are also copyright protected under the Indian copyright law. For a detailed discussion on the various provisions of the Act that support this interpretation, you may refer to this blog post here. A work receives copyright protection the moment it is written, provided it is original. It doesn’t need to be shared, seen, read or appreciated by anyone for copyright to vest in it.

However, should copyright subsist in unpublished works? What after all is the purpose of granting copyright in unpublished works when they are not available to public and thus, of no benefit to the society? The reason seems to be to protect the fruits of the author’s labour against misappropriation by someone who unlawfully gains access to it before it is published. Although copyright subsists in unpublished works, it is equally true that if the manuscript is just sitting on the hard drive of your computer or is lying in the drawer, and some controversy arises regarding its authorship/copyright ownership, it would be difficult (though not entirely impossible) for one to prove themselves to be the true and bona fide author/copyright owner. Every right has a correlative duty. This is true for copyright as well. Others can be put under a tacit duty not to interfere with one’s (copy)right only if they know of its existence or origin. In the absence of such knowledge or notice, technically and strictly speaking, it is a ‘no possibility of infringement’ scenario. Therefore, in order to claim copyright infringement of an unpublished work, one will have to necessarily prove that the alleged infringer had access to their work. Hence, the importance of publication.

What constitutes an ‘unpublished’ work?

Under section 3 of the Act, ‘publication’ means making a work available to the public by issue of copies or by communicating the work to the public. Is ‘unpublished’ [work] an antithesis of ‘published’ then? Does an ‘unpublished’ work mean a work that is not available to the public? Is (i) the manner of making a work available to the public, (ii) the knowledge of the work among people, (iii) the number of people having the knowledge, or (iv) the intention with which it is made known, important in determining if a work constitutes a published work or an unpublished one?

Statutory ambiguity prevails in this context and unfortunately, no Indian case law could be found on the subject. Perhaps the answer may reveal itself if one focuses on the meaning of ‘unpublished’. For the analysis of the meaning of ‘unpublished’, attention should be brought to section 52(1)(p), section 31A(1), Explanation to section 2(ff) and section 6 of the Act

Section 52(1)(p) provides that “reproduction, for the purpose of research or private study or with a view to publication, of an unpublished literary, dramatic or musical work kept in a library, museum or other institution to which the public has access’ is not infringement of copyright.” This provision sufficiently hints that even if a work is accessible to the public, it can constitute an ‘unpublished’ work. It seems that an ‘unpublished’ work, hence, cannot simply be equated to a work not available to the public. It could mean that for a work to be considered as ‘published’, it must be made available to the public in a certain manner and/or with a certain intention.

Another dimension of what may be considered as unpublished is provided by section 31A(1), which entitles any person to apply for a compulsory licence to publish unpublished works or certain published works. How would someone apply for a license for publishing a particular unpublished work, unless they have knowledge of it? The provision seems to suggest that knowledge of the existence of a work to a person or a group of persons (who could apply for a license for its publication) does not affect its ‘unpublished’ status – it remains unpublished despite being in knowledge of certain persons.

Given the above generated understanding of ‘unpublished’, sharing an unpublished work to a group of friends for their feedback is unlikely to amount to publication. Among other things, it may be because, in sharing it with those friends, the author never intended to publish it in the conventional/popular sense of making it available for consumption. However, if the intention was to share it with them for their consumption, then it is likely to be considered published (irrespective of the number of people in the group). One may thus conclude that a work is considered unpublished, until it is (with volition) made available to the public for the purpose of consumption (author’ submission).

To emphasize, publication is not dependent on the knowledge of the work among people or the number of people who know about your work but rather the intention with which the author has made it available to them. That is how a manuscript on display in a public museum or library can still be categorized as ‘unpublished’ and a novel which is out there in the market, even if it is read by none, is considered as ‘published’.

This understanding is further supported by Explanation to section 2(ff) of the Act which defines the term ‘communication to the public’. Both give an indication that the term public is not linked with number of people. The Explanation states that communication of any work to ‘more than one household or place of residence including residential rooms of a hotel/hostel’ is deemed to be communication to the ‘public’. Given that one household/residence/hostel or hotel room may have as less as one member, it seems that even two persons may amount to ‘public’. Thus, the Explanation suggests that publication is not dependent on number of people to whom the work has been made available.

This also finds support in the Delhi High Court Division Bench’s judgement in the DU photocopy case, wherein it was observed albeit in a different context, that “[p]ublication need not be for the benefit of or available to or meant for reading by all the members of the community and that “[a] targeted audience would also be a public…” (para 57) (although the court’s observation has been argued to be incorrect in a post on the blog here).

Nevertheless, from a reading of section 6 of Act, it appears that there could be some linkage between the number of people and the factum of publication. Among other things, the provision provides that if any question arises as to whether a work has been published, the Appellate Board’s decision would be final; and if in the opinion of the Board, issue of copies or communication to the public of the concerned work was of ‘insignificant’ nature, it shall not be deemed to be publication for the purpose of the Act. In what circumstances would the issue/communication of a work be considered insignificant is not clear. Would the number of people be a critical factor? Or would only the intention or purpose be the determinative factor?

Term of copyright in unpublished works

Why is the above discussion on the meaning of publication important, when copyright subsists in both published and unpublished works? Although the subsistence of copyright in a work is not dependent on its publication (but its creation), as per Section 22 of the Act the term of copyright depends on the factum and date of its publication. Thus, the question of when a work is considered to be published is important for determining the copyright term of works.

ShareChat, an Indian local language social media service, is once again in the middle of a copyright storm. Readers may remember ShareChat’s tussle with TikTok from last year, regarding its status as an intermediary and protections against copyright infringement claims. This time, it’s ShareChat facing the proverbial music, with T-Series and a related entity Lahiri Recording taking civil and criminal action against ShareChat for allegedly violating their copyright through its services.

The dispute has once again revealed the copyright fault lines between the online service providers industry and the Indian music industry, with the Internet and Mobile Association of India (IAMAI) publicly supporting ShareChat, while record label representatives Indian Music Industry wrote about why ShareChat was in the wrong, on our blog here. This piece is a response to the IMI’s claims about ShareChat’s legal responsibilities.

Background

Earlier in November, T-Series had filed a suit for copyright infringement against ShareChat claiming that some 2,20,675 copyrighted works had been illegally used by ShareChat. Consequently, T-Series obtained an ex-parte ad-interim injunction from the Delhi High Court. The order states as follows:

“Consequently, till the next date of hearing, defendant, its directors, officers, employees, agents, assignees, representatives and all other persons etc. are restrained from using or by way of storing, hosting/reproducing/making copies, issuing copies, commercially exploiting/monetizing, communicating to the public, digitally transmitting, publicly performing, synchronizing with other works, making new works therefrom   adapting,   modifying and making available the plaintiff’s copyrighted works on/through the impugned services or in any other manner whatsoever exploiting the plaintiff’s copyrighted works details whereof have been mentioned in the CD.” (Emphasis mine)

Subsequently, in March, 2020, the Yeshwantpur Police in Bengaluru filed an FIR against Sharechat and its directors under Sections 63 of the Copyright Act and Section 102 of the Trademarks Act, based on a complaint by Lahiri Recording Company.

IMI’s Claims about ShareChat’s Liability

The IMI makes two legal claims about ShareChat’s intermediary liability status under the IT Act, which I would like to respond to, based only on the information provided in the blog post and the Delhi HC order.

First, IMI claims that ShareChat is not an intermediary because it has knowledge of copyrighted content being circulated on its platform (basis its description on the Apple App Store). This is a misreading of Section 2(w) of the Information Technology Act, which does not include a knowledge standard for qualifying for the status of intermediary (under that Section). The only qualification for an intermediary under Section 2(w) is that it deals with third-party electronic records (“on behalf of another person”). There is no claim herein that ShareChat uploads content of its own accord, and the knowledge standard does not come into the picture when qualifying for intermediary status under the IT Act. A standard of knowledge for the purpose of liability only comes into play when considering safe harbour protections under Section 79, and not upon the qualification as intermediary under Section 2(w).

Second, the IMI claims that ShareChat cannot claim protection under Section 79 of the IT Act. Here, IMI claims that Section 81 of the IT Act intends to exclude questions of copyright violation from intermediary safe harbour. This assertion is contrary to judgements of the Delhi and Bombay High Court, stemming from the division bench’s decision in Myspace v. Super Cassettes which categorically held that Section 81 does not preclude a safe harbour defence in case of copyright actions. Additionally, the Court held that intermediaries would lose their safe harbour protection only if they do not comply with takedown notices, which provide specific URL’s or locations of infringing material. In the present case, the claims for liability were not preceded by takedown notices for the allegedly infringing content, according to ShareChat representatives.

Admittedly, the liability for intermediaries does not extend when the intermediary has actual knowledge, or when it “conspired or abetted or aided or induced” the doing of the unlawful act (as per Section 79(3)(a)). As already mentioned, in secondary infringement claims under the Copyright Act, the standard is that of ‘actual knowledge’ as modified by the MySpace decision. Further, in Christian Loubatin v. Nakul Bajaj, the Delhi HC had held that the standard for ‘conspiring, aiding, abetting or inducing’ is that the intermediary must be an ‘active participant’ in the infringement or illegal act, although the judgement did not specify a standard of knowledge which is required for such disqualification. In the present case, the claim as per IMI is that (i) ShareChat has a number of infringing videos on its platform, and (ii) that it’s App Store description indicates a general knowledge of such infringement. It is unlikely whether this is sufficient basis for liability.

The waters of intermediary liability jurisprudence in India are certainly muddy, with the uncertainty over the application of the law leading to divergent and conflicting judgements and affecting both internet and recording businesses. The court’s will ultimately have to pull themselves out of this quagmire of conflicting standards of liability, until which it appears unlikely that either online intermediaries or copyright holders will be breathing easy.

(This post has been authored by our intern, Bhavik Shukla, a 5th year student at NLIU, Bhopal)

Topical Highlight

Our Fellowship applicant, Anupriya discussed the copyright-related issues thrown up in light of the recent ‘Genda Phool’ row. She begins by stating that an absolute right to claim authorship exists under the Indian copyright law, and Badshah’s rendition of the song ‘Boroloker Biti Lo’ would be an infringement of Ratan Kahar’s exclusive rights over it. By way of policy implications, she notes that first, copyright law should evolve a holistic concept of authorship, thereby creating an opportunity for cultural borrowing and syncretism. Second, she observes that the ambiguity in determination of ‘originality’ often results in appropriation of works of the minority communities. She also emphasizes upon the role played by various societal and inherent factors in enabling certain individuals to exploit the public domain better than others. Third, she observes that ‘attribution’ of a work can preserve diversity important for effective free speech, but also recognizes the danger arising from over protection of copyrighted works.

Thematic Highlight

In a guest post, Dr. Sunanda Bharti discussed the issues related to copyright in unpublished works in India. She notes that there is no specific requirement of publication of a work for subsistence of copyright under the Copyright Act, 1957 (‘Act’), and accordingly even unpublished works are protected by the Act. Although copyright may subsist in an unpublished work, she observes that its enforcement by the ‘true and bona fide author’ necessitates the work’s publication. Delving into the meaning of ‘unpublished’ with the aid of various provisions of the Act, she observes that a work may be considered to be ‘unpublished’ until the author has an ‘intention’ to make it available to the public for the purpose of consumption. Further, she opines that the fact of publication does not depend on the number of people to whom the work is made available to, but she also points to section 6 of the Act which seems to indicate that there may be a connection between the two. She concludes by noting that the ascertainment of publication is important for determination of the copyright term of work.

Other Posts

A guest post by Priyanka Joshi examined the liability of intermediaries with specific reference to the application, ShareChat. She begins with the determination of the term ‘intermediary’ under the Information Technology Act, 2000 (‘Act’). She notes that ShareChat is not an ‘innocent’ intermediary, in light of its description on the iOS and Google Play Store applications. Further, she notes that ShareChat provides access to third-party copyrighted material, without their permission or authorization. She notes that the intermediary exemption under section 79 of the Act is inapplicable to ShareChat Dealing as it is aware of the infringing activities occurring on its platform. She subsequently relies on section 81 of the Act to state that exemptions to intermediaries cannot be granted in cases of copyright violations. In conclusion, she observes that platforms which participate in and promote infringement of copyrighted material should not be granted the intermediary exemption under the Act.

This was followed by Divij’s post, where he responded to Priyanka’s aforementioned post on ShareChat’s alleged infringement of copyrighted works. First, he states that the qualification of an ‘intermediary’ under the Information Technology Act, 2000 (‘Act’) does not require consideration of any knowledge standard in its respect. He further states that the importance of ‘knowledge’ is only applicable while considering if the intermediary exemption is applicable under section 79 of the Act. Second, he observes that section 81 of the Act cannot be interpreted to prevent the application of the safe harbour defence to intermediaries, as such defence would be lost only if they failed to comply with takedown notices. Subsequently, he observes that the standard for secondary infringement is ‘actual knowledge’, and it is unlikely that Priyanka’s claims constitute a sufficient basis for liability of ShareChat. He concludes by observing that intermediary liability jurisprudence in India is highly uncertain, and it is for the courts to bring some order to the conflicting standards of liability.

SpicyIP Announcements

Recently, we informed readers about Sagacious IP’s webinar on best practices in Innovation Management to be held on April 14, 2020. The webinar aims to provide an insight to IP departments into dealing with the economic impact of COVID-19. More details about the panellists and the reasons to attend the webinar can be sought from the post.

We also informed readers about NALSAR University’s call for papers for Volume 11 of their flagship journal, the Indian Journal of Indian Intellectual Property Law. This volume of the Journal is to be tentatively released by December, 2020, and the deadline for accepting submissions has been fixed at May 31, 2020. Further information on the submission guidelines is mentioned in the post.

Other Developments

India

Judgments

Kishore Kumar and Others v. Union of India and Another – Delhi High Court [March 6, 2020]

Numerous petitions were filed against the Trade Marks Registry for the non-communication of the O-3 notices, whereby the Registry had failed to inform the registrants that their marks were due for renewal. In this light, the registrants argued that their marks could not be considered to be ‘abandoned’ in the absence of communication of the aforementioned notices. The Court noted that the Registry had submitted various affidavits clarifying the workings of the entire computerized process, and that it had also invited stakeholders’ comments for improving the Registry’ functioning. Moreover, the Court observed that several suggestions made by the stakeholders had already been implemented by the Registry. Accordingly, it granted the Petitioners and other stakeholders an opportunity to submit further suggestions within six weeks from the date of the order and dismissed the petitions.

News 

• RSS-affiliate Swadeshi Jagran Manch claims that the U.S. asked for hydroxychloroquine from India because it has a pro-people patent regime.
• Northern Railway contemplates applying for a patent for the design of the isolation coach.
• Natco Pharma launches a lower-cost generic version of AstraZeneca’s patented anti-diabetes drug, Farxiga.
• BananaIP Counsels to waive patent filing fees for inventive masks to promote universal face covering.
• Mahindra and Mahindra claims that the allegations of IP theft against it in respect of manufacture of respirators are baseless.
• Many applications for registration of various coronavirus related trademarks have been filed before the Registry. Our post analysing legal issues relating to such marks can be viewed here.

International

• WHO Director-General endorses the idea of creating a voluntary IP pool to develop COVID-19 products.
• WIPO Director-General states that COVID-19 emergency could trump patent rights.
• Experts on health, law and trade send across an open letter to 37 WTO members asking them to declare themselves open to import medicines manufactured under compulsory license in another country under Article 31bis of the TRIPS Agreement.
• CHF Solutions submits a patent application for a system which enables the removal of cytokines from the blood of patients suffering from COVID-19.
• Tiziana Life Sciences files a patent application for its method of introducing antibodies into the lungs using a handheld inhaler.
• A piece in Law360 argues that the onset of the COVID-19 pandemic may result in adoption of new patent strategies.
• A piece in JDSupra argues that various companies which intend to provide equipment to tackle COVID-19 may be liable for possible patent infringement, if they do not enter into a Defence Production Act contract.
• A piece in the New York Times argues that the COVID-19 pandemic should not turn into an excuse to coerce writers to give up their rights.
• A piece in The Wire contemplates a means to stimulate pharma innovation without necessarily granting patents.
• In light of the copyright owners’ objections to creation of National Emergency Library by Internet Archive, a piece in Jurist argues that if copyright is property, then copyright owners are landlords and copyright profits are rent.  

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Many may have followed the press release by the WIPO earlier this month declaring that in 2019 China had surpassed the United States to become the largest filer of international patent applications for the first time. That is, number of the PCT applications originating from China is the largest in the world as on 2019. PCT applications originating from China were 58,990, which represents a 11% growth from the previous year and almost 2400% increase from 2005. The number of PCT applications originating from India in 2019, in contrast, was around 2053 only.

Does this mean that China is more innovative than say the US or Germany? Honestly, I do not know. The WIPO’s director-general, however, certainly believes that this is an indication of a “long term shift in the locus of innovation towards the east“. This press release immediately resulted in discussion surrounding the importance to be ascribed to such numbers – in particular, the famous “quantity versus quality” debate. The argument is that a significant percentage of such patent filings comprise insignificant or minor improvements and may not even cross the threshold of patentability and/or may be abandoned subsequently. This criticism is further compounded by government incentive programs that subsidise patent filings and provide monetary incentives – which is a major factor in China, with its “Made in China” campaign.

I don’t intend to enter the debate nor will I proffer a view taking either side.

However, this data underscores subjective factors – ‘momentum’ and ‘acceleration’. The growth in the patent filings originating from China, if not anything else, demonstrate the existence of a momentum towards innovation. It may be true that some of these innovations may be minor, useless, junk, or even genius – such adjective qualifiers are irrelevant in my view. Nevertheless, the country is demonstrating a velocity directed towards creating innovation and is geared towards producing more innovations. It breeds the culture and thinking of the people towards making new things. It acts as a coordinated message and beacon that tells the people to make innovative things. Such consistent momentum increases the chances that a significant Δv, i.e. acceleration, propels the inventors in the country into producing truly innovative ideas. Where the momentum is directed in this fashion, it is inevitable that even as a matter of chance, mighty innovations may arise.

The data, whatever be the quality of patents involved, indicates the sheer act of constantly “doing” research/innovation and the constant “process” of R&D, whatever be the outcome of this research. I have often observed this even with my own legal research. I have often observed that in the researching and understanding one legal proposition, even the most inane, obvious, or well-known legal proposition, I find myself learning other propositions other than my original goal; I am exposed to other thoughts and ideas. The sheer act “of doing”, in my case, legal research, generates more learning and more original thinking.

I immediately concede that this is extremely subjective – but my view is that “innovation” is subjective and to describe “innovativeness” by statistical data alone will always result in half-truths.

On several occasions (more so in the past two weeks), I have wondered on the lack of a similar “momentum” in India despite the “Make in India” campaign and similar policies allegedly directed to increase innovation in this country. In my personal view, we have grown too complacent (probably in the last 20 years) as a people because anything we want was always made available from somewhere else (e.g. China). For decades together, the Government of India was very happy about it – they did nothing to generate “momentum” towards innovation and overtime, we have gathered “moss”.

I shared these thoughts with my father, Mr K S Ramanujan, an inventor in his own right who has toiled with this own ingenuity in this country for over 40 years. I quote below, his response:

“Dear AKR,

The sheer growth in the number of patents have to be categorised at least into two buckets: (1) Foundation patents which standalone without a previous implementation – example “Hard Disc Drive” or a SSD; and (2) incremental patents that consider an existing unmet need in an implementation and cross that chasm with a variant for which the appropriate claims are structured. The biology world gives us millions of such opportunities with gene engineering. 

The very process of looking at (2) without being worried about the need for (1) is the hallmark of Chinese science & technology. The classic example is the incremental inventions in the Li Ion Cells and electrical storage thereof. When I was part of the silicon crystal growing and photo voltaic manufacture in India in the 1980s, China did not do any Silicon processing, but our principal technology partner Siltec, in Palo Alto had a number of Chinese working with them with whom I had interacted with. So, China had a clear 50-year plan. 

This definitive effort from China is fuelled by the large resources that the Govt lays out to sustain the success story of a few of the many inventors doing (2). This is the key to the Chinese paradigm. This is approximately what US did in the early part of the period during the WW-II and funded the European thinkers (read the book Uranium Wars) to get the quantum riddle solved and have the two WMDs built. The entire funding came from federal reserves staring from a paltry 6000 USD fund which grew to billions of dollars.

The difference now in this Chinese paradigm is that China funded it’s scientific community to pursue knowledge in US and carry back the ideas to implement back at home and a tacit long term plan of global dominance and sustaining this  for many years with a surplus budget and carefully channelling that into manufacturing, no matter to whom the design belongs. The old Confucius wisdom was followed in true spirit: “When I hear I forget, when I see I remember, when I do I understand”. 

We in India could never get to the third and most important part of that wisdom. We are at best traders and that, we will continue to be. 

So, in effect the game is lost. No country in the world can put together this Chinese exclusive capability and size.”

Not that he is cynical; for that matter, neither am I. But I do believe that, we, as a country, have been getting it wrong for a long time as far as innovation is concerned; we have not truly understood when and how to drive innovation; it has been a long time since we have had visionary policy-makers who see beyond their noses. Perhaps, the old adage “necessity is the mother of invention” is true after all. I believe the recent COVID-19 scare has shown our significant dependency on China and I hope it has made the Government (and inventors) realize the need to be truly and independently innovative.

Hope this was thought provoking. In the meantime, stay safe everyone!

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The difficulty in defining virtual/crypto-currencies and its accompanying challenges has been beautifully captured by the prolific raconteur Justice V. Ramasubramanian in a recent judgment examining the validity of the RBI’s position in respect of virtual currencies, as:

“Any attempt to define what a virtual currency is, it appears, should follow the Vedic analysis of negation namely “neti, neti”. Avadhuta Gita of Dattatreya says, “by such sentences as ‘that thou are’, our own self or that which is untrue and composed of the 5 elements, is affirmed, but the sruti says ‘not this not that’.” The concept of Neti Neti is an expression of something inexpressible, but which seeks to capture the essence of that to which no other definition applies.”

Thereafter, the judgment goes on to capture the history of crypto-currencies with a focus on bitcoin, to highlight the absence of any central ownership/agency for such currency. Rather, the judgment highlights the repository of the currency being a communal database of all users of the virtual currency, which is in-turn, called a blockchain. This blockchain verifies and enables transaction related to or using crypto-currencies.

The concept of crypto-currencies has advanced considerably in the last decade. From bitcoins were spawned “alt-coins”, which represented alternatives of varying degrees. Predominant amongst these are blockchains such as Factom which provide different means of generating crypto-currency. This gets even more complex with new generation blockchains such as Neo and Ethereum, which allow for building applications on blockchains, leading to cutting-edge technology such as smart contracts that uses blockchain for verifying transactions. There is also an exchange involved, which is typically used to verify and complete these transactions.

The central theme in all these rather bewildering technologies is the absence of any central control or ownership. This creates rather peculiar difficulties in identifying the ownership of these currencies/blockchains for trademark purposes. Trademark law is premised on “one mark, one source”, which appears at odds with the disparate nature of blockchain technology. Since no individual/entity can claim ownership/responsibility, there appears to be no possibility to protect any intellectual property in community-based blockchains. The immediate question that comes in response to this line of thinking is the requirement of trademark protection, given the community based use worldwide. This is best reflected in the outcry in the United Kingdom when an entity registered the term ‘Bitcoin’ and attempted to enforce the same. The absence of any trademark in other countries, including the United States of America was highlighted in the vociferous protest to the trademark.

The absence of trademarks for blockchains creates pressing issues which are tied into the larger concerns surrounding such technology. This is rather relevant given the wide range of crypto-currencies and exchanges available, which are bereft of boundaries and regulations. Take for instance a casual user of the internet, who having read the hyped valuation for bitcoin, decides to purchase the same. Coming online, she sees an array of persons offering to sell bitcoins. Amongst these is an unscrupulous individual, who starts a fake exchange, which extensively promotes bitcoins. The individual unwarily indulges in the transaction, and upon discovery of its fraud is typically bereft of any remedy. In the course of regular commerce, such exchange would have been immediately injuncted by a trademark owner to prevent any further dilution of the brand.  In the case of bitcoin, even such wrongful use cannot be stopped under trademark law, as no person can claim to be the owner of the mark to censure another from using the same. The absence of any other regulation to prevent such mark being used only aggravates these concerns. In another instance, a new crypto currency with a deceptively similar name such as “Baitcoin” would confuse the unwary investor, as the original and well-known blockchain is incapable of protecting its reputation and goodwill, due to the lack of locus. Of course, there are technological fixes, but the instances of fraud which have been stated above are the subject of study by various regulators despite layers of technology being added on a daily basis. This also creates issues in terms of using the name of the blockchain in relation to other goods and services, and if such use is not bonafide, yet again the lack of locus pre-empts any action being taken under trademark law. The inability of the name of the blockchain to identify its origin/source, would call into question its legality as a trademark itself. This position is rather unpalatable given that the importance of blockchain technology is getting manifested in its proven potential to replace conventional databases for any kind of secured data, not just crypto-currency.

In attempting to see if trademark law can apply at all, it would be worthwhile considering if such blockchain technology can be brought within the ambit of “collective marks” i.e. marks belonging to a community of users. If regulators mandate that the operation of any blockchain would require its registration as a collective mark, it would definitely protect consumers against misleading practices, and also overcome the paradox of de-centralized control. This would of course require a re-think of collective marks, as other concerns including data privacy have to be factored in. The present solution for any kind of crypto-currency fraud has been to rely on penal remedies. However, as the modus operandi gets more sophisticated, the legal remedies must necessarily keep pace, which is definitely not the situation today.

(This post has been co-authored with Prannv Dhawan, 3^rd year B.A. LL.B. (Hons.) student at  NLSIU, Bangalore)

This year marks the 17^th year of existence of the Intellectual Property Appellate Board (IPAB) and in this post, we are going to lay down a case for shutting down the IPAB and transferring its powers and case-load back to High Courts.

Originally setup under the Trade Marks Act, 1999 to hear appeals against the trade mark registry, as well as rectification petitions against registered trademarks the IPAB was notified only in 2003. At the time, the IPAB was basically taking over the powers originally exercised by the High Courts. In the years that followed, the powers of the High Courts under the Patents Act and the Copyright Board were also shifted to the IPAB. Nobody really knows why the government created the IPAB because the government has never held a discussion with either the general public or the IP bar on whether such a tribunal was even required.

Since its creation, the IPAB has almost never functioned efficiently and the quality of appointments, save for a few exceptions like Justice Sridevan’s appointment, has not been satisfactory.

As per our calculations, in its 17 years of existence, the IPAB has not had a Chairperson for a cumulative total of 1,130 days. For example, there was lag of 256 days between the retirement of Justice Jagadeesan and appointment of Justice M.H.S. Ansari in 2006. Similarly, there was a gap of 262 days between the retirement of Z.S. Negi and the appointment of Justice Prabha Sridevan in 2011. There was then a delay of 597 days between the retirement of Justice K.N. Basha and the appointment of Justice Manmohan Singh in 2018.

Separate from the long gaps in the appointment of the Chairpersons of the IPAB, is the fact that the IPAB has not had a Technical Member, Patents since the year 2016. Since the law prescribes a minimum quorum of one Judicial Member and one Technical Member to hear any kind of case, the absence of a Technical Member, Patents has meant that the IPAB has not been able to hear appeals or revocations related to patents for 4 years now! Similarly, after the functions of the Copyright Board were merged with the IPAB via the Finance Act, 2017 there has not been a single appointment of the promised technical members because of which the Copyright Board has been paralyzed and unable to hear several critical compulsory licensing applications. Similarly, there has been no Technical Member for trademarks matters since December, 2018 meaning that the IPAB has lacked quorum to hear even trademark matters for more than a year.

Apart from vacancies, there is also the issue of quality of appointments to the IPAB. As we have pointed out earlier on this blog, one of the technical members for trademarks had provided incorrect information on his job application. When asked for trademark cases where he had appeared, he mentioned an English case from 1887! Another technical member for trademarks was appointed despite the Vice-Chairperson objecting to his appointment on the grounds that he lacked any substantial experience in trademark matters (we had prepared a report on his appointment over here).

Another worrying fact is that most appointments to the post of technical members or the Vice-Chairpersons were bureaucrats from the Indian Legal Service (ILS) or the Trade Marks Registry or the Patent Office – none of them had any experience practicing the law before courts and have never held prior judicial office. These include Chairperson Z.S. Negi (ILS), Vice Chairperson Raghbir Singh (ILS), Technical Member S. Ravi (TMR), Technical Member Parmar (Patent Office), Technical Member S. Chandrashekharan (Patent Office) and Technical Member T.R. Subramaniam (TMR). All too often, the bureaucrats on the IPAB have failed to grasp even the basics of the Evidence Act, we have previously documented over here.

Separate from the appointment issues, are questions related to lack of infrastructure and resources for the IPAB to function efficiently. For the longest time, the IPAB has had an appalling office in Chennai, from where it used to fly for circuit hearings to Delhi and Bombay. It later did get (from what I hear) a ramshackle office at New Delhi. Since Chairpersons are often reluctant to travel, most hearings are conducted only in Delhi or Chennai, thereby increasing costs for litigants because lawyers end up charging more for out-station hearings.

The implications of a dysfunctional IPAB are severe not just for litigants and the general public but also the IP bar. This includes delays not just before the IPAB but also the High Courts and District Courts which retain jurisdiction related to trademark and patent infringement cases. Most of the times these infringement suits, cannot by law, proceed until the IPAB decides the revocation/rectification petitions for registered trademarks and patents. A delay at the IPAB therefore automatically results in a delay before the High Courts and District Courts. Litigants have suffered unnecessarily because of the poor state of affairs at the IPAB and we are quite certain this has affected the larger economy around IP in India.

A dysfunctional IPAB also has severe implications for the general public. There is significant public interest attached to several patent cases that are heard by the IPAB, especially when the patent covers a pharmaceutical drug whose price could be significantly reduced through generic competition. By delaying adjudication of a patent revocation petition pertaining to a patented drug, the IPAB is basically delaying the entry of more affordable generic medicine into the market.

Last but not the least, the community of IP litigators has also suffered because the dysfunctional IPAB affects their ability to improve their earnings, making it difficult especially for younger lawyers to break into the big league. How do you establish your credential as a young IP lawyer, if the designated tribunal never works? A well-functioning IPAB will seriously increase competition within the IP profession.

The way forward

The dysfunctional state of affairs at the IPAB has shown little improvement over the last decade. In this context, a straightforward solution is to shut down the IPAB and transfer its functions back to the High Courts. The case load before the IPAB is estimated at 2626 trademarks cases, 617 patents cases, 691 copyrights cases and 1 geographical indication case. If these cases are transferred across High Courts, I doubt it will add much to their existing case load.

The community of IP lawyers in Chennai, Delhi and Mumbai must seriously consider making a joint representation to the Department of Industrial Promotion and Trade (DIPT), which oversees India’s IP policy, asking it to consider shutting down the IPAB and shifting the functions back to the High Courts. Over the years, the DIPT itself has faced innumerable headaches in the form of multiple lawsuits over the independence of the IPAB, the lack of appointments and resources to the IPAB etc. It could save itself the trouble and shift the functions of the IPAB back to the High Court. After all nobody knows why the functions of the High Courts were ever shifted to the IPAB, in the first place.

[Edit: Please click here to view Arun’s response to this post] 

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We’re pleased to inform you that the UNH Franklin Pierce School of Law is offering a range of graduate IP law programs online. The priority application deadline for these programs is July 1. For further details, please refer to the announcement below:

Considering an Online Master’s? Explore UNH Franklin Pierce School of Law’s Intellectual Property Law Offerings

The COVID-19 pandemic has impacted all our lives in unexpected ways. While the University of New Hampshire Franklin Pierce School of Law has shifted to remote learning this semester, the school is still preparing to welcome international students to campus this fall. At the same time, it is important to know that the top-ranked law school – a digital law school at the forefront of technology – also offers its world-recognized graduate law programs online through distance learning options.

The school’s Intellectual Property Law program, the #5 IP program in the United States according to U.S. News and World Report, can be completed 100% online on a part-time or full-time schedule.

With almost 50 years of experience as an IP leader, Franklin Pierce boasts a talented faculty, a global network of influential IP practitioners, and a rich array of IP resources and programs. Take advantage of one of the most comprehensive IP curricula in the country and immerse yourself in a broad range of cutting-edge IP issues. Students can choose from a range of degree offerings, such as:

1. LL.M. degree in Intellectual Property Law
2. Master’s degree in Intellectual Property Law*
3. Graduate Certificate in Intellectual Property*
4. Professional Certificate in Blockchain, Cryptocurrency and Law*

*These programs are open to non-law graduates as well.

Franklin Pierce also offers the similar degree choices in its International Criminal Law & Justice program, the only online transnational crime program from a Top 100 law school. UNH Franklin Pierce is a leader in this emerging field, addressing fast-paced developments in the globalization of commerce, terrorism, human rights, and criminal law.

It’s not too late to apply! The priority application deadline for online programs is July 1. Learn more and apply here. You can also contact the school at admisisons@law.unh.edu or on WhatsApp at +1-603-513-5300.

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I had read Prashant and Prannv’s post, and wanted to explain why scuttling the IPAB is not the fix for bureaucratic red-tapism, of which the IPAB has been a rather targeted victim.

Needless to state there have been intermittent delays in appointing chairpersons and members to the IPAB. This was especially manifested in the appointment of the last two chairpersons. The cause of this delay cannot obviously be thrust on the Tribunal itself, which is subject to the vagaries of the Government for appointments. The shortfall in filling up judicial vacancies certainly haunts even our High Courts and the Supreme Court. This gets aggravated in the case of Tribunals, due to the prerogative of the Government in appointments. It would be futile to reiterate where the fault lies.

Prashant and Prannv’s post also comments on the quality of appointments. It has to be remembered that almost without exception, the appointments of Chairpersons have been of former Judges of the High Court with exposure to commercial laws. To criticize these appointments, and then to state that these cases must be sent back to the High Courts is in my view highly contradictory. For instance, the present Chairperson Mr. Manmohan Singh was an active practitioner of intellectual property laws, and had also passed several IP judgments sitting in the Delhi High Court. It seems rather truculent to criticize caliber, when judges in an adversarial system have to come to conclusions that will always be disagreed with by some. One’s disagreement with the conclusion does not necessarily correlate to the quality of the underlying rationale. I have in my various appearances before the Tribunal found no difference between appearing before the High Court and appearing before the Chairperson, either in the quality of queries or consequent judgments. This is best demonstrated in the judgment of the IPAB in the Novartis case, which touched upon the section 3(d) issue well prior to the Supreme Court diving into it. The laurels of course, were heaped on the Apex Court.

In my experience, if nothing else, not having to explain sections and well-accepted case laws, allows practitioners to launch straightaway into the facts and the accompanying principles. This is considerably more effective when dealing with complex commercial litigation such as patent revocations. As for the issue of standards in appointing members, the Madras High Court has already passed a detailed order on the same in 2015 itself, and yet again we know where the fault for not filling vacancies lies. The delay in appointments does of course jeopardize the statutory framework, but there remain significant workarounds. For instance, under the Patents Act, even if a challenge before the IPAB is pending, the invalidity of the patent is also a defence, which calls on the courts to independently examine the patent without any presumption of validity whatsoever. Even section 31 of the Trademarks Act stands considerably diluted today and the validity of several trademarks have been assaulted in numerous interim injunction applications. Transferring matters to the High Courts is only an illusory panacea. The Commercial Courts Act mandates that matters be finally disposed off within a year, which is even to the most cheerful optimist a pipe dream. The transferring of matters to the High Courts is not necessarily going to bring about disposal, and would add to an already clogged pipeline. A far easier fix is to strive for quicker appointments and better stakeholder involvement in the IPAB, which requires only some elbow grease and bureaucratic determination. Tribunals are designed for easier, cheaper and expert disposal, and the IPAB with a hybrid of judicial persons and technical members adjudicating, is conceptually rather sound.  The IPAB also sees the active participation of lawyers apart from “court” counsels, who find the scheduling and procedures to be far less daunting. Anyone who has filed a rectification in the IPAB would affirm that the effort therein is a fraction of the effort expended in filing a suit in any High Court.

The comment on the “ramshackle” facilities in Prashant and Prannv’s post is bluntly put, incorrect. The principal bench in Chennai is a fully functional space, with well equipped court rooms, and a rather comfortable lounge to wait in. The Delhi bench, which is much newer, is also fully functional and convenient, both in terms of location and facilities. The Intellectual Property Association of South India (IPASI- of which the author is a member) has recently put efforts culminating in the confirmation of a state-of–the-art facility spanning nearly 20,000 square feet in the immediate proximity of the Madras High Court, for reviving the IPAB with gusto.

The absence of effort is quite glaringly only in the appointments, which brings me to my pet grouse. The IPAB is amongst the few central tribunals headquartered outside of Delhi, espousing the decentralization of judicial bodies. The physical distance from our national capital, is of course negated considerably by the various circuit bench sittings, and the flexibility to establish permanent benches where required, as is the case in Delhi. The physical distance obviously cannot translate into detachment in appointments, and certainly does not call for scrapping an institution that definitely has had its fair share of fine moments. There is presently a petition pending before the Supreme Court, which calls for the appointment of a chairperson and members, in which IPASI has intervened and sought for expedited appointments. Despite all manners of stringent strictures to get along with these appointments from our courts, the matter of appointments has fallen on deaf ears. There are already numerous representations before the Government by counsels across India beseeching them to hasten appointments, and asking at this stage to scrap the IPAB is to throw the baby with the bathwater.

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The coronavirus pandemic and the consequent lockdowns across the globe has completely turned our everyday lives upside down. Social distancing, work from home and online classes are the current norm. While we adjust to this new normal, issues surrounding the uncertainty of how copyright law applies to online education have cropped up. This post analyzes the position of Indian law on the copyright related questions that have arisen in other jurisdictions in the wake of online teaching and the scope of educational fair use provisions under the law.

Issues

Currently, some of the issues surrounding online teaching and copyright law are as follows:

1. Do the educational fair use provisions extend to online teaching?
2. Do the video recorded classes that use copyrighted material have the same protection as physical classes?
3. Will university libraries uploading a digital copy of the textbooks available in the physical library onto the digital library receive protection?

Fair Use Provisions in India

Section 52(1) of the Copyright Act lists out acts that do not constitute copyright infringement. sections 52(1)(h) to 52(1)(j) contain exceptions for use of copyrighted material for educational purposes. Whether a particular use of a copyrighted work falls within the scope of these provisions is determined by whether it is made for the purpose and in the manner as specified therein. As held by the Delhi High Court in the landmark DU Photocopying case, the four-factor test used in other jurisdictions such as the US to make a fair use determination does not apply under the Indian law. The court clarified that the fairness of use under section 52 is to be determined only by the wordings of the provisions and the limitations specified therein.

In particular, there was an elaborate exposition on what falls under the educational exception (section 52(1)(i)) and how the exception is to be understood within the larger context of the goal it seeks to achieve. section 52(1)(i) permits reproduction of any work by a teacher or pupil in the course of instruction (among other purposes). In determining the permissibility of use of copyrighted work under this exception, the Court held that the extent or quantity of the material used does not matter as long as it is reasonably necessary to use the same for the purpose of educational instruction. And the scope of words ‘in the course of instruction’ as per the expansive interpretation of the Court, isn’t merely limited to classroom lectures but includes any activity that falls within the ambit of providing educational instruction, both prior and post the actual act of lecturing. With this background, I’ll now look into how the above mentioned issues in relation to online teaching will play out in India.

Online Teaching and Fair Use

1. Does the educational exception under section 52(1)(i) apply to online teaching?

Educators have raised concerns about whether the educational exceptions under copyright law extend to online education. Particularly, whether the reading out of books to students on video classes offends copyright law since they are no longer within the physical classroom set up. While the language of the exception under the Indian Copyright Act does not expressly contemplate online education, as clarified by the DU Photocopying case, the scope of section 52(1)(i) is not limited to classroom teaching but the entire process or programme of education in a semester, which would include online education as well. In any case, online classes would be covered under classroom education because the change in the medium has been forced onto us due to the pandemic and is currently the substitute for traditional physical classes. Beyond this, as long as the reproduction is shown to be necessary for educational instruction (even if outside of classes) it would be covered under the exemption, the medium of use being no bar.

2. Do video recordings of classes that use copyrighted material have the same protection as teaching in physical classes?

This may be a trickier question to answer. Given issues of internet access, live classes turn out to be fairly impracticable. So, educators are also uploading recorded videos on commonly used platforms like You Tube, where they can be accessed at any time and are also easier to share. While face-to-face teaching provides more flexibility in respect of the display and distribution of copyrighted material, the same may not be available for recorded videos.

According to section 3 of the Copyright Act, ‘publication’ means making a work publicly available through copies or by communicating the work to the public. Uploading teaching videos on YouTube and similar platforms and making them publicly available would amount to publication under this definition, making it subject to section 52(1)(h) which limits the use of copyrighted works in such publication to two short passages from the work (unlike section 52(1)(i) which does not specify a limitation on the quantum of material reproduced). While this limitation may be harder to tackle, exceptions from penalties can be advocated for given the circumstances. While platforms like YouTube offer Fair Use Protection, copyright take down notices can be filed by anyone. There is a fair chance that this would prevent educators from using the platform, which is perhaps more accessible than others. While the option to take permissions from the copyright owner or seek licensing is available, both are fairly time-consuming activities and may not be feasible right now. Uploading lecture videos marked as “unlisted” so that they don’t show up on YouTube’s public pages or substituting copyrighted material with open access resources for recorded lectures may be some of the ways to jump over this hurdle.

3. Will university libraries uploading the textbooks available in their physical library onto their digital library receive protection?

Apart from the use of copyrighted material in online classes, the sharing of copyrighted material through digital libraries is a concern. Not only course packs or materials for class discussions need to be shared with college and university students who have been forced to stay off campus, other library resources also need to be made available for the students in need of the same for research, projects, co-curriculars etc. Presently, the Copyright Act painfully falls short in addressing concerns regarding setting up digital libraries, even in such situations of emergency. Section 52(1)(n), brought in through the 2012 Copyright Amendment Act, permits a ‘non-commercial public library’ to store a digital copy of those works which it already possesses a physical copy of, for the purpose of the preservation. While this allows for storage of a digital copy, it provides no clarity as to the permissibility of distribution/communication of that copy. Is that implied in it, at least in circumstances when the physical copy is destroyed or even no longer accessible (for instance, during a lockdown)? If not, what’s the purpose of this provision? Further, varying terms ‘library’, ‘non-commercial library’ and ‘non-profit library’ are used in the Copyright Act, causing more confusion regarding whether university libraries are covered under this provision or not. On a brighter note, digital libraries like JSTOR are expanding their free content, which would go a long way in ensuring continuity in online education.

Policy Considerations for the Future  

With many countries declaring COVID-19 a disaster, it is doubtful that the issues of copyright law are going to be a priority concern. Nonetheless, the pandemic has only expedited our need to think of a copyright law that is more cognizant of digitization and is more anticipative of extraordinary situations. The move to online education demonstrates the need for planning within the Indian copyright law framework for a situation that is here to stay at least for the immediate future.

The first policy consideration to be addressed is the need to balance the educational fair use exceptions and the rights of copyright owners. While the courts have determined that educational instruction has the power to crop copyright law, it is high-time for the legislature to create provisions that ensure the continuity of education isn’t hampered due to possible ambiguities concerning the use of the exception that may arise due to circumstantial changes such as the change in the medium of education.

Second, digital libraries are very much becoming a part of our higher educational infrastructure. Copyright law must be amended to comprehensively deal with the digital environment as the law relating to traditional libraries is quite inadequate in its application to digital spaces. Questions surrounding multiple users accessing the same resource, availability of the copyrighted work on the internet through digital libraries etc., cannot be analogically addressed using the present law.

Third, the fact that copyright issues are still a consideration during a pandemic shows that the law and policy haven’t really contemplated extraordinary situations. While one wouldn’t necessarily make the immediate connection between copyright law and national emergencies, the need to restore normalcy right now largely depends on our ability to carry on those activities that we can, within our spatial confinements – and education is definitely the most important one among these. Issues of digital access apart, making available academic resources to students through the internet, at least in the same manner that physical resources would have been offered (library borrowing, copying etc.) is imperative. For instance, the fair use provisions can be expanded during situations of emergencies, to allow schools and universities to shift their library catalogues to digital databases or online repositories, share course-packs and lecture recordings etc., without having to wait for licensing or permission from copyright owners.

While the concern over copyright law during a pandemic that has stretched thin all our resources may seem misplaced, its effect on one of the most fundamental needs of society, an education, only shows us that this issue cannot possibly be overstated.

I would like to thank Pankhuri Agarwal for her helpful comments and suggestions.

Please click here to view our other posts related to COVID-19 and here to view other important IP developments related to it. 

(This post has been authored by our intern, Bhavik Shukla, a 5th year student at NLIU, Bhopal)

Topical Highlight

In an important and pertinent post, Namratha discussed the applicability of India’s fair use provisions to the use of copyrighted works for online education during the current COVID-19 pandemic. First, she notes that the scope of fair use under section 52(1)(i) of the Copyright Act is not merely limited to classroom teaching but to the entire process of education, including online education. Second, she notes that in case of video recordings of classes that use copyrighted material, teachers/ institutions may upload lecture videos on private pages or use open source works. Third, she notes that there is no certainty under the Act over the applicability of fair use provisions to distribution of digital copies of physical books available in university libraries. Further, she addresses policy considerations in light of the COVID-19 pandemic: first, the need for a balance between educational fair use exceptions and the rights of copyright owners. Second, she observes that there is a requirement for a framework in relation to digital libraries. Finally, she notes that the copyright law does not account for fair use in emergency situations.

Thematic Highlights

Prashant and Prannv wrote about shutting down the IPAB, and transferring its powers and pending cases back to the High Courts. They note that over time various powers originally vested in the HCs were transferred to the IPAB, but its creation was never discussed with the public and the IP bar in the first place. Further, they point out the inordinate delays in the appointments of Chairpersons, and the lack of appointments of Technical Members. With respect to the quality of appointments, they provide examples of certain appointments of technical members. They also state that bureaucrats who had no prior experience of law were appointed to the post of a technical member in most cases. Subsequently, they focus on the lack of infrastructure in IPAB offices across the country. Referring to the state of affairs at the IPAB and its impact on litigants, the general public, the IP bar and the IP litigators, they suggest that a ready solution can be obtained by shutting down the IPAB and transferring its functions to the HCs.

In a response to Prashant and Prannv’s post, Arun C Mohan, our new Scholar in Practice, notes that the delays in appointment of Chairpersons cannot be attributed to the IPAB, due to the Government’s prerogative in such appointments. Rebutting Prashant and Prannv’s point on the quality of appointments, Arun observes that most appointments of Chairpersons have been of former judges of the HCs. He further emphasizes upon the ease of filing and practicing before the IPAB as compared to HCs, and also notes that transferring matters back to the HCs will only overburden an already burdened system. He observes that the IPAB offices are fully-functional and points out the efforts of Intellectual Property Association of South India for the revival of the IPAB. He concludes by noting that a petition seeking quick appointments of Chairpersons and members is pending before the SC, and also accounts for the representations filed by numerous counsels concerning the same matter.

Other Posts

Adarsh covered the WIPO’s press release, through which it was declared that most PCT applications for 2019 originated from China. He observes that the increase in patent filings from China translate into a ‘momentum towards innovation.’ He states that it is highly probable that such consistent momentum may result in a significant ‘acceleration’ towards producing ‘mighty innovations.’ Further, he notes that Indians have grown complacent towards innovating, and that the government has not done much to generate a ‘momentum’ towards it. Quoting his father’s letter which provides a lucid understanding of China’s attitude towards innovation and the manner in which such innovation is fuelled, he states that India has failed at understanding ‘when’ and ‘how’ to drive innovation. He hopes that the COVID-19 pandemic has proved as an important lesson to the government and the inventors to push towards innovation.

Arun discussed the trademarking of digital currencies. He notes that the central theme involved in blockhain as well as digital currency is the ‘absence’ of any centralized control. He explains that no individual can claim ownership over such technologies, and accordingly they cannot be protected under the IP laws. Further, he emphasizes upon the downsides of no trademark protection to such technologies as: first, it might result in a defrauding transaction under the garb of a legitimate digital currency transaction, and second, it might lead to transactions involving counterfeit digital currencies, like ‘Baitcoin’. He notes that technology alone cannot tackle such fraudulent activities in relation to digital currencies. Ultimately, he suggests that registration of such technologies as collective mark(s) may be explored, in order to protect such technology from being misused by third parties.

SpicyIP Announcements

We informed the readers about the range of online graduate IP law programs being offered by UNH Franklin Pierce School of Law. The priority application deadline for the programs is July 1, 2020. Further information on the courses offered and the application process can be found in the post.

Other Developments

India

Judgments

Keller Williams Realty, Inc. v. Dingle Buildcons Private Limited and Others – Delhi High Court [April 17, 2020]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of the Plaintiff’s mark “KW” by using an identical mark in respect of real estate projects. The Court observed that the Plaintiff had no business or customers in India in relation to any real estate operation, and that the Plaintiff had failed to show that its reputation and goodwill had spilled over into India. The Court also noted that the mere registration of a mark without its use was not sufficient to grant any right to the proprietor. In respect of similarity between the two marks, the Court stated that the Defendants were using the mark along with other words like ‘SRISHTI’, ‘BLUE PEARL’ etc., which was sufficient to distinguish them. Additionally, the Court noted that the Plaintiff was also guilty of delay and laches on a prima facie examination of the matter, as it had failed to take action for almost 6 years even after having knowledge of the Defendants’ registrations. In light of all these factors, the Court dismissed the Plaintiff’s application for the grant of an interim injunction.

News

• The Office of the CGPDTM notifies that all IP Offices shall remain physically closed and scheduled hearings stand adjourned upto May 3 and all deadlines for filings etc. shall be extended till May 4; clarifies that e-filing services remain unaffected. A pertinent piece discussing  the conflict between this notice and the Supreme Court’s order extending limitation period last month can be viewed here.
• The last date to register for the Patent Agent Exam 2020 has been extended to May 4.
• Reddy’s Laboratories denies being in the early stages of creating a generic version of Gilead’s potential anti-COVID (patented) drug Remdesivir, after news emerged stating that it had already taken steps to that effect.
• CSIR announces Technology and IP guidelines for COVID-19 related technologies/ products developed by its laboratories.
• Serum Institute CEO, Adar Poonawalla claims that his company will develop a COVID-19 vaccine by 2021 and will not seek patent protection for the same.
• A group of researchers in India file a patent for a UV racket that can disinfect surfaces by merely  waving it on them and may thus help in the fight against COVID-19.
• A group of researchers led by Prof. Subhabrata Sen file a provisional patent application for new chemical entities that can help in the fight against COVID-19.
• A piece in Business Today contemplates Gilead’s move to partner with Indian firms for the manufacture of Remdesivir.
• A piece on Newsclick contemplates if India’s offering of Hydroxychloroquine to the U.S. will open the doors for the import of Gilead’s Remdesivir.

International

• The EU urges the World Health Assembly to establish a voluntary pool of IP in order to ensure the availability of vaccines, treatments and other medical products to tackle the COVID-19 pandemic.
• Premier Biomedical, Inc. announces a provisional patent application for a method of treating COVID-19 by targeted removal of disease-specific antigens.
• A piece in the Infojustice argues that a global patent pool may facilitate the development, production and distribution of vaccines and other medical treatments, but the WHO will need to quickly act in that direction.
• A piece in the City Press notes that the safeguards in international law won by developing countries in wake of blockage of access to HIV drugs are now being heralded by lawmakers around the world.
• A piece in JDSupra discusses the feasibility of public and patent law mechanisms to tackle the COVID-19 pandemic in the U.S., U.K. and Germany.
• A piece on TaylorWessing LLP’s website argues that the ground of ‘public interest’ can be validly evoked in order to compulsorily licence patented inventions to fight the COVID-19 pandemic in Europe.
• The Full Federal Court of Australia dismisses patentability of a method of innovation as an invention.
• A New York court rules that the use of a photo from an Instagram post by a news outlet does not violate copyright law.

Image from here

Last week, Arun responded to my piece to shut down the IPAB and shift back its functions to the High Courts. I am not surprised – Arun’s firm makes a healthy living by filing matters before the IPAB. I have been speaking to several other people on this issue including former Chairperson of the IPAB, Justice Prabha Sridevan who was kind enough to point me to an opinion piece she wrote many years ago in the Hindu calling for the scrapping of the IPAB. She informed me that her viewpoint remains unchanged and that the IPAB should be shut down and its functions shifted back to the High Court. Similarly, from my conversations with IP lawyers, it appears that the first generation of IP lawyers, who are looking to make their mark in the profession, are also the ones who are more in favour of scrapping the IPAB and shifting its functions back to the High Courts. IP lawyers from Bombay are especially in favour of doing away with the IPAB because it rarely holds circuit hearings in Bombay making the tribunal a wholly Delhi and Chennai affair.

Difference in perceptions apart, I have to respond to the several factual and logical fallacies in Arun’s piece.

Let us begin with Arun’s claims that the IPAB is not very different in terms of quality, when contrasted to the High Court. He conveniently does not engage with the number of issues we pointed out in our earlier post on the quality of appointments with technical members, especially the poor scrutiny of qualifications of Syed Obaidur Rahaman and Sanjeev Chaswal. He also does not engage with the examples of judgments written by these technical members where they simply skipped the basics of evidence law. Arun’s single point of reference appears to be his personal experience and the fact that the IPAB engaged with Section 3(d) issues first in the Novartis case. In reality, the IPAB mucked up the Novartis case on an epic scale. Has Arun forgotten how the IPAB declared that the Glivec patent could be revoked on the basis of Section 3(b) of the Patents Acts because high prices caused by patents would cause riots and that would go against the public order exception? Shamnad had criticized that line of reasoning in the following words: “This is plain ridiculous! There is nothing in the patents act to support such a reading. As we’ve been stressing on this blog, one ought to draw a distinction between the grant of a patent and the subsequent use/abuse of a patent.”

Coming to Arun’s rather pedestrian allegation that we criticised Justice Manmohan Singh’s judgments because we do not like the outcomes in his cases, I must presume that either he trying to earn brownie points from a judge who continues to be a Chairperson of the IPAB till September or that he has not been following SpicyIP very closely. I have written extensively on this blog, on the several appalling errors in the legal reasoning offered by Justice Manmohan Singh’s judgments. For most part, this blog focuses on legal reasoning in judgments and not outcomes.

On the point of the facilities available to the IPAB – where Arun has alleged that we incorrectly claim that the IPAB has ramshackle facilities, let me refer you to Justice Prabha Sridevan’s report filed with the Madras High Court in 2011 – in her report at paragraph 12 and page 4, she clearly outlined the infrastructural constraints faced by the IPAB. Post that report, the government filed an affidavit promising a new building with state of the art facilities. Nine years later the IPAB continues to function from the same premises, with a few minor renovations. As for the Delhi office of the IPAB – it operates out of a ramshackle government building that pales in comparison to the new building at the Delhi High Court which has been knick-named ‘T3’, after the swanky Terminal 3 of the Delhi International Airport.

Last but not the least, coming to the thrust of Arun’s argument that it makes no sense to shut down the IPAB and send its matters back to the High Courts because it is retired High Court judges who are appointed as the Chairpersons of the IPAB. The obvious point that Arun misses is that unlike the IPAB, the High Court does not have these ‘technical members’ and more importantly, will always have judges sitting on rotation – there will never be a situation where the High Court is non-functional for years together (like the IPAB) because of a lack of appointments. More importantly because there is a rotation of judges on different rosters at a High Court, there is no question of a sub-standard judge hearing IP matters for years together.

In any event, I do intend to petition the DPIIT to shut down the IPAB and transfer its functions back to the High Courts. I will publish a version of the petition on SpicyIP for comments and endorsements before sending it to the government.

[Edit: Please click here to view Arun’s response to this post.]