Topical Highlights

Dainik Jagran Sues Telegram for Copyright Infringement: Are Platforms or Group Admins Liable for Unlawful Speech on Closed Online Forums?

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Divij wrote on the matter of Dainik Jagran suing Telegram for copyright infringement for the circulation of ‘e-papers’ through open Telegram Channels. He analyzes the order that granted an interim injunction in the case of Jagran Prakashan Limited v. Telegram that directed Telegram to provide information about the subscribers/ owners of certain Telegram Channels that were allegedly circulating online versions of the Dainik Jagran newspaper. Discussing the intermediary liability concerning copyright infringement of freely available newspapers, Divij notes that while circulation of restricted-access online newspapers is likely to constitute copyright infringement, intermediaries like Telegram can claim the ‘safe harbor’ protection available under Section 79 of the IT Act, 2000. It is noted that Telegram’s failure to respond to the plaintiff’s notice regarding infringement is likely to defeat the ‘safe harbor’ claim as it requires that the platform have no actual knowledge about the illegal/infringing activity. Then addressing the question of liability for unlawful content on closed forums or online groups, the Indian Government’s push for ‘traceability’ for unlawful content and the automatic assumption of liability for group administrators is discussed. In conclusion, it is stated that the determination of the intermediary’s liability in such cases is to be determined based on the control exercised over the content.

Staying the Post-Grant Revocation of Ibrutinib

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In a post co-authored with Praharsh Gour, Swaraj discusses the recent IPAB Order that stayed the post-grant patent revocation of Pharmacyclics’ Ibrutinib, an anti-cancer drug. When Ibrutinib’s patent was revoked in March 2020, its generic variant, Ibrunat, became legal, whereas the current IPAB order which has stayed the revocation creates a risk for Ibrunat becoming illegal again. In March 2020, the Patents Controller had upheld Laurus Labs’ challenge of Ibrutinib’s patent on grounds of lack of inventive steps. Pharmacyclics appealed the revocation and the IPAB passed the current interim stay order against the same. The post considers the IPAB’s power to stay the patent opposition decisions by the Controller. Given the Board’s recognition in Shreedhar Milk Foods v. Vikas Tyagi that interim orders must be passed to avoid instances of injustice after considering a prima facie case, balance of convenience, irreparable hardship, and injury, the post highlights that the rare and exceptional case required for granting interim relief is not present in this case. Addressing the counterfactual scenario, the post argues that this Order should also give generic manufacturers an ability to approach the IPAB for interim stays in cases where the Patents Controller upholds a patent’s validity, given the IPAB’s low threshold for any aggrieved party to ask for a stay order.

Thematic Highlight

Antitrust Scrutiny in Patent Licensing Disputes: An Alternative Approach to Delhi HC’s Decision in Monsanto v. CCI

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In a guest post, Abhilasha Nautiyal discusses the issue of antitrust scrutiny in patent licensing disputes in light of the Delhi High Court’s decision in Monsanto v. CCI. The post analyzes whether the Patents Act and the Competition Act both regulate patent licensing terms that may be anti-competitive; if there is a ‘sectoral regulator’ to decide patent licensing disputes and the need to avoid conflicting opinions from different bodies on the same legal and factual issues. Chapter XVI on compulsory licensing and Section 140 on ‘avoidance of certain restrictive conditions’ are relevant from the perspective of competition law, through which the legislature balanced the rights granted and the limitations on them within the Patents Act. The Competition Act under Section 3(5) allows for imposing reasonable conditions necessary to protect rights granted under the Patents Act. Abhilasha argues in favor of the two-step approach where only licensing terms found to be ‘restrictive under the Patents Act need to be scrutinized for unreasonableness under the Competition Act, which is similar to the decision given in CCI v. Airtel on sectoral regulators. Highlighting the need to avoid conflicting opinions, Abhilasha recommends the two-step approach.

Other Posts

SpicyIP Fellowship: Is Sub-Licensing Contemplated under the Indian Copyright Act? – A Response

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In response to Latha’s post on whether sub-licensing is contemplated under the Indian Copyright Act, Nikhil Purohit submitted a post for the SpicyIP Fellowship. Nikhil argues that sub-licensing of copyright is permissible under the Indian Copyright Act in opposition to Latha’s claim that it is not. Breaking down Section 30 of the Copyright Act, it is argued that the provision contemplates that the owner of the copyright may grant any interest to a licensee as long as it is done in writing. The post goes on to offer two possible interpretations – first, a differentiation between primary and secondary licensing and second, a limited agency relationship, that can be understood to allow sub-licensing. It is argued that primary licensing between a copyright owner and a licensee is an inherent statutory right whereas a sub-license granted to a third party is guided by the explicit stipulation between the copyright owner and licensee. It is argued that the determination of existence of an agency relationship between parties that would allow sub-licensing is to be based on whether the relationship satisfies the principles of agency. Thus, it is claimed that Section 30 of the Act contemplates a right to sub-license as it contains the authority to confer rights on persons authorized by the license.

Video Games, User-Generated Content and Copyright

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In a guest post, Sankalp Jain wrote on the copyright issues related to video games and user-generated content (UGC) where he discusses the copyright framework of the video game ‘Dreams’ and points out that the Indian copyright law is inadequate to respond to diverse UGC which takes the form of fan-creations. The Indian position is that video games consist of independently copyrightable components and should not be viewed as single works of authorship. Using the example of Dreams, a Game Creation System (GCS), the post elaborates on the various copyright protections that the user-created content can receive and how viewing the components of the content created individually, as the Copyright Act does leave open questions concerning the monetization of the work and ownership of the work. Taking the idea forward that this content creation is akin to fan-creations, the post considers the fair dealing exception this could receive under Section 52(1)(a) of the Copyright Act and suggests that a clear statutory provision needs to be created taking into consideration the nature of such UGC and the rights they have in an ever-expanding digital world.

Lexstructor’s Live Webinar on ‘Impact of COVID-19 on Patent Laws in India and the Trade-Related Aspects on Potential Drugs’ [June 28]

We informed the readers about the upcoming Lexstructor’s webinar on ‘Impact of COVID-19 on Patent Laws in India and the Trade-Related Aspects on Potential Drugs’. Points of discussion include intellectual property laws and affordable access to potential COVID-19 drugs, compulsory licensing, procedural time limits in patent filings in India, COVID-19’s impact on the TRIPS Agreement and various strategies to be adopted by the IP professionals and patent applicants. The webinar is scheduled on June 28, between 5 PM to 6:30 PM and has 100 seats available. Further details can be found in the post here.

Texas A&M School of Law Launches the GIFTED Program with O.P. Jindal Global University

We also informed the readers about the launch of Texas A&M School of Law and O.P. Jindal Global University’s GIFTED Program that allows students to spend one semester in each university, and earn an LL.M degree from either university. The GIFTED Program allows students to spend their fall semester at Jindal and spring semester at Texas. Upon successful completion of their courses, students can earn their LL.M degree from Texas A&M Law and by combining the non-transferred credits from the fall and JGU credit for the student’s spring coursework, students will be eligible to earn an LL.M from JGU as well. Further details can be found in the post here.

Other Developments

Decisions from Indian Courts

Madras HC rules against monopoly over the term ‘Magic Masala’ in ITC-Nestle stand-off [June 10, 2020]

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In ITC Ltd. v. Nestle India Ltd., a single-judge bench of the Madras High Court decided against the plaintiff ITC, who had sought a permanent injunction against Nestle to prevent them from using the mark ‘Magic Masala’, which ITC claimed had achieved distinctiveness. The judgment held that for a mark to be called as a distinctive mark, the same should be unique and different from the rest in the milieu and that it would not need any additional proof to establish distinctiveness. After elaborating on whether the mark ‘Magic Masala’ can be given protection as a descriptive mark, the judge concluded that it was not a descriptor of the product and was only a laudatory epithet and the same cannot be given monopoly or protection. Further, it was held that the terms ‘Magic’ and ‘Masala’ are commonly used in the packaged food industry by different manufacturers and it would be unfair to confer monopoly over the same expression. Holding that there was no similarity between the two products that could lead to confusion, the Court refused to grant relief to the plaintiff.

Bombay HC rules domain name registrars can suspend the registration of domain names but cannot block access to them [June 12, 2020]

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In Hindustan Unilever Limited v. Endurance Domains Technology LLP & Ors, a single-judge bench of the Bombay High Court held that domain name registrars such as Endurance, GoDaddy, Porkbun, etc., can only suspend the registration of certain domain names but cannot be expected to block access to them. The plaintiff had brought the matter to court after it came across domain names that were fraudulently and deceitfully using variants of HUL’s domain name (www.hul.co.in). The judge recognized that the entire process of domain registration is automated and requires no manual intervention. It was observed that registrars can suspend domain names, but the blocking of access should be undertaken by a government agency such as the Department of Telecommunications. Further, since tools such as VPN can be used to circumvent such blocking of access, holding the registrar liable would put them at risk of contempt of court orders when they are unable to effectively block access. An order was passed to allow the plaintiff to communicate with the domain registrars and request without the intervention of the Court for suspension of any infringing domain name.

Delhi HC imposes costs of INR 50,000 in patent case over mala fide filing of applications [June 16, 2020]

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In Shogun Organics Ltd. v. Gaur Hari Guchhait, a matter concerning a suit for patent infringement over D-Trans Alletherin, (Patent No. IN 236630) an insecticide, a single-judge bench of the Delhi High Court had passed an order on 14^th August, 2019 granting a permanent injunction in favor of the plaintiff Shogun Organics. The present suit was filed concerning the same matter wherein the plaintiff requested the Court to pass an order directing the defendant to sell the unused stocks of D-Trans Alletherin to the plaintiff, concerning which orders were already passed on 11^th June, 2020. Given the multiplicity of applications filed regarding matters already dealt with and the non-disclosure of the same to the Court hearing the current matter, it was held by the judge that the current application was not bona fide and INR 50,000 as costs was imposed on the plaintiff.

Delhi HC grants interim injunction restraining use of the mark ‘TATAAR & SONS’ [June 17, 2020]

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In Tata Sons Pvt. Ltd v. Dilip Kumar Ghotiya, a single-judge Delhi High Court bench passed an order granting interim injunction in favor of the plaintiff in a case of trademark infringement of the ‘TATA’ mark. It was claimed by the plaintiff that the defendant was using a deceptively similar mark ‘TATAAR & SONS’ to sell their products in the same categories as TATA products such as tea, coffee, spices, etc. While the defendant argued that the Delhi High Court did not have territorial jurisdiction because the defendant was based in Rajasthan, the plaintiff showed that the defendant’s products were available in Delhi too through online trade. Holding that the plaintiff made out a prima facie case in its favor and that the balance of convenience tilted towards the plaintiff the judge granted an interim injunction to avoid irreparable loss to the plaintiff.

Delhi HC grants interim injunction restraining use of ‘Pulse’ candy trademark [June 18, 2020]

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In DS Confectionery Products Ltd. v. Amber Confectionery Pvt. Ltd., a single-judge bench of the Delhi High Court granted an interim injunction in favor of DS Confectionery Products to prevent the infringement of its trademark ‘Pulse’ candies and the copyright held in the tagline ‘Tangy Twist’ by the defendant Amber Confectionery. The plaintiff averred that the defendant adopted the tagline ‘Tangy Twist’ and trade dress, color, and get up which is deceptively similar to that of the plaintiff’s product in order to cause confusion as to the source of the product. The Court declared that there is a prima facie case and balance of convenience in favor of the plaintiff and not granting the interim injunction would jeopardize the commercial and statutory interests of the plaintiff which would cause irreparable harm. In particular, the order restrained the defendant from using the tagline ‘Tangy Twist’.

IPAB holds Mylan’s SOXPLAT trademark to be deceptively similar to Sun Pharma’s OXIPLAT [June 18, 2020]

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In Sun Pharma Laboratories Ltd v. Agila Specialties Pvt Ltd, the IPAB ruled that Mylan’s SOXPLAT mark for a drug treating colon cancer is deceptively similar to Sun Pharma’s OXIPLAT drug used in the same treatment. Sun Pharma argued that Mylan’s mark is structurally, visually and phonetically similar to Sun Pharma’s prior used and prior registered trademark. It was argued by the plaintiff that there was extensive commercial use of the trademark OXIPLAT by Sun Pharma and the same had acquired goodwill and reputation while Mylan argued that the mark OXIPLAT is an abbreviation of a generic salt and has already been used in the market. It was noted in the order that the onus to prove similar marks are already in the market was on the party taking such a defense and the mere presence of such marks in the Register of Trade Marks is not proof of its use. Holding that Sun Pharma had a strong case with respect to use of the mark and was prior in the adoption of the trademark, the judge ruled in Sun Pharma’s favor and ordered the removal of the offending marks from the Trade Marks Register

 Other News from around the Country

• Bombay HC passed an order extending the life of interim orders passed in all matters, including IP matters, during the COVID-19 lockdown till 15th July. This is the third such extension granted since 26th March.
• Delhi HC passed an order stating that the Indian IP Office (IPO) public notice dated 20th May with respect to due dates for completion of various acts/proceedings, filing of reply/document, payment of fees, etc stands withdrawn and that all timelines for various matters falling after 15th March is to be decided by the Court. The IPO and Copyright Office also issued a public notice stating the same.

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• Abbot Healthcare approached the Delhi High Court to seek clarification regarding if Paragraph 32 of the Drug (Prices Control) Order (DPCO) 2013, which exempts newly patented drugs from price control, is self-invocatory and has automatic application.
• Central Drugs Standard Control Organisation (CDSCO) approved the restricted emergency use of Glenmark’s Favipiravir for treating mild cases of COVID-19. Favipiravir became off-patent in 2019, thereby allowing the free production of its generic versions.
• CDSCO also gave permission to Hetero and Cipla to manufacture and market the antiviral drug Remdesivir for restricted emergency use. Gilead Sciences, the patent holder for Remdesivir has already entered into royalty-free non-exclusive licensing agreements with Cipla and Hetero.
• Madhya Pradesh Government approached the Supreme Court challenging the Madras HC’s ruling against the state’s demand for the ‘basmati’ geographical indication (GI) tag for the rice grown in 13 of its districts.
• Kashmir saffron has been granted GI tag by the GI Registry. Kashmir saffron holds the unique distinction of being the only variety of saffron grown at an altitude of 1600-1800 m above sea level.

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• Nandita Saikia wrote about the colonial vestiges of copyright law. Focusing on the criminal provisions of the Copyright Act, Nandita argues for the differentiation in copyright crimes to ensure that disproportionate punishments are not levied in cases of copyright infringement.
• IPRMENTLAW conducted a virtual roundtable conference on the topic ‘Need to revamp the Copyright Act?’ yesterday on the occasion of eight years passing since the promulgation of the Copyright Amendment Act, 2012.

News from around the World

• In the General Council Meeting of the WTO, India advocated in favor of the flexibilities offered by the Trade-Related Aspects of Intellectual Property Rights (TRIPS) to effectuate access to medicines and vaccines required to fight the COVID-19 pandemic.

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• Trademark offices around the world see an increase in coronavirus related trademark applications. Marks include terms such as Covidgilant, COVID Couture, Covidiot, Covid Clean etc.
• The US Patent and Trademark Office (USTPO) has announced a COVID-19 prioritized examination program that will accept petitions to advance the initial examination of applications for marks used to identify qualifying COVID-19 medical products and services.
• A WTO panel found Saudi Arabia to be in violation of international law by actively supporting the operation of a private TV station ‘beoutQ’ that was involved in content and IP theft of Qatar-owned ‘beIN’ broadcaster.
• WHO begins conducting clinical trials for dexamethasone, a steroid, as a potential treatment for COVID-19. Dexamethasone is a generic off-patent drug used in the treatment of auto-immune disorders.

For regular updates on IP news and opinions related to COVID-19, please visit our COVID-19 & IP Updates page (also accessible from the Resources section on our website).

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The digital world is challenging the fundamental norms of IP laws. This calls for a new perspective on IP as a whole and copyright law in particular. This post offers some thoughts in the context of an article titled ‘Musician uses algorithm to generate every possible melody to prevent copyright lawsuits’ and another article which deals with the usage of AI for emulating the styles of great painters such as Van Gogh, Turner and Vermeer. Inspired by these articles, this post offers some thoughts on the fundamental principles governing the authorship of ‘works’.

The scope of copyright and author’s rights

Jurisprudentially speaking, there are two divisions: the copyright system (the Anglo-Saxon approach) as in countries such as UK, New Zealand, Australia and US and the author’s rights system (the Continental European approach which is also known as ‘droit d’auteur’ system) as in countries such as Germany, France, Indonesia and Vietnam. As both systems have influenced each other (including in case of Berne Convention, TRIPS etc), it is no longer possible to categorise a system strictly under copyright or author’s rights system.

The fundamentals of modern copyright law can be traced back to the English Statute of Anne in 1710, the US Constitution of 1787 and the post-revolution French laws (When I use ‘copyright law’, I am referring to both the copyright system and the author’s rights system.).

The origins of copyright law lie in the notion of ‘freedom’ which gained currency during the 17^th and 18^th centuries. The notion of ‘freedom’ perceived ‘property’ as a means for ensuring an individual’s freedom. Philosophers such as John Locke, Rousseau, Kant and Hegel contributed to the philosophy of ‘property’. Illustratively, Locke perceived each person to be his own master and consequently, owned every product of his labour as a property (a component of natural law theory). This philosophy predominantly influenced the author’s rights system.

On the other hand, copyright system is grounded in the utilitarian approach (which justifies copyright protection on the grounds of incentivising creation and enhancing the general well-being of societies). This fundamental principle automatically signifies the role played by the investor (and not the creator) in the creation of a ‘work’.

If the fundamental difference between these two systems can be summarized, it is as follows: contrary to the copyright system, the continental system treats the ‘author’ as the most essential ingredient of its protection. Illustratively, Section 11 of (German) Copyright Act of 09 September 1965, states as follows: “Copyright protects the author in his intellectual and personal relationships to the work and in respect of the use of the work. It shall also serve to ensure equitable remuneration for the use of the work.”

Who can be an author?

Conceptually, only a natural person can be an author under the author’s rights system. For instance, Section 2(2) of (German) Copyright Act of 09 September 1965, provides that “Only the author’s own intellectual creations constitute works within the meaning of this Act.” Further, Article 9(1) of the Croation Copyright Law provides that “the author of the work is a natural person who has created the work”. On the contrary, the copyright system allows vesting of such rights on both the legal person and the natural person. Illustratively, Section 17 of Indian Copyright Act provides for the ‘first owner of copyright’ which need not be a natural person.

Copyright Law and Creations of Algorithms / AI

Conceptually, the author’s rights system will not extend protection to any creation by anyone other than a natural person. However, the copyright system differs in this context. The focus of protection in copyright system is not the author, but the creation or ‘work’. The system is not fundamentally concerned as to who creates it. However, to extend the authorship to an algorithm or AI is something which has not been contemplated by the fundamentals of copyright system.

(If anybody wants to read more on the fundamental differences between the two systems, I recommend ‘International Copyright Law and Policy’ by Silke Von Lewinski.)

Why is this discussion relevant in the Indian context?

As the relevance of digital world increases especially in the light of COVID-19 and the emergence of new technologies, it may become imperative to revisit the fundamentals of Indian copyright law. As I see it, Indian copyright law is predominantly influenced by Anglo-Saxon approach (with some features of author’s rights system such as ‘moral rights’). I believe that the Indian copyright law can be significantly improved and made more equitable by studying both the systems in-depth and appreciating the challenges of 21st century.

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We’re pleased to bring you a two-part guest post by Victor Vaibhav Tandon. Victor is an academician turned lawyer. He’s also a registered Patent Agent and holds a Ph.D. in patent law. After teaching as a faculty in a prominent NLU, he joined the IP firm Saikrishna & Associates where he’s part of a team dealing with pharmaceutical and SEP litigations. He continues to teach as a visiting faculty for PGDIPR courses in ILI and ISIL.

Patents, Innovation & University Research: A Few Questions about the Indian Narrative – Part I

Victor Vaibhav Tandon

Over the past few years, in keeping with the National IPR Policy 2016, there has been an increased focus on promotion of IP and IP education in, inter-alia, various educational institutions and universities in India. The thrust of most such activities, especially in institutions/departments/faculties relating to STEM (Science, Technology, Engineering and Mathematics), has been on patents. Given the relationship between scientific research, inventions, patents and eventual commercialization of patented technologies, this is perhaps justified. There has been, generally, a renewed emphasis on patents and their role in innovation and development. Given our dismal record of patent filings, this perhaps is also justified. For example, and a more extensive discussion on the patent filing data will be done in a later section, the total number of patents in force in India till 31^st March 2018, as per the last available Annual Report of Controller General of Patents, Designs and Trade Marks (CGPDTM, 2017-2018), was 56,764 of which a mere 8,830 patents belonged to Indians. Inspite of all the problems patents create and all the jurisprudential dilemmas associated with patent law, this is a sobering statistic. Amongst the several stakeholders and creators of IP (including grass root innovators, start ups, MSMEs and major industries), a brief look at universities and higher education institutions in India can be quite enlightening, as regards the systemic shifts needed to improve innovation and, consequently, the acquisition of patents. Further, one has to understand the role of the patent system itself, it is no magic wand, but like any other area of law, something that is useful and raises quite a few dilemmas.

Patents and the Incentive to Innovate

It is problematic to think that the existence of patents by itself will spur innovation. Interestingly, one of the several justifications for grant of the patent system is the economic rationale of patents as an incentive to innovate. However, equally there are authors who state that role of patents in stimulating innovation is questionable and that “empirical support for any of these innovation theories is mixed, with a number of surveys indicating that outside the drug industry, patents are a less effective means of appropriating market exclusivity than secrecy or lead time” (See Lise Oullette’s “Do Patents Disclose Useful Information” pages 541-42, here). In a similar vein, Jayashree Watal, in her seminal work, had noted that, “there have been many studies that show that patents are not necessarily the most important economic instrument for generating innovation, except in certain industries such as pharmaceuticals or specialized chemicals”. And even in the pharmaceutical sector, patents have been fraught with troubles and difficult questions, as a recent post on this blog has shown.

Further, patents have also been accused of thwarting follow-on or downstream innovation, something labelled as the “tragedy of the anti-commons”. In simplistic terms, a more complex or downstream invention will require negotiating licenses with patentees who hold patents over upstream inventions that might be needed to make the complex/downstream invention. This means that the cost of making the latter will go up and the existing patents will actually constitute a barrier to further innovation. Of course, there are other problems as well with the patent system, including those of abuse of patent rights as well as fears of reducing access to knowledge goods. Be that as it may, the patent system does enable disclosure of technical knowledge and can be a useful tool in raising funds and in the commercialization of inventions. It is also, perhaps, the most suitable system we have as of now and cannot be just wished away. It needs to be understood that the patent system is just one piece in the jigsaw of innovation, and that open-science, collaborative research, optimised research environments and research funding are equally important. With this background, we can now look at some of the patent data concerning India.

The Statistics of Patent Filings and Grants

We look, firstly, at the patent filings and grants in India.

Table 1: Patent Filings and Grants in India

[Source: Annual Reports of the Controller General of Patents, Designs and Trade Marks, CGPDTM, for the years 2013-2014 to 2017-2018 available at http://www.ipindia.nic.in/annual-reports-ipo.htm]

To view these statistics in perspective, a look at patent filings (direct and PCT national phase) in USA, Germany, Japan and China for the years 2017 and 2018 can be useful,

Table 2:  Patent Filings in Selected Countries

[Source: WIPO IP Statistics Data Center. It should be noted that patent eligible inventions and patentability standards across jurisdictions vary, therefore, a lot of inventions eligible in say USA, might not be patent eligible in India. Also, note that all the WIPO data is year wise, such as for 2018 whereas the Indian data was for the ranges, such as for 2016-2017, 2017-2018 etc.]

In the Indian context, even though filings by Indian entities/individuals and grants thereto have constantly increased, they are still quite less as compared to corresponding figures for foreign entities/individuals. Further, prosecuting a patent application in India generally takes number of years, and therefore, the granted patents in a particular year probably resulted from applications filed at least 2-5 years earlier. Moreover, many applications are also rejected by the patent office and, therefore, every filing will not result in a grant. In context of university research in India, which we largely focus on, the IP office data also shows that not one of the vaunted Indian universities like DU, JNU, BHU, Jadavpur University, JMI or AMU featured in the list of top 10 filers/applicants in category of institutes and universities. This has been true for all the five years under consideration (2013-2014 to 2017-2018). And this is in spite of the fact that all these universities have reputed science and/or engineering faculties and departments with a number of doctoral, post-doctoral researchers and STEM academicians engaged in research. Whether the situation has changed in the past two years cannot be said in the absence of data. Interestingly, in the case of DU, even though there has been a surge in the number of IP related seminars in almost all colleges and science faculties, the MHRD IP chair has remained defunct for quite some time. In fairness, it must be understood that the number of filings could be a dangerous criteria of judging the level of research and innovation since, firstly, IP protection might not be sought for most STEM research (for example, when researchers simply go ahead and publish their findings) and secondly, not all filings will result into patents. However, equally there can be no patent grant without a filing..  Hence, as far as the filings go, there is an incredibly huge room for improvement for most Indian universities. Quite distinct from other institutes and universities, IITs (collectively), NITs, IISc, and (in the category of scientific and R&D organisations) CSIR, ICAR, DRDO and ISRO have been quite active in filing patent applications in India.

In view of this, the first question is, what ails Indian universities when it comes to patenting? One answer could be the lack of awareness about patents or IPRs. But the question probably needs to be seen in a larger context- that of research and innovation in India and, specifically, in Indian universities. Will the increased emphasis on acquisition of IP (including patents), alone, spur research and innovation in Indian academia? And, in this context, are we giving enough importance and impetus to university-industry partnerships (which could be a good source of funding and motivation for focused research)?

Another probable reason for lesser filings by most universities could be the cumbersome procedure for obtaining university approval for filing applications. Some universities tend to have IP cells to facilitate IP filings. But the procedures of considering requests from professors and research scholars adopted by these cells often reek of red tapism. Further, sometimes the cells could be defunct as is the case with MHRD IP Chair at DU. Perhaps, looking into some of these areas is important for increasing university innovation as well as patent acquisition by the universities. Part II of this post deals specifically with the Indian research and innovation environment, focusing primarily on university research, and tries to highlight some of the issues that deserve our attention.

Please click here to view Part II of this post.

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We’re pleased to bring you Part II of a two-part guest post by Victor Vaibhav Tandon. Part I of the post can be viewed here.

Victor is an academician turned lawyer. He’s also a registered Patent Agent and holds a Ph.D. in patent law. After teaching as a faculty in a prominent NLU, he joined the IP firm Saikrishna & Associates where he’s part of a team dealing with pharmaceutical and SEP litigations. He continues to teach as a visiting faculty for PGDIPR courses in ILI and ISIL.

Patents, Innovation & University Research: A Few Questions about the Indian Narrative – Part II

Victor Vaibhav Tandon

Part I of this post had focused on patent filings and grants in India, and had argued that patents are just one (troublesome) aspect of innovation. It had further argued that innovation requires focusing on several other aspects as well. This second part will highlight some of the areas that deserve our attention, in the context of university research and innovation in India.

Research and Innovation Environment

Coming to the larger context of research and innovation in India, patents or patent filings can only come about once research or innovation has taken place. Ideas or inventions don’t always depend on level of education or training or might not even require extensive inputs in terms of costs and equipments, but there are complex fields, like biotechnology or pharmaceuticals, where funding for sophisticated laboratories and equipments are required, and a certain level of education is a prerequisite.

In this context, in July 2019, the Economic Advisory Council to Prime Minister (EAC-PM) came with a report, “R&D Expenditure Ecosystem: Current Status and Way Forward”, which stated that the Gross Expenditure on R&D (GERD) has remained “between 0.6 to 0.7 percent of GDP over the past two decades” and admitted that it is below that of countries like USA (2.8%), China (2.1%) and Israel (4.3%). Interestingly, the report noted that, apart from Israel, nations like South Korea (4.3%), Switzerland (3.2%), Finland (3.2%) and Japan (3.4%)were amongst the top 5 spenders (as a percentage of their GDP. 2017 data). Further, the government expenditure in the Indian context was “almost entirely” by the Central Government. Quite naturally, this needs to be significantly improved to support the innovation ecosystem. Here the role and contribution of the private sector is equally critical.

In the context of another parameter, as per UNESCO data, India had a lowly 252 researchers per million population in 2018, the equivalent number for China was more than 4,000 (2018), while USA had above 4,200 researchers in 2016 itself. Even for this parameter, there is a tremendous scope for improvement. And this is relevant for patent related data because spending more on research and having more researchers (not to forget their quality) could possibly be a way to boost innovation itself and consequently the figures related to patents.

It goes without saying that funding and suitable research environment are important for developing any industry or technology area. Interestingly, the Office of Technology Assessment (OTA) of US Congress (defunct since 1995) in its 1991 report on “Biotechnology in a Global Economy” (PDF) had stated the two prerequisites for a country to compete in biotechnology, highlighting “a strong research base” as the first priority. It had further identified “seven policy issues relevant to U.S. competitiveness in biotechnology”, namely, “(1) federal funding for biotechnology research, (2) targeting biotechnology development, (3) developing regulations, (4) coordinating federal agencies, (5) protecting intellectual property, (6) improving industry-university relationships, and (7) structuring coherent tax policies”. Clearly, IP was just one of the several policy issues/ factors that were considered to be relevant.

The same can, arguably, apply for the development of other technological/industrial areas. Therefore, continuously increasing R&D spending to globally comparable levels, focusing on higher education, university-industry partnerships, and improving the number of researchers (including STEM researchers) without compromising on their quality are equally imperative for innovation.

Another related statistic where considerable improvement is possible is the number of Ph.D. enrolments and their employment prospects. It should be clear that innovation is not the domain of Ph.D. scholars alone nor is a Ph.D. a prerequisite to be an inventor. However for certain super-specializations and complex research areas, a Ph.D. can very well be a pre-requisite. Further in higher academics (teaching and research), a Ph.D. is almost a necessity.  And it is perhaps here that importance of higher education institutions, research institutions and universities lies. Further these doctoral researchers constitute the supply for private sector R&D units as well. As per MHRD’s All India Survey on Higher Education (AISHE), 2018-2019, out of the total 37.4 million enrolments in higher education, a mere 0.45% or a paltry 1,67,000 Ph.D. enrolments exist. Since, we are dealing with patents and innovation, of these Ph.D. enrolments, as per government statistics, the majority is of STEM scholars. Perhaps these numbers overlook the fact that a number of Indians are going to other countries for their higher education and doctoral research, spurred in part by better research facilities and opportunities existing there. Nevertheless the extremely low number of STEM Ph.D. enrolments in India (which are obviously lower than the total enrolments), raise a few disturbing questions,

Will all the STEM doctoral researchers have a desirable quality of research? This is relevant irrespective of whether such researchers choose to simply publish their research or whether they apply for patents.

Will all of the STEM doctoral researchers find gainful and stable employment in the government or private sector, or will they be willing to start off as entrepreneurs? The last question assumes importance because in the absence of gainful and stable employment and work environments conducive to creativity, the doctoral researchers might opt out of a career in research. Absence of proper environments could also dissuade more people from opting for a career in STEM research in India. And this will have a bearing on both innovation and patents related data. In this context, contractualisation or adhocism in Indian universities, including in so-called premier universities is a sombre reminder of our (misplaced) priorities. In this context, it is relevant to ask:    Does contractualisation or ad-hoc appointments in higher education/research institutions have a bearing on genuine research by young STEM researchers? Quite a few young STEM researchers could be dissuaded by existence of such a non-favourable environment. Equally, quite a few of them could be more concerned about finding new post doctoral fellowships or retaining their contractual positions rather than engaging in long term (quality) research. We need to provide appropriate research environment before placing emphasis on statistics related to patents

It is true that there are number of other factors which can and do influence university research in India. Not all of them can be discussed in this piece. Also, some of the questions raised here require a detailed empirical analysis to inform better policy formulation and to understand whether, and how much, impact they have on innovation or on patent acquisition.

Concluding Observations

The important thing to remember here is that it is not just an increased emphasis on patents that is going to make India innovative. The emphasis on IPRs and patents is indeed required, albeit not at the cost of forgetting the importance of open-science, quality output, and research collaborations. But in order to be innovative, several other factors are also important. We need to look at our education infrastructure, R&D spending, research environment, opportunities for STEM researchers and scientists, and university-industry partnerships. And, therefore, the larger question is, will India be able to create a strong research base or the kind of quality needed to harness the true potential of a vibrant patent system. And perhaps that true potential will lie not just in holding CV-boosting hundred patent applications/ patents per person that no industry or other entity is willing to invest in or commercialize, but a smaller but well commercialized patent portfolio.

Please click here to view Part I of this post.

Image from here

We’re pleased to bring to you another guest post by our Fellowship applicant Anupriya Dhonchak, analysing the Bombay High Court’s interim order in a recent copyright infringement suit filed by a story writer against a web series ‘Singardaan’. This post is a follow-on to Arun’s earlier post on this decision.

Anupriya is a 4th year law student at National Law University, Delhi. Her earlier posts on the blog can be viewed here, here and here.

Singardaan Copyright Case: Bombay HC’s Novel ‘Extraction’ – Substantial Similarity Test

Anupriya Dhonchak

Recently, the Bombay High Court in Shamoil Khan v. Falguni Shah held that copyright protection subsists in the theme, plot and story line constituting the essence of a literary work (see Arun’s post on this decision here). The plaintiff wrote a story titled ‘Singardaan’ in Urdu which was published in a literary magazine in 1993, translated in Hindi in 1994 and subsequently also published in the plaintiff’s own collection of short stories in 1996. He alleged that the defendants’ web series under the identical title, ‘Singardaan’ launched on the App ‘Ullu’ and available on YouTube copied his story’s plot, narrative, characters and title. He sought damages as well as a temporary injunction restraining the defendants from telecasting the web series.

Analysis

Previously, while discussing the case, Arun noted that this order highlighted difficulties in thematic protection and was at odds with precedent. He expressed concern that deeming the theme itself to be copyrightable expression would be a significant expansion of the scope of copyright protection. I argue that one way of dealing with this is to construe the ratio of the case to be strictly applicable to the material facts relevant therein. This is because the Court noted that the ‘theme’ of a literary work, used in the general sense of the word to refer to an abstract central idea, was considered to be uncopyrightable by the Bombay High Court in XYZ Films v. UTV and the Supreme Court in R.G. Anand v. Delux Films. However, the Court in Shamoil Khan has admittedly used ‘theme’ in a rather different sense to refer to the story line, central idea and character trajectory expressed together, which was sophisticated enough to merit copyright protection. In fact, ‘theme’ was used to refer to the rather developed story line of a Hindu man taking away a Singardaan (vanity box) from a Muslim sex worker in a brothel to his home during communal riots and its use by the women at his home leading to changes in their behaviour was expressed sophisticatedly enough to warrant protection.

For the first part of its inquiry, the Court tried to distinguish the protectable, fleshed out expression from the abstract idea in the plaintiff’s story. In doing so the Court did not really engage in a dissection but only provided one illustration regarding the commonness and unprotectability of the idea of the use of an artefact or belonging, which typically when separated from its actual owner, has the potential to change the behaviours or lives of people who subsequently possess it. It noted that this idea in itself was free to be used by anyone provided they contextualised it within a different story line than that of the plaintiff.

I imagine that at least some of the thematic similarities in the two works regarding encounters with a sex worker and the outbreak of communal riots can hardly be called original. Multiple writers in India and Pakistan such as Saadat Hasan Manto and Khushwant Singh have written stories around this theme. Even post-independence, memories of the bloody history of partition of India and continuing strife between Hindus and Muslims has been used to politically incite riots rendering any semblance of communal harmony fragile. The literary preoccupation with this trope may have something to do with providing visibility to those at the margins. The heightened vulnerability and strength of the sex worker in times of political turmoil and violence such as riots proves to be a site that repeatedly captures the imagination of the audience and creators alike. Thus, it is akin more to a stock device than copyrightable expression. However, the plaintiff’s story line which was allegedly copied in this case was considerably more sophisticated than this. In fact, it was the uniquely creative combination of situations and stock devices which is protectable as an arrangement on the whole instead of the unprotectable ideas that constitute it.

For the second part of the inquiry, qua the defendants’ copying of a substantial part of the plaintiff’s story, the Court held that the web series contained all the essential parts of the story. It came to this conclusion noting that it would have been obvious to anyone who had read the story that the web series was only an adaptation of it. This is somewhat similar to the conclusion suggested by Arun of referring to the “total concept and feel” of the works from an average lay observer’s viewpoint (as per the United States Court of Appeal, Second Circuit in Softel, Inc. v. Dragon Med. & Sci. Commc’ns, Inc.)

This also risks significant expansion of the scope of copyright protection since the ordinary viewer is tasked “with the impossible task of comparing only protected expression in determining substantial similarity without engaging in any thoughtful dissection or analysis of the work.”. It risks over protection because in coming to a conclusion that the web series is obviously an adaptation of the story, the ordinary viewer (as opposed to an expert) is likely to be influenced by concerns of unfair competition and free riding by the defendants on the plaintiff’s work. However, copyright law is not concerned with unfair competition but only with taking someone’s protectable original intellectual effort without authorization.

Further, the Court was also incorrect in its reasoning that the differences drawn up by the defendant between their web series and the plaintiff’s story were not crucial because they constituted ‘mere embellishments’ whereas the story line of the plaintiff was the ‘life and blood’ of the web series. This is because the ‘life and blood’ of the web series is irrelevant to a finding of substantial similarity and copyright infringement. Even if the web series had used the story as an ancillary trivial part of a larger plot whose ‘life and blood’ was something else, if the Court has concluded that the story used was a substantial part of the plaintiff’s copyrightable expression (as it had in this case), it would still result in a finding of infringement. It is pertinent to note Justice Learned Hand’s famous observation here, “[N]o plagiarist can excuse the wrong by showing how much of his work he did not pirate.” This also shows that instead of any studied dissection or expert opinion, the court proceeded on a general overview based on an average lay person’s point of view regarding the two works instead of a studied dissection which has the potential to result in broad findings, risking over protection.

Conclusion

Finally, the good thing about this order is the Court’s candid acknowledgement of the difficulty in the ‘delicate task’ of applying the idea-expression dichotomy in practice, ultimately based on a value judgment of the right degree of abstraction. These ambiguities can risk over protection and are likely to be interpreted to the disadvantage of less powerful parties who don’t always have the wherewithal to make their constructions prevail. Thus, as suggested here, it might make sense to remedy the vagueness of substantial similarity tests by informing them with fair use considerations and IP first principles of tolerating monopolies only when and insofar as they incentivise dissemination and creation, including creation of new works by downstream users.

[This post has been co-authored with Praharsh Gour. Praharsh is a graduate from Hidayatullah National Law University, Raipur and is presently an LL.M. candidate at the Faculty of Legal Studies, South Asian University, New Delhi]

Perhaps a more palatable pun? Image from @itslikethisonly. On this note, readers may be interested in news that Eros International apparently recently registered “Corona Pyaar Hai” as a film title!

You know you are in for a roller-coaster ride when the name of your 95 year old brand resembles the ongoing pandemic. The recent Covid-19 outbreak has perhaps left the famous beer brand ‘Corona’ swinging like a pendulum between two wildly varying image issues. On one hand its namesake similarity with the novel Coronavirus is ridiculed through memes, and on the other is garnishing a tonne of free publicity. This post will discuss how the Coronavirus pandemic has brought this brand before the court against a party for allegedly disparaging its trademark in the context of this pandemic.

First, a bit on the name(s) : The story behind the name of the Coronavirus dates back to 1968, when an informal group of eight virologists discovered a new group of virus, resembling a “solar corona” under the microscope. Unrelated to this scientific feat, the Corona labelled alcoholic beverage (beer) seems to be named after the Spanish translation of the word “crown”, which is also an inseparable part of its label. The Corona beer was first brewed in 1925 and is one of the most recognizable brands globally (70th if we go by the 2019 list of the world’s most valuable brands by Forbes) and is served in 120 countries worldwide. The brand is owned by the Anheuser-Busch InBev, (except in the USA where it is owned by the Constellation Brands) and the beer is brewed by Grupo Mondelo in Mexico. It is Cerveciria Modelo de Mexico, a brewery under Grupo Mondelo, who is the petitioner in the current case. 

On June 22, a single judge bench of the Delhi High Court passed an order granting ex-parte interim injunction prohibiting M/s. Whiskin Spirits from publishing and sharing an advertisement ridiculing Corona beer for its pandemic namesake, till the next date of hearing. The court held that there is a prima facie case for disparagement which will jeopardise the statutory and commercial interests of the proprietor of the trademark Corona. Referring to the market of the subject product, the court held the balance of convenience is in the favour of the Plaintiff and obliged its request for an ex-parte interim injunction setting the next date for hearing on July 22. 

The suit (C.S (Comm.) 186/2020), was instituted by Cerveciria Modelo de Mexico (Plaintiff), on June 20. Though the order granting the interim order says that the plaintiff owns the wordmark “Corona”, this seems to either be a typo, or factually incorrect. A public search shows that the wordmark “Corona” in Class 32 lies with Thomas and Evans Ltd.(appln no 199020, filed in 1960) as well as with Britvic Softdrinks Ltd., (appln no 724413, filed in 1996 – perhaps honest, concurrent use?), and not with Group Modelo. Group Modelo does however own the marks “Corona Extra”, and “Corona Light (Label)”. Nonetheless, while a trademark order should not have such mistakes, this does not seem to be a material error in this case. 

The ad in question, as taken from the interim order. Interesting to note that the defendant’s product does not seem to actually be distinguishable from this image.

Coming back to the facts of the case, the Plaintiff alleged that M/s. Whiskin Spirits Pvt. Ltd. (Defendant – also identified, for some reason, as one of its former distributors), has published advertisements on Facebook which links the Plaintiff’s product with the ‘coronavirus’ and thereby alleges disparagement of its trademark. The order shows what is presumably the advertisement in question (shown on the left).  While the plaintiff’s arguments don’t seem to be available on the Delhi High Court site, as per this article, they allege that the advertisement shows small whisky bottles practising ‘social distancing’ from the Corona Extra beer. This apparently shows the public that they too should practice social distancing from that product, and choose Defendant’s product instead. The court, without recording its assessment of the advertisement, simply stated that it found a prima facie case and balance of convenience in the Plaintiff’s favour, and ordered an ex-parte interim injunction in favor of the Plaintiff. 

Ex-parte interim injunctions must have reasons explained, and not as a mere formality. It has been expressly held by the Supreme Court, and something that posts on SpicyIP have discussed several times. It is also something which nonetheless continues all too frequently. 

Comparative advertising and disparagement

In comparative advertising that does not outright denigrate a competitor’s product (which is a permitted form of speech under the fundamental right to freedom of speech and expression (Article 19(1)(a)) and a nominative fair use under Section 30 (2)(d) of the Trademark Act), two rival products are compared with one of them being projected as the better alternative. On the other hand disparagement is essentially a publication whereby an advertiser casts apprehension about the quality of the product of a competitor damaging its reputation. Theoretically, while comparative advertising may be permissible, disparagement amounts to infringement of a trademark, under Section 29 (8) of the Trademark Act. However, such a straitjacket demarcation between the two is often not possible and is not rational – and this has been recognised by courts as well (here and here). 

The present case however is a bit more peculiar, in that the ‘denigration’ is allegedly being done by comparing the plaintiff’s product with an external phenomenon, which doesn’t have anything to do with the quality of the product, but merely has a overall negative connotation/association to it. Can disparagement be shown when a competitor is using a ‘wisecrack’ around the etymological similarity between a product name and an external  phenomenon? In the present case it would be difficult to believe that any viewers would see the defendant’s depiction of 8 smaller bottles maintaining a ‘social distance’ from the namesake of the current pandemic virus, and believe that the beer is actually spreading a virus, or connected to the virus in any way. This ‘obviousness’ of the non-literal nature of the advertisement lends itself to showing that the advertisement is more in the nature of a parody or pun. A very common one at that – as there are several memes along the same lines already out there. The Defendant’s advertisement nowhere discredits nor undermines the value of the Plaintiff’s product but instead merely makes a cheeky observation about the name i.e. making a pun out of the Plaintiff’s trademark, something which the Delhi High Court in Dabur India v. Emami Ltd. indicates as quite permissible, stating: 

“There is bound to be creativity, pun and a storyline in such messages, so that it creates an impact on the viewers or the readers.” …. “Some leeway has always to be given to the advertiser, but at the same time right to free speech cannot be stretched to allow them to become defamatory, disparaging or denigrating. One cannot ignore the fundamental characteristic of comparative advertisements is appraisal by contrasting the products. There will often be an element of negative or adversarial comparison. This is the natural outcome or byproduct of “comparison”.” (Para 35)

There is no doubt that ‘corona’ brings to mind the virus – to probably most people on the planet right now – regardless of this ad. However, does this mean that people think it has any connection to the beer? Beer drinkers around the world certainly don’t think so, if the beer’s sales figures are anything to go by – they are only posting higher sales percentages for their holding entity, prior to the economic lockdown. The brand’s US exporter Constellation Group’s Senior Director of Communications in fact specifies this quite clearly: “Despite the misinformation circulating, consumer sentiment and sales remain strong. Consumers understand there’s no linkage between the virus and our business.”

PSA

All in good humor perhaps?

It must be remembered that poking fun at other brands is not a new concept either. Readers may recall the famous Coke v. Pepsi cola wars where the brands resorted to audacious parodies at the expense of the other. In adjudicating over one such instance between the cola rivals, the Delhi High Court in Pepsi Co. Inc. v. Hindustan Coca Cola Ltd., noted that the usage of phrase “Yeh dil maange no more” is nothing more than a cheeky parroting of Pepsi’s famous “Yeh dil mange more” tagline and is not a trademark infringement.

Delhi High Court in Tata Sons v. Greenpeace International, has expressly clarified that to determine if defendant’s work will stand out as a parody or not, it must be seen as a whole from the perspective of a reasonable man, who is sensitive to both free speech values and objectives of trademark law and cautioned that it cannot “anoint itself as a literary critic” nor can “it don the robes of a censor” in such situations. Along similar lines, in Dabur v. Emami, the court stated, “if it can be gauged that the message broadly demonstrates slanderous or indiscriminate negative comparison or insinuation, Courts should not be slow in ensuring that such messages do not spread. If it does hurt or annoy the Plaintiff, it is nothing but display of an over sensitive approach, that can‟t be helped.”

Considering the nature of the impugned advertisement in the present case, it seems at best to be a case of harmless trolling. This isn’t a new concept either, with now famous one-up-manship games going on between Apple/Samsung, Mercedes/Jaguar, etc. In fact there are arguments advocating many of such trolls and memes should be regarded as artistic work and be accorded copyright protection instead! 

Ironically Corona the brand has built its brand image around the idea of a ‘beach state of mind‘, and living a carefree life. Maybe a good reminder to simply live and let laugh! Jokes apart, we must remember that the approach of our courts regarding parody and trolling is relatively unexplored and this might be a good time for courts to analyse such uncharted territories.

Despite the high educational value that exists when tomes of writing are dedicated to very specific areas, textbooks are often no longer treated like the powerhouses of knowledge that they were once known to be. Especially given the plethora of other medium over which that knowledge is now available – journal articles, niche websites, blogs, podcasts, online forums, social media, etc. The reasons for this are of course varied. In a fast evolving field like intellectual property, classic textbooks may simply not have sufficiently up-to-date or relevant material, whereas blogs and the like, can get in-depth views out on new developments within days. Several of these online mediums also come with the added advantage of being easier to understand, more easily available, and include disability-friendly options of accessing the material. However, one of the biggest factors for preferring non-textbook options is simply, and unfortunately, that of price. While students may now have unencumbered access to course-packs (compilations of prescribed portions) thanks to the DU Photocopy case, textbooks are still frequently a price issue for many students. And unfortunately, good and well stocked libraries are still few and far-between. While Indian IP books may sometimes be priced on the higher end – if a student (or, anyone really) needs a reference book on foreign IP law – its pretty much guaranteed that the only legal means that the student has available will be that of seeing what the google gods grant them!

The Open-Access movement, thankfully, has led to some hope on this front. A few years ago, Vasundhara had carried a post mentioning a few titles. We’re very happy to now say we’ve compiled a whole list of Open-Access IP Books! There are currently more than 50 books listed there, and this page will continue to be periodically updated. Unfortunately, very few of these deal directly with Indian IP law – though readers who aren’t fussy about ‘books’ as the medium may have a lot more luck searching through the Digital Library of India’s database. And the Hathi Trust Digital Library is another amazing resource that tends to have more scholarly content than others, though this is not specifically focused on Indian content. And as most readers interested in this area might know – its always worth taking a look at the Internet Archive. Nonetheless, this list will still hopefully have a bit of something for everyone. Do take a look and let us know. It’s also definitely worth mentioning at this point, that the MHRD’s e-PG-Pathshala website has open courses on Intellectual Property and can be a very useful resource as well. You can access it over here: e-PG Pathshala.

While we were at it, we also went ahead and created a list of non-Open Access IP Books. If nothing else, this will hopefully serve as an index of IP books to consider for when one wants to research upon a particular IP topic.

Publishing in Open Access format – not has hard as one might think

Given the very low numbers of Open Access books on Indian IP – it is also worth mentioning that it is not as difficult as it may seem for professors / academic authors to publish in Open Access formats. As readers will note from the Open-Access IP Books list, there are a number of publishers who are open to this. However, some of the bigger publishers require a very hefty fee for authors wishing to take the Open Access route. Nonetheless, unfunded authors too can take the Open Access route if they wish, such as through Open Book Publishers, or some of the various university publishing houses. Authors who may be considering this route may find this guide from OBP useful in understanding the process and steps involved. Similarly, Virginia Tech has put together a guide on Open Access Textbook publishing, and so has the Foster Open Science website, including a few options of publishing houses. Law professors in particular should note that Harvard has an H20 platform that anyone can use to create Open Case Books.

Are there more Open Access textbooks or libraries that cater to scholarly works (books) that you know of? Do let us know in the comments below. And in the mean time, we’ll aim towards putting together a similar list of non-textbook resources some time in the near future as well!

A recap of the important links on this page:

1. IP Books – Open Access list
2. IP Books – Non Open Access list
3. Digital Library of India
4. Hathi Trust Digital Library
5. Internet Archive
6. e-PG Pathshala
7. Open Book Publishers
8. OBP’s “An Academics Guide to Open Access Publishing“
9. Virginia Tech’s “Open Education: Open Textbook Authoring and Editing“
10. Foster Open Science’s guide on Open Access Publishing
11. Harvard’s H20 OpenCaseBooks platform

Topical Highlight

To Mock the Corona Word: Disparaging During the Time of Crisis

In a post co-authored with Praharsh Gour, Swaraj wrote about disparagement of the famous beer brand ‘Corona’ given its resemblance to the ongoing pandemic in the context of the Cerveciria Modelo De Mexico v. Whiskin Spirits case. Analyzing the order, it is noted that the Court has not recorded its assessment of the advertisement in granting the ex-parte interim injunction.

Image from here

The post goes on to highlight that the alleged advertisement nowhere undermines or discredits the quality of the Plaintiff’s product but rather makes a cheeky pun out of the etymological similarity between the product and the virus – an act which seems to be allowed by law. The post identifies the previous instances where courts have talked about the level of negative commentary allowed in such advertisements. Finally, the post concludes on a note that this case could be an ideal ground to study the relatively unexplored territories of parody and trolling.

Thematic Highlight

Patents, Innovation & University Research: A Few Questions about the Indian Narrative – Part I and Part II

In a two-part guest post, Victor Vaibhav Tandon wrote about the relationship between scientific research and patents and their role in innovation and development.

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In Part I, Victor looks at universities and higher education institutions in India to study the systemic shifts needed to improve innovation and the acquisition of patents. Discussing the connection between patents and the incentive to innovate, he points out that empirical support for theories of innovation is mixed and that patents do not necessarily push for innovation. He also explains how patents affect downstream innovation that requires negotiating licenses and terms with patentees, which increases the costs involved in the same. Despite these problems, it is recognized that the patent system can be a useful tool and is the most suitable system we currently have for fostering innovation. Victor then goes on to analyze some patent data concerning India. While highlighting the various reasons for low filing, he says that there is an incredibly huge room for improvement in filing. Lack of awareness about IPRs and the cumbersome procedure for obtaining university approval for filing applications are suggested to be the possible reasons for the low filing rates.

In Part II, Victor highlights some of the areas of interest in the context of university research and innovation in India. First off, he writes about the issue of R&D costs and equipment, on which India spends 0.6-0.7% of its GDP which is much lesser than other countries like US, China and Israel. This needs significant improvement and the involvement of the private sector. Next, it was pointed out that there is tremendous scope for improvement with respect to the number of researchers working in India and in the research environment. Continuously increasing R&D spending to globally comparable levels, focusing on higher education, university-industry partnerships, and improving the number of researchers without compromising on their quality are seen to be imperative for innovation. In conclusion, Victor states that for increasing innovation we need to look at our education infrastructure, R&D spending, research environment, opportunities for STEM researchers and scientists, and university-industry partnerships to harness the potential of a vibrant patent system.

Other Posts

Discussion on Fundamentals of ‘Authorship’: Copyright System v. Author’s Rights System

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Mathews wrote a post discussing the fundamentals of ‘Authorship’ in the context of digital progress challenging the fundamental norms of IP laws. Starting off with the fundamental principles governing the authorship of ‘works’, he discusses the copyright system approach and the author’s rights system approach (droit d’auteur system). Tracing the origin of copyright law, he discusses how the ideas of ‘freedom’ and ‘property’ influenced the same, particularly the author’s rights system. The copyright system, on the other hand, is grounded in the utilitarian approach that incentivises creation for enhancing society’s welfare. The key difference between the systems is that the author’s rights system treats the ‘author’ as the most essential ingredient of its protection. Consequently, only a natural person can be an author under the author’s rights system. Although the copyright system focuses on protecting the ‘work’, extending authorship to an algorithm or AI has not been contemplated yet in this system. With the Indian copyright law being predominantly influenced by the copyright system, Mathews says it becomes imperative to revisit the fundamentals with the relevance of the digital world increasing.

Singardaan Copyright Case: Bombay HC’s Novel ‘Extraction’ – Substantial Similarity Test

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Our Fellowship applicant Anupriya Dhonchak submitted a guest post where she analyzes the Bombay HC’s interim order in Shamoil Khan v. Falguni Shah concerning a copyright infringement suit against a web series ‘Singardaan’. Bombay HC in this case held that copyright protection subsists in the theme, plot, and storyline constituting the essence of a literary work, thus significantly expanding the scope of copyright protection. First, she argues that the ratio of this case is to be construed as being only strictly applicable to the material facts of the case. She argues that the word ‘theme’ is used in a sense to refer to the storyline, central idea and character trajectory expressed together rather than as an abstract central idea and hence would merit copyright protection. Second, she argues that the Court was incorrect in its reasoning that the differences drawn up by the defendant between their web series and the plaintiff’s story were not crucial because they constituted ‘mere embellishments’ whereas the storyline of the plaintiff was the ‘life and blood’ of the web series. She argues the ‘life and blood’ of the web series is irrelevant to a finding of similarity and copyright infringement as the test only concerns substantial use even if the copied expression is used as ancillary parts.  She concludes that the Court proceeded on a general overview based on an average lay person’s view of the works instead of a studied dissection, thus showing the difficulty of applying the idea-expression dichotomy in practice.

Other Developments

Decisions from Indian Courts

Telangana HC sets aside ex-parte interim injunction order for non-recording of reasons in a passing off case [June 24, 2020]

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In Ms Industries and Spirits P Ltd v. Ms Allied Blenders, a single-judge bench of the Telangana High Court set aside an ex-parte ad interim injunction granted by a subordinate court (City Civil Court of Hyderabad) for not recording reasons for the grant of an injunction considering the extraordinary nature of the remedy. The lower court had granted an injunction against Ms Industries (appellants) to prevent them from dishonestly passing off Allied Blenders registered trademark in ‘Officer’s Choice’ and its variants. It was alleged that the appellants use of the label ‘Manjeera Classic No.1 Whisky’ and its variants were similar and identical to Allied Blenders Officer’s Choice trademark and trade dressed labels. Further, it was also argued that the appellant’s use was an infringement of the valid copyright held by Allied Blenders in the original artistic work ‘Officer’s Choice’ and the same was detrimental to the distinctive character and reputation of Allied Blenders’ mark and copyright. The same decision was appealed in the High Court and after scrutinizing the conditions for granting an injunction under the Civil Procedure Code, the High Court noted that there was no recording of reasons for granting the ex-parte interim injunction and set the same aside.

Bombay HC restrains a clothing manufacturer from using trademark ‘ISKCON’ [June 26, 2020]

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In International Society for Krishna Consciousness (ISKCON) v. Iskcon Appaeral Pvt Ltd., a single-judge bench of the Bombay HC granted a permanent injunction against the defendant, a clothing manufacturer, from using the trade name ISKCON and declared that the International Society for Krishna Consciousness (ISKCON) is a well-known trademark in India within the meaning provided in Section 2(1)(zg) of the Trade Marks Act. The Court had granted an interim injunction in the matter on March 6, 2020. The plaintiff established the efforts undertaken by them to safeguard their rights in the mark ISKCON and the activities undertaken by them using the mark ISKCON and that the recognition, reputation, and goodwill of the plaintiff’s marks is not restricted to any particular goods/services/ activities but pertains to a diverse range of categories. The judge recognized that ISKCON is a coined trademark of the plaintiff and it did not exist prior to the plaintiff’s adoption and use of the same. The judge observed that since it is associated exclusively with the plaintiff, it deserves the highest degree of protection and recognized the same through the order.

Delhi HC refuses interim injunction in copyright infringement case concerning architectural drawings [June 26, 2020]

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In GE Power India Limited v. NHPC Limited, a single-judge bench of the Delhi High Court refused to grant an injunction in a copyright infringement case as the plaintiff did not have a prima facie case. The plaintiff had alleged that the defendant published and disclosed to third parties copyrighted and highly confidential drawings of the plaintiff. The copyrighted work being confidential in nature, the defendant did not have the right to publish or possess the same without a license. However, the terms of assignment between the parties recognized a limited right that the defendant had with respect to the work. The defendant took the plea of fair dealing which is permitted under Section 52(1)(a) of the Copyright Act, however, the Court clarified that the right is available only for private or personal use and does not apply to the commercial activity for which the defendant published the work. The Court added that Section 52(1)(x) of the Copyright Act applies only to architectural drawings or plans that are used for reconstruction of a building or structures “originally constructed” and therefore stipulates that the building or structure with the said drawings was made with the consent or license of the owner of the copyright in such drawings and plans. However, since the plaintiff could not show that any copyright vested in the drawings, the Court held that it did not have a prima facie case for granting an interim injunction.

 Other News from around the Country

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• Bombay HC restrained Ayurvedic manufacturer, Green Cross Health Innovation from using ‘DIAVIT’, the registered trademark of Franco-Indian Pharmaceuticals Pvt. Ltd. to sell an Ayurvedic formulation through various e-commerce sites.
• A statement by Indian civil society including health rights activists, grassroots activists and lawyers, asserts the need for open innovation and knowledge sharing for COVID-19 healthcare through Indian IP laws. The statement seeks focused research for innovation in COVID-19 and restricting intellectual property and profiteering for public benefit.
• Patent Office refused to grant a patent to Astellas Deutschland for their invention ‘oral dosage forms of Bendamustine and therapeutic use thereof’ on account of it not being an invention under Sections 3(d) and 3(e) of the Patents Act).

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• Justice Pratibha M. Singh wrote on the ‘Intersection of Artificial Intelligence, Copyright and COVID’ where she discusses how IP affects the development of Artificial Intelligence (AI), the changes required in copyright law and how AI can be used to increase the speed of dispensation of justice.

News from around the World

• Japan announced a patent pool initiative that aims to share production methods of COVID-19 vaccines and therapeutic drugs.
• ‘Enola Holmes’ movie based on the character of Sherlock Holmes’ sister faces copyright infringement lawsuit from the character’s author, Conan Doyle’s Estate. The estate claimed that the movie uses stories from the author’s work that are not under the public domain.

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  Amazon launched a Counterfeit Crimes Unit dedicated to bring legal action against counterfeiters and trademark infringers to protect customers and brands.

• Merck filed a patent infringement petition against Dr Reddy’s in the US District Court for the District of Delaware for allegedly coming out with generic version of its multi-billion-dollar drugs, Januvia and Janumet.
• South African President Cyril Ramaphosa sent two copyright-related bills back to the Parliament after its broad fair use provisions faced opposition from rights holders and pressure from the US and EU governments.
• The European Patent Office has published a series of resources designed to help researchers and decision-makers benefit from patent information for combating COVID-19.
• The Rolling Stones has threatened to sue US President Donald Trump for using their music at campaign rallies. The band has claimed that the use is in breach of its licensing agreement.

For regular updates on IP news and opinions related to COVID-19, please visit our COVID-19 & IP Updates page (also accessible from the Resources section on our website).

We are pleased to bring to you a two-part guest post by Viraj Ananth, examining the legal landscape of TDM in India, an issue we have covered on this blog previously here. Viraj is a fourth year B.A. LL.B. (Hons.) student at the National Law School of India University, Bangalore.

Part I of this post first introduces text and data mining (TDM) and contrasts popular TDM techniques, namely website scraping, website crawling or indexing, and website archiving. It then studies the question of copyright infringement liability for TDM in India. Part II of the post explores international developments on copyright exceptions for TDM use. It then examines the scope for website owners in India to contractually limit/condition TDM use on their websites, and concludes with some guiding principles for scrapers to minimise contractual liability.

Crawl Cautiously: Examining the Legal Landscape for Text and Data Mining in India – Part I

Viraj Ananth

Introduction

The emergence of the Internet has led to vast quantities of data being stored online. Website scraping and other forms of text and data mining (‘TDM’) have arisen in response to the corresponding need for researchers, scientists and developers to access such information. TDM has long been subject to opposition from right-holders on grounds of copyright infringement and other business-related concerns. However, recent years have witnessed a growing recognition of the immense benefits of TDM for research and innovation, and calls for incorporating copyright exceptions for its use. Notwithstanding this, in India, there is presently neither legislation nor case-law that substantively engages with TDM and its associated legal concerns. This piece examines the prospective legality of TDM under Indian law and specifically focuses on copyright and contractual liability. It also studies recent international developments on providing copyright exceptions for TDM.

Understanding Text and Data Mining

‘Website scraping’ refers to the process of using technological tools to extract specific or relevant information from websites and convert this information into a usable form. This may be done either manually or autonomously, i.e., using pre-written programs. Website scraping is used by a variety of stakeholders including scientists, researchers, journalists and companies (such as news aggregators and AI software developers) to access online data. It may be contrasted with ‘website crawling’ or ‘website indexing’ which is predominantly conducted by search engines and involves systematically visiting websites using technological tools, and indexing, among other information, their Uniform Resource Locator. That said, website crawlers commonly use scraping technology to supplement their efforts to extract hyperlinked webpages.

Website scraping and crawling are closely related to ‘website archiving’ which is concerned with the preservation of both the content and the ‘look and feel’ of webpages. Unlike website scraping which is more focused on text, website archivers often collect additional information such as images, videos and the underlying code of archived webpages, in order to preserve them as is. Website achieving is commonly used by libraries and open access organisations — like the Internet Archive which was established in 1996 to provide “universal access to all knowledge” — who claim copyright exceptions broadly on grounds of non-commercial use for research and educational purposes.

These concepts may collectively be referred to under the umbrella term ‘text and data mining’ (‘TDM’). In recent years, some forms of TDM have been met with growing opposition, due to their ‘non-reciprocal nature’ and the novel business and intellectual property challenges they pose. TDM may, for instance, be used by businesses to obtain a real-time overview of a competitor’s publicly disclosed decisions, updates and product information. It may, in some cases, also be used to access poorly protected gated content on such websites and thus, reveal confidential information. Further, excessive rates of TDM may overload and inhibit a website’s server performance and in turn, potentially lead to a loss of reputation and revenue, and increased website infrastructure costs. TDM is also commonly challenged as violative of copyright, due to its potential to restrict the economic rights of authors.

More recently, TDM is increasingly used to create the data-sets that train artificial intelligence and machine learning (‘AI/ML’) algorithms. This too, creates novel copyright-related issues, given the scale of data mined and the potentially derivative nature of works produced. Such considerations of copyright ownership and infringement by AI have been discussed extensively on SpicyIP — here, here and here.

The Question of Copyright Infringement by TDM in India

India is party to the Berne Convention, 1886 (‘the Convention’), which prescribes certain minimum protections for the works and rights of authors from contracting states. Notably, it vests authors of ‘literary and artistic works’ with several exclusive rights of authorisation — a principle mirrored in Section 14 of the Copyright Act, 1957 (‘the Act’). The Convention also empowers contracting states to make exceptions for reproduction in certain cases — which is reflected in Section 52 of the Act.

In order to determine whether TDM infringes copyright law in India, three central questions must be examined — first, whether website contents qualify as a ‘literary work’ for protection under the Act; second, whether TDM restricts an exclusive right of authors, and third, whether this infringement is saved by any exceptions under the Act.

The Act provides copyright protection to original literary and artistic works, including compilations and computer databases. However, it is unclear whether this protection extends to creative arrangements of unoriginal facts — as may often be the case with website-hosted content. In contrast, under the Convention, ‘literary and artistic works’ includes not only original works featured on websites, but also works which “by reason of the selection and arrangement of their contents, constitute intellectual creations”. Accordingly, any website arrangement which discloses sufficient creativity and originality in the “selection and arrangement” of its contents will qualify as a ‘literary work’ and enjoy copyright protection.

The implications of “selection and arrangement” may be understood by reference to the United States (‘US’) Supreme Court case of Feist Publications Inc. v. Rural Telephone Service Co.. Here, the Court applied the Modicum of Creativity Doctrine and held that an arrangement is sufficiently original if it involves independent choices by the compiler as to selection and arrangement as well as entails a sufficient degree of creativity. Conversely, mere facts and factual arrangements based on ordinary or objective criterion, such as a directory listed in alphabetical order, will not qualify as a ‘literary work’ capable of protection. In Metcalf v. Bochco, it was observed that a creative arrangement of individually unprotectable elements may qualify as a protectable element in itself.

This ‘Modicum of Creativity’ test was affirmed by the Supreme Court of India in Eastern Book Company v. D.B. Modak. While acknowledging that mere factual compilations do not attract copyright protection, the court held that an unoriginal compilation is original and thus, protected, if “by virtue of selection, co-ordination or arrangement of pre-existing data contained in the work” it is “somewhat different in character” from the existing work. The court explicitly rejected the ‘sweat of the brow’ doctrine, which protects a derivative work as long as the author has spent time, effort and skill creating it. It observed that the requisite standard was not “creativity in the sense that it is novel or non-obvious” but that the work must merely have “some distinguishable features and flavour”. As a consequence of this decision, non-original databases remain unprotected in India and owners of such databases have little incentive to either disclose or regularly update them.

Thus, original content and the original selection and arrangement of unprotected content on websites, will constitute ‘literary works’ and enjoy copyright protection in India.

Next, Section 51 of the Act provides that the copyright in a work is deemed to be infringed when a person, without a license, performs or contravenes an exclusive right of the author. These exclusive rights are enumerated in Section 14 of the Act — authors of literary and artistic works enjoy, among others, the rights to reproduce the work in any material form, to communicate it to the public or to make any adaptation of the work. Some forms of TDM may infringe these exclusive rights. For instance, website archiving by for-profit organisations would restrict the author’s exclusive right to reproduce the work in a material form as well as to communicate it to the public. Similarly, the use of TDM by news aggregators to adapt copyrighted news articles may inhibit the author’s exclusive right to make any adaptation of the work. At the same time, however, this could be considered lawful where only some text is accessed, and not the expression of the work itself. This determination is fact-specific, both in terms of whether and which exclusive rights are restricted, as well as if the use falls within the exceptions under Section 52 of the Act.

Numerous cases have underlined that the ‘fair dealing’ exception in India is limited to the grounds enumerated under Section 52. The use of TDM is most likely to be protected under Section 52(1)(a) of the Act, which permits the use of copyrighted works for “private or personal use, including research”, “criticism or review” or “the reporting of current events and current affairs”. Beyond this, however, the section only accommodates TDM in narrow circumstances — such as to reproduce a current economic, political or social topic, unless the author has reserved the right to reproduce (Section 52(1)(n)); or to incidentally store a work for the purpose of providing electronic links or access, provided this is not prohibited by the right-holder (Section 52(1)(c)).

As explained here, ‘private or personal use’ refers to use of the works, and not the making available of the works. Accordingly, public libraries and organisations — like the JNU Data Depot — may make works publicly available for ‘private or personal use’ by researchers. Section 52(1)(a)(i) does not specify whether ‘private or personal use’ extends to commercial purposes — and since the provision was introduced in 2012, there has been little judicial engagement with it. That said, in 2013, the Calcutta High Court considered the question of infringement by a website which provided access to copyrighted works in exchange for “a fee or revenue from its sponsors or from third parties”. The Court held that this amounts to ‘commercial exploitation’ and falls beyond the ambit of ‘private or personal use’. This position was reaffirmed by the Bombay High Court in 2018, where it held that the use of sound recordings for commercial benefit is not permitted under Section 52(1)(a)(i).

Thus, the use of TDM is lawful as long as it falls within the boundaries of Section 52. As clarified by the Delhi High Court in the Delhi University Photocopying Case, the extent or quality of data accessed is irrelevant as long as this is justified by the specific purpose of TDM use and does not unreasonably prejudice the author’s rights. In all other cases, however, it is likely that TDM use will infringe copyright law in India. While literary works by Indian nationals are directly protectable under the Act, the International Copyright Order, 1999 extends the applicability of the Act to foreign works by nationals of parties to the Convention. The Act provides civil remedies including damages, permanent injunction, recovery of possession, enhanced penalty for repeat offences and seizure. It also classifies the infringement of copyright as a cognizable offence punishable by fine and imprisonment.

Please click here to view Part II of this two-part post.

We are pleased to bring to you a two-part guest post by Viraj Ananth, examining the legal landscape of TDM in India, an issue we have covered on this blog previously here. Viraj is a fourth year B.A. LL.B. (Hons.) student at the National Law School of India University, Bangalore.

Part I of this post studied the question of copyright infringement liability for TDM use in India, after introducing TDM technology and its popular techniques. Part II first explores international developments on copyright exceptions for TDM use — specifically in the European Union, Singapore, Japan and at the WIPO. It then examines the prospect of contractual liability for TDM use in India, and finally lays down some guiding principles for entities using TDM, to minimise contractual liability.

Crawl Cautiously: Examining the Legal Landscape for Text and Data Mining in India – Part II

Viraj Ananth

Recent International Developments on Copyright Exceptions for TDM

The European Union’s (‘EU’) Directive on Copyright in the Digital Single Market (‘the DSM Directive’) came into force on June 6, 2019, giving European Union Member States until June 7, 2021 to transpose it into their national laws. Its provisions on TDM emerged in response to growing concerns from the scientific and research communities about the uncertainty surrounding copyright infringement liability for TDM, and dissatisfaction with the licensing requirements imposed by several Member States under the existing Information Society Directive of 2001. Most notably, licensing requirements were criticised for increasing transaction costs by requiring negotiations with a range of publishers/authors, who often imposed restrictive conditions on access to data. This, in turn, placed EU researchers at a competitive disadvantage as compared to their US counterparts.

Articles 3 and 4 of the DSM Directive grant exceptions for TDM in certain cases. Article 3 requires Member States to provide exceptions for “reproductions and extractions made by research organisations and cultural heritage institutions in order to carry out… text and data mining of works”. ‘Research organisation’ has been defined widely in Article 2(1) to include universities, libraries and “any other entity” whose primary purpose is to “conduct scientific research or to carry out educational activities”. However, the research organisation must either perform these activities “on a not-for-profit basis” or “pursuant to a public interest mission recognised by a Member State”. ‘Cultural heritage institution’ is defined under Article 2(3) as including publicly accessible libraries, museums and other archives and arts heritage institutions.

This exception only extends to works to which the organisation/institution has “lawful access”. As per Recital 14, ‘lawful access’ means access to content through contractual arrangements, an open access policy or other lawful means, including content freely available online. Significantly, publishers/authors cannot choose to opt-out of this exception, since Article 7 declares that any contractual provision contrary to Article 5 (which mandates Member States to carve out exceptions for TDM) is unenforceable.

Article 4, on the other hand, requires Member States to provide narrower TDM exceptions for a wider range of stakeholders, including for-profit/commercial organisations. Here too, the organisation must have lawful access to the work. Unlike Article 3, however, which does not permit organisations to contractually bar TDM, Article 4 provides that the use of TDM may be expressly reserved by right-holders — in other words, right-holders have the option to opt-out from TDM use on their websites. Recital 18 clarifies that rights may be reserved via machine-readable means, including Terms of Service or using metadata. Right-holders may also use robot.txt files (discussed below) — which are machine-readable — to condition or restrict the use of TDM under Article 4. Thus, the exception under Article 4 weighs against for-profit research institutions, labs, journalists and software developers who may find themselves subject to the whims of right-holders.

Discussions surrounding copyright exceptions for TDM have not been limited to the EU. Singapore’s Ministry of Law recently published the Singapore Copyright Review, which reflects forthcoming amendments to the Copyright Act 1968. It proposes an exception for both non-profit and commercial TDM for the purpose of data analysis, where the user has lawful access. In May 2018, Japan passed a bill to amend its Copyright Act. Although TDM for commercial and non-commercial purposes was already permissible since 2009, the 2018 Amendment’s provisions on TDM seek to eradicate copyright-related barriers to AI innovation. Specifically, it permits the storage of electronic incidental copies of works and the use of copyrighted works for verification, both of which are essential to AI/ML research and development. It also recognises that copyrighted expressions are not perceived while feeding raw data to AI/ML algorithms, and accordingly, that the harm to right-holders is minimal.

In September 2019, the World Intellectual Property Organisation (‘WIPO’) convened a multi-state and stakeholder discussion on the intellectual property challenges of AI. Shortly after, it released a Draft Issues Paper detailing questions for comment. These include: whether use of ML for mining data in copyrighted works infringes copyright; whether separate exceptions should be made for this purpose; and how existing TDM exceptions would interact with such infringement.

Looking ahead, it is essential for India to consider including express exceptions not only for commercial and non-commercial uses of TDM, but also with respect to the specific challenges arising at the intersection of AI/ML technologies and TDM.

Breach of Contract — Terms of Service and Robot Exclusion Protocols

Beyond potential copyright concerns, unauthorised TDM may give rise to contractual liability, even if the scraper has not ‘signed in’ or explicitly agreed to the terms of the website. This is because many websites include ‘browse-wrap’ clauses in their Terms of Service (‘ToS’), due to which the mere browsing or scraping of data binds a scraper to the terms of the website. The imposition of restrictions on TDM, by way of such browse-wrap clauses, is considered legally tenable.

In Facebook, Inc. v. Power Ventures, Inc., the United States Court of Appeals for the Ninth Circuit underlined the agency of websites to regulate web-robots and crawlers through their ToS. It also observed that scrapers must utilise the application programming interfaces (‘APIs’) provided by websites (if any) to scrape data, and that non-use of the APIs may amount to a copyright violation. This agency to regulate TDM was, however, qualified in the 2019 decision of HiQ Labs Inc v. LinkedIn Corporation. Here, the same court drew a distinction between ‘private information’ over which LinkedIn enjoyed copyright protection and information that users knowingly made public, in which case LinkedIn lacked ownership interest. It accepted HiQ’s reasoning that authorisation was not required to access information that was open to the general public. Thus, automated TDM of publicly available information is lawful in the US and websites may not restrict access to such information.

In addition to ToS, websites commonly make use of robot exclusion protocols and robot.txt files (i.e., standards and guidelines that specify how scrapers are to interact with the website and its contents) to ‘regulate’ TDM. Robot.txt files may be used to prescribe restrictions and limits on TDM, such as conservative request rates and visit times. EU website owners may exercise their right to opt-out through robot.txt by requiring that certain privileged contents of the website not be mined. These protocols too, by virtue of enabling provisions in the ToS, often serve as contractually binding agreements between the website and the scraper. Internationally, there is limited case law dealing with the legal uncertainties arising from the use of such protocols. However, the non-use of ‘no-archive meta-tags’ (i.e., the industry standard to inform scrapers to refrain from caching) in robot.txt files has been interpreted as an implicit license to cache and index the website.

While most of these cases are concerned with violations under the US Computer Fraud and Abuse Act, 1986, they nonetheless crystallise important principles for the Indian judiciary’s consideration.

Steps for Businesses to Mitigate Risk

Considering the uncertain position in India regarding contractual liability for TDM use, entities conducting such operations are advised to abide by the following guiding principles to minimise liability:

• Inspect the ToS of a website to determine its stance on TDM. Some websites will limit TDM to certain classes of data or sections of the website. Others may bar TDM and require that businesses obtain explicit permission from webmasters prior to use.
• Examine the website’s robot exclusion protocols to understand the website’s internal mechanisms and guidelines on TDM. This could include limits on crawl rate, request rate and visit time, as well as other general restrictions on use. In the absence of such specifications, use conservative rates (1 request every 10-15 seconds). Further, make use of the APIs provided by websites for scraping data, if any.
• Identify your website scraper with a ‘legitimate user string agent’ and link this back to a ‘scraping policy’ that details the scope of your activities, objectives, compliances and grievance redressal mechanisms.

Please click here to view Part I of this two-part post.

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We’re pleased to bring to you a guest post by our fellowship applicant Nikhil Purohit. In this post, he analyses whether sharing of sports clips on social media amounts to copyright infringement or fair use under India’s copyright law, in light of the recent controversy over a take down notice that was sent to cricket archivist Rob Moody for some of the clips uploaded by him on Twitter.

Nikhil is a 4th year student at the National Law School of India University, Bangalore. His previous guest posts on the blog can be viewed here and here.

When Cricket Meets Copyright: Does Upload of Sports Clips on Social Media Amount to ‘Fair Dealing’?

Nikhil Purohit

Amidst the pandemic and the accompanying lockdown, there has been a surge in sharing of online content. Some of this also includes unauthorised sharing of copyrighted content. One such example is sharing of short sports clips on social media. Recently, Rob Moody, a self-avowed cricket “mega fan” and archivist, was thanked by many for making many interesting old cricket clips available on YouTube and Twitter. Nevertheless, some of his uploaded clips on Twitter were taken down upon a notice of copyright infringement received from Cricket Australia. Though, subsequently, Cricket Australia said that such claims “were made in error and have been retracted”. This, however, made me wonder if uploading old sports clips online would, in any case, be protected within the ambit of fair dealing under Indian law. In this piece, I analyse the applicability of the fair dealing exception on posting of such clips and the lessons it has for the Indian law on fair dealing.

Fair Dealing

In India, the court decisions with respect to upload of sports videos have mostly been in respect of broadcasting or disseminating information of live events (see here, here, and here). In these circumstances, unlike sharing of old clips, there are added concerns for copyright owners in terms of ability to monetize the concerned information or broadcast. However, the situation differs when it comes to old clips from a sporting event that the rights holder is not monetising and possibly does not even intend to do so. For instance, this is the case with several clips from old cricket games to which the Board of Control for Cricket in India or the International Cricket Council holds the copyright.

In this backdrop, it is important to turn to Section 52(1)(a) of India’s Copyright Act, 1957 (‘Act’) that deals with fair dealing exception to copyright infringement. It provides the following to not constitute infringement of copyright:

“(a) a fair dealing with any work, not being a computer programme, for the purposes of—

(i) private or personal use, including research;

(ii) criticism or review, whether of that work or of any other work;

(iii) the reporting of current events and current affairs, including the reporting of a lecture delivered in public…”

It, thus, requires satisfaction of two components: (a) ‘fair dealing’ with any work, and (b) that such fair dealing is for one of the purposes enumerated in the provision.

Turning to the first component, the term ‘fair dealing’ has not been defined in the Act. It has, however, been interpreted in India TV Independent News Service Pvt. Ltd. v. Yashraj Films Pvt. Ltd. to incorporate the four-factor test as applied in the United States. Accordingly, the four-factor test could be applied in the present context. The four factors that need consideration are:

“(1) the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.”

Majority of sports clips uploaded on social media are uploaded for non-commercial purposes without motives of monetising the same. As far as the nature of the use is concerned, even though it is taking a portion from the copyrighted work as it is, a large part of the use can be said to be transformative. This is because of the value added in the curation, selection, and the compilation of content such as, say, wickets taken by a particular player across different matches or the dismissals of a player in a particular manner in different matches. Similarly, expending skill and judgment in specifically editing the performance of a player or a team in a particular match or series makes the new work transformative.

As to the second limb of the test – the nature of the work involved is factual rather than creative, thus strengthening the applicability of the four-factor test. Moreover, most of these clips are very short in duration, quantitatively insignificant compared to the original work, and many a time even qualitatively not substantial to the original work. Finally, in most instances, since the rights holders themselves aren’t marketing these old clips in any form, it does not have any impact on the potential market for the works. Rather, they enable a growth in popularity of the sport and in turn, increase the market for the works being monetised by the rights holder.

Even when any of these factors may not strictly apply, such as there being some commercial benefit gained out of such clips, the four-factor test is to be applied holistically and it might still constitute fair dealing if the other factors weigh in favour of the same.

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Whether they amount to criticism or review?

Having established that sharing of old clips would possibly fall within the ambit of ‘fair dealing’, I turn to the second part of the exercise, i.e., determining whether the use is for any of the three purposes mentioned in the Section. In the context of sports clips being uploaded on social media, it would be hard to consider the use to be entirely ‘private or personal’. Similarly, since the focus of this piece is on old clips, the third scenario dealing with current events is also ruled out.

The question then is whether these clips fall within the ambit of the second provision, that concerning criticism or review. The Act does not indicate what it intends to convey by either of the terms, ‘criticism’ or ‘review’. The most extensive discussion of the scope of these terms has been made by the Delhi High Court in Super Cassettes v. Chintamani Rao. The Court noted in this case as follows:

“The focus of attention, and interest of the producer/author of the work and the viewer/listener should not be the work of another, but the work created by the person who may, bona fide be using the work of another for the specific purpose of criticism or review of that work, or of any other work.” (emphasis supplied)

Accordingly, what is required is that while reproducing a copyrighted work, the focus of attention should be on the new work that is created using such reproduction. Applying this proposition to the context of this piece, such a condition would only be satisfied where someone writes a review of a sporting event or criticises the same, and the focus of the author and the viewer is on such review or criticism. This would possibly include anyone writing a detailed article about a particular sporting event where a clip forms a subsidiary part of the article. The question then is whether clips posted by users with minimal comments or captions on social media would also be covered.

In this regard, the decision in Super Cassettes v. Hamar Television Network Pvt. Ltd. (‘Hamar Television’) needs to be considered where, while dealing with an injunction claim by T-Series against the defendant’s broadcast, the court summarised certain principles concerning fair dealing. One of the principles noted by the court was:

“In ascertaining as to what would constitute reportage of “current events” or would fall within the ambit of “criticism” or “review”, Courts ought to adopt a liberal approach” (emphasis supplied)

Additionally, the Delhi High Court in the Narendra Publishing House case looked at the definition of the term ‘review’ as given in the Shorter Oxford Dictionary, according to which it means “view, inspect or examine a second time or again..”, and held a guide book to be a re-examination of a mathematical work, and thereby amounting to ‘review’. Thus, the focus of the court appeared to be on the element of examination of the work.

Applying the rationale from both the above cases, clips uploaded on social media can possibly be considered as “criticism” or “review” of the original work. This is because such a use can be considered to amount to a second look at the particular sporting event and furthering a discussion or examination of the same. In such a scenario, the focus is not solely on the event itself, but the discussion engendered by the review, or the re-look of the entire work with a specific/new lens. This can be seen from a recent clip uploaded by Moody on the run outs in ex-Australia captain Steve Waugh’s career, based on stats posted by ESPN Cricinfo. The clip rekindled the discussions on Shane Warne’s (who played under Waugh) grudge about being dropped by Waugh.

Another added ambiguity in the law is that it requires criticism or review of ‘that work or of any other work’. When a sporting clip is uploaded and is criticised or reviewed, the focus of attention is on the underlying sporting event as against the clip itself. The underlying event in itself is not copyrighted and does not fall within the ambit of ‘work’ but only the clip is. However, none of the Indian decisions challenge fair dealing on this ground, which indicates an implied agreement that criticism of the underlying event captured in a particular clip would also be protected under Section 52(1)(a).

Conclusion

While as per the above analysis, posting of clips of sporting events with comments that generate discussion would possibly fall within the ambit of ‘fair dealing’, there is much to be desired in terms of adequate protection for those uploading sports clips on social media. A mere reproduction of such clips without any comments, even if it involves significant efforts in curation on the part of the uploader, might not be saved by this exception and hence be subjected to copyright infringement claims. This brings to fore the shortfalls of the Indian regime on ‘fair dealing’.

The fair dealing principles are incorporated to strike a balance between the interests of the copyright holder and the availability of the copyrighted content to the public. This is in line with the welfare theory of copyright law. Accordingly, as the court in Hamar Television notes, they “must receive a liberal construction in harmony with the objectives of copyright law.” The Indian law restricting the application of the fair use exceptions to the pre-determined categories specified in Section 52 fails to live up to its objectives. Not only does it stifle creativity, this rigid categorisation even stops it from adapting to technological advancements of the modern day, something that the US has adapted to much better due to its flexible ‘fair use’ provision providing for an inclusive definition.

Finally, as ESPN Cricinfo puts it aptly, “[w]hen a fan uses footage and shares it, the appetite for the live product grows.” Thus, a hard-lined approach by copyright holders such as cricket boards, coupled with an inept fair use milieu, goes not just against the very principles of copyright law but even against the interests of those trying to preserve their rights. A better approach could instead be to collaborate with these archivists and allow them to monetise these clips and enter into revenue sharing agreements for such monetisation, as the NBA does.

We’re pleased to inform you that Texas A&M School of Law is partnering with GNLU for an LL.M. Pathway Program. For more details, please see the announcement below:

Texas A&M School of Law is proud to announce its academic partnership with Gujarat National Law University (GNLU) for LL.M. Pathway Program

For the first time in India, students from Gujarat National Law University (GNLU) will have the opportunity to enroll in the LL.M. Pathway program created by Texas A&M School of Law with GNLU.

The students wishing to participate in the program may earn up to 12 credits at GNLU on a case-by-case basis which will be evaluated and transferred to Texas A&M School of Law as per the American Bar Association’s credit hour calculation.

Students will then spend one semester and possibly a summer term at Texas A&M School of Law, completing the rest of the 12 credit requirements to become eligible to receive an LL.M. from Texas A&M School of Law at the close of that period of study.

Applications for Fall 2020 are being accepted now.

Have questions about the tuition fees, visas, eligibility for the bar, OPT, or the application process? Contact Ananya Gupta at ananya@lawnchpad.org or by phone at +91-7204686355, Autumn Lockett at alockett@law.tamu.edu, or GNLU representative Ms. Harsha Rajwanshi at hrajwanshi@gnlu.ac.in.

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We’re glad to bring to you a guest post by our Fellowship applicant, Shivam Kaushik, discussing issues relating to copyright ownership, licensing and use of the content and recordings of webinars under the Indian copyright law.

Shivam is a 5th year law student at Banaras Hindu University, Varanasi. His previous guest post on the blog can be viewed here.

Copyright and Webinars: Ownership, Licensing and Fair Use

Shivam Kaushik

Covid-19 has brought all the conventional learning methods to a grinding halt. Online methods of learning have become their substitute during the pandemic. Especially the number of webinars taking place has seen an exponential rise since the lockdown restrictions kicked in. Although the primary concern that has been talked about in this virtual setting is that of privacy infringement, there is another issue here – copyright infringement.

This post will analyze copyright issues relating to webinars and discuss the rights of the speakers, organizers, and participants under the Indian copyright law. While the copyright terms in the user-agreements of the apps in question will always be relevant, for the sake of this post, it will be assumed that the apps do not claim ownership via these user-agreements.

Speakers’ ownership of copyright in the lectures delivered

Speeches, lectures, and addresses (collectively referred to as ‘lectures’) forming part of a webinar are copyrightable as literary works under section 13 of the Act if they are scripted (i.e. written in advance). The copyrightability of unscripted and extempore speeches is a little less clear under the Act, but as argued here (see page 296), they also arguably qualify as literary works making them eligible for copyright protection under the Act.

As per section 17, generally the author of a work is its first copyright owner, but if the work is made in the course of employment under a contract of service, the employer is its first copyright owner unless there is a contract to the contrary (see section 17(c)). However, section 17 (cc) carves out an exception for speeches or addresses ‘delivered in public’, stating that the first ownership of copyright in them shall vest in the persons who delivers them, notwithstanding whether the speaker is employed by any other ‘person who arranges them’ or ‘on whose behalf or premises they are delivered’. Therefore, it’s the speakers and not the organizers/employers who own copyright in the lectures/speeches delivered in webinars.

However, it must be noted that section 17(cc) only applies to those addresses and speeches that are delivered ‘in public’. The Bombay High Court in Garware Plastics v. Telelink (1989) adopted the English‘character of the audience test’ to identify what can be classified as ‘public’ under the Indian Copyright Act. Under this test, a distinction is drawn between audiences which have no unifying link other than the desire to see the work and audiences which share a private/ domestic link that distinguishes them from the general public. So the public or private nature of an address would depend upon whether the audience has a unifying link- like, all the participants are students at the same university, or are employed by the same company, or are members of one group- or not.

The general practice of webinars, especially educational ones, seems to be keeping the participation open to anyone, thereby categorizing them as ‘public’ as per the test. Also, even if the webinar is a private one, it is the speakers who own copyright in the lectures delivered unless they deliver them in the course of their employment under a contract of service. In any case, organisers of webinars are not the owners of copyright in the lectures unless they are the employers of the speakers.

Organisers’ rights in respect of making/distributing a recording of the webinars

Another important claim worth scrutinizing is that of the individual or the organization, that makes arrangements of the webinar, over the audio-video (AV) recording (a cinematograph film for the purpose of the Act) once the webinar is over.

According to section 13(1) of the Act, in relation to a cinematograph film (i.e. any work of visual recording) or a sound recording there is no requirement of originality per se. But section 13(3) lays down that copyright shall not subsist in a cinematographic film if a substantial part of it is an infringement of the copyright in ‘any other work’ and in a sound recording if in making it the underlying work has been infringed.

By virtue of section 14(a)(iv), a copyright owner of a literary work has the exclusive right to make any cinematograph film or sound recording in respect of the work. Accordingly, the speakers of the lecture forming part of a webinar have the exclusive right to make a visual recording in respect of their lectures.

From this it becomes clear that if anyone (the organizer, a participant or any other person) makes an AV recording of a lecture without a license from the speaker, they would be infringing the speaker’s copyright over their lecture. This will result in making the AV recording so produced an infringing copy (unless the making of it is permitted under Section 52) and also, by virtue of section 13(3), the person making the recording would have no copyright over that recording even if they are its effectuator.  If the organizer records the webinar with the license from all the speakers, then copyright would subsist in the recording. And the organizer being its producer (see section 2(1)(uu)) and thus its author (see section 2(1)(d)), would be its copyright owner.

Implied license to make a recording?

However, can the organizer/ host claim that, even if there is no express license given by the speaker/s, they have an implied license to record the webinar, making it a legitimate copy? The answer to this question would depend upon the facts of the case. Balu’s approach, in his post dealing with circulation of e-papers on social media, of relying on doctrine of implied license in the absence of a ‘user agreement’ is squarely applicable in case of webinars too. In his post he rightly points out that non-availability of a user agreement (in our case, express license) makes it difficult to conclusively determine whether infringement has taken place. In such cases it has to be seen, (1) if the act in question is important to give meaning to the arrangement between the parties and (2) the conduct of the licensor, to determine if the organizer can claim implied license to record the webinar or not.

It can be argued that, when a recording is made of a webinar, a notification pops up informing the speakers of the same. Thus, if a speaker (licensor) continues to deliver the lecture despite seeing the notification, they are, by their conduct, giving an implied license to the organizer, making- at the very least- the recording so made a legitimate copy.

Implied license for commercial distribution of the recording?

As per section 14(a), the speakers in a webinar also have the exclusive right to communicate their lectures/issue its copies to the public. So, unless the organisers own copyright in the webinar recording made by them, they cannot distribute it without a license from the speakers. However, can there be an implied license for distributing the recording as well, that too commercially? There is no clear cut answer to this question. Webinar organizers usually upload the recording on a monetized account on YouTube, thus bringing a commercial angle into the equation. This commercial angle does not by itself put the act of distributing the recording beyond the permissible limits of implied license. The question of implied license in this scenario also would be determined on the basis of twin indicators highlighted above. But it will be pertinent to note that communicating the recording of webinar for money, once the webinar is over, might not play a serious role in ‘giving meaning’ to the arrangement of organizing a webinar between the parties. Again, much would depend upon facts.

Fair use of webinar recordings

Even if any person does not have a license from the copyright owners of the lectures forming part of a webinar or its recording, their use of the lectures/recording may not amount to copyright infringement under Section 52 in certain cases. Two important fair use exceptions that can be availed in relation to use of webinar lectures/recordings for educational purposes are section 52(1)(i) and section 52(1)(j).

Section 52(1)(i) deals with the reproduction of a work ‘in the course of instruction’ by a teacher or pupil. The Delhi High Court in the renowned Rameshwari Photocopy case has given the phrase ‘in the course of instruction’ an expansive interpretation to include all the activities that a teacher does in the course of imparting education.

The other important exception, section 52(1)(j), which allows an educational institution, in the course of its activities, communicates any cinematograph film or sound recording to an audience consisting of its staff, students, parents and guardians of the students or any persons connected with the activities of the institution. So, if a webinar lecture/recording is used in the course of instruction by a teacher or pupil or screened in the course of the activities of an educational institution, it would not constitute copyright infringement.

But here, it is pertinent to mention that the applicability of the fair use provisions to the use of the webinar lectures/recordings would be subject recording having been made with a license (explicit or implied) from the webinars speakers in the first place. As Balu in yet another excellent post has argued, fair use provisions do not provide any immunity to the acts in respect of an infringing copy of a work and thus, if it is found that the recording itself was not validly made, these provisions would not apply.

Participants’ rights in webinar recordings?

Frequently, webinars consist of interactive sessions, Q&A sessions, and deliberation between the speakers and the participants. Because of this, contributions of many participants also form part of the webinar that is being recorded, even though their contribution may be insignificant. By virtue of this, can they claim copyright or any other allied right is respect of their contribution or the recording of the webinar? The short answer is no.

Section 2(n) defines a lecture to include an address, speech and sermon; indicating that to qualify as a ‘lecture’ for the purpose of the Act, the oration must be lengthy and prolonged and should not be brief, momentary or of a passing nature.  Therefore, the participants’ contribution, which is usually in the form of questions or mere comments of a few lines, is unlikely to receive copyright protection as a lecture.

Also, copyright law disfavors protection for short expressions. In the case of Pepsi Co. v. Hindustan Coca Cola, the Delhi High Court, relying on various authorities, opined that there is no copyright in commonplace sentences and trivial works as there is no literary merit in them. Participants’ contribution is usually short, simple, and made up of sentences of common use. Thus, it is unlikely to be subject to copyright protection. Accordingly, unlike the speakers, they do not have the exclusive right to make a recording in respect of their contribution (unless the contribution qualifies as a copyrightable work).

Conclusion

Fortunately, till date no copyright disputes relating to webinars seem to have arisen. It is likely that many webinar organizers and speakers are still unfamiliar with various copyright considerations involved in webinars and prefer an oral arrangement based on mutual understanding. The analysis of relevant legal provisions, however, shows that determination of ownership over various elements of a webinar may involve complex copyright questions which may not always be discussed orally. Thus, it becomes important for organizers and speakers  who are particular about these claims, to enter into detailed written agreement, clearly stating out the terms of their engagement in line with copyright law to weed out the future possibility of legal disputes.

Thanks to Swaraj Barooah for his insightful comments on this post!

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The Hon’ble Madras High Court recently explored the contours of the rather well known Patel Field Marshal judgement (covered on the blog here and here) in M. Murali v. Sri Krishna Sweets Private Limited.

Patel Field Marshal judgment

The takeaways from the Patel Field Marshal judgment are quite straightforward. The Hon’ble Supreme Court held that all questions regarding the validity of a registered trademark are to be decided by the IPAB, thereby precluding the jurisdiction of civil courts. The IPAB’s jurisdiction is, however, contingent on the civil court’s findings on the prima facie tenability of a plea of invalidity. The trial in the suit would consequently also be stayed if an issue on validity was framed.  Further, the judgment held that no issue would be framed on the validity of a mark by the civil court only if the party had either abandoned the issue of validity or if the civil court held against the party on a prima facie view itself.

Madras High Court’s View

The Hon’ble Madras High Court has given some interesting conclusions when interpreting the Patel Field Marshal judgment. As an aside, it must also be noted that this judgment is the latest in a litany of bitter litigation between two brothers before a sweetmeat empire, which had previously resulted in the High Court giving a wonderfully nuanced judgment on family rights in trademark law (covered on the blog here).

Coming to this order, the factual background is that the defendant had filed a challenge before the IPAB on validity of the plaintiff’s mark and had also mounted a counter claim on passing off. However, the issues framed thereafter did not touch upon the issue of validity. Thereafter, the defendant’s application before the IPAB was rejected on procedural grounds. After much litigation, the IPAB gave liberty to the defendant to file a fresh application by which time the Patel Field Marshal judgment had come into play. Consequently, the defendant moved applications before the trial court to frame an additional issue on invalidity and seeking permission to move a rectification before the IPAB. The defendant further took a specific stance that since the Patel Field Marshal judgment had not come out when the issues were framed, the Court would now have to exercise its determination on the issue of validity. However, the trial court held that the defendant had abandoned its rights to question the validity of the registration and rejected these applications. This was appealed in the order, which was resisted by the plaintiff broadly on the grounds that the defendant had not pleaded invalidity.

The Hon’ble High Court after considering the competing pleas on the sufficiency on pleadings on invalidity has held that “Mere pleading is not enough, but it should be specific insisting upon the court to frame an issue on this aspect”. Further, the order goes on to hold that “The rectification is based on non user and assignment of the trademark prohibited under Section 40 of the Act. Nowhere in the pleading the defendant raised any plea as the invalidity of registration nor the existence of the same in the Registers.” The order also held without expanding that “More over there is a clear difference between removal of registration and rectification of registration”.

In conclusion, amongst other findings, it was held that “A party who has acquiesced to framing of issues, and has not raised any plea or defense in the subsequent pleadings also is estopped from raising an additional issue as to invalidity of trade mark registered or to file a petition u/s. 124 of the Act” and that “Change of legal position, bereft of specific pleadings as to validity or invalidity of registration of trade mark, cannot be a ground entitling a party or compel a Civil Court to frame an additional issue in that regard.”

Analysis of the HC’s Interpretation of the Legal Position

The Trade Marks Act allows for a multi-pronged assault on validity under Sections 47 and Section 57. Section 47 prescribes non-use as grounds for “removal”. Section 57 gives sweeping powers to the IPAB to “rectify” a mark, and typically Section 9  and Section 11 provide the ammunition for Section 57(2) to kick in, apart from lesser celebrated candidates such as Section 12 and Section 40. Sections 47 and 57 were throughout the Patel Field Marshal judgment considered to be contemporaneous for challenging validity.

This order in interpreting Patel Field Marshal however, distinguishes Sections 47 and 57. It further goes on to hold that since the claims of non-use (Section 47) and improper assignment (Section 40) are not grounds to “rectify” a mark under Section 57, the pleadings were not sufficient to trigger an invalidity claim. This in my view does not accommodate the broad scope of Section 47, which is independent of a claim under Section 57. I also feel that this shifts the focus from the exercise in being a prima facie factual finding on validity, to being an exercise in determining the specificity and scope of pleadings. It is quite interesting to note that throughout the gamut of consideration, there is no discussion on the Court’s views on the validity of the impugned mark. I believe that the scope of the Patel Field Marshal judgement calls on the Court to engage in a factual exercise, not fettered by the statutory shackles of the IPAB, to decide on validity. This exercise is not prescribed as being dependent wholly on pleadings such as an application to reject a plaint. Patel Field Marshal judgement describes this exercise as “It is a basic requirement to further the cause of justice by elimination of false, frivolous and untenable claims of invalidity that may be raised in the suit.” The presence of robust pleadings cannot negate this concern and would necessarily requirement examination of not only facts but previous orders in the matter. The understanding until now was that one’s fate in an interim application would largely determine one’s fate under Section 124. An injunction finding that the plaintiff had a prima facie case, would typically allow the plaintiff to fend off any challenge to the validity of its mark. Conversely, adverse findings on a prima facie case would strengthen the cause of a defendant. This order however, sees a situation wherein a defendant has fended off an interim injunction application but is unable to challenge the validity of the very same mark. This is certainly a fresh spin on our understanding of this legal position, and will undoubtedly influence how we draft our vehement objections to validity of a mark in the future.

Football fans may be aware of the joint statement last year by various sports bodies including Fifa, LaLiga, Premier League, and others, against the Saudi Arabia based beoutQ broadcaster for their unauthorized streaming of content on a commercial scale, as well as their (i.e., the copyright holders) inability to obtain legal counsel in Saudi Arabia in this matter, among other issues. In the meanwhile, Qatar had taken this matter to the WTO, and on 16th June 2020, the WTO Panel issued its report on the matter. We’re very pleased to bring you a guest post by Jay Manoj Sanklecha examining this report. Jay is an LL.M in international law (summa cum laude) from IHEID, Geneva and B.A/LL.B (hons.) from NUJS, Kolkata.

A look at the WTO Panel report in ‘Saudi Arabia- Measures concerning the protection of Intellectual Property Rights’

Jay Manoj Sanklecha

The report of the WTO panel in Saudi Arabia- Measures concerning the protection of Intellectual Property Rights is significant for a number of reasons. Apart from its significance for international intellectual property law, insofar as it recognises that the TRIPS Agreement imposes disciplines on members that actively allow widespread piracy of copyrighted works; the decision has implications far beyond intellectual property law. The decision marks the first instance, in the 73 year history of multilateral trading system, that a panel has rejected a country’s invocation of the national security exception. With countries increasingly resorting to the national security exception, traditionally viewed as not being subject to legal adjudication, this decision following the panel report in Russia-Traffic in Transit (Russia-Transit) is an important step in re-establishing the rule of international trade law.

Background

This particular dispute arose within the larger context of fraying relations between Qatar and its neighbours, culminating in the June 2017 decision of Qatar’s neighbours, including Saudi Arabia, to sever all diplomatic and consular relations, including closure of all land, sea and air ports, with Qatar. The decision, as per Saudi Arabia, was necessitated in order to protect its “essential security interests” in view of Qatar’s alleged support for terrorist organisations. Following the decision to sever relations, Saudi regulators, blocked access and denied license to, a Qatari based sports and entertainment company (“beIn Media”), which had exclusive rights to broadcast prime sporting events in the region, including in Saudi Arabia. In August, 2017, a Saudi based entity, named, “beoutQ” began unauthorisedly streaming and distributing, without facing any sanction, media content created or licensed to “beIn media” on commercial scale throughout the territory of Saudi Arabia.

In October 2018, Qatar brought a dispute to the WTO, claiming that Saudi Arabia through its actions and omissions had inter alia prevented Qatari nationals from being able to protect their intellectual property rights. More specifically, Qatar claimed that by inter alia (i) prohibiting the distribution of beIn media content against the threat of loss of intellectual property rights; (ii) launching anti-sympathy measures subjecting Saudi lawyers to jeopardy if they supported Qatar nationals ;(iii) imposing travel restrictions on Qatar nationals; (iv) requiring ministerial approval for decisions taken by the copyright committee on violations of copyright law; and (v) failing to apply criminal penalties against ‘beoutQ’ despite evidence  of its widespread violations, Saudi Arabia violated its obligations under the TRIPS Agreement. For its part Saudi Arabia refused to engage on the facts and arguments presented by Qatar and limited its engagement to submitting arguments on the application of the national security exception under Article 73 (b) (iii) of the TRIPS Agreement.

Prima Facie Violations

Since Saudi Arabia limited its engagement to the security exception, the WTO Panel sought to, first, satisfy itself that Qatar’s claims are well founded in fact/law, and established a prima facie case. The Panel found, after examining evidence submitted by Qatar, that prima facie (i) Saudi Arabia had taken general “anti-sympathy measures“that had the result of preventing BeIn media from obtaining legal counsel to enforce its intellectual property rights through civil enforcement procedures before Saudi Courts and (ii) that beoutQ was operated by individuals or entities subject to the criminal jurisdiction of Saudi Arabia. However, in respect of (i) the circular prohibiting distribution of beIn media; (ii) travel restrictions and (iii) ministerial approval requirement, the Panel found that Qatar had failed to discharge its burden of proof that either individually or collectively such measures had been applied to BeIn Media to prevent it from accessing civil enforcement procedures.

Since the claims fell more squarely under the enforcement obligations under Part III of the TRIPS Agreement, the Panel proceeded to consider Qatar’s claims thereunder. The Panel found that by the anti-sympathy measures, BeIn Media, as a “right holder”, has been prevented from obtaining legal counsel to enforce its intellectual property rights before Saudi Courts, in specific violation of the mandate of third sentence of Article 42 of the TRIPS Agreement that “Parties shall be allowed to be represented by independent legal counsel”. Having found a violation of Article 42, as per the Panel, this gave rise to a consequential violation of the obligation under Article 41.1 of the TRIPS Agreement to “ensure that enforcement procedures as specified in this Part are available under law”.

The Panel then considered whether Saudi Arabia through its omissions violated the first sentence of Article 61 of the TRIPS Agreement which enjoins that “members shall provide for criminal procedures and penalties to be applied at least in cases of wilful…copyright piracy on a commercial scale”. The Panel took note of an earlier report in China – Measures affecting the protection and enforcement of Intellectual Property Rights (China- Intellectual Property), where another Panel had made certain findings on the first sentence of Article 61 of the TRIPS Agreement. However that Panel’s findings regarding the first sentence had been confined to the issue of what acts of infringement should be criminalised and not those which ought to be prosecuted. The Panel was nonetheless guided by the findings of the Panel in China-Intellectual Property in interpreting the meaning of the expressions “on a commercial scale” and “wilful” appearing in the first sentence of Article 61 of the TRIPS Agreement. However the Panel noted that the meaning of the expression “to be applied” had not been addressed by the earlier Panel and would need to be interpreted in this case. Here the Panel, adopted a purposive interpretation of the words “to be applied” holding that the obligation under the first sentence, is not automatically discharged through the creation of a formal written law that provides for criminalisation of commercial scale piracy without regard to how the written law is applied. In other words as per the Panel, there is an “obligation upon members to put such criminal procedures and penalties into practical operation”. On facts, the Panel found (i) that the scale of operations of BeoutQ was typical of a commercial venture; and (ii) that since BeoutQ sole operation consisted of providing pirated content, its conduct could be properly characterised as “wilful”. As regards, whether Saudi Arabia had “provided for criminal procedures and penalties to be applied” the Panel noted that Saudi Arabia had been unable to identify any such action despite right holders sending detailed information about such piracy and extensive evidentiary basis that BeoutQ was operated by individuals or entities subject to Saudi criminal jurisdiction. Accordingly as per the panel Saudi Arabia had violated Article 61 of the TRIPS Agreement.

Having found violations of Articles 41.1, 42 and 61, the panel exercised judicial economy, and found it unnecessary to make findings in relation to the claims under Part I and II of the TRIPS Agreement.

Security Exception

As stated earlier, Saudi Arabia relied on Article 73(b)(iii) of the TRIPS Agreement which provides “Nothing in this Agreement shall be construed…(b) to prevent a member from taking any action which it considers necessary for the protection of its essential security interests… (iii) taken in time of war or other emergency in international relations”, to justify their refusal to engage with Qatar at all, including in relation to its claims, as such engagement would undermine their essential security interest

 Article 73(b) (iii) of the TRIPS Agreement, is identical to Article XXI (b) (iii) of GATT, 1994 which had been interpreted by the Panel in Russia- Transit and both Qatar and Saudi Arabia agreed to interpret Article 73(b)(iii), with reference to, and consistently with the panel report in Russia- Transit.

The Panel in Russian Transit had found that the security exception was justiciable and accordingly capable of legal adjudication. It held that the provision was not entirely self-judging, since the words “which it considers” in the chapeau did not qualify the circumstances in paragraph (iii). Accordingly the Panel had to objectively determine whether the actions “were taken in times of war or other emergency in international relations”. The Panel understood “emergency in international relations” as reference “to a situation of armed conflict, latent armed conflict, or of heightened tension or crisis, or general instability engulfing or surrounding a state, which give rise to defence, or military interest, or maintenance of law and public order interests”. The requirement of “taken in time of” was understood to require a “chronological concurrence” between the actions and the emergency. Finally the panel in Russia-Transit found that although the words “which it considers” qualified both the requirement of necessity and protection of essential security interest, members were not absolutely free to determine the same at their discretion and that the obligation of “good faith” under international law applied both to the members articulation of an essential security interest as well as the connection between the measures at issue and those interests. Specifically, it was incumbent on the member to articulate an essential security interest said to arise from emergency in international relations sufficiently enough to demonstrate their veracity and demonstrate that the measure at issue meets a requirement of plausibility in relation to the proffered security interests.

On facts, taking note of the severance of all diplomatic and economic ties and a situation of heightened tension and crisis between the countries amidst accusations of supporting terrorism, the Panel found that there existed an “emergency in international relations”. The panel also found that since BeoutQ did not commence operations until August 2017 the measures at issue were “taken in the time of” an “emergency in international relations” which was in existence since at least June 2017

The Panel also found that Saudia Arabia’s articulation of essential security interest i.e. protecting itself from the “dangers of terrorism and extremism” was sufficiently precise and related to the “quintessential functions of the state”. The panel clarified that articulation of security was subject to “limited review” and served primarily as a benchmark to examine whether the challenged measures was “plausibly connected” to the protection of such articulated security interests. In this next analytical step, the panel examined Qatar’s claims’ separately. In relation to the “anti sympathy” measures aimed at denying Qatari nationals access to civil remedies, the Panel found that it may be viewed as an aspect of Saudi Arabia’s umbrella policy of ending any form of interaction with Qatari nationals. Accordingly the panel found that the anti-sympathy measures met the minimum requirement of plausibility in relation to the proffered essential security interests. However in relation to the non-application of criminal procedures and penalties to BeoutQ, the Panel noted that it was unable to discern “any basis for concluding that the application of criminal penalties to BeoutQ would require any engagement or interaction with BeIn or any other Qatari national”. Accordingly the Panel held that the security exception was validly invoked by Saudi Arabia in relation to the inconsistency with Articles 41.1 and 42, but not Article 61 of the TRIPS agreement

Conclusion

The report is significant to intellectual property law, in view of its purposive interpretation of Article 61. This is the first instance where a State has been found to have not complied with its obligation under Article 61. Under the interpretation advanced, there appears to be an obligation on States’ to proactively apply criminal penalties and prosecutions to widespread commercial scale piracy. It is a ruling that could have ramifications for States that are traditionally soft on piracy.  More, pertinently, the report remains relevant to the interpretation of the national security exception. It reiterates the “justiciable” nature of the exception, while at the same time, highlights the wide latitude available to members to protect their security interests, as borne out by successful invocation of the exception in relation to anti-sympathy measures.  It also underlines the importance of “good faith” to treaty interpretation and adds an important gloss to the report in Russia-Transit by using the plausibility standard, developed therein, to invalidate a defence premised on the security exception. It therefore also operates as an important caution to members that would wish to justify their actions/omissions on the basis of the national security exception.

Amazing image from here. Happy 4th of July, Mr Trump

A few days ago, the US Department of Health and Human Services (HHS) announced that their President has struck an ‘amazing deal’ with Gilead, that ensured nearly all of Gilead’s projected production of Remdesivir for the next three months are secured by the US. “Nearly all” in this case, refers to 100% of Gilead’s projected production of Remdesivir for July, and 90% of the projected production for August and September. This is after US has already kept about 60% (940,000) of the initial 1.5 million donation doses that Gilead pledged globally. Remdesivir, as readers would know, is one of the much talked about treatment-options for Covid-19. This perceived/potential future shortage has of course given cause for much distress (and annoyance) from all across the world. This post will try to go through some implications of this “America-first” action by US.

What it does not mean:  

The first thing that should be clarified is Remdesivir hasn’t shown to have much therapeutic value in the first place! Not through clinical trials at least, with a recent publicly funded study indicating that it reduces recovery time from 15 days, to 11 days, but no significant reduction in mortality rate, as per this BMJ op-ed.  President Trump, in his apparent eagerness to stockpile a treatment, has once again not verified whether it is actually an effective treatment or not. He had earlier announced Hydroxycholoroquine as a treatment in a speech – which the FDA later said does not seem to show benefits. What’s ironic is that after he had decided that HCQ was a treatment, he also went ahead and threatened retaliatory action against India if it doesn’t release stock of the (unproven) drug, since India is a large manufacturer of it. Not to be left behind, India had its own (mostly unrelated) HCQ scandal, as covered in depth by Priyanka Pulla here.

Why are governments bringing nationalism into science and public health? America is doing its own dance on stockpiles, while in India we have the Indian Council of Medical Research asking that the clinical trials for a vaccine for Covid 19 be fast-tracked so that a launch for the vaccine can be done ‘latest by August 15th’ (‘incidentally’, India’s independence day) – a move that scientists say is ‘absurd and risky’. This also reminds one of the Patanjali – coronil controversy – but that’s a whole different story!

Anyway, coming back to Remdesivir – why is it so talked about, if it hasn’t yet been proven through clinical trials? In this article, Yannis Natsis points out that these types of headlines do serve the purpose of driving up the price that governments are willing to pay for very marginal improvements. The earlier mentioned BMJ article takes us through some interesting notes about funding and possible bias, and concludes that “commercial influence once again seems to be driving overly positive perceptions of a still unproved drug.”  Do give it a read. Nonetheless, Remdesivir is still going through clinical trials including the WHO Solidarity Trials, so it still very well might end up actually proving to be a useful treatment. And yes, there doesn’t seem to be a problem with using patients from other countries for these trials which may prove they are useful.

The Patent and Pricing questions: 

As per the HHS Press Release, the Wholesale Acquisition Price that they are purchasing at from Gilead amounts to approximately $3200 per treatment course (6.25 vials). In contrast, according to this StatNews article, experts estimate the manufacturing and distribution costs for a treatment course to be less than 10$, and the Institute for Clinical and Economic Review has estimated a ‘fair price’ of Remdesivir to be about $310, given the modest therapeutic benefits. It also links to a study titled “The U.S. Government’s Apparent Co-Ownership of Patents Protecting Remdesivir”, where the authors argue the governmental co-ownership of key patents could’ve allowed them to take control of manufacturing and distribution. ‘Knowledge Ecology International’ also brought to light contracts which “shed considerable light on the extent to which the federal government has limited or eliminated altogether its rights in intellectual [property] and data arising from the COVID-19 research and development that it is funding.”

What happens now in India? 

Yesterday’s Economic Times confirmed that Gilead’s stock for their July launch of Remdesivir in India, was purchased by US – thus delaying their India launch. However, there does not seem to be cause for concern currently.

Last month, Gilead had issued non-exclusive licences to 9 generic companies in India, Pakistan and Egypt, to manufacture and distribute Remdesivir to 127 countries. Under this license, they are to receive technology transfer, as well as the freedom to set their own prices on the generic version. And they will be royalty free till the WHO declares the end of the Public Health Emergency, or till another product is approved to treat/prevent Covid-19. 

Cipla and Hetero Drugs, who had first received only importing and marketing approval from the DCGI, subsequently also received manufacturing and marketing authorization under ‘Restricted Emergency Use’. As per this TOI report, Cipla and Hetero offer their versions at about INR 7000 and INR 4000 respectively; while as per this article, Hetero’s version is priced at INR 5,400 per vial. As per the BMJ article above, it takes 6.25 vials on average for a treatment course, taking the average treatment course costs to between INR 25,000 – 43,750, aside from other related hospital costs. 

Various sources such as ANI, PTI‘s twitter handle and PharmaBiz report that according to “official sources”/”senior government official”, Mylan and Jubilant Life Sciences have also received similar approval from the DCGI. Hopefully this will actually be reflected on the DCGI website soon too. 

What about the rest of the world?

With 9 generic companies licensed to manufacture and distribute the drug to 127 countries around the world, without even having to pay royalty to Gilead, one could be forgiven for thinking a substantial impact may be made in the attempts to address the global pandemic. Unfortunately, in terms of countries with Covid-19 cases, only 7 of the 30 worst affected countries are included in these Gilead-generic company licenses. These 7 are India, Pakistan, South Africa, Bangladesh, Egypt, Belarus, and Indonesia. US has Gilead of course, but not generic versions. And of course – these are only the ‘official’ numbers from these countries. Given that this sounds like a recipe for NOT really stopping the virus, it sounds like there will be plenty of profit to go around for a while. After all, if the disease keeps spreading, treatments will continue to be needed.

All of this, of course, is only about remdesivir – a drug that shows very moderate therapeutic benefits so far. What happens if/when a full treatment, or even vaccine, is developed? If it is developed in US – we already have an example of what path they may seek to follow. What about if it is developed in another country? Some observers are already warning about a global ‘hunger games’-esque future, with poor countries at the mercy of richer countries. It almost makes one nostalgic of the “Nexavar is only for western patients” times, when prohibitive pricing (and perhaps some variety of discrimination) was the only concern – and not defensive stockpiling, trade-wars and global buyouts!

Of course, as Mintze and t’Hoen point out, generic companies could start launching ‘at risk’ in these other countries, or apply for compulsory licences. And generics that have the gumption to ‘risk’ annoying Big Pharma may be well placed to do this. After all, if a country is being severely affected by the pandemic, and there is a globally announced shortage of the patented medicine declared – what better time is there to trigger a compulsory licence? It’s also a great time for countries to re-look at the access concerns that patent-linkage (linking regulatory approval with patent status) can cause, while also re-looking at the access benefits that local working requirements can bring. While ‘charity’ or ‘goodwill’ such as through Open-Covid pledges, patent pools, etc can play a large role in helping access concerns – it is high time that stronger legally enforceable public-interest centric policy levers are focused on, to change ‘access’ from a reactive-concern to a pro-active reality. After all, if US can find a way to take such strong ‘national interest’ measures, surely other countries can respond by taking their own ‘public interest’ measures!

[This post has been authored by Rishabh Joshi, a 4th year student at Gujarat National Law University (GNLU), Gandhinagar.]

Topical Highlights

Nationalism, Drugs and Public Interest – Remdesivir and Beyond

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Swaraj highlights how nationalism can hinder public health in light of the ‘drug hoarding’ (Remdesivir) by the United States. He first starts by talking about how Remdesivir is not the most effective treatment for the COVID-19 virus as the improvement rate is not so high. He briefly discusses the intermingling of nationalism with science and points out the ambiguity in the effectiveness of the drug as it is still going through clinical trials. The post also delves into the question of reasonable pricing and patenting of the drug. Swaraj then talks about how the “drug hoarding” is not an immediate cause of concern for India and sheds light on the non-exclusive licence with Gilead to produce Remedesivir. He further states the approximate price of the drug in India as suggested by the companies producing it. Finally, the post concludes with how the generic licenses are not catering to a huge market which is ‘really’ in need of the drug. He puts forward the necessity to look at the access concerns that patent-linkage can cause and the access benefits that local working requirements can bring.

A Look at the WTO Panel Report in ‘Saudi Arabia- Measures Concerning the Protection of Intellectual Property Rights’

In a guest post, Jay discusses the WTO Panel report over the ‘Saudi Arabia- Measures concerning the protection of Intellectual Property Rights’. Jay begins by briefly summarizing the facts of the case between Qatar and Saudi Arabia before the WTO. Saudi Arabia severed all diplomatic relations with Qatar over its alleged support to terrorist organizations which also denied license to Qatari based sports entertainment company beInMedia. Soon after a Saudi based company beoutQ unauthorizedly streamed the content of beIn Media thereby infringing its right.  The matter was taken before WTO. The post then enunciates the various legal grounds of infringement brought forth by Qatar against Saudi Arabia and the stance taken by Saudi Arabia on the same, which mainly revolved around Article 41.1, 42 and 61 of the TRIPS Agreement. Jay then takes us through what was eventually the conclusion drawn by the WTO after careful analysis of both facts and law in its report and finally concludes with the impact and ramification that the report shall bring forth.

Thematic Highlights

When Cricket Meets Copyright: Does Upload of Sports Clips on Social Media Amount to ‘Fair Dealing’?

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In a guest post, Nikhil examines whether the uploading of any sport clips is covered within the ‘fair dealing’ exception of the Indian Copyright law. The question was raised in light of the recent controversy where a fan’s cricket clips were taken down alleging copyright infringement upon a notice which was received from Cricket Australia. Nikhil establishes first how the uploading of the old clips fall within the ambit of fair dealing covered in section 52(1)(a) of the Copyright Act. He then goes on to determine whether the use of sports clips is for any of the three purposes mentioned in the said section. The conclusion that he arrives at is that clips uploaded on social media can possibly be considered as “criticism” or “review” of the original work. Finally, the post provides an overview of the shortcoming and ambiguity of the fair dealing exception showing how it stifles creativity and is unable to adapt to technological advancements of the modern-day.

Copyright and Webinars: Ownership, Licensing and Fair Use

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In another guest post, Shivam explores copyright issues relating to webinars and discusses the rights of the speakers, organizers, and participants under the Indian copyright law. He points out that the lecture (inclusive of webinar, speeches and addresses) falls under the purview of ‘literary works’ and therefore protected under Indian copyright laws. He then establishes that the speakers own the copyright in the lectures/speeches delivered in webinars. Organisers of webinars are not the owners of copyright in the lectures unless they are the employers of the speakers. Shivam then discusses the implied license concerning the distribution of the recording of such lectures and the rights of the organizer with respect to making and distribution of such recording. He then states two ‘fair use’ exceptions covered under section 52 of the Copyright Act which allows for use of such recording without licenses for educational purposes. And finally, the post discusses whether the participants of the webinar have any right based on the Q&A sessions and their comments. Shivam concludes the post by expressing the importance of organizers and speakers clearly stating out the terms of their engagement in line with copyright law to cull out the possibility of legal disputes.

Other Posts

Crawl Cautiously: Examining the Legal Landscape for Text and Data Mining in India

Part I of a two part guest post by Viraj first introduces text and data mining (TDM). Viraj talks about various TDM techniques like website scraping, website crawling or indexing, and website archiving and differentiates between them. Some of these techniques have been facing resistance owing to their ‘non-reciprocal nature’ and IP challenges they bring along. The challenges include revealation of confidential information, loss of reputation etc. DM is increasingly used to create the data-sets that train artificial intelligence and machine learning algorithms which further create copyright issues. The post then focuses on the question of copyright infringement liability for TDM in India. Viraj establishes how original content and the original selection and arrangement of unprotected content on websites, will constitute ‘literary works’ and consequently enjoy copyright protection in India. He puts forward a strong argument via case laws that the use of TDM is lawful only as long as it falls within the boundaries of section 52.

Part II of the post explores international developments on copyright exceptions for TDM use. The post commences with recent developments in TDM across the Globe starting with EU’s Directive on Copyright in the Digital Single Market (‘the DSM Directive’) which gave European Union Member States until June 7, 2021, to transpose it into their national laws. Subsequently, Viraj goes on to discuss various provisions and exceptions provided in the DSM Directive. He then moves on to briefly discuss the Singapore Copyright Review, which reflects forthcoming amendments to the Copyright Act of Singapore, Japan’s bill to amend their Copyright Act, and the WIPO Draft Issue Paper. The post then explains how unauthorised TDM may give rise to contractual liability and the role played by Terms of Service and Robot Exclusion Protocol in this regard. Viraj concludes the post with few suggestions from his end that could aid businesses to minimise liability.

Open Access IP Textbooks – or – Mythical IP Books and Where to Find Them

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In the post, Swaraj highlights the current scenario of physical books and the main reasons behind their inaccessibility which can be attributed to lack of well-stocked libraries, cost and books being outdated to current legal developments and hence unable to match up with the pace of blogs and magazines. Swaraj then shifts the discussion to open access books which are a blessing in the present world. He then puts forth the lists of open and non-open access IP books. The post then summarizes how open access books can be published by professors / academic authors, regardless of them being funded or unfunded.  The post also provides links to relevant guides that may come handy.

Sri Krishna Sweets Trademark Dispute: Madras HC’s Take on SC’s Patel Field Marshal Judgment

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Arun analyses the Madras High Court’s view taken on Patel Field Marshal judgment given by the Supreme Court. He starts off by briefly summarizing the four key takeaways from the SC judgment. The case mainly dealt with the validity of a registered trademark and the jurisdiction of IPAB. Then he goes on to elucidate the interpretation given by the Madras High Court in M. Murali v. Sri Krishna Sweets Pvt. Ltd. He first explains the factual background of the High Court case and then the ratio drawn out of the interpretation of the Patel judgment. The post further puts forth a legal analysis of the position taken by the Madras High Court in its interpretation, specifically in relation to section 47 and section 57 of the Trademark Act. Arun, in his concluding remarks, draws attention to the broad scope of section 47 and that the scope of the Patel Field Marshal judgement merely calls on the Court to engage in a factual exercise to decide on validity which is not dependent wholly on pleadings such as an application to reject a plaint.

Decisions from Indian Courts

Delhi High Court grants interim injunction in case concerning infringement of Volvo’s trademark [June 29, 2020]

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In Aktiebolaget Volvo & Ors v. Mantis Technologies Pvt. Ltd. & Ors., the Delhi High Court granted an interim injunction restraining the Defendants from using the Plaintiffs’ registered trademark ‘VOLVO’ as the part of their website, domain name, email address and trade name, and directed temporary suspension of the impugned domain names.The Plaintiffs argued that the Defendants, who are engaged in providing travel and tour services and other incidental services, are infringing, diluting and passing off their registered trademark ‘VOLVO’ by using it as part of their domain and trading name and also on generic website www.travelyaari.com. The Court took the view that the Plaintiffs were able to establish a prima facie case in their favour, that the balance of convenience lay in their favour and also that if the interim relief was not granted, their statutory and commercial interests are likely to be jeopardised.

Delhi High Court grants interim injunction restraining a face mask manufacturer from infringing DPS’ trademark [June 30, 2020]

In Delhi Public School Society v. Manish Tripathi, the Plaintiff claimed to be the first owner of artistic crest comprising of a hand holding a torch (mashaal) along with the school motto ‘Service Before Self’ and the words ‘Delhi Public School’ written inside a shield device in terms of the provisions of the Copyright Act. Plaintiff’s logo is registered under the Copyright Act and also the Trademarks Act. The Defendant was manufacturing face masks with the trademarks ‘Delhi Public School’ and the logo of Delhi Public School/DPS printed thereon under his brand name ‘Namastay Away’. The Court after perusal of the facts held that Plaintiff has made out a prima facie case in its favour, the balance of convenience lay in its favour, and in case no ad-interim injunction is granted the Plaintiff would suffer an irreparable loss.

Delhi High Court holds that IPAB may proceed and hear ‘urgent matters’ even if the post of Technical Member is vacant [July 1, 2020]

In Natco Pharma Limited v. Union of India & Ors., the controversy revolved around patent No. 276026 that was granted to the Respondent. The Petitioner filed post-grant opposition in respect of the said patent. In the meantime, the Respondent filed a suit for infringement of the patent against the Petitioner. Interim orders were passed in favour of Respondent restraining the Petitioner from manufacturing Ceritinib till the next date of hearing. Subsequently, the Controller of Patents passed an order invoking the said patent of Respondent who in turn filed an appeal before the IPAB along with an application for interim orders. In the matter before the Court, the Petitioner urged that the IPAB is hearing the matter without the Technical Member. The Court relied on Mylan Laboratories Ltd. v. Union of India as per which if the post of Technical Member is lying vacant, IPAB can proceed to hear the urgent matters.

Delhi High Court grants an interim injunction restraining a pharma company from using the trademark ‘Multi Vitamin Infusion’ [July 3, 2020]

In USV Pvt. Ltd. v. Paksons Pharmaceutical Pvt. Ltd., the Plaintiff contended that the Defendant had not only infringed its trademark ‘Multi Vitamin Infusion’ but had also committed passing off by portraying that the goods sold by it actually originated from the Plaintiff. The Plaintiff drew the Court’s attention to the Defendant’s trademark and claimed that when the two labels are compared the deception becomes stark. The Plaintiff particularly stressed that font size of the first alphabet of each of the three words i.e. ‘Multi Vitamin Infusion’ has been enlarged to create similarity between the Plaintiff’s registered trademark and the impugned trademark. The Court held that the Plaintiff had set up a prima facie case in its favour and that the balance of convenience also lay in the Plaintiff’s favour. Accordingly, the Defendant was restrained from using the impugned trademark or any other trademark, which is deceptively similar to that of the Plaintiff’s.

Telangana High Court refuses to grant interim injunction based on the difference in font and style of parties’ trademarks in an infringement suit [July 3, 2020]

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In Shri Shakti Schools Private Limited v. M/S. Chirec Public School, the High Court refused to grant any interim reliefs to the Appellant.  According to the Appellant, it has been using the word mark ‘CHIREC’ with specific and distinct colours and design and has earned great reputation over the years. The said mark was also registered. The Respondent was using a mark identical with and deceptively similar to the Appellant’s trade mark promoting educational services to students from Classes 1 to 10 at Madhugiri, Tumkur in Karnataka State. The Appellant alleged that the Respondent is operating under the mark of ‘CHIREC PUBLIC SCHOOL’ and thus has infringed the registered trade mark of the Appellant by unauthorized use of the word ‘CHIREC’. The Court was of the view that the trade mark being used by both the parties are prima facie different based on their fonts and styles. Therefore, it is unlikely that the parents of the children who would admit their children into the schools would be misled into thinking that the Respondent is using the Appellant’s trade mark particularly when the curricula being adopted by both schools are also different.

Delhi High Court grants interim injunction restraining use of trademark ‘THAI DUONG’ in a passing off case [July 3, 2020]

In Sunstar Joint Stock Company & Anr v. Mr. Arvind Kumar Aggarwal & Anr., the Plaintiff claimed that Defendant was a permitted user of the Plaintiffs’ trademark ‘THAI DUONG’. However, the Defendant applied for registration of the mark ‘THAI DUONG’ on ‘proposed to be used’ basis and was granted registration of the said trademark. Thus, the Defendant was not using the said trademark but using the products manufactured by Defendant pursuant to agreements as the permitted user of the Plaintiff. The Plaintiff has claimed injunction on the activities of Defendant. The Defendant on the other hand claimed that, even as per the contract, all the details of the manufacturing, packaging etc. and other specifications belong to the Defendant and thus, the Plaintiff cannot claim a better right than the Defendant and seek an injunction against him.The Court after perusal of the facts along with sections 48(2) and 56 of the Trademark Act found that that the Defendant was only a permitted user of the said trademark and in view of the export done by the Defendant by using the said trademark on behalf of the Plaintiff there is a prima facie case in the Plaintiff’s favour. Consequently, till the next date of hearing Defendant was injuncted.

Madras High Court confirms Single Judge’s order on appointment of scientific advisor in a patent infringement suit [June 4, 2020]

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In Sun Mobility Pvt. Ltd. v. Mr. Arumugam Rajendra Babu, the Plaintiff had sought a permanent injunction restraining the Defendants from infringing the Plaintiff’s patent bearing No. 2624671. The Defendant had advertised for sale mass, electric mobility which according to the Plaintiff contains the essential features of the Plaintiff’s patent No.262461. On notice, the Defendant had filed a counter affidavit praying for an interim injunction restraining the Plaintiff from disseminating, stating, commenting, etc. regarding the dispute between the parties. The learned single Judge observed that the vehicle and charging station over which the Plaintiff and Defendants made their claim relates to two different products and passed the order for the appointment of a scientific advisor which was impugned in this appeal. It was the contention of the Defendant that such an appointment was not desirable at the stage of the application for interim injunction but at the time of deciding the suit for patent infringement. The High Court found no infirmity with the order of the single judge and held that the prayer made by the appellant has to be decided only by the learned single Judge. It is open to the appellant to approach the learned single Judge seeking such prayer to keep the applications for interim injunction pending till such time a report is filed by the Scientific Officer and to take up the main suit for hearing.

Other News from around the Country

• Patent Office dismisses pre-grant oppositions and grants a patent to anti-cancer drug Nivolumab sold under the brand name Opdivo.
• Emami, which recently rebranded its ‘Fair and Handsome’ cream as ‘Emami Glow & Handsome’, evaluates trademark infringement action against HUL for rebranding its men’s range of ‘Fair & Lovely’ as ‘Glow & Handsome’.

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• Trade Marks Registry refuses HUL’s trademark application for the words ‘Glow & Handsome’ for lack of distinctiveness.
• Patients turn to grey market in Bangladesh to get the supplies of Remdesivir for personal use.
• Mylan (one of the companies having a license agreement with Gilead) receive permission from India’s drug regulator to manufacture as well as market Remdesivir, after Cipla and Hetero.
• A piece in The Quint discusses if India will be impacted by the US buying ‘all’ of Remdesivir supply.
• A team based in Goa makes and files a patent for ‘Multi-Mask’, a product that combines the mask and the face shield and offers several other advantages.
• IIT alumnus creates and patents a deodorant-cum-sanitizer which keeps coronavirus away and also smells good.
• IIT Roorkee researchers develop and file a patent for a sterilizing system for disinfecting personal belongings against coronavirus.
• The government of Australia grants innovation patent to four Aurangabad based researchers for inventing a low cost innovative thermal imaging system that is useful for biomedical applications.
• Telangana IT Industry Minister Rama Rao launches an e-book on the GIs of Telangana.
• Thammampatti wood carving, a signature artwork of artisans in Salem region, is set to become Tamil Nadu’s 36^th GI product.

News from around the World

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  US Supreme Court in United States Patent and Trademark Office et al. v. Booking.com B. V. rules that a term stylized ‘generic.com’ is not a generic name for a class of goods or services and is eligible for federal trademark protection unless the term has that meaning to consumers.

• Gilead announces the price of Remdesivir as $2,340 for a 5-day treatment in the US and some other developed countries.
• Health experts slam the US’ drug hoarding of Remdesevir due to the impact it will cause on public health across the globe.
• A piece in the Los Angeles Times discusses how Gilead’s secret deals could keep Remdesivir out of reach for millions around the world.
• Patent and trademark deadlines across the globe may get extended in light of the continuing COVID-19 crisis.

For regular updates on IP news and opinions related to COVID-19, please visit our COVID-19 & IP Updates page (also directly accessible from the Resources section on our website).

We’re pleased to bring to you a guest post by Eashan Ghosh on his recently released book ‘Imperfect Recollections: The Indian Supreme Court on Trade Mark Law’. Eashan has been practicing as an intellectual property advocate and consultant in New Delhi since 2011, and teaches a seminar on intellectual property law at National Law University, Delhi. Eashan writes about Indian intellectual property law, including a monthly review of Delhi High Court judgments, on his Medium page. He has written several guest posts for us in the past as well (see here, here, here, here, here, here, here, here and here).

Imperfect Recollections: The Indian Supreme Court on Trade Mark Law

Eashan Ghosh

I am delighted to take this opportunity to share with the SpicyIP community the release of my first book, Imperfect Recollections: The Indian Supreme Court on Trade Mark Law (Thomson Reuters, 2020, ISBN-13: 978-9389891454).

In it, I tell the story of Indian trade mark law through Supreme Court cases.

The book is a collection of thirteen essays divided into three parts.

Part I

The first part covers the similarity inquiry, rectification actions, and jurisdiction.

The essays on the similarity inquiry address perhaps the most important question in Indian trade mark law: on what basis can rival trade marks said to be similar enough to warrant legal intervention?

To this end, the first half of the similarity inquiry discussion is entirely narrative in nature. It picks up this inquiry from its origins in independent India and through a series of flagship decisions in the early years of the Supreme Court. Each of these rulings, adding to and taking from the ones before it, constructed a valuable substructure for later courts.

The latter half of the discussion examines the similarity inquiry in a more modern setting, against the backdrop of cases decided by the Supreme Court in the 21st century. It deliberates, also, on some specific issues, including the application of differing standards of similarity to classes of products/services and purchasers, and the extent to which the classic similarity inquiry solves for more modern functions of trade marks.

In the jurisdiction essays, I pick out three issues on the subject: what it means for a court to have jurisdiction over a trade mark case, how trade mark law links cause of action and jurisdiction, and the stages and sufficiency of facts informing when and where a trade mark claim may be instituted. This is followed by an essay dedicated to the clause offering Plaintiff-option jurisdiction under Section 134(2) of the Trade Marks Act and its transformative impact on recent jurisdiction practice in trade mark cases.

The discussion on rectification actions is led by three preliminary issues: who is entitled to move them, where they can be moved, and what happens if the rectification question is simultaneously raised before two forums. Building on this platform, a second essay on rectification actions then details the principal grounds for rectification.

Part II

The second part contains three closely tied essays on questions incidental to the similarity inquiry.

The first of these is on the descriptiveness question. This is a short inquiry on the circumstances in which courts can authorize actions to safeguard the use by rights holders of descriptive or common words. The second essay scrutinizes the role of the Registrar of Trade Marks in issuing restrictions on trade mark registrations. The final essay in this section takes up the prior use question, which, thanks to profound changes in the lifestyle, media and internet habits of common purchasers, has undergone a remarkable legal transformation in recent years.

Part III

The final part is led by an essay on the twin defences of delay and acquiescence in trade mark claims. This essay underscores that the two defences, though often applicable to similar cases, can diverge in critical ways. The next essay is on honest concurrent use. It focuses on the three most prominent applications of honest concurrent use under Indian law: the pure honest concurrent use defence, acquired distinctiveness, and the exemption for names and descriptors.

The section continues with an essay on criminal proceedings. These proceedings are somewhat marginalized in practice today, but carry a surprisingly rich history of case law, and draw on a stylistically disparate set of legal actions.

The final essay is on injunctions and relief. It assesses two prominent trends that have dominated Supreme Court case law on this subject recently. The first of these has been the explosion in interim injunctions, especially against Defendants set ex parte. The second has been a growing reluctance by the Supreme Court itself to weigh in on important trade mark law discussions, expressing a strong preference to shepherd cases to trial.

By a narrative-style re-telling of Supreme Court cases in each essay, I have attempted to address some of the most persistent criticisms typically made of long form academic writing on Indian trade mark law. I have also tried to offer a deeper, more systematic critique of the cases themselves and, with it, some reflections on the role of the Supreme Court in the broader Indian trade mark law meta.

The book is available for order online at the following links (please check for delivery area accessibility): Kstor and Amazon. It can also be found in the recently published list of IP books on this blog (also accessible from the Resources section of the website here).

I am happy to take questions about the book, and welcome comments and feedback. Please feel free to reach out to me in the replies below or on my Medium page.

Note: SpicyIP is a participant in the Amazon Associates Program, an affiliate advertising program designed to provide a means for sites to earn advertising fees by advertising and linking to amazon.in.

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Earlier in February, I had written about a petition filed by AIDAN challenging Paragraph 32 of the Drug (Prices Control) Order 2013 (DPCO) and the Drug (Prices Control) Amendment Order, 2019. Para. 32 of the DPCO creates a provision for the exemption of certain drugs from price control. One of the exemptions under Para. 32, brought in through the 2019 amendment, is for ‘new drugs’ patented under the Indian Patents Act, 1970. The latest provision, after the amendment, reads –

“32. Non-application of the provisions of this order in certain cases –

(i) a manufacturer producing a new drug patented under the Indian Patent Act, 1970, for a period of five years from the date of commencement of its commercial marketing by the manufacturer in the country”

Given that the 2019 amendment is still in its nascent stages, there have been several concerns regarding its application, particularly with regard to if the new provision for exemption is self-invocatory. Several pharma companies have come under the National Pharmaceutical Pricing Authority’s (NPPA) scanner for exempting themselves from price caps without the authority’s approval, after having been granted a patent for their drugs. These pharma companies which includes Lupin, Abbot Healthcare, Sun Pharma and Glenmark have filed different petitions in High Courts concerning the interpretation of the exemptions granted under Para. 32 and if the same is self-invocatory. In this post, I will first summarize the proceedings in the cases and then address the matter of self-invocation of the exemption.

Glenmark Pharmaceuticals Ltd v. Union of India [January 29, 2020]– Glenmark, in its petition filed in the Delhi High Court challenged the show cause notice and communication it received from NPPA holding Glenmark liable for failing to make an application for seeking exemption under Para. 32 of the DPCO. Presently, NPPA has submitted that it would grant an opportunity of hearing to Glenmark to determine if it is entitled to the benefit under Para. 32 of the DPCO and the Court has not given effect to the show cause notice issued by the NPPA.

Lupin Ltd v. Union of India [February 27, 2020] – Lupin filed a petition in the Delhi High Court raising a question in respect of the interpretation of Para. 32 of the DPCO. Lupin claimed that it had launched a fixed-dose combination (FDC) of Empagliflozin and Metformin Hydrochloride, a drug for diabetes, without seeking the prior permission of NPPA on the premise that the product was patented. NPPA argued that there was an obligation on Lupin to apply for an exemption under Para. 32(i) prior to launching the product itself and that Lupin could not have made a presumption that it was entitled to the exemption. The judge observed that the question to be addressed was whether in order to avail of an exemption under Para. 32(i), prior approval is needed or any manufacturer as defined under Para. 2(n) of the DPCO could launch a product merely after an intimation to the NPPA if the pharmaceutical product has been granted a product patent in India. For the same, the Court has directed NPPA to file its stand with respect to the interpretation and ordered that no coercive measures should be taken against Lupin with respect to the prices. It is also interesting to note here that the Court uses the term product patent in this case though the 2019 amendment to the DPCO removed the term ‘product patent’ from Para. 32(i). This, however, does not affect the outcome of the order.

Sun Pharma Laboratories Limited v. Union of India [March 03, 2020] – Sun Pharma filed a petition in the Gujarat High Court to contest show cause notices issued by NPPA regarding the price exemptions claimed by Sun Pharma under Para. 32(i) of the DPCO. The primary contention, in this case, was regarding the application of Para. 15(5) of the DPCO, which states – “Where existing manufacturer of scheduled formulation fails to apply for prior approval of the price of the new drug in Form-I, such manufacturer shall be liable to deposit the overcharged amount over and above such price fixed..”. Sun Pharma argued that the drug in question, Oxramet’s patent was granted to Bristol-Myers Squibb in 2009, who entered into an assignment deed with Astra Zeneca AB in India and Astra Zeneca, in turn, entered into an agreement with Sun Pharma for the distribution of such tablets. Sun Pharma successfully argued that it was only a distributor of the drug and Astra Zeneca was the manufacturer and hence Para. 15(5) would not be applicable to them and cannot be held liable. Accepting this, the Court granted interim relief in the case.

Abbot Healthcare Pvt. Ltd v. NPPA [June 18, 2020] – Most recently, Abbot filed a petition in the Delhi High Court seeking a declaration that Abbot’s drug formulation which was the subject matter of a show cause notice issued by NPPA for violating DPCO 2013 was exempt from the same per the application of Para. 32(i) of the Order. Abbot’s counsel argued that there is no necessity of a prior application for grant of exemption under Para. 32(i) of the DPCO as its wording shows that the same has an automatic application in case a new drug, patented under the Indian Patents Act, is made available commercially. NPPA’s counsel argued that there is no automatic application and for Para. 32(i) to be made applicable, an examination is required by NPPA to ascertain whether the drug in respect of which an exemption is claimed is a new drug or not. NPPA’s counsel sought time to file a counter-affidavit and this case has been listed with the abovementioned Lupin petition given that they concern the same matter.

Does the DPCO Allow Self-Invocation?

The proviso to Para. 32 of DPCO 2013 reads “provided that the provision of this paragraph shall apply only when a document showing approval of such new drugs from Drugs Controller General (India) is produced before the Government.” The “new drug” referred to in this paragraph has the same meaning as assigned under Rule 122E of the Drugs and Cosmetics Rules, 1945. A text-based reading of the 2019 Amendment along with the proviso requires that the Drugs Controller approve of any claim regarding a new drug. Given this approval requirement, a newly patented drug qualifies to be considered for the exemption, but it is not automatically granted the exemption. Given the proviso, it is quite a bit of a jump to claim that the exemption applies automatically.

An Alternative Reading?

The pharma companies claiming the exemption seem to read the same provision as the exemption being granted automatically upon the fulfillment of the relevant provisions under Para. 32 by the manufacturer, in these cases, the requirement is that of a patent being granted under the Indian Patents Act. The exemption granted under Para. 32 of the DPCO is much broader than what the previous price control orders have offered. Meeting the requirements under Para. 32, such as being a newly patented drug [32(i), a new drug created by a new process developed through indigenous R&D [32(ii)], a new drug involving a new delivery system developed through indigenous R&D  [32(iii)] or a drug for treating orphan diseases [32(iv)], can be understood to grant the exemption under an expansive reading. Further, the wording is also such that the required approval is concerning whether a particular drug is a ‘new drug’ and not an approval of the exemption as such. So once a formulation is classified as a ‘new drug’, it would fall within the purview of Para. 32 which exempts the application of the Order to those drugs.

Conclusion

The inconsistency in the language within the different clauses of Para. 32 and also with respect to Rule 122E, leaves open many questions with respect to how the exemption should be applied. Since NPPA has already accused these companies of bypassing regulations and the courts have sought guidelines from NPPA with respect to Para. 32’s interpretation, the alternative reading in favor of self-invocation may not gain much traction. Further, self-invocation by pharma companies also goes against the spirit of the DPCO which is to ensure that essential medicines are available at a reasonable price. The multiple petitions only highlight the rather poorly drafted amendment that does not seem to be cognizant of the interpretational challenges it creates.

We’re pleased to bring to you a guest post by Abhishek Iyer. Abhishek is a 3rd year student at the Gujarat National Law University (GNLU), Gandhinagar.

Telegram Copyright Infringement Case: India’s Chance to Seek Inspiration from Foreign Principles

Abhishek Iyer

Circulation of e-newspapers and its validity under copyright law have been regularly put on debate, SpicyIP had recently discussed it here. On similar lines, popular news publisher Jagran Prakashan Limited (‘Plaintiff’), found their e-paper being freely circulated online, through messaging platform Telegram (‘Defendant’) which was otherwise only available to its subscribers. SpicyIP had earlier reported this development and discussed the surrounding jurisprudence in India.

The leading precedent in India through  Super Cassettes Industries Ltd. v. Myspace Inc. & Anr., relies on ‘specific and actual knowledge’ of the presence of copyrighted material, which is pragmatically to be placed before a human agency (defendant) while determining liability. However, there is little to no jurisprudence discussing consequences when there is ‘no knowledge’ on behalf of the intermediary. The Delhi High Court in the Dainik case, stated that the Defendant did not revert to any emails sent by the plaintiff, which signified no knowledge, until the actual plaint was filed.

To understand the burden of ‘knowledge’ for e-notices, SBI Cards & Payments Services Pvt. Ltd. v. Rohidas Jadhav, a Bombay High Court judgment is important. The court had ruled that a notice sent via WhatsApp can be considered as ‘duly served’ on the ground that such notice message was ‘delivered and opened’ by the respondent. Court emphasized on the ‘opening’ of such messages sent electronically which is usually signified by a Blue Tick for WhatsApp. Court deemed it reasonable to hold liability only after ‘opening of the message’ was proved by the plaintiff. Applying this to our case, the Plaintiff has to prove that the email notices were ‘duly delivered and opened’ by the defendant. As of now, there is no evidence on record to prove the same, hence, it will be fair to assume that the defendant never received the emails or the plaintiff probably did not have sufficient tools to prove that emails were both ‘delivered and opened’.

Telegram as a platform, is free-to-access, open ended, and without any content filters. Now, to resolve liability in the absence of the above, it would be only wise to draw inspiration from settled principles in the European Union (‘EU’) and the United States.

Doctrine of inducement

Courts in the United States have time and again relied on the ‘doctrine of inducement’ to determine whether the distributor (intermediary) by any means promotes using its device/platform to infringe copyrighted material.

The U.S. Supreme Court in MGM Studios v. Grokster Ltd., through an unanimous decision held that the defendant, a company facilitating peer-to-peer file sharing, could be sued for IPR infringement on the ground that, it used to affirmatively promote file sharing, thereby encouraging direct infringement, also vicariously profiting from such direct infringement done by third party.

Further, the United States District Court for the Southern District of New York in Arista Records LLC v. Lime Group LLC (discussed on the blog here), while granting a permanent injunction to shut down the file sharing facility offered by the defendant, held that, it would be practical to claim infringement equally against the defendant since, it exercises control and receives benefit over such messages being circulated. This decision was also broadly based on the doctrine of inducement whereby the intermediary used to promote infringement and vicariously contribute in a bid to earn profits.

Telegram (defendant) has shared no evidence signifying the presence of a filter for any content shared on its platform. In Grokster, the court had raised this concern of intermediaries promoting usage of their platform despite the absence of a reasonable check. Hence it is argued, the wilful absence of a check and promotion of usage of its platform, indirectly promotes infringement.

Contributory/vicarious infringement

Contributory Infringement as a concept has not been dealt by courts in India. Section 52(1)(c) of the Copyright Act, 1957 (India), is relevant whereby mere storage of copyrighted work by an intermediary for providing electronic links, access, or integration, does not amount to an infringement. But, it is important to note that if circulation of such content has been expressly prohibited, as the case here by Dainik, then the defendant cannot even incidentally facilitate such circulation of content.

Contributory infringement as a principle was dealt by U.S. District Court of North Illinois in In re Aimster Copyright Litigation. The court imposed indirect liability on the intermediary since the massive number of infringers at a time, made it impossible to enforce rights severally. The court opined that, the only practical alternative amidst millions of users would be to enforce liability against the intermediary. It was impossible for the intermediary to control all users but, it can certainly remove specific content which was so notified. Therefore when content is not removed, it is argued that the intermediary should be made liable using Aimster Rule, for being indirect contributors.

Right of injunction vis-à-vis safe harbour under mere conduit : The EU way

Directive 2001/29/EC on Copyright and Directive 2004/28/EC on Enforcement of Intellectual Property Rights, cast an obligation on EU Member states to give right holders the exclusive right of seeking injunction against those online intermediaries who purport to be violating their intellectual property rights. This principle is relevant since, the plaintiff can effectively have damage control against future circulation of such PDF copies by anonymous persons. A John Doe Order is the parallel in the Indian scenario, which evolved in the 2003 Taj Television case, discussed on the blog here. Though this method of seeking an injunction is highly debated for its lack of precedential safeguards but, in the absence of the defendant’s representative in India, such an injunction order can help plaintiff to prevent any untoward damage till the time the relevant parties are impleaded.

The European Union E-Commerce Directive 2000/31/EC provides for ‘Safe Harbours’ under Article 12, 13, and 14 which essentially help intermediaries who sought to be having a passive role, exclude liability. The concept of ‘Mere Conduit’ under Article 12 is relevant whereby, the intermediary fulfils the following, (1) must not have initiated the transmission; (2) must not have selected the recipient of the transmission; and (3) must not have selected or modified the information contained in the transmission.

For Telegram here, if Mere Conduit put in practice, does fulfil the three necessities whereby, the transmission is happening between two or more anonymous parties having no intermediary control and, in the absolute absence of any modifications, thereby having a passive role. Moreover, as argued earlier, the ‘knowledge’ part with Telegram is absent, making it a perfect fit in line with the Recital 42 of the E-Commerce Directive. Coupling these, Telegram can justify its negligible control over the content and the absence of express knowledge of such content on its platform, to seek Safe Harbour.

Conclusion

Several factors including financial motive, editorial control or, storage of data and modification, have to be analysed while determining liability. Interestingly, the actual violative actions are those of the third party who share content but the liability is sought against the intermediary, who in the present case does not even have knowledge of such content. It is a great opportunity for the Delhi High Court to seek help from these globally settled principles and put them into a leading precedent which balances both, the intermediary and the group chat stakeholders, for the Indian scenario.