In this post, I would like to discuss a recent judgment of the Court of Justice of the European Union (CJEU) in Brompton Bicycle (C-833/18). This judgment is relevant in the context of Section 52(1)(w) of the Copyright Act which provides as follows:

“The following acts shall not constitute an infringement of copyright, namely:-

(w) the making of a three-dimensional object from a two-dimensional artistic work, such as a technical drawing, for the purposes of industrial application of any purely functional part of a useful device.”

I request all the readers to go through Prashant’s post before reading this post. The Indian jurisprudence has not yet comprehensively dealt with the functionality facet of Copyright Law. [For those who are interested in reading more about this, they can read this article (1990) even though it is authored primarily in the US context.]

                                               CJEU in Brompton Bicycle (C-833/18)

[Image from here] Issue: Whether a ‘work’ (here of a foldable bicycle), whose shape is necessary to achieve a technical result, can be excluded from copyright protection under Articles 2 to 5 of the Directive 2001/29/EC, also known as the Infosoc Directive.[1]

Judgment:

Concept of Copyrightable Work

The concept of a copyrightable ‘work’ entails two factors:

i) an original subject matter which is the author’s own intellectual creation: The first criterion is satisfied if the subject-matter reflects the personality of its author and as an expression of his free and creative choices.[3]

ii) the expression of that creation [2] : The second criterion is satisfied if the subject matter can be identified with sufficient precision and objectivity.[4]

The Relationship between Shape and Technical Result

As regarding the assessment whether a particular shape is necessary to achieve a technical result, the CJEU clarified the following: i) the existence of alternative shapes to achieve the same technical result will not be a deciding factor;[5] ii) the intention of the alleged infringer in achieving that technical result is irrelevant;[6] and iii) for determining the considerations which led to the choice of a particular shape of the product, the following can be considered: a) effectiveness of the shape in achieving that technical result and b) the existence of an expired patent on the same process for achieving the technical result.[7]

Conclusion

Based on these factors, the CJEU concluded that the copyright protection “applies to a product whose shape is, at least in part, necessary to obtain a technical result, where that product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality […].”[8]

As far as the given fact situation is concerned i.e. whether a foldable bicycle is a copyrightable work or not, the CJEU observed that the shape appears necessary to obtain a certain technical result i.e. the folding of the bicycle into three positions and where one position allows it to be kept balanced on the ground.[9] The referring court has to determine whether the bicycle is an original work resulting from intellectual creation.[10] However, the CJEU cautioned that the copyright protection cannot be extended to a work when its shape is dictated solely by its technical functions.[11]

Comments

Going by this judgment, despite the nexus between the shape and the technical result, copyright protection can be extended to that shape provided the shape of the product is an original work resulting from intellectual creation. I had earlier discussed the fundamentals of copyright law (author’s rights system v. copyrights system). As you can see, the reasoning reflects the features of author’s rights system i.e. the author – work relationship.

Secondly, in the context of Section 52(1)(w), how do you assess the reasoning of CJEU? In other words, in the context of Section 52(1)(w), can copyright protection be denied when the shape of a product enjoys even a minimal nexus with the functionality of the product despite it being an original work resulting from intellectual creation? For the benefit of readers, I am reproducing Section 52(1)(w):

“The following acts shall not constitute an infringement of copyright, namely:-

(w) the making of a three-dimensional object from a two-dimensional artistic work, such as a technical drawing, for the purposes of industrial application of any purely functional part of a useful device.”

I am of the view that the copyright protection can be denied only when the shape has a purely functional component. The test is whether it can be considered as an original work resulting from intellectual creation and not whether it has a functional component. This can be, however, debated.

Thirdly, I had earlier co-authored a chapter with Dr. Arul Scaria on ‘copyrightability of fonts’. [SSRN] [Edward Elgar]. This chapter discusses the ‘functionality’ aspect in Copyright Law albeit in the context of fonts.

[1] Paragraph 19 of Judgment

[2] Paragraph 22 of Judgment

[3] Paragraph 23 of Judgment

[4] Paragraph 25 of Judgment

[5]  Paragraph 35 of Judgment

[6] Paragraph 35 of Judgment

[7] Paragraph 36 of Judgment

[8] Paragraph 38 of Judgment

[9] Paragraph 29 of Judgment

[10] Paragraph 30 of Judgment

[11] Paragraph 33 of Judgment

Musicians are not pleased with IPRS’s new tariff scheme. (Image from wikimedia commons)

The Indian Performing Rights Society (IPRS) has been keeping busy during the COVID pandemic. In an undated notice, uploaded earlier in July, it announced a new tariff scheme for ‘live-streaming of online events and live/disc-jockey performances’. After receiving backlash from singers, musicians and popular press, reports have emerged that the tariffs have been put on ‘hold’ until September, 2020. In this post, I will examine some of the issues and concerns this notice has raised.

[Important Edit 29/7: I missed this press release from IPRS stating categorically that the proposed tariff will not be applied, and that its only objective was to ‘engage with stakeholders’ before its Annual General Meeting]

At the outset, the scope of the licensing requirement is a matter of concern. The IPRS notice states that its tariffs are applicable to live-streaming of Online Events of Music (Musical & Literary works) by way of Live Performance, or Music Videos and Disc Jockey (Sound Recording). The conditions (unhelpfully) mention that ‘live performance’ means music by performers in person, and Disc Jockeys means playing a sound recording.

IPRS subsequently issued a clarification about the scope of the license, which ended up merely creating more confusion. In a notice it circulated through Twitter, IPRS ‘clarified’ that the livestreaming license is not applicable to live concerts of folk or classical music, or shows which play ‘non-copyrighted’ music. Given that IPRS has no authority over non-copyrighted music, this ‘clarification’ is particularly baffling. [Edit 29/7: The press release also states that it will not apply to ‘free’ performances on Youtube, Facebook or Instagram which are not ticketed or paid for].

Live (analog/offline) performances of musical works generally require a license for performing or communicating the work under Section 14(a)(iii) of the Copyright Act. On the other hand, it is unclear whether a digital stream is considered a ‘performance’ and communication to the public of the underlying musical works, or a reproduction of the underlying works, which would require distinct ‘publishing’ and ‘mechanical rights’ to copy and issue copies of the work. In the case of a song recording, additional rights under Section 14(e) must also be required for broadcasting. The distinction is not only theoretical – the recent tussles between online streaming platforms over the applicability of statutory broadcast licenses is evidence of the need for greater clarity on the nature of online streaming and ephemeral performances.

The distinction is also consequential for the nature and obligations of platforms which host user-generated content, like Facebook or YouTube. Recent years have seen a spate of such platforms undertaking licensing deals with major music publishers and rights-owners for the use of their repertoire by users, spurred by legislative measures like Article 17 of the European Union Copyright Directive. In fact, IPRS only last week inked a new deal with Facebook to license its repertoire for Facebook and Instagram’s new music streaming features, although the press communication does not indicate whether this deal covers user generated content or only allows for the streaming of specific works.

This confusion over live-streaming licensing epitomises the need for legal institutions, and legislative institutions in particular, to take account of the new media of online digital music and clarify the exploitation of rights occurring through these new media, in a manner which allows for the generativity of online technologies and creativity of music production.

Tariff Transparency and Non-Compliance with Copyright Rules?

Apart from the scope of the licenses sought by IPRS, the manner in which the notice has been rolled out raises questions about the governance of the copyright society and the legality of the notice. The initial notice states that the new licenses will be in effect from July 1, even though a disclaimer notes that this is ‘subject to approval by members in the general meeting’. There is no notice for the AGM or an extraordinary general meeting for adopting the terms of the notice.

Section 33A of the Copyright Act read with Section 56 of the Copyright Rules, 2013, provide for basic rules to be followed in issuing a new tariff. Rule 56(6), in particular, requires the copyright society to publish the date of coming into effect of any new tariff at least two months in advance. Although the tariff is now reported to take effect in September, the initial tariff looks to be in flagrant violation of this rule.

This, finally, brings us to the question of governance of the tariffs set by copyright societies. Sections 33 and 33A provide ample scope for governmental oversight of tariff schemes. Rule 56(4) in particular, states that the Copyright Society shall follow guidelines on fixation of tariffs set by any court or the Copyright Board (now the IPAB), and that it ‘may’ consult user groups. To my knowledge, no guidelines applicable to IPRS’s tariffs have been established by the Copyright Board or by any court.

The draft Copyright Rules, released in June, 2019, contain certain provisions relevant to accountability and transparency in tariff schemes. For one, it provides for mandatory consultation by copyright societies of user groups, and also provides for certain guidelines or considerations to be taken into account in the fixation of tariffs, namely “(a) cross-sectional tariff comparisons; (b) economic research; (c) the nature and scope of the use of the work; (d) the commercial value of the rights in use; (e) the benefits to licensees.”

Perhaps some more deliberation on the transparency and accountability of copyright societies and tariff fixation is in order, and the draft rules could be a good starting point for such a conversation.

We are pleased to bring you a guest post by Sahaja Burde, on the ongoing regulatory efforts surrounding ‘non-personal data’. Sahaja is a 3rd year student at ILS College, Pune. In this post, Sahaja examines the provisions of the Personal Data Protection Bill, 2019 dealing with non-personal data and their interplay with copyright and trade secret law in India.

Trade Secrets Protection and Incentives to Innovate: Scrutinizing Section 91 of The Personal Data Protection Bill, 2019

Sahaja Burde

Introduction

India lacks a mechanism to govern data, and the Personal Data Protection Bill, 2019 (“the Bill”) is the country’s first attempt in filling the lacuna. Although the Bill has been appreciated for the recognition of rights of ‘data principals’, provisions for data localization, and strong obligations on ‘data fiduciaries’, it has received great criticism for the large carve-outs made for the government. Section 91 of the Bill is one such provision. It deals with government’s access to anonymized personal data and non-personal data in the hands of ‘data fiduciaries’.

This article approaches Section 91 of the Bill from an Intellectual Property Law perspective. It aims to determine the impact of the provision on trade secrets of data fiduciaries and in turn, on innovation.

In 1977, the then industry minister, George Fernandes, demanded the transfer of 60% of shares of the Coco-Cola Company to its Indian counterpart owing to the provisions of what was then the Foreign Exchange Regulation Act. Additionally, the minister also wanted the company to share its formula. Although the company agreed to the former condition, it denied to give away the formula which it claimed to be a trade secret. This led to the Coco-Cola Company’s exit from the Indian market and the introduction of a drink called ‘Super 77’. The Coca-Cola Company only returned to the market in late 1993. This is a classic example of a dispute over trade secrets between the government and a corporate entity.

Non-personal Data

The setting up of the Kris Gopalakrishnan Committee (‘Gopalakrishnan Committee’) is a result of the recognition of the economic value of non-personal data. While the Gopalakrishnan Committee deliberates on the issues pertaining to non-personal data, aiming to attain a balance between the intellectual property of the companies and better governance, the inclusion of Section 91 in the Bill may be regarded to be out of scope.

Data as ‘Trade Secrets’

The absence of a trade secret law in India has led the judiciary to provide protection to trade secrets under the Copyright Act, 1957 (“Copyright Act”), on the principle of equity, and according to common law action of breach of confidence which in turn amounts to contractual breach. In the case of Zee Telefilms Ltd & Anr. v. Sundial Communications Pvt. Ltd., The court noted that the law of breach of confidence is a broader right than proprietary right of copyright. In the case of breach of confidence, the court views a matter on the lines of fairness. Unauthorized use of confidential information, providing a ‘springboard’ to the infringer, constitutes such breach.

Statutory Protection

Companies and enterprises or data fiduciaries collect data and process them systematically to analyze consumer trends, profitability, and/or for other similar purposes. Such structured data sets or ‘databases’ are included in the definition of literary works and may be protected under the Copyright Act. In the case of Burlington Home Shopping Pvt. Ltd. v. Rajnish Chibber, the Delhi High Court observed that, in theory, copyright and trade secret law protect different elements of data compilation. While copyright protection extends to the particular expressive arrangement of data, trade secret protection extends to the underlying data. However, in fact, the protection under both laws often converge. The copyright protection to business data compilations, hence, extends to the underlying data most times. It is pertinent to note a subsequent judicial advancement in the copyright protection to databases. In the case of Eastern Book Company & Ors. v. D. B. Modak & Anr., the Supreme Court iterated that mere application of labor in compilation of pre-existing data will not regard it copyrightable. The existence of some ‘creativity’ in the compilation is an essential to seek protection of databases under the Copyright Act. Businesses add value to raw data by cleaning, transforming and organizing data into data sets, from which they derive insights. The processing of raw data is by way of technological inputs and technical skills. Anonymization, by its own definition under the Bill, is a process. Hence, even in the case of anonymized data, which is a subset of non-personal data for the purpose of this provision, requires input of proprietary algorithms. These inputs may sufficiently fulfill the requirement of ‘creativity’ in compilation of data. Section 91 of the Bill infringes this protection extended to trade secrets by the provisions of the Copyright Act.

Additionally, India is a signatory of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”) and Article 39 of the TRIPS Agreement provides natural and legal persons with the right to non-disclosure of information that qualifies as a trade secret. Section 91 of the Bill is in contrast with Article 39 prima facie and violates the right guaranteed by it to companies i.e., legal persons.

The data that companies collect, analyze, and process rewards them with a competitive advantage over the others. Irrespective of the amount of originality in such compilation, it is protected from appropriation by others. Data forms a part of the entities’ trade secrets and the insights derived from it are protected under the intellectual property law. Compelling companies to provide such data to the government places future investment in developing such databases at risk. The National Association of Software and Service Companies, widely known as NASSCOM, while expressing concern over Section 91 of the Bill, states that possible apprehension regarding compulsory licensing or acquisition of data could restrain innovation. It recommends the removal of the provision or the addition of appropriate safeguards.

Concluding Remarks

The collection and processing of data by companies facilitate better targeting of services and in turn, potentially increases profits. Companies already take the risk of divulging trade secrets when employees are hired by competitors. However, to mitigate such risk, the signing of non-disclosure agreements are recommended. Section 91, by putting trade secrets of companies in an ambiguous state of usefulness, leaves companies with less motivation to innovate when only to part with it. The Bill is currently deliberated on by the Joint Parliamentary Committee and in the case of it being passed as an Act, Section 91 may be reasonably anticipated to curb innovation. The provision oversteps the objectives of the Bill and, while doing so, also raises legal risks and stifles the companies’ incentive to innovate.

Prof. (Dr.) Shamnad Basheer

On May 14, 2020, on the occasion of Shamnad‘s 44^th birth anniversary we had announced the first edition of the Shamnad Basheer Essay Competition on Intellectual Property Law. We opened the topic selection out to participants – asking them to choose any topic they wanted so long as it related to IP. And encouraged participants to draw inspiration from Shamnad’s scholarship. Despite being announced in the middle of a pandemic, the response to the essay competition has been overwhelming – we received a total of 89 entries from law students across India on an impressive range of topics. We shortlisted the top 6 essays for our panel of esteemed judges, consisting of Justice Prabha Sridevan, Ms. Jayashree Watal and Professor Siva Thambisetty (please click here for their bios). Thanks to a speedy turnaround by the judges, we are very happy to announce the top 3 winning entries, along with the thoughtful comments from the judges on each of the three essays.

And the winners are:

1. The first prize goes to Lokesh Vyas, a fifth year law student at the Institute of Law, Nirma University, Ahmedabad for his essay on ‘Director’s authorship under Indian Copyright Law: An (Un) Indian Approach?’

This essay discusses cinematic authorship and highlights the flaws of granting authorship solely to the producer in the Indian Copyright Act, to the exclusion of the director. The essay pits the demands of financing against the demands of incentivising the ‘art of filmmaking’ in arguing for the director’s authorship, making a strong case for correcting a legislative infelicity that is a relic of the British Copyright Act, 1956. The essay is exceptionally well written, dealing directly with a legal question whose boundaries are clearly carved out of a number of complex issues while relying on a good range of philosophical and legal sources. It evidences assimilation of the literature and personal reflection – the result is an insightful and sophisticated voice, setting out a persuasive case for giving the directors authorship rights. Lokesh states his case with passion, arguing that while ‘cinematography is a work of various creative efforts, there is one creative force that coheres all the creative efforts and eventuates the final work’. This essay was a pleasure to read and is a deserving winner of the essay competition.

The essay can be accessed over here.

2. The second prize goes to Varsha Jhavar, a fourth year law student at the Hidayatullah National Law University, Raipur for her essay on ‘Stand-up Comedy: Negative Space or Traditional IP Worthy’

This essay addresses the question of joke-theft and and lays out the case for a form of exclusivity in order to protect the legitimate interests of comedians and to extend an incentive that would be helpful for the preservation of the stand-up comedy industry. The author presents social media, and a social norms-based system as a form of enforcement to minimise joke-theft. The essay is well-written and uses interesting examples to make an engaging case for some form of protection for comedians. It is thought provoking and shows an element of original thinking on a problem of “no innovation without intellectual property rights” that exists in the shadow of the debate on conventional intellectual property rights.

The essay can be accessed over here.

3. The third prize goes to Purvi Nema, a fourth year law student at the National University of Study and Research in Law, Ranchi for her essay on ‘Can Copyright Law Combat Deepfakes’?

The essay takes a very pertinent issue – the question of deepfakes – and landscapes the intellectual property issues such as authorship, ownership, fair use and intermediary liability. It focuses on the artificial intelligence used to author deep fakes and draws observations from the speed of technology and the challenge of intellectual property law keeping pace with such developments. The essay is well-written and the issues are engagingly laid out.

The essay can be accessed over here.

The SpicyIP team would like to give our hearty congratulations to these students for their prize winning essays! We would also like to thank all the participants for their enthusiastic participation in the competition. And last but not least, we are incredibly grateful to the judges for lending their time to judge the essay competition and helping ensure that the first edition of this competition was a rousing success!

Image from here

Recently, in a suit filed by Disney for protection of its copyrighted content, the Delhi High Court granted the interim relief in its favour. As aptly described in the order, Disney is ‘in the business of creation, production and distribution of motion pictures/cinematograph films.’ It filed the impugned suit against certain ‘rogue’ websites that were illegally making its copyrighted content available on their platforms. Through the injunction, the court has restrained the ‘rogue’ websites arrayed as defendants in the suit, and their mirror/redirect/alphanumeric websites (‘mirror websites’), from hosting Disney’s copyrighted content. It has also directed the ISPs to block 118 websites of the defendants, as specified in para 7.3 of the order, and their mirror websites. Moreover, the court has granted the liberty to Disney “to array other rogue websites if the same are discovered after the issuance of the instant interim order”. As Medianama aptly terms it, this is a form of ‘dynamic John Doe blocking’ order. In this piece, I analyse two elements of the interim order, concerning the ‘john doe’ nature of the dynamic injunction, and the blocking of entire websites instead of specific URLs for copyright violation.

An Unclear Approach to Dynamic Injunctions

The remedy of dynamic injunctions was first devised by the Delhi High Court in UTV v. 1337x.to (‘UTV’) in order to tackle online piracy. It has been discussed in detail by Divij here. As the court in UTV explained, this remedy is to address the menace of ‘hydra headed’ websites that create multiple mirror or alternate links to access their content after they are blocked. In UTV and another batch of dynamic injunctions issued by the Delhi high court discussed here, the procedure prescribed was that the plaintiff had to file an Order I Rule 10 application to implead such mirror website along with an affidavit with evidence showing that it is merely a mirror of the injuncted website. Upon verifying that it is indeed merely a mirror to the injuncted website, the Joint Registrar could direct the ISPs to block these websites.

In the instant order, the court creates an unclear paradigm of dynamic injunctions. This lack of clarity stems primarily from the following directions of the court:

“This injunction shall also operate in respect of the mirror/redirect/alphanumeric websites, which are put in play by defendant nos. 1 to 37 to grant access to the websites referred to in paragraph 7.3 hereinabove.”

“The plaintiffs are given liberty to file an application under Order I Rule 10 of the CPC to array other rogue websites if the same are discovered after the issuance of the instant interim order. The purpose being that the Court, in these cases, needs to dynamically monitor such egregious illegality and, if necessary, pass interim orders to restrain similar rogue websites from illegally streaming the creative content in which the plaintiffs have a copyright.”

The set of directions similar to the first direction reproduced above seems to suggest that the order with respect to blocking of mirror websites only extends to such mirror links as already exist till the time the order was delivered. On a prima facie reading it does not seem to include mirror links that are generated subsequent to the order. This facet seems to be addressed using the second direction reproduced above. However, this element is considerably different from the earlier dynamic injunctions issued by the court. It does not explicitly prescribe the procedure that is supposed to be followed and merely grants a liberty to file an impleadment application. The court rather hints at examining each and every subsequent claim afresh by stating that it will pass interim orders “if necessary”. In such a scenario, the utility of dynamic injunctions falls apart as it will require a fresh determination, and would allow the injuncted websites to operate using newly created mirrors. It rather adds to the burden of the court and goes against the apprehensions of the court in UTV where it considered it to be desirable “that the Court is freed from constantly monitoring and adjudicating the issue of mirror/redirect/alphanumeric websites”.

On the other hand, if the direction is to be interpreted to follow the procedure prescribed in previous orders, granting the Joint Registrar the power to examine plaintiff’s application, it creates further problems. This is because as against previous dynamic injunctions where the power delegated to the Joint Registrar is confined merely to examining whether the new websites are mirror links of the injuncted website, the instant order goes a step further. It grants a blanket liberty to “array other rogue websites if the same are discovered after the issuance of the instant interim order”. This does not confine itself merely to mirror links of the injuncted websites. This makes the responsibility delegated to the Joint Registrar to be more than a mere administrative analysis to establish identity with injuncted websites. They are now required to assess injunction of fresh websites that ideally requires judicial application of mind. Moreover, these new websites are only sought to be restrained from “from illegally streaming the creative content in which the plaintiffs have a copyright” as against blocking them, creating a mismatch between two similarly placed websites.

Blocking Entire Websites Instead of Specific URLs

The problematic approach of Indian courts towards website blocking has been dealt with in several pieces on this blog. The specific challenge of blocking entire websites as against specific infringing URLs and how it curtails access to online content has, inter alia, been discussed here, here, and here. These questions were extensively addressed by the court in UTV which noted that a website blocking order can be passed by a court “only if it is satisfied that the same is ‘necessary’ and ‘proportionate’.” Furthermore, citing the decision in Myspace Inc. v. Super Cassettes Industries Ltd., it noted that the “proportionality principle requires that a ‘fair balance’ be struck between competing fundamental rights, i.e., between the right to intellectual property on the one hand, and the right to trade and freedom of expression on the other.” The court found this balance to lie in favour of website blocking in the specific context of what it termed as ‘rogue’ websites indulging in online piracy.

The instant order also refers the injuncted websites to fall within the meaning of a ‘rogue’ website. Notably, the UTV court had prescribed an indicative list of ten factors that should be considered to determine whether a website falls within the meaning of a ‘rogue’ website. These included, inter alia, primary purpose of the website, flagrancy of the infringement, traceability of the Registrant of the website, silence or inaction after receiving take down notices, and whether the website has been disabled in other jurisdictions. In the instant case, the court does not conduct any such analysis and works on the presumption that the defendant websites are indeed ‘rogue’ websites based on the plaintiff’s word. Furthermore, the order does not indicate whether any take down notice was indeed sent to the injuncted websites prior to approaching the courts. As Medianama points out, some of the injuncted websites have a DMCA takedown page for rights holders, and in case this has not been resorted to the claim to qualify these websites as ‘rogue’ diminishes. Moreover, if the dynamic injunction direction is interpreted in the manner suggested above giving extended authority to the Joint-Registrar, the Joint-Registrar is also tasked with this added responsibility of determining whether a website is ‘rogue’ or not which requires a complex analysis.

The above scenario becomes particularly problematic as the court has not even conducted a prima facie check on the exact content of Disney that is infringed by these websites. There does not appear any discussion of evidence showing that these allegedly rogue websites are indeed carrying Disney’s content and the extent of it. Without this assessment, it appears confusing as to how the court concluded that ‘irreparable damage’ would be caused to Disney if an interim relief is not granted. Despite the absence of such analysis, the court applies an extreme measure of blocking the entirety of these websites as against the specific URLs. Given the extreme nature of the remedy, it should be adopted with strict scrutiny in limited scenarios, as otherwise it hampers freedom of expression in the long run.

Conclusion

The above analysis shows that the instant order raises more questions than solutions. The lack of clarity has led to an interpretive dilemma as to how the court intends to implement its order. It would be ideal if the court clarifies its intended meaning in an amended order. It can only be hoped that its intention is not to grant unreasonably extensive and blanket authority to the Joint-Registrar on issues that require strict judicial scrutiny.

Topical Highlight

What’s in a Stream? The Confounding Case of IPRS’s Live-Streaming Tariffs

Image from Wikimedia Commons

Divij wrote about the confusion created by Indian Performing Rights Society’s newly released tariff scheme for live streaming of online events and live/disc-jockey performances. He first discusses the problems with the scope of the notice which defines ‘live performance’ as music by performers in person, and disc jockeys as playing of a sound recording. He then explains the lack of clarity as to whether digital streaming of musical works is to be considered a ‘performance’ and ‘communication to public’of the underlying works under Section 14(a)(iii) of the Copyright Act, or if it consists of a reproduction of underlying works, which would require a distinct set of permissions. He then raises concerns regarding transparency and accountability.The initial announcement which applied the tariffs from July 1, failed to fulfill the requirements of Section 33A of the Copyright Act and Section 56 of the Copyright Rules which when read together, direct copyright societies to provide at least a two-month notice before issuing any new tariffs. Finally, he notes that the Draft Copyright Rules released in June 2019 mandate consultation with user groups before imposition of any new tariffs by copyright societies, as well as other guidelines which do not appear to have been followed.

Thematic Highlight

Should India Invoke Section 157A in the Context of Covid-19?

In a guest post, Shirin Syed discussed the use of Article 73(b) of the TRIPS Agreement to suspend the enforcement of any intellectual property right that can potentially obstruct the procurement or local manufacturing of the products and devices necessary to protect their populations, in the Indian context. She explains how expert opinion favours pandemics being included in the scope of ‘emergencies in international relations’ under Article 73(b). Discussing the Russia-Ukraine case example where the WTO panel interpreted a narrow dictionary meaning of ‘emergency’ suggesting situations involving armed conflict, she emphasizes on the need to read the TRIPS Agreement in the light of Doha Declaration, in order to include public health emergencies within its ambit. Shirin points out that the security exception in Article 73(b) exception is incorporated in Section 157A of India’s Patents Act and defines security of India to include war as well as ‘other emergency in international relations’. According to her, while this section may not have envisioned a pandemic, the notion of security has expanded over a period of time and arguably includes issues which pose threat to life and properties of people, such as public health emergencies.

Other Posts

Functionality in Copyright Law: CJEU Decision in Brompton Bicycles

Image from here

Mathews discussed the judgment of the Court of Justice of the European Union (CJEU) in the Brompton Bicycle case, which deals with functionality in copyright. The issue before the Court was whether a ‘work’ (here, a foldable bicycle), whose shape is necessary to achieve a technical result, can be excluded from copyright protection under Articles 2 to 5 of the Directive 2001/29/EC. After considering several factors, CJEU concluded that copyright can subsist on a work whose shape is, at least in part, necessary to obtain a technical result, so long as the work is an original expression of the author’s creative choices which reflect his personality. Mathews points out that this reasoning aligns with the author’s rights system wherein the author-work relationship is given prime importance. Further, CJEU has cautioned that copyright cannot be extended when shape is dictated solely by its technical functions. Comparing this to Section 52(1)(w) of India’s Copyright Act, he opines that even in India, copyright protection can be denied only when the shape is purely functional, as copyright essentially seeks originality, not the complete absence of functional component.

What Kind of Trademark is ‘Make in India’? A Brief Academic Inquiry

Make in India logo

In another guest post, Dr. Sunanda Bharti analysed the nature of the ‘Make in India’ trademark, which is registered as a device trademark but appears to function in the manner of a certification mark. She explains how the Make in India initiative was launched in 2014 to fuel the growth of the manufacturing in the country by targeting 25 Indian sectors. She points out how the ‘Make in India’ logo featuring a lion silhouette, despite being a device mark registered under multiple classes, does not have goods or services provided in its name (as is required of certification marks under Section 70 of the Trade Marks Act). Instead, it is available upon approval to be placed on goods manufactured or services generated under those 25 Indian sectors, as an assurance that the product/service has contributed to the growth of Indian economy. Dr. Bharti then compares its functioning to that of the ISO certification mark registered by Bureau of Indian Standards. In conclusion, she observes that the latter is sui generis in its nature, which operates very much like a certification mark but not entirely.

Tattoos: The Tussle between Copyright and Publicity Rights

Image from here

I wrote about the complications arising from the conflict between a tattoo artist’s copyright over her tattoos and the tattoo bearer’s publicity rights. When the tattoo bearer is a celebrity, the tattoo becomes so closely associated with her image that it turns into indicia of her personality, entering the publicity right realm. Indian courts have recognized right to publicity to be similar to a common law right as well as a corollary to the right of privacy, and the Supreme Court has upheld it as a fundamental right in the Puttaswamy case. This creates conflicts between the tattoo bearer’s publicity right and the tattoo artist’s economic rights of reproduction, communication to public, issuance of copies, as well as her moral right to integrity. Applying the principles of Raj Rewal v. UoI, I argue that presently, the fundamental right status of the former will defeat any rights available to the tattoo artist under the Copyright Act. I then discuss solutions such as implied license doctrine and work-for-hire treatment, underscoring their limitations. In conclusion, I call for legislative clarity on the demarcation between all of these overlapping rights.

 Trade Secrets Protection and Incentives to Innovate: Scrutinizing Section 91 of The Personal Data Protection Bill, 2019

In another of our guest posts, Sahaja Burde argues that Section 91 of the Personal Data Protection Bill 2019 which seeks to provide the government access to anonymised personal data and non-personal data held by companies is at odds with trade secret protection. She illustrates the importance of trade secret protection by citing the example of the Coca-Cola company’s exit from the Indian market in 1977 upon being asked to share its formulae. She then explains that trade secrets in India are either protected through the common law action of breach of confidence, or in case of structured data sets, as ‘databases’ under Copyright Act. Sahaja notes the case of Eastern Book Company (EBC) v. DB Modak, where the court held that modicum of creativity is necessary for copyright protection. Relying on it, she argues that the process of anonymization of raw data achieved by way of technological inputs and technical skills, fulfills the requirement of ‘creativity’ as per the EBC standard. She concludes that Section 91 infringes the protection extended to these trade secrets under the Copyright Act.

Other Developments

Decisions from Indian Courts

Bombay HC grants interim injunction to Zee Entertainment against the unauthorized broadcast of its movies ‘Kartavya’ and ‘Jung’ [July 16, 2020]

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In Zee Entertainment Enterprises Ltd. v. Teleone Consumers Product & Ors., a single judge bench of the Bombay High Court passed a temporary injunction restraining Teleone Consumer Products Pvt. Ltd. and Creative Channel Advertising and Marketing Pvt. Ltd. from broadcasting the movies ‘Kartavya’ and ‘Jung’, the rights to which are owned by Zee. Zee had moved the High Court as these movies had been broadcasted by the defendants’ channels ‘Maha TV’ and ‘Manoranjan TV’ multiple times. The Court noted that Zee had unequivocal, exclusive and absolute rights to broadcast these movies on TV, and the defendants had broadcasted these movies without obtaining a license from Zee. Accepting Zee’s arguments, the Court declared this a prima facie infringement of Zee’s copyright and granted the injunction sought by it.

Delhi HC upholds previous interim order restraining Sparsh Industries from infringing VOLVO trademark [July 24, 2020]

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In Aktiebolaget Volvo v. Sparsh Industries, the proprietor owning the ‘VOLVO’ trademark had submitted before the Delhi High court that the defendant Sparsh Industries was using a ‘SPVOLVOIL’ trademark for its own trade in lubricants, which, if not identical, is deceptively similar to its mark. Sparsh Industries argued that it’s SPVOLVOIL trademark which contains the word ‘VOLVO’ is in fact one word and not two separate words, ‘Volvo’ and ‘Oil’, and is therefore not infringing. The Court rejected Sparsh Industries’ arguments and observed that a prima facie case is made out against it, and that continued use of the impugned trademark by the defendant would not only cause irreparable damage to the plaintiff but would impact public interest as well.

Delhi HC issues interim dynamic blocking order for websites streaming Disney’s cartoons [July 27, 2020]

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In Disney Enterprises v. Kimcartoon & Ors., the Delhi High Court issued an interim John Doe order directing internet service providers to block a total of 118 rogue websites including KissCartoon, KissAnime, and GoGoAnime which have been broadcasting cartoon programmes copyrighted by Disney. Although the Department of Telecommunications and the Ministry of Electronics & Information Technology had not been impleaded in the case, the Court termed it a procedural error and ordered the Department and the Ministry to ensure that these websites are blocked from streaming Disney’s content illegally in order to prevent irreparable damage being caused to Disney’s commercial and statutory interest.

Delhi HC orders website to refrain from using URL deceptively similar to GeM Portal [27 July, 2020]

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Government E Marketplace v. Unilex Consultants & Ors. concerns the use of the URL ‘gem.registration.html’ by the defendant. The defendant in its website indicates that they are offering registration on the Government E Marketplace, that is, the GeM portal against receipt of fee. However, once the fee is collected, no further steps are taken for obtaining registration on the plaintiff’s GeM portal. The Delhi High Court directed the Defendant to not use the said extension URL or any other deceptively similar extension URL as a part of its domain name and to not project to the public at large that it is, in any way, associated or connected with the Government E Marketplace.

Bombay HC grants interim injunction against Godfrey Philips’ infringement of ITC’s FLAKE trademark and copyright [July 29, 2020]

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The Bombay High Court granted ITC Ltd. an interim injunction against rival cigarette manufacturer Godfrey Philips restraining the latter from infringing ITC’s trademark in its ‘FLAKE REFINED TASE’ packs as well as from using imitations of the artworks appearing on the its tobacco products’ packs which were copyrighted. ITC had pleaded that Godrey Philips had copied the gold and red colour scheme and patterns appearing for its own SELECT pack. Justice Colabawalla accepted ITC’s arguments, noting that ITC’s products had enjoyed considerable reputation in the markets of West Bengal and North-East India since 1994. The Court termed this a prima facie case of infringement and issued a pro-tem order against Godfrey Philips.

Delhi HC grants ad-interim injunction in Budweiser commercial disparagement case [July 30, 2020]

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The Delhi High Court awarded an ad-interim injunction to the proprietor of Budweiser who had approached the Court, accusing the defendants of ta rnishing its reputation by making social media posts that circulated fake stories of Anhueser’s employees urinating in the Budweiser beer sold to its customers. Anhueser successfully established before the court that the reputation associated with Budweiser beer has been the driving force behind its success across the world and the defendants’ defamatory statements have done significant harm to the same. Accepting these arguments, the court held the defendants guilty of commercial disparagement and restrained them from reproducing, broadcasting, communicating to the public, screening, publishing and distributing the impugned video on various social media.

 Other News from around the Country

• IPAB has stayed the order revoking Novartis’s patent for Ceritinib, on grounds that the Controller did not take into account the evidence filed by Novartis in passing the order. The Controller had failed to carry out Delhi HC’s directions to hear Novartis on the post grant opposition on all the documents placed on record till 11/07/2019.
• IPAB has allowed Ferid Allani’s patent application for an invention that helps in accessing information sources, which had previously been denied protection because it was based on a computer program.
• IPAB has allowed the registration of Sparx Group Ltd.’s ‘SPARX’ trademark under Class 36 in respect of ‘Mutual Funds, Investment advisory and asset and fund management services.’
• IPAB has overruled the Registrar of Trademarks’s decision to allow the registration of Khind-Mistral Industries’ ‘KHIND’ trademark under Class 09.
• The IPO has announced that it will again start accepting applications for the Patent Prosecution Highway pilot program from 10th August 2020 onwards. Requests are to be made through Form 5-1 under Chapter 5 of the PPH Guidelines for the 9 slots that remain available.
• The IPO has notified that the National Agriculturally Important Microbial Culture Collection (NAIMCC) has acquired the status of International Depositary Authority under Article 7(2)(b) of the Budapest Treaty.
• US-based tech firm InterDigital has filed two patent infringement cases against Xiaomi in the Delhi High Court, related to cell technology and video coding. It seeks compensatory and punitive damages as well as an injunction against Xiaomi, but has expressed willingness to settle for a licensing agreement on FRAND terms.

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• Saffron grown in Kashmir Valley has been registered as a Geographical Indication.
• Patanjali Ayurveda has submitted a plea before the Madras High Court to vacate an ex-parte interim injunction restraining the company from marketing tablets under ‘Coronil’ trademark.
• Khadi and Village Industries Commission (KVIC) has filed a complaint against unauthorised sale of face masks branded as ‘Khadi,’ with the prime minister’s photograph on packets, as well as logos of ‘Make in India’ and ‘Vocal for Local’ initiatives .
• Specialists at IIT Kharagpur have developed the cheapest COVID-19 testing kit in India so far costing INR 400 and filed for a patent on the same.
• A piece in Time of India records that public health experts have suggested adoption of emergency rules and suspension of patents on Covid-19 drugs in India to ensure accessibility & affordability to the huge population in the country.
• The Institute of Chartered Accountants of India has approached the Madras High Court to stop the Institute of Cost Accountants of India from using its registered trademark “ICAI” as an acronym.
• Chile has applied for a Geographical Indication tag in India for its Pisco, which is a grape-made brandy from both Chile and Peru. Having lost the fight to Peru for a GI tag on ‘Pisco’, as the latter proved that the brandy is named after the South-Eastern Peruvian city of Pisco, Chile has now sought a separate registration for ‘Chilean Pisco.’

News from around the World

• The General Court of the European Union has recognised Louis Vuitton’s ‘DamireAzur’ chequerboard pattern, made up of brown and beige squares to have acquired distinctiveness.
• Los Angeles-based company Triller has sued TikTok for infringing its patent stitching together multiple music videos with a single audio track.

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• European Council has authorized the signature of the EU-China Agreement on Geographical Indications (GIs) which ensures that 100 EU agri-food GIs and 100 Chinese agri-food GIs will get mutual strong protection in each other’s internal markets.
• Moderna has stated that the USPTO’s rejection of its arguments to invalidate a US patent owned by Arbutus Biopharma will not affect its efforts to develop COVID-19 vaccines.
• German Federal Supreme Court recognised Ritter Sport’s trademark over its square-shaped chocolate, holding that the shape is now an indication of both its origin and its quality to customers.
• A researcher at Georgia Tech has been served multiple copyright notices over his algorithm that uses artificial intelligence to create new lyrics that match the rhythm and syllables of existing songs.

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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In a surprising ruling by the Federal Supreme Court of Germany (BGH) recently, well known German chocolate brand, Ritter Sport (“Ritter”) won exclusive rights to square packaging for its chocolates. The Court rejected the appeal by competitor Milka, a Swiss chocolate company that had been trying for almost a decade to challenge Ritter’s trademark protection for shape.

Decision and Reasoning

The Judges held that the square shape of the bar was not functional as it did not add any essential value that could induce consumers to buy it over products of competitors. It was held to be distinctive inasmuch as consumers associated the square shape of the bar with Ritter and expected it to conform to the quality of chocolates manufactured by the company. Ritter had also advertised its chocolates as “Square. Handy. Good” for years.

Analysis

There are two broad things to prove for registration, firstly, the distinctiveness of the mark in question and secondly, that it is not functional. When a mark acquires distinctiveness because of being widely known, arguably the law’s role is not (and should not be) to protect the owner’s monopoly to internalise all positive externalities arising out of its use. If the use entails only obtaining a benefit from another’s investment, i.e. expenditure on promotions of the mark, without any detriment to the producer, consumer or society, then prohibiting the use leads to avoidable social costs. Thus, the law must also check whether the owner is seeking to monopolise a mark that is valuable because of its inherent functionality and could serve as an attractive selling feature for other producers.

These are two independent requirements and conflating them to hold that given the acquired distinctiveness of the mark and consumers’ brand association with it, their decisions are not influenced by its shape but by the shape’s association with Ritter, is faulty. This fails to acknowledge that the association of an attractive selling feature (for instance the shape of chocolates here) with a company doesn’t discount the attractiveness of the selling feature itself. Existing trademark protection for Ritter prohibited competitors from selling chocolates in square packaging, allowing the producer to monopolise the shape mark. However, it is still unlikely that consumers will be confused if a competitor like Milka were to package and brand its own chocolates in square shape with its own logo. If any company tries to pass off its products as those of Ritter, it continues to have the common law remedy for passing off.

For granting registration and exclusivity over a shape as ordinary and common as a square for packaging of consumables like chocolates, the standard to be followed should not just be that consumers’ decisions to buy a particular product are largely influenced by the functionality of the mark but that the mark adds some value to the product in question.

German and Indian Trade Mark Statutes

As per section 9(3) of the Indian Trade Marks Act, 1999, shape marks are prohibited from registration if they consist exclusively of the shape which

(a) results from the nature of the goods themselves; or

(b) is necessary to obtain a technical result; or

(c) gives substantial value to the goods.

There is a disjunctive requirement here of the shape mark obtaining a technical result OR adding substantial value to a product, which would prohibit its registration. The determination will not pivot exclusively around the rationale for the BGH’s decision in this case- consumers buy the chocolate not because of any essential value added by the shape but because of the shape’s association with the brand, making the mark registrable. The fact that the shape obtains a technical result, can fit into a sports jacket or is more convenient to carry, suffices to preclude registration. Ritter’s square chocolate bar dates back to 1932. As per company legend, Clara Ritter came up with the idea and is recorded to have said, “Let’s make a chocolate bar that fits in everyone’s jacket pocket without breaking and weighs the same as a normal long bar.”  This clearly demonstrates the function and technical result achieved due to the shape. Further, as per the European Court of Justice’s ruling in Koninklijke Philips Electronics v. Remington, registration of shape marks achieving a technical result could not be justified by the existence of “other shapes capable of achieving the same technical performance.” Thus, other shapes that might also be convenient to carry in pockets than rectangular chocolate bars cannot justify protection of square packaging for chocolates.

As I have previously explained here, the functionality doctrine guards against the anti-competitive effects of granting a monopoly over a useful product feature to a single producer. This is because the protection of designs and functionalities for a limited time lies within the ambit of patent and not trademark law (which affords perpetual protection). Interestingly, even section 3 of the German Trademark Act, 1995, precludes shape marks from protection if the shape is, a) due to the nature of goods themselves, b) necessary to receive a technical effect or c) gives the goods an essential value. These requirements are also disjunctive, except that demonstrating the provision of ‘essential value’ due to a shape may arguably be a higher burden than demonstrating ‘substantial value’, as under the Indian statute.

Conclusion: Objective of Trademark Monopolies

The justification for allowing trademark monopolies is that trademarks reduce consumers’ search costs so that they can rely on their prior experiences with a brand, which thereby incentivises brands to maintain high quality for their goods and services.

The goal of IP is to grant “as little protection as possible, consistent with encouraging innovation.” Of late, courts and commentators across the globe are increasingly treating IP not as an exception to the norm of free competition, but as a good by itself.

The rising property rhetoric in IP discourse, ignores that physical property is depletable, rivalrous (consumption by one prevents simultaneous consumption by others) and excludable by its very nature, unlike IP. As the Ritter’s case illustrates, there is no consumer or societal benefit that accrues from trademarking square packaging for chocolates, whereas it does limit competition. Milka can use square packaging without increasing consumers’ search costs or causing any confusion between its chocolates and those of Ritter. Trademark protection in these cases stems from regarding the mark, i.e. square shaped packaging, as property in itself. Once, Ritter became the first brand to market and use square packaging for chocolates, it is used to justify property-like protection for Ritter’s shape mark to prevent ‘free riding’. This approach by Courts regards any use of a trademark by another party as unjust. The underlying rationale is not that the mark’s usage causes a detrimental effect on the sales of the owner, consumers or society, but that the idea of using square shaped packaging for chocolates occurred to Ritter first and should not benefit another brand. The benefit is thought of as taking something that did not belong to the competitor. This approach of trade mark maximalism disadvantages free competition and the choice available to consumers. For instance, Milka and other competitors are deprived of packaging their chocolates in square shapes and consumers are deprived of being able to choose from among different brands selling square shaped chocolates.

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We’re pleased to bring to you a guest post by our former blogger Rajiv Choudhry. Rajiv is a practicing advocate based in New Delhi. He specialises in IP law, with a focus on high – technology and patent law and advises/represents clients on SEP/FRAND and other issues related or unrelated to those discussed in the post. He’s also a founder member of the Fair Standards Alliance, a not-for-profit body that advocates fairness in patent licensing. The views expressed in the post are personal.

His previous posts on the blog can be viewed here and here.

Delhi HC Becomes the Go to Venue for Adjudicating SEP Disputes in India

A couple of days ago, InterDigital filed two patent infringement law suits against Xiaomi at the Delhi High Court (DHC) for infringement of its standard essential patents (SEPs).

The matters are CS(Comm) 295/2020 and 296/2020 for infringement of its patents related to cellular and H.265/HEVC – (video compression) technologies. These are IN262910; IN295912 ; IN298719;  IN313036; & IN320182  for the cellular patents and IN242248 / IN299448 & IN308108 for the video compression patents.

InterDigital is seeking injunctive relief apart from compensatory / punitive damages for infringement of its asserted patents, unless Xiaomi elects to take a license on terms determined to be FRAND by the court.

The current InterDigital suit is one of the latest ones to be filed before the DHC – last year, Nokia had filed law suits against Lenovo and a company called Fractus had filed law suits against Vivo Mobile and Xiaomi for infringement of their SEPs.

In my view, a lot of patent owners would start to use DHC as the go to forum to litigate their SEPs given Ericsson’s success in the Micromax, Lava, Intex, iBall, Gionee matters. This is especially true when companies cannot litigate in China. Or for that matter bring any action. InterDigital had at one point (in 2013) refused to meet Chinese competition authorities fearing that its officials would be arrested. See the Reuters coverage on this issue here.

Given this kind of reception to patent claims in China, it is anybody’s guess why companies prefer to bring actions against Chinese companies outside China.  As one can see, all the Defendants are Chinese entities, and are being sued here in the DHC. The current political environment also is a changed circumstance from earlier times.  For example, in an earlier case, the argument that royalty for China could be seen in China (obtained legally in China) would be okay, but now Indian courts will be asked about global rates / setting a FRAND portfolio rates.

One thing that is different from the earlier SEP litigation that we have covered on this blog, presumably because defendants were Indian entities, is that now patent law-suits are filed in multiple jurisdictions against the same defendants using jurisdiction specific patents.  For example, Fractus had filed a law suit against Xiaomi in the Netherlands early this year but failed to get any kind of expected traction it had hoped (see Juve Patent coverage here).  Similarly, Sisvel (an entity to whom Nokia had sold some of its patents) had also filed a law suit against Xiaomi mid-last year (see Juve Patent coverage here).

Readers know my view against both portfolio licenses and global licenses: a portfolio license / global FRAND rate license hides the inefficiencies inherent. For example, why the assumption that all patents are equal in scope, etc. Then there is the issue about license on the end product or only the component.

For H.264/HEVC patents, what is the relationship with say Bluetooth, or RAM or marketing costs, of the mobile phone? Similarly, for 2G/3G/4G – what is the relationship with RAM / screen / marketing costs etc. It is these questions that will have to be answered by the Court while deciding the issues and license rate demanded.

It is worth repeating the fact that any SEP litigation is necessarily an exercise in the determination of public rights.  It is public interest that suffers when one has to pay extortionary costs to a SEP owner. These costs are not just higher royalties, but payment for expired patents that are bundled into a patent license, irrelevant patents, and non-essential patents.  This is because in SEP litigation, it is not general competition in the market. Rather, it is competition for the market. The more entrenched a standard is, the more power a SEP owner has. Those that give examples of multiple businesses operating in the same market (where SEPs are implicated) mistake the presence of multiple players as a healthy sign. However, they are not comparing the right market and make multiple logical fallacies: mistake cause for effect, confuse between apples and oranges, etc. Just because there are 10 handset brands does not mean it is a healthy market. If one looks closely, all 10 brands are based on the same standard and all 10 have to approach the SEP owner for a license. There is no competition here as the market is already locked in into a particular standard. Just think, what other cellular standard are any of your phonebook contacts using today? Hint: They all use some form of LTE (Long Term Evolution)/ 4G technology as it is popularly known. You don’t even buy a phone because it is LTE compliant: you buy it because of other reasons, such as price etc.

Other jurisdictions

A few other major cases involving SEPs that either have been settled or decision is pending are as follows:

In April this year – Unwired Planet (a company owned by PanOptis – that also purchased patents from Ericsson) settled its patent litigation with Huawei in Germany and the United States. The UK action before the UK Supreme Court is still pending (see UK Supreme Court site). The impact the judgement has remains to be seen as even after Brexit, the UK remains subject to EU law and remains part of the EU customs union during the transition, but is no longer part of the EU’s political bodies or institutions.

It is now apparent that the CJEU case of Huawei v. ZTE, C-170/13, did not give much clarity to SEP disputes and as a result there are differing opinions among member states even within the EU.  The example is the differing opinions by UK, EU and Dutch courts. Very briefly, the Huawei v. ZTE had ruled that parties must negotiate in good faith, the use of an injunction against a willing licensee was an abuse of dominant position under Article 102 of the TFEU. There are strict obligations that a licensor that has to adhere to including offering a FRAND rate – to the would be licensee, before it can ask for an injunction.

The Hauwei v. ZTE decision leaves out the determination of what is FRAND etc. and which is why the divergence of opinions in almost polar opposites by different courts.

We’re pleased to bring to you a guest post by Aatmik Jain, examining how Indian copyright law can protect presentations of gastronomic creations. Aatmik is a 2nd year student at the West Bengal National University of Juridical Sciences (NUJS), Kolkata.

Does Copyright Law Protect Presentation of Gastronomic Creations?

Aatmik Jain

Introduction

As the saying goes in the culinary world, food is first savoured with the eyes, then with the nose, and only lastly, with the mouth. Today, chefs are putting in great efforts in enhancing this visual experience – from Momin Faqi’s ‘Herb Crusted Scotch Eggs Baby Greens’ to ‘Poppadum’ by Saurabh Udinia. The need for uniqueness has come as a consequence of a competitive consumer centric market. Food blogging has become popular and even ordinary guests nowadays, first relish the visual delight of the dish by clicking a quick picture for their social media accounts.

Resultantly, chefs undergo rigorous training and put in an unprecedented amount of labour and skill to perfect this art. The creative works resulting from this, need legal protection. This post will examine how Indian copyright law can protect presentations of gastronomic creations.

 Scotch Eggs Baby Green                                                               Poppadum

Food-plating can be saved from imitation if allowed to be copyrighted. To enjoy copyright, three requirements need to be fulfilled; it should (1) be ‘original’ (2) fall within statutory definition of ‘work’, and (3) be fixed in a tangible form. All three come with their own issues, which would be dealt individually.                                          

1. Requirement of originality

The Copyright Act, 1957 (‘the Act’), does not define the standard of originality. However, after EBC v. D.B. Modak, originality standard in India is situated between the two extremes of ‘Sweat & Bro’ and the ‘Modicum of Creativity’ tests. The understanding is that a work is original if the author has put his/her mind, skill and labour in the work with a minimum degree of creativity. Further, if the work is derived from data contained in pre-existing works, then by ‘selection, co- ordination or arrangement of such data, the new work should be somewhat different from the pre-existing ones’.

The above standard would not be the ideal standard to follow in the current case. There is a strong tradition in the culinary industry of drawing inspiration from each other’s work in the same cuisine, and many works are derivative. Then there are certain cuisines which are innately presented in a particular way. By current standards, a chef who makes only a minimal change to create a ‘somewhat different’ presentation of such cuisine than the existing ones, would easily satisfy the criteria for originality. However, this would allow creation of monopoly in that cuisine and cause its appropriation.

For example, all Indian Thalis, are plated with multiple bowls arranged at the periphery of a large plate, and all Japanese Ramen Noodle Bowls, are dressed fairly similarly. Only changing the dishes inside the bowls for a Thali or changing the top-dressing for a bowl of Ramen, although minimally creative, is still not sufficiently original. In such cases, the winner can simply not be the one who merely fixes his/her idea somewhat differently, but should be one who also has a fair degree of ingenuity attached to the manner of fixation.

Importing the American Scène à faire doctrine (usually followed for literary or dramatic works) would help here. Per this doctrine, certain scenes or themes essential to a genre are not provided copyright as they are customary. For e.g. it is common for horror films to have scenes like blood stained mirrors, dark rooms, unkempt attic or ghosts under the bed. Something moves out of the Scène à faire limitation when the expression is novel and separate from the clichés of that genre. An example could be having a clown (‘Pennywise’), as the ghost-villain, in the horror movie IT. Analogously, simply putting up an Indian Thali would not deserve protection but the Special United India Thali at Delhi’s Ardor 2.1 Restaurant may fall outside of this doctrine’s limitation.

Normal Thali                                                                    Ardor 2.1’s Special United India Thali

2. Requirement of being a ‘work’

The second requirement is for the original creation to be a ‘work’ as defined under section 13 of the Act. One such category of work is artistic work, as defined under section 2(c). Food presentations can find protection under this category as works of ‘artistic craftsmanship’. They are always seen as artwork in the industry. Plating is considered as the ability to create a ‘picture’ on a plate, and chefs do this with great perfection. Exactness in colours, size and textures is emphasised. Distinct cutlery is used to offer the right appeal. The outcome is certainly a work of artistic craftsmanship.

3. Requirement of fixation

The final requirement of ‘fixation’ varies for different types of works. Works which are dramatic, cinematographic or are sound recordings, require statutory fixation, Interestingly, musical works required fixation in writing or graphic form until an amendment in 1994. The amendment was inspired by Indian Performing Right Society v. Eastern India Motion Pictures, which stated that mandatory fixation for musical works disentitled the singer and only protected rights of the composer. Thus, Indian law has had varied trajectories adopted with respect to fixation.

Works such as photographs, sculptures and those of architecture, are by their very nature fixed. Consequently, there has not been significant debate over fixation of artistic works. While the Act is silent on this, Copyright Manual on Artistic Works in its foreword, understands a copyright to arise when a work is created and ‘fixed in a tangible form’. At the same time, the law holds no proper definition of fixation in a ‘tangible form’. In the United States, the statute expressly states that work is ‘fixed in a tangible form’ when it is sufficiently permanent or stable, to be perceived for more than a transitory duration. Borrowing this requirement of permanence into our law, would deny copyright to food presentations. Since, on consumption, the dish’s tangible form gets destroyed, fixation would not be considered to have happened with a sufficient degree of permanence.

One might ask, “why not simply click a photograph of the plating? A photograph is permanent, and the author can reproduce 3D versions of his/her 2D work as per section 14(c)?”. Here is a simple catch. Each photographer holds copyright over their individually clicked picture and thus, both the chef behind the dish, and the guest eating it, can later make their own 3D reproductions of it. A guest may even grant license to another chef for such reproduction of his/her work. Clearly, proxy methods such as photographing defeat the purpose sought and it would be better for the copyright to exist in the original presentation itself.

Instead of focusing on tangible fixation in this scenario, we must delve deeper and go into the very purpose behind having the fixation requirement. In India, fixation exists to meet the fundamental principle that ‘a copyright should protect the expression and not the idea’. However, several copyright regimes across the world meet this principle without requiring fixation. The next section would explain their approach, and how adopting it would be beneficial for new kinds of works such as food presentations.

4. Doing away with tangible fixation

Most civil law countries meet the idea-expression dichotomy without the fixation requirement by giving literal meaning to the term ‘expression’. They understand that ‘expression’ means ‘to be perceivable’ and not necessarily to exist ‘in a material form’. Without the need to have fixation in a material form, the issue of transitory duration of work does not arise. Thus, courts have been liberal in recognizing copyright even over things such as perfume scents­­. Scents have been agreed to be sufficiently perceivable, even if for a brief period of time (before diluting in the surroundings). Thus, they are understood to be an expression and not a mere idea. The Dutch court which gave the above decision stated that most countries do not offer protection to visually and aurally conceivable works because the statute drafters never contemplated such demands could arise in future. It is believed that restricting the scope of copyright to materially fixed objects which are non-transitory in nature would prevent multiple works from protection such as sand sculptures, hairstyles or makeup styles.

In Roberts v. Chanel, the French Court opined that the purpose for fixation is merely to serve as evidence in an infringement suit and is not a precondition for copyright to exist. Copyright in a work starts existing the moment it is expressed in a perceivable form. Therefore, if a speech is made, the speaker will have the copyright over it. Even if later a third party writes this speech and publishes it for the first time, it would still amount to infringement of the speaker’s copyright.

Going by this approach, food plating could be considered an expression of a chef’s idea by virtue of being sufficiently perceivable. Even though it may perish eventually, the existence of the work till it was consumed, would not be ignored.

Conclusion

Copyright law is aimed at incentivising innovation and creativity and letting authors profit from such works. Presentation of gastronomic creations meet all requirements under Indian copyright law except fixation. India benefits from not having fixation as a statutory requirement for artistic works, but something that has developed through practice. A revised interpretation broadly on the lines of Civil law nations could be considered to meet modern requirements of upcoming industries.

Please click here to view our previous food and IP related posts.

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Budweiser recently filed a suit before the Delhi High Court against the defendants on grounds such as infringement of its trademark, unfair competition and commercial disparagement, and dilution and tarnishment of its goodwill and reputation. In an ex parte proceeding, the court held in Budweiser’s favour finding a prima facie ‘infringement of plaintiff’s registered mark ‘Budweiser’ and also amounting to commercial disparagement of the plaintiff’s products’. In this piece, I dissect this interim order and argue that it is completely untenable in law.

Incorrect Factual Reporting

Originally, a post was published on a website named ‘Foolish Humour’ which mentioned that a Budweiser employee with the alias Walter Powell had been pissing in Budweiser beer tanks for 12 years. Foolish Humour later also put up a post stating that Budweiser had admitted that ‘several employees have been pissing into their beer tanks for years’. These, however, were fictional reports as can clearly be seen even from the description of the website at the bottom of the page which reads as follows: “This website is a humorous page whose sole purpose is entertainment. The content of Foolish Humor is fiction and does not correspond to reality.” However, certain media channels such as Hans India mistook it to be credible news and released a report based on this story. This fictitious news also went viral on social media, drawing several memes against Budweiser and also trending the #Budweiser. A detailed fact check can be accessed here.

The defendants in the instant case are also a satire website with the disclaimer at the bottom of their webpage reading: “The Fauxy is a Satire Web Portal. The content of this website is a work of fiction. Readers are advised not to confuse the articles of The Fauxy as genuine and true.” In light of the viral news concerning a Budweiser employee pissing in the beer tanks, the defendants came up with a video to ascertain its veracity. The video shows a person tasting Budweiser and urine sample and concludes that the news of Budweiser containing urine is fake as Budweiser tasted worse than the urine.

One of the biggest errors in the order appears to stem from an incorrect understanding of this fact scenario. The court has noted the plaintiff’s submissions that the defendants have been perpetrating “fake news stating that the employees of the plaintiff have been urinating in the beer sold to its customers”. Moreover, the plaintiff submitted that the video was responsible for “the publication of several hundred defamatory posts and videos across social media”, “caused “#Budweiser” to trend as the no. 1 hashtag on twitter in India as on July 02, 2020”, and “caused even legitimate news publications such as The Hans India to report the fictitious news as being a legitimate fact”. Moreover, the plaintiff also pointed to a tweet by NDTV referring to a “news item ‘Budweiser admits several employees have been pissing into their beer tanks for years’”. Hence, it is clear that all outcomes of the original article by Foolish Humour have been wrongly attributed to the defendants in the instant case. The court failed to take note of this incorrect fact situation. It even failed to note that while the plaintiff highlights #Budweiser to trend on July 2, the defendants’ video was released only on July 8.

Commercial Disparagement

As has been explained by the Bombay High Court in Hindustan Unilever Limited v. Gujarat Co-operative Milk Marketing Federation, the claim on commercial disparagement requires that the statement concerning a plaintiff’s goods must (a) be false; (b) be made with malice; and (c) cause special damage to the plaintiff. In the instant case, there is no doubt about the first factor since it is an admitted position that the statements in the video were fictitious. The concern then turns to the other two factors.

There appears nothing from the facts mentioned in the order that indicates any element of malice on the part of the defendants to harm the plaintiff. As is the case with other videos and posts released by The Fauxy, this video was also purely a satire/ parody for entertainment purposes without any intended targeting of the plaintiff. This is quite apparent even by watching the video with headlines carrying news such as a patient preferring Rajma therapy over plasma therapy, and plot themes such as stealing the urine sample from a nearby pathology lab. As was noted by the Delhi High Court in Ashutosh Dubey v. Netflix (‘Ashutosh Dubey’), satire “ridicules its subject through the use of techniques like as exaggeration”, and freedom to engage in such commenting, ridiculing, or parodying of even registered trademarks was considered to be persuasive in Tata Sons Limited v. Greenpeace International. Unfortunately, despite “having watched the video” the court did not reach this conclusion.

As far as the final element is concerned, it might be argued that since the video compares Budweiser to taste worse than urine, it might cause special damage to the plaintiff. Although the plaintiff’s case on this point was primarily based on the incorrect fact situation examined above, and hence stands refuted, the plaintiff raises some objections against the video as well. This includes the video garnering over 5900 views and the absence of disclaimer concerning ‘fake news’ on the defendants’ Youtube page. Incidentally, apart from the Youtube link, the other three links mentioned in the order clearly indicate the fictitious nature of the news and its nature as a meme. The reactions on these posts have largely been with laugh emoticons and the videos being considered hilarious. Even with the Youtube video, all the comments have similar responses appreciating the comic work. Similar observation was noted by the court in Ashutosh Dubey wherein it noted that statements of comedians are not taken “as statements of truth but … with a pinch of salt with the understanding that it is an exaggeration”. Hence, as against the Parachute saga, there is no damage caused to Budweiser due to the defendant’s video and thus the disparagement claim does not stand. Interestingly, those actually responsible for the propagation of the fake news, as per the plaintiff’s averments, such as Hans India or NDTV that passed a fictional piece as ‘news’ have not been made parties by the plaintiff.

Trademark Infringement

As per Section 29 of the Trademarks Act, 1999, for a claim for trademark infringement it is required that the defendant uses the mark. This is applicable even for the specific claim of trademark dilution or tarnishment as is captured in Section 29(4). The ‘use’ of the mark is further defined in Section 29(6) to constitute when a person does the following:

“(a) affixes it to goods or the packaging thereof;

(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;

(c) imports or exports goods under the mark; or

(d) uses the registered trade mark on business papers or in advertising”

As has been discussed previously on SpicyIP here, a mere reference to a mark would not qualify as ‘use’. This is the position in the instant case as well since the defendants’ video does not fall within any of these categories. Hence, the infringement or dilution claims of the plaintiff do not stand. The court, however, holds prima facie trademark infringement without indicating any rationale for the same.

Incomprehensible Directions

While the court purported to hold in favour of Budweiser, the direction passed by it is incomprehensible to have any substantive effect. It essentially restrained the defendants “from reproducing, broadcasting, communicating to the public, screening, publishing and distributing the impugned video or any other video on any media or platform and promoting the impugned video on various social media”. This seems to suggest that court has only prohibited prospective promotion, publication, or distribution of the uploaded video/ social media posts, without explicitly requiring the uploaded content to be removed. This appears to be the case given that all the concerned URLs are accessible even presently. It, thus, implicitly ignored Budweiser’s prayer to take down these URLs which, although a correct approach in my opinion, goes against the blanket agreement of the court with Budweiser’s claims.

Conclusion

This order reflects an occasion where the court seems to have taken one party at its word regarding the factual matrix, perhaps simply because it is a well established party. Moreover, it also points out to the general lack of engagement of courts with the substantive law while granting interim reliefs. A bare minimum perusal of the applicable provisions indicates that Budweiser’s claims do not have the support of law. If such reliefs are granted, that too in ex parte proceedings, it creates a substantial hindrance in exercise of freedom of expression. As Prashant has discussed in relation to the Parachute orders (here and here), it is important to shield individual opinions from powerful entities, else it would jeopardise the value of the fundamental freedoms granted by the constitution.

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The Hon’ble Madras High Court has passed a detailed order on merits injuncting Patanjali from using the trademark ‘Coronil’. The order I daresay is one of the most elaborate and lucid orders in recent times from the High Court touching on the interpretation of the Trade Marks Act, especially Section 29(4). The breadth of resources relied upon, several of which appear to be the Judge’s own efforts definitely makes this judgment worthy of a patient read.  This remarkable judgment is also vindication of that elaborate hearings and orders can happen on video conferencing during these turbulent times. A game changer on many levels! Kudos to the counsels and the judge for making this happen.

Factual Background

The plaintiff is the registered proprietor of the marks “CORONIL-92 B” and “CORONIL-213 SPL” under Class 1 for industrial chemicals. The defendant launched the much vaunted CORONIL for curing coronavirus, but in the face of a battery of complaints including from the AYUSH Ministry, restated the same to be an immunity booster against coronavirus. The plaintiff sued relying on Section 29(4), stating that it had reputation in India and abroad. It also took an interesting argument that the use of the mark by the defendant would dilute the plaintiff’s reputation due to the perceived inefficacy of the product and the accompanying negative press. The defense was predictably on the grounds of the products being wholly different and there being no possibility of confusion. The Court has given numerous findings, which are quite frankly best read as extracts:

1. Findings on honesty of defendant’s adoption

“120. At any rate, at this stage of proceeding, the plaintiff will have to establish only a prima facie case. Whether the product of the defendants actually cures Coronavirus or does not cure Coronavirus is a matter of evidence and beyond the purview of this Court. But even if there is a slight doubt in the minds of the defendants themselves that their product will not cure Coronavirus, then I hold that the defendants have not shown due cause to still insist upon using the word ‘Coronil’.

Obviously it does not cure Coronavirus. Permission has not been granted to the defendants to market the product and hold out that it cures Coronavirus. When it does not cure Coronavirus, then the defendants could have used any name to signify their product as an immunity booster and market the same to the general public rather than play upon the fear and panic among the public by introducing a product ostensibly to cure Coronavirus, when as a fact, it does not and later stating it is an immunity booster. The stand of the defendants does not augur well with their statement that they have a due cause. They do not have a due cause. It must be kept in mind, that there is no cure for Coronavirus anywhere in the world as on date. People are dying. In these tragic times, the defendants seek to make money, money, money. They seek to exploit the fear among the people by projecting that they could cure Coronavirus. There is no cause much less due cause, and much less just cause to permit the defendants from using the word ‘Coronil’…

123. When this is the factual position and it had been made clear that the Coronil Tablet projected by the defendants is not a cure for Coronavirus. I am not able to find any link between the proposed tablet and the Coronavirus infection as such. Consequently, use of the very name ‘Coronil’ by the defendants is without any due cause and as a matter of fact, it is taking unfair advantage of the term ‘Coronil’ which is a registered trademark of the plaintiff. Taking such unfair advantage is specifically prohibited under Section 29(4)(c) of the Trade Marks Act, 1999.

Usage of the word ‘Coronil’ and usage of the common pictorial image of Coronavirus are to put it very mildly, misleading and cannot be permitted and is therefore prohibited.” (emphasis added)

2. Findings on Sec 29(4)

“103. This distinction has been kept in mind by the Parliament, while examining Section 29(4)(c) of the Trade Marks Act, 1999. Section 29 of the Trade Marks Act, 1999, gives protection against infringement of registered trademarks. The various circumstances are given. Section 29(1) of the Trade Marks Act, 1999, is when an identical mark is used for the class of goods, which are similar to the same class for which the registration has been effected. Under Section 29(4) of the Trade Marks Act, 1999, protection is granted even when the offending mark is used for a different class of goods. The only pre-condition is that the plaintiff’s mark should have a “reputation in India”.

In the instant case, the words specifically used are “reputation in India”. It means only “reputation in India” and does not mean “well known mark”…

106. It is thus seen that to maintain the sanctity of judicial discipline, the Court cannot by any stretch of imagination impute words not in the provision or in the statute. To reiterate the words are “reputation in India”, nothing more, nothing less.

We do not have a million of such heavy industries. If those few industries situated across the length and breadth of the country have come to know about the product of the plaintiff, then a reasonable conclusion can be drawn that the plaintiff has established a reputation in India among the industrial fraternity in which they operate and supply their chemical agent. It is also stated in the plaint, that the trademark of the plaintiff is known throughout the globe in the field of chemical cleaning. Therefore, I would hold that the plaintiff has made out a prima facie case of their mark ‘Coronil’ being a reputed mark in India in the particular field, where it is used.

Comment : This standard for Section 29(4) is a revelation, as it allows for marks of significant repute in the domestic market to seek injunction across classes without subjecting themselves to the onerous requirements of being declared a well-known mark under Section 2(zg). This given with the increasing emphasis of territoriality of trademark law as reflected in the Prius order of the Supreme Court (covered on the blog here), renders Section 2(zg) more or less obsolete. This requirement is a dynamic requirement requiring proof of reputation when staking a claim allowing a court to apply its mind, rather than pointing to a register to claim such repute under Section 2(zg). This certainly would signal a wave of infringement claims across classes. The standard of repute also explicitly does not require one to be known amongst the entire public but only amongst the relevant class of consumers, thereby bringing local players on par with international brands such as Whirlpool, Coca-Cola and Sony for the purpose of trademark jurisprudence. This is a rather perceivable enhancement of the strength of numerous trademarks in India.

Imposition of Cost

“128. Profiteering by tapping on panic is not a new phenomenon. Very early in law course, every student is introduced to Louisa. Carlill Vs. Carbolic Smoke Ball Co. (1893) 1 QB 256. Of course it is on interpretation of a contract, binding unilateral offer and its acceptance. But, Lord Lindley, had also succicently put the vagaries in an advertisement for treatment of a epidemic flu in the following words:…

130. In the instant case, it is debatable whether the defendants can be said to be indulging in honest practise in projecting their tablets as a cure for Coronavirus.

It is also detrimental to the repute of the registered trademark Coronil of the plaintiff since, there is a prima facie possibility that the  general public might question whether the trademark ‘Coronil’ of the plaintiff would also not prevent corrosion by drawing the analogy of the ‘Coronil’ of the defendants, which does not cure Coronavirus…

140. The defendants have invited this litigation on themselves. A simple check with the Trade Marks Registry would have revealed that ‘Coronil’ is a registered trademark. If they had, and had still, with audacity used the name ‘Coronil’, then they deserve no consideration at all. They cannot assume they can bulldoze their way and infringe a registered trademark. They must realise there is no equity in trade and commerce. If they had not done a check with the Registry, then they are at fault. They cannot plead ignorance and innocence and seek indulgence from this Court. Either way, indulgence is refused.

Insofar as costs are concerned, the defendants have repeatedly projected that they are 10,000 Crores company. However, they are still chasing further profits by exploiting the fear and panic among the general public by projecting a cure for the Coronavirus, when actually their ‘Coronil Tablet’ is not a cure but rather an immunity booster for cough, cold and fever. The defendants must realize that there are organisations which are helping the people in this critical period without seeking recognition and it would only be appropriate that they are made to pay costs to them.

Accordingly, I hold that, costs of Rs.5,00,000/- (Rupees Five Lakhs only) is to be paid jointly by the defendants to the Dean, Adyar Cancer Institute (WIA), East Canal Bank Road, Adyar, Chennai, and further Rs.5,00,000/- (Rupees Five Lakhs only) is to be paid jointly by the defendants to the Dean, Government Yoga and Naturopathy Medical College & Hospital, Arumbakkam, Chennai – 106. In both the organisations, treatments are afforded free of cost without any claim to either trademark, trade name, patent or design, but only with service as a moto.”

Comments and Conclusion

The above portion is obviously quite damning on the defendant, with repercussions that will inevitably reverberate beyond trademark law. This does however, impose a duty of care on defendants to query on registrations prior to launch. This judgment also reiterates the healthy trend of our courts that “big fish cannot eat small fish”. The defendant rather repeatedly pointed out that “plaintiff’s mark is known only to a very small number in the industrial fraternity and that the plaintiff also has a very small market” and highlighted their relative might of being a 10,000 crore company. This has been unequivocally rejected and the reputation of the plaintiff has been identified and protected, even against a much larger player. The level playing field that this creates certainly brings a refreshing tinge of equity into trademark law.

Please click here to view our previous posts related to IP and Covid-19.

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We’re happy to inform you that CNLU’s Centre for Innovation Research and Facilitation (CIRF) in Intellectual Property for Humanity and Development (IPHD) is inviting papers for publication in Volume 1 Issue 1 of its e-journal Journal of Academic Innovation & Research in Intellectual Property Assets (JAIRIPA). The deadline for submission is October 25, 2020.  For further details, please see the announcement below:

Call for Papers: CNLU’s E- Journal of Academic Innovations & Research on Intellectual Property Assets (JAIRIPA) Vol. 1 Issue 1 (Submit by Oct 25)

About the Journal

Centre for Innovation Research and Facilitation (CIRF) in Intellectual Property for Humanity and Development (IPHD) of CNLU, calls for original and unpublished research Papers, for the publication in e-journal of the Centre namely: ‘JAIRIPA'( Journal of Academic Innovation & Research in Intellectual Property Assets).,on the issues related to copyright, Patents, Trade Marks, Geographical Indications, Plant Varieties and Farmer’s Rights, Bio Diversity, Lay out design and integrated circuits, Industrial Design, Traditional Knowledge, on current issues. It is half-yearly e- Journal, Vol.-1, Issue-1, 2020 (January- June). It will have open access to all the concern for Common Good. The ISSN will be obtained later as per Rule. The Vice-Chancellor, CNLU, Patna is the Patron and The Director of the Centre is the Chief Editor of the journal.

Call for Papers

The Authors (Academicians, Professionals, Students, Activists, Entrepreneurs, etc.), National or International are invited to contribute Original Paper on the aforementioned subject matters. The articles shall be blind peer reviewed, before publication. It will have sections: Editorial, Original Research papers/ Articles, Case reviews, Book reviews/ monograph, Report on Thesis, on Intellectual Property Assets.

Submission Guidelines

• Submissions are accepted only in the English language.
• All articles must be accompanied by an abstract not exceeding 300 words.
• The abstract must expressly include the novelty and usefulness of the idea that the author wishes to put forth and must categorically mention the specific contribution of the article beyond the existing available literature.
• Co-authorship (with a cap of two authors) is permitted for all articles.
• The manuscript should not contain any references to the identity of the authors.
• The body of the manuscript should be in Times New Roman, Font Size – 12 and 1.5-line spacing. The footnotes should be in Times New Roman, Font Size 10 and single line spacing.
• The paper must have similarities/plagiarism check, and not more than 10%.
• All pieces should adhere to a word limit of 4000-6000 words.
• The citations must conform to the style of BLUEBOOK (latest edition).
• Manuscripts should only use footnotes as a means of citation. No other method shall be permitted.
• Substantive endnotes are permissible.

Submission Deadline

The last date of submission of paper/articles: 25th October 2020.

Submission Procedure

The manuscript should be sent in MS Word (.docx) format to cirf.journal@gmail.com.

Contact Information

Prof. Dr. Subhash Chandra Roy, Director & Chief Editor (JAIRIPA)

Email: cirf.journal@gmail.com

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We’re pleased to bring to you a guest post by Devangini Rai discussing the application of Indian trademark law to fluid trademarks, which are popularly being used in the context of the ongoing Covid-19 pandemic. Devangini is a 5th Year student at University School of Law and Legal Studies, Guru Gobind Singh Indraprastha University, New Delhi. Her previous guest post on the blog can be viewed here.

Fluid Trademarks: An Alter Ego for Brands?

Devangini Rai

As has typically been the case, Covid-19 has led to new revelations about all aspects of life and exposed the ways in  which the world is coping against it. Covid-19 has particularly affected all sorts of commercial ventures in the market. As a pandemic, it has spared no industry and no enterprise. In such unprecedented times, it has certainly led to a sea change of how entities present themselves as fighting and raising awareness against the ills of the disease. A uniquely interesting aspect of branding and advertising in this regard is the emergence of fluid trademarks.

Fluid trademarks refer to a method of capturing various versions of a particular trademark which may not be very dissimilar to each other. They should be designed in such a way that various versions of a trademark should identify with the same source. There are many ways in which fluid trademarks can be used to build an image and gain popularity for a brand. A famous Indian example of a fluid trademark is the iconic Amul Girl, who is used regularly in cartoons to promote the brand in form of a visual commentary on the ongoing political and social issues. Similarly, Google as a worldwide known internet giant frequently changes their homepage by using a Google Doodle to commemorate important events. In recent times, there has been a spurt in usage of fluid trademarks in the ongoing Covid-19 era where a number of highly identifiable brands tweaked their logos. McDonalds had their iconic yellow ‘M’ in the red-background re-designed, the wheels in the four wheel logo of Audi were spaced farther apart, BMW saw its logo spaced with a message saying ‘thanks for keeping distance’, the Starbucks mermaid has a mask over her face, Nike’s swoosh says ‘Just Don’t do it’ and the list goes on. As creative as firms may try to be in redesigning themselves, as a response to the global sentiment for Covid-19, there may be some roadblocks for the IP protection that the brands require for their new logos.

Registration of Fluid Marks

Trademarks are a sign of continuity and perpetuity of a brand. They are advertised in a manner to gain mass public recognition. Under the Indian Trade Marks Act, under Section 15, a provision for registration of a series of trademarks is available. The concept as explained behind Section 15 by the draft Manual of Trademarks 2015 is that a “person claiming to be the proprietor of several trademarks in respect of the same goods or services which, while substantially resembling with each other in the material particulars thereof, yet differ in respect of matter of a non-distinctive character which does not substantially affect the identity of the trademark…”. While this may to a large extent explain the concept of fluid trademarks, the dynamic nature of a fluid mark does not make it the first priority of brand owners to seek a registration for it. A provision like Section 15 only works when it can be anticipated what all variants will be used for representing the trademark. A pandemic as severe as Covid-19 could have obviously not been anticipated before. With time, companies try to keep themselves relevant and retain their mass appeal. To respond to changes that affect globally, fluid trademarks are an excellent way to stay in vogue. Section 15 does not allow updating a trademark application to be converted into a series trademark after the registration of a single trademark has taken place. As the name ‘fluid’ suggests, Section 15 so far does not account for the dynamic nature that such trademarks possess. Thus, it is difficult to be satisfied that the current Indian position on series trademarks sufficiently accounts for fluid trademarks.

Standard of Distinctiveness (or Non-Distinctiveness)

A case of infringement of a fluid trademark has not yet been seen in Indian courts. The wide gamut of non-distinctiveness that fluid trademarks give may lead to certain complications. As described in this insightful article by Latham and Watkins, there can be a case where an infringer has copied a trademark which may not resemble any of the fluid versions of the original trademark but still be a potential case of passing off (considering most likely that the fluid versions are not registered). In such a case, what accounts as a non-distinctive feature in a fluid trademark that would have been purported to copy can become a lacunae to identify. In the case of Louis Vuitton Malletier v. Dooney & Burke, Inc., the plaintiff alleged that the defendant had copied a stylized version of their toile monogram (the LV initials) onto their products. The plaintiff had stylized their original trademark into a multicolour version over a white background. The Court observed the lack of likelihood of consumer confusion by “focusing on the similarity of the marks sequentially in the context of the marketplace rather than in a side-by-side comparison”.  It ultimately remanded the case to the lower court with regards to the determination of likelihood of confusion between the two marks.

Thus, an observation which arises is that while fluid trademarks may give substantial freedom and scope to be creative around trademarks, the right of monopolizing on certain non-distinctive features may not be always proven under law. The question of likelihood leading to confusion needs a strict discharge of proof. It would be interesting to witness how Indian courts interpret the principles of trademark law in cases involving fluid trademark as time progresses.

Fluid trademarks are here to stay. They will be always seen as questioning the perpetual nature of a trademark. However, the maximum use of fluid trademarks can only be done by well-established brands which can afford to make a statement with their trademarks and not run a looming infringement risk.

An AI produced portrait 

We’re pleased to bring to you a guest post by Bhavik Shukla and Hatim Hussain, discussing authorship in AI-related works under the Indian copyright law, with specific reference to the judgment in Shenzen Tencent v. Shanghai Yinxun Shenzen passed by a Chinese court in December last year. Bhavik is a recent graduate from NLIU, Bhopal and is currently working with the IP team at Khaitan & Co. Bhavik’s previous posts on the blog can be viewed here, here, here, here, here and here. Hatim is a recent graduate from Gujarat National Law University, currently pursuing Masters at Tsinghua University on Schwarzman Fellowship.

Shenzen Tencent v. Shanghai Yinxun: AI Authors, Copyright and Some (Hard) Lessons for India

Bhavik Shukla & Hatim Hussain

In December 2019, the Chinese court in Shenzen through its judgment in the case of Shenzhen Tencent v. Shanghai Yinxun (‘Tencent case’) held that an AI-created work would be a literary work eligible for copyright protection. This development comes at a time when the world is finding it difficult to grapple with the novel conceptions of authorship for copyright eligible material. Not only technology related matters seek to broaden the understanding of authorship (covered here, here, and here) vis-à-vis copyright, but so do intervention of non-humans (covered here). Artistic flair has not been uncommon for AIs, with next-gen robot-journalists such as Toutiao’s ‘Xiaomingbot’, Forbes’s ‘Bertie’, Bloomberg’s ‘Cyborg’ and Tencent’s ‘Dreamwriter’ publishing articles with lightning speed and accuracy. Legally-speaking, decisions premised on authorship in AI-generated works, granting (in most cases) ownership to natural persons in-the-loop, have also been no-brainers. What, then, makes the Tencent case that groundbreaking, one might ask?

For one, ascertaining ownership for output generated by advanced AI systems have become increasingly difficult, often striking at the core of the idea that all AI works require dependency on humans or legal persons. On a more comparative note, the Tencent case also highlights the impending disparities on this issue internationally, despite its increasing relevance in practice. In Australia, US (sections 306 and 313.2) and many European countries, human intervention is fundamental to accord copyright protection, whereas other jurisdictions, namely UK, Ireland, Hong Kong and New Zealand take an altogether different approach in their copyright laws, allowing  protection to computer-generated works. As we shall see later, India falls within the latter set of countries, granting limited protection to computer-generated works.

The Tencent Case

The Tencent case builds on yet another interesting case, Feilin v. Baidu, delivered by the Beijing Internet Court in early 2019. In that case, the plaintiff’s copyright in the analytical report, created with the help of a fairly-automated Woltas Kluwer software, was contested by the defendant. Quite interestingly, while the Court recognised that the report met the originality requirement (on account of some human involvement in it), it did not constitute a copyrighted ‘work’. The case shut the door on the possibility of an autonomously-created literary or artistic work to be considered capable of copyright protection. While a bit extreme, Chinese courts have sought to course-correct themselves, with the Tencent judgment. While the Court in this case disregarded the copyrightability of works generated solely by software, it acknowledged that works created by such creative processes could be subject to copyright protection.

In 2019, the Plaintiff was granted a non-exclusive license of the software ‘Dreamwriter’, a software that has generated about 300,000 literary works each year. The impugned article – a financial review of the stock market – was one published using Dreamwriter – with a disclaimer stating ‘This article was automatically written by Tencent Robot Dreamwriter’ at the end. On publication of an identical article by the Defendant, the Plaintiff sued for copyright infringement and unfair competition.

The question before the Court was two-fold, first, whether the involved article was ‘original’ as per Chinese law, and second, whether copyright of the article subsisted in the Plaintiff. On the first issue, the Court held that the article was reflective of the selection, analysis and judgment of the stock market information and data as available at that time, and to that extent, it possessed a certain degree of ‘originality’. The Court highlighted the detailed inputs of the Plaintiff’s creative team, based on which it concluded that if the software was to be the subject of creation, it would disregard the personalised arrangement and selection of the creative team. Accordingly, the Court declared the Plaintiff to be the author, based on an interpretation of Article 11 of the Chinese copyright law which grants authorship to the entity under whose supervision and direction the work is created.

In fact, this notion of the ‘originality’ requirement, as being a solely ‘human’ conception is central to the question of determining authorship in AI-works. In this respect, the Tencent case props up a fitting example of acknowledging human involvement in granting IP protection to AI-created works.

AI Authorship and India: Need for a Fix?

On a more domestic note, the Tencent case affirms the principle enacted under section 2(d)(vi) of the Copyright Act, 1957 (‘Act’), granting authorship of a computer-generated work to a person who ‘causes it to be created’. Indian courts have, in the past, also emphasized on human involvement in creation of copyrightable works (here [para. 10] and here [para. 6]). The Copyright Office considers (Form-XIV) only natural or juristic persons to be authors, requiring them to disclose their name, nationality and address.

In other jurisdictions as well, ‘decisive’ human involvement is seen as a necessary factor for the grant of copyright protection. As noted above, the Plaintiff in the Tencent case had engaged a creative team which guided the AI software’s working. Similarly, calls had been raised during the determination of the iconic Naruto v. Slater that Slater had decisively influenced (pp. 328-329) the macaques into clicking their own photos. This case was subsequently settled, but it clarified the importance of human involvement in creation of copyrightable works. Contrast this example to one where the AI machine ‘DABUS’ was designated as an inventor in the EU. The EPO declined the grant of patent, holding that only a ‘natural person’ could be designated as an inventor. Therefore, it appears that human involvement offers a satisfying solution which enables IP offices to maintain their core understanding of ‘authorship’ and ‘copyright’. But again, the desirable degree of human involvement is highly contested.

The Indian Copyright Office follows the same position as most other jurisdictions, requiring ‘decisive’ human involvement in AI-created works as an essential requisite to grant IP rights. Accordingly, a strict perusal of section 2(d) shows that while a ‘person’ who causes a work to be created shall be granted copyright in India, the position in respect of computer-generated works does not apply (p. 7) to AIs across the spectrum. At best, this may apply to weak AI requiring human intervention, but is certainly irreconcilable with strong AI, wherein no human involvement may be required.

Given the above, it is worthwhile to delve into AI’s three recognizable stages: (1) Artificial Narrow Intelligence, (2) Artificial General Intelligence, and finally (3) Artificial Super Intelligence. As for the first stage, it refers to classic weak AI, commonly found in tech gadgets of the day- speech recognition software, manufacturing robots, even self-driving cars. This type of AI relies heavily on human involvement in programming them to perform certain tasks. In contrast strong AI refers to machines possessing ‘human-like’ intelligence that can be applied to solve problems. The attainment of an Artificial Super Intelligence is an even longer shot! Since the development of AI lies, at best, on the spectrum between weak and an almost strong AI, the decision in the Tencent case seems to be well cut out that such AI programmes can be said to fall squarely within section 2(d)(vi). However, this is subject to change as technology constantly inches closer to the attainment of a purely strong AI (here and here). The question which arises, then, is – will authorship of an exclusively AI-created work be granted to humans involved or will it lead to no authorship at all?

The question posed above finds resolution in the Indian context through reference to section 17 of the Act. However, it is highly unlikely that an AI machine would be covered under sections 17(a), (b) or (c), considering the narrow interpretation of the term ‘author’ in India. Regardless, AI-created works may still not be eligible for authorship, as they are unlikely to fit into the wordings of sections 17(a) or (b) as an AI-machine is not in the course of employment of a company or an individual. Similarly, it cannot be said that an AI-machine can fulfill the requisites of a contract of service (para. 7) under section 17(c). This position has been affirmed by the EPO recently, noting that an employment agreement is limited to natural persons.

In that case, what is the true scope of authorship in AI-created works in India? Well, it is quite straightforward. As the law stands today, with weak AI in the forms of computer programmes, section 2(d)(vi) shall grant authorship to the person who ‘causes the work to be created’. But, where there is no human involvement, no authorship in the resultant work can be granted. Similarly, the concepts enshrined in section 17 shall not offer any respite to AI-created works.

Conclusion

While incorporation of AI-based works into the copyright law system creates crucial policy considerations, an alternate reality has already surfaced where AI-generated works might not fulfil the requirements of originality. Present regimes prioritise protection of human creations over AI-based works, and rightly so, although it may be equally important to consider striking a just balance between human creativity and development of AI technologies.

One way to do this may be to recognize that ‘authorship’ may extend beyond the traditional notions of copyright law. In that respect, it may be beneficial for jurisdictions to reconcile legal positions to incorporate a renewed concept of ‘authorship’, keeping AI in mind. At the same time, it may also be difficult to ignore sight of the fact that ‘AI-created’ work with no human involvement may not result in claims for authorship by themselves. We would suggest first, that there can be no claim of ‘no human involvement’, but merely copyright doctrine suggesting specific claims to authorship. Secondly, and relatedly, there may be policy considerations for not granting authorship to works not situated within doctrinal claims to authorship (Pamela Samuelson deals with these points eloquently on pages 1224-1225). In a climate beset with such opportunities for AI to become the mainstay in our dealings, it is imperative that the Indian Copyright Office initiates a discourse to clarify this authorship dilemma.

Topical Highlight

Curious Case of Coronil: Madras HC Restrains Patanjali from Using Trademark ‘Coronil’ for Its Immunity Booster Tablet

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In this post, Arun examines the Madras High Court’s recent order injuncting Patanjali from using the trademark ‘Coronil’ and appreciates its lucid interpretation of Section 29(4) of the Trade Marks Act. The plaintiff argued that defendant’s use of the mark would dilute its reputation due to the perceived inefficacy of the product and the accompanying negative press. The Court held that the defendant’s mark caused confusion to the public, played on the prevailing panic and fear among people to make money and used the word ‘Coronil’ without any due cause. Arun argues that the Court’s interpretation of Section 29(4) allows for marks of significant repute in the domestic market to seek injunction across classes without being subject to the onerous requirements of being declared a well-known mark under Section 2(zg). They are required to be known only amongst the relevant class of consumers as opposed to the general public. He observes that this brings local players on par with international brands by enhancing the strength of the former’s trademark protection.

Budweiser’s Trademark Infringement and Disparagement Claim: Nipping Satire in the Bud?

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In this post, Nikhil discusses an ex parte proceeding wherein the Delhi High Court issued a finding of prima facie trademark infringement in favour of the plaintiff, ‘Budweiser’ and also held that its products had been commercially disparaged. A website called Foolish Humor put up a satirical post concerning the plaintiff’s beer. The website’s description conspicuously noted that it “does not correspond to reality.” However, despite this certain media channels mistook it to be credible news and released a report based on this story. Later, when this fake news relying on Foolish Humour’s satirical post went viral, the defendants (another satirical website called the fauxy) came up with a parodic video regarding Budweiser. The defendant’s website also has a disclaimer at the bottom noting the fictional nature of its content.

Nikhil argues that based on the Court’s reliance on an incorrect factual matrix, all outcomes of the original article by Foolish Humour were attributed to the defendants. He concludes that orders such as these hinder the right to free speech and expression and demonstrate the court’s lack of engagement with substantive law while granting interim reliefs.

Thematic Highlight

Shenzen Tencent v. Shanghai Yinxun: AI Authors, Copyright and Some (Hard) Lessons for India

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In this post, Hatim and Bhavik examine authorship in AI-related works under Indian Copyright law, focusing on the judgment of the Chinese court in Shenzen in the case of Shenzhen Tencent v. Shanghai Yinxun. This judgment held that AI created work would be a literary work eligible for copyright protection. The case is crucial since it highlights international disparities on the issue wherein some countries accord copyright protection to computer generated works while others require human involvement as a prerequisite for protection. The Indian Copyright Act grants authorship of a computer-generated work to a person who ‘causes it to be created’, Indian courts have also required human involvement in the creation of copyrighted works in the past. In fact, the Copyright Office considers only natural or juristic persons to be authors and requires decisive human involvement for the grant of protection to works. They conclude that the policy questions thrown up by authorship of works created by different kinds of AIs with varying human involvement, make it imperative for the Copyright Office to initiate discourse to clarify this dilemma.

Other Posts

Announcing the Winners of the 1st Shamnad Basheer Essay Competition on IP Law!

Prof (Dr.) Shamnad Basheer

We started the week by announcing the results of the first edition of the Shamnad Basheer Essay Competition on Intellectual Property Law. We shortlisted the top 6 essays for our panel of esteemed judges, consisting of Justice Prabha Sridevan, Ms. Jayashree Watal and Professor Siva Thambisetty. Since the students were free to choose any topic, we received a whopping 89 submissions on a wide range of topics. Lokesh Vyas, a fifth year law student at the Institute of Law, Nirma University, Ahmedabad bagged the first position for his essay on ‘Director’s authorship under Indian Copyright Law: An (Un) Indian Approach?’ The second prize was won by Varsha Jhavar, a fourth year law student at the Hidayatullah National Law University, Raipur for her essay on ‘Stand-up Comedy: Negative Space or Traditional IP Worthy.’ The third prize went to Purvi Nema, a fourth year law student at the National University of Study and Research in Law, Ranchi for her essay on ‘Can Copyright Law Combat Deepfakes?’ We wish all the winners our hearty congratulations!

Delhi High Court’s Dynamic Injunction in Favour of Disney: An Unclear and Overbroad Exercise?  

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In this post, Nikhil examines the Delhi High Court’s grant of interim relief to Disney vide an order restraining ‘rogue’ websites that were illegally making its copyrighted content available on their platforms. He examines the ‘john doe’ nature of the dynamic injunction passed in favour of Disney, and the blocking of entire websites instead of specific URLs for copyright violation. He argues that resort to these extreme remedies should be taken only in limited scenarios with the exercise of strict scrutiny otherwise it would hinder the right to free speech and expression. He concludes that the order suffers from lack of clarity and hopes that it is not intended to grant inordinately extensive and blanket powers to the Joint-Registrar on issues that merit strict judicial scrutiny.

Ritter Sport Wins Trademark for Square Chocolates: Bitter Consequences of Trademark Maximalism

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In this post, I write about the rising property rhetoric in trademark law which expands the scope of trademark monopolies. I discuss the negative consequences that trademark maximalism has upon competitors, consumers and society. I illustrate this by analysing the recent decision of the Federal Supreme Court of Germany (BGH), which granted exclusive trademark rights to well-known German chocolate brand, Ritter Sport (‘Ritter’) for the square packaging for its chocolates. I argue that the association of an attractive selling feature (for instance the square shape of chocolates here) with a company doesn’t discount the attractiveness of the selling feature itself. I compare the Indian and German statutes in this regard to opine that the rationale for granting protection to Ritter’s square packaging under both the statutes could not be justified as the square packaging and company legend surrounding it, clearly demonstrated the function and technical result achieved due to the shape.

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Delhi HC Becomes the Go to Venue for Adjudicating SEP Disputes in India

In this post, Rajiv wrote about the recent patent law suits filed by InterDigital against Xiaomi at the Delhi High Court (DHC) for infringement of its standard essential patents (SEPs). He argues that there is a growing trend among patent owners to approach the DHC as the go to forum to litigate their SEPs given Ericsson’s success in the Micromax, Lava, Intex, iBall, Gionee matters and because of the poor reception of patent claims in China. He observes that SEP litigation necessarily entails the determination of public rights. This is because it is detrimental to public interest when one has to pay extortionary costs to a SEP owner. Competition issues are often misjudged in these markets based on the number of businesses operating in the same market. However, he pertinently notes that there would be no competition if a market is already locked in into a particular standard, regardless of the number of players operating in the market. He concludes by discussing the implications of recent SEP decisions in other jurisdictions and the divergence of opinions by different courts on this issue.

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Does Copyright Law Protect Presentation of Gastronomic Creations?

In this post, Aatmik examines how Indian copyright law can protect presentations of gastronomic creations. He contextualises this by noting that the visual appearance of food has assumed greater currency in today’s consumer centric market. He goes on to demonstrate the issues with proving the originality of food plating, its falling within the statutory ambit of ‘work’ and its fixation into a tangible form. With regard to fixation, he notes that we don’t have a statutory requirement for fixation in India for artistic works, but a requirement that has developed out of practice. He argues that the importation of the US statutory definition to inform our understanding of fixation in copyright law as something that is sufficiently permanent or stable, to be perceived for more than a transitory duration, will not consider food plating to be copyrightable. Thus, he argues for doing away with a strict fixation requirement in light of copyright first principles of promoting creativity and innovation. He concludes that a revised interpretation of fixation that protects the expression of an idea by virtue of being sufficiently perceivable should be considered in India.

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Call for Papers: CNLU’s E- Journal of Academic Innovations & Research on Intellectual Property Assets (JAIRIPA) Vol. 1 Issue 1 (Submit by Oct 25)

Recently, we informed our readers about CNLU’s Centre for Innovation Research and Facilitation (CIRF) in Intellectual Property for Humanity and Development (IPHD) inviting papers for publication in Volume 1 Issue 1 of its e-journal Journal of Academic Innovation & Research in Intellectual Property Assets (JAIRIPA). The deadline for submission is October 25, 2020. Further information on the submission guidelines is mentioned in the post.

Fluid Trademarks: An Alter Ego for Brands?

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In this post, Devangani discusses the emergence of fluid trademarks amidst the Covid-19 pandemic. She discusses many examples of companies like McDonalds, Starbucks, Nike etc. that have redesigned their logos and advertisements to promote social distancing norms and stay relevant during the ongoing pandemic. These dynamic marks are an anomaly to the perpetual and continuous nature of trademarks. She argues that section 15 of the Indian Trade Marks Act does not respond to the dynamic nature of these marks. She notes that though Indian courts have not witnessed a trademark infringement case yet, it would be interesting to see how trademark law and principles are interpreted in the context of fluid trademarks. She observes that while fluid trademarks grant substantial freedom and scope for creativity, their claim to monopolise certain non-distinctive features of the mark may be difficult to establish under law. Thus, she concludes that only well-established brands can capitalise upon fluid marks to make a statement with their trademarks without running the risk of infringement.

Decisions from Indian Courts

• Delhi High Court issued notice in an appeal in Jindal Rolling Mills Ltd. v. Shree Ganesh Rolling Mills whereby the appellant challenged an order restraining them from using the respondents’ registered mark ‘JINDAL’ in any manner whatsoever in relation to their products. [August 7, 2020]
• Delhi High Court, in FDC Ltd. v. FDC India & Anr., granted an ad-interim ex-parte injunction restraining the defendants from using the plaintiff’s registered trademark ‘FDC’ used for its products and the domain name fdcindia.in for their services of developing franchisees. [August 5, 2020]
• Delhi High Court, in Steel Bird Hi-Tech India Ltd. v. Mr. Harish Chander Juneja & Ors., passed a temporary injunction restraining the defendants from using the plaintiff’s registered mark ‘STEELBIRD’ in relation to any of their goods or services. [August 5, 2020]
• Delhi District Court, in Shri Pawan Kumar v. Shri Israruddin & Ors., passed an injunction restraining the defendants from using the plaintiff’s registered trademark ‘HONEY JUICE’ for selling juices manufactured by them. The court did not grant any damages though as the plaintiff failed to prove the losses suffered by him. [July 31, 2020]
• Delhi High Court in Indian Drug Manufacturers Association v. UoI, dismissed the writ by IDMA based on the grievance that no technical member (patents) had been appointed to the IPAB; observed that since notification dated 21.07.2020 appointed Shri Birendra Prasad Singh as the said member, he would obviously be joining the IPAB shortly. [July 30, 2020]
• Delhi High Court, in Vinay Vats v. Fox Star Studios India Ltd., held that copyright cannot subsist in a mere idea, plot or theme and dismissed the plaintiff’s application for interim injunction against the release of film Lootcase. It also disapproved of the trend to misuse the judicial process by filing suits soon before the release of films. [July 30, 2020]
• Madras High Court, in Venkata Siva Kumar v. Institute of Cost Accountants of India & Ors., dismissed an appeal filed by a CA seeking to restrain the Institute of Cost Accountants of India from using the acronym ICAI, which the appellant argued should only be used by the Institute of Chartered Accountants of India. [July 22, 2020]
• Delhi High Court, in Snapdeal Pvt. Ltd. v. Snapdealluckydraws.org.in, issued a dynamic injunction against 50 rogue websites, restraining them from carrying any activities under the registered trademark of the e-commerce company Snapdeal. [July 20, 2020]
• Bombay High Court passed an interim order directing Walmart India to stop selling its apple flavoured drink on account of allegation of deceptive packaging in a suit for trademark violation filed by Parle Agro, the company that manufactures Appy Fizz. [July 9, 2020]

Other News from around the Country

• Shri B.P. Singh, Joint Controller of Patents and Design was appointed as the IPAB’s technical member (patents) in accordance with a notification dated 7.2020.
• Four music labels sent copyright infringement notices to various Indian short-video platforms, trying to emerge as alternatives to TikTok, for using their music without permission.
• Innovation is receiving a significant boost amidst the pandemic especially in the medicines and electronics sectors; Madhya Pradesh (MP) Council of Science and Technology notes that Indore has the highest number of trademark and patent applications in MP.
• Kavish Seth, a musician and IITian received a patent for a musical instrument called Noori, which can be used to play both polyphonic and monophonic music.
• At a webinar on the death anniversary of former Union minister, Sushma Swaraj, various stalwarts and artists in the film industry recalled her contributions towards artists’ rights and copyright issues.

News from around the World

• A group of state attorneys general in the US urged the Government to allow other firms to manufacture Gilead Science’s Remdesivir in order to increase the availability and affordability of the drug used to treat Covid-19.
• The Canadian Government announced several measures to secure a future supply of COVID-19 vaccine and therapies.
• Italy became the first country to make it mandatory for pharmaceutical companies to disclose public funding for R&D costs.
• In a piece in The Verge, Kim Lyons notes that Apple filed a notice of opposition against a meal prep company for using a pear in its logo, citing concerns of confusion with Apple’s trademark.
• Jaguar Land Rover lost its appeal against the decision of the UK Intellectual Property Office’s decision and failed to receive trademark protection for the shape of its iconic Defender SUV due to lack of distinctiveness, enabling Ineos Group to go ahead with its Grenadier off-road vehicle.
• US President Donald Trump’s re-election campaign was accused of copyright infringement by singer Neil Young for playing his songs without authorisation.
• Chinese AI company Xiao-i, filed a lawsuit against Apple Inc. for 1.4 billion dollars, alleging patent infringement concerning its voice recognition software.

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In the previous post I had covered a specific element of the issues touched upon by the similarities in the interface of JioMeet and Zoom, that of possibility of a non-literal copying. While Zoom’s Graphical User Interface (‘GUI’) is not a registered design, the incident also rekindles the debate on the Indian position on GUI protection under its design laws. In this post, I seek to analyse the Designs Act, 2000, to argue that GUIs should be protected under the Act and the Designs Office should reconsider its interpretation of the same.

Can GUIs be Registered as a ‘Design’?

As per Section 2(d) of the Act a ‘design’ is defined as follows:

“‘design’ means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye …” (emphasis supplied)

The definition requires that the concerned design is ‘applied to any article’, by ‘any industrial process or means’, and appeals to the eye/ is aesthetically appealing. The term ‘article’ is further defined under Section 2(a) of the Act as:

“‘article’ means any article of manufacture and any substance, artificial, or partly artificial and partly natural and includes any part of an article capable of being made and sold separately.”

Section 5(3) read with Section 6 of the Act states that the design may be registered ‘in respect of any or all articles’ of a single ‘class’. This classification of articles for the purposes of registration has been provided in Rule 10 of the Design Rules, 2001. It provides that the classification has to be in accordance with Third Schedule of the Rules. The classifications under the Third Schedule are modelled on the Locarno Agreement, and Class 14 deals with ‘Recording, communication or information retrieval equipment’. More specifically, Class 14-04 concerns ‘Screen Displays and Icons’. The GUI of a software would clearly fall within the ambit of this specification. Hence, if a GUI satisfies other requirements such as originality and no prior publication, it can be registered as a design under Class 14-04.

Have GUIs been Registered in the Past?

As noted by Omesh Puri, it appears that some design registrations were earlier granted for GUIs but those were under Class 14-99 that deals with ‘Miscellaneous’ items. But the recent trend has been against granting such registrations by the Designs Office. The primary example in this regard is when Amazon sought to register a design for “graphical user interface for providing supplemental information of a digital work to a display screen” in 2014, vide application number 240305. Interestingly, this application was filed under Class 14-02 that deals with ‘Data Processing Equipment’ and peripheral devices, as against 14-04. While I could not trace the application, as explained in this post by Essenese Obhan and Sneha Agarwal, it was refused by the Controller holding that it did not satisfy the conditions under Sections 2(a) and 2(d). For Section 2(d), it held that since the GUI disappears once the computer screen is turned off the requirement of a consistent visual appeal was not satisfied. Moreover, it considered screen displays to lack ‘features of shape, configuration’ and other parameters, and they could not be considered a ‘finished’ article ‘judged solely by the eye’. Similarly, the controller held that since a GUI is not an ‘article of manufacture’ and is not physically accessible, it cannot be called an ‘article’ under Section 2(a).

However, there have been cases where design protection has been given to a GUI even after the above 2014 decision in Amazon’s application. Akshay Ajaykumar has pointed to some of these in his Linkedin post here. These include registration for a ‘Monitor with GUI’ registered under Class 14-02, a ‘Mobile Phone’ registered under Classes 14-03 and 14-04, and a ‘Display Screen with Graphical User Interface’ under Class 14-04. Due to these uncertainties, in a 2018 report by the International Chamber of Commerce on ‘Design Protection for Graphical User Interfaces’ (‘ICC Report’) it has been noted that in India “design protection may conceivably be granted under the Designs Act but clear guidelines are awaited”.

A Need to Rethink the Decision in the Amazon Order?

The Amazon order still appears to be a deterrent in terms of registration of GUIs. This deterrence, however, is not warranted on two primary counts. First of all, from Obhan and Agarwal’s post it appears that the controller assessed whether the GUI itself satisfied the definition of an ‘article’. This approach was misconceived since as per Section 2(d) a design has to be ‘applied to’ an article and need not satisfy the conditions of an ‘article’ in itself. In the alternate, if the error in the Amazon application was of improper claim construction, this can be solved by clearly demarcating the ‘article’ to which the GUIs are applied. This can be seen from the approved registrations mentioned above that clearly specify ‘Monitor’, ‘Mobile Phone’, or ‘Screen Display’ as the ‘article’.

Second, the primary objections raised against GUIs on ground of consistent visual appeal and functionality of the GUI in the Amazon order were untenable. Dealing first with the functionality aspect, GUIs do not consist merely of functional features but also several design features which can be considered ornamental or of particular patterns which may fall within the ambit of Section 2(d). Hence, a blanket omission of GUIs from within the coverage of a ‘design’ is incorrect. As far as the objection on visual appeal is concerned, it relies on an assumption that to claim protection as a design any work has to be visible consistently. This, however, falls foul of the reasoning given in Ferrero and CspA’s application (1978 RPC 473, HL), a UK decision categorised as important even in the ‘Manual of Design Practices & Procedure’ of the Office of the Controller. The manual correctly explains the ratio of Ferrero as

“Design features which are internal but visible only during use, may be subject matter of registration.” (emphasis supplied)

Accordingly, despite the GUI’s visibility limited only to the duration when the device is in ‘use’, it is still eligible for protection. This very rationale, citing Ferrero, was also deployed in the UK in a design application for registering user interfaces and displayed computer icons. Moreover, this interpretation is also in line with the purpose of the Act explained by the Supreme Court in Bharat Glass Tube Limited v. Gopal Glass Works Ltd as to “protect the original person who has designed a new one by virtue of his own efforts by researching for a long time”. The court also quoted Law of Copyright and Industrial Designs by P. Narayanan for the point that “[t]he object of design registration” is to protect the interests of “the originator of a profitable design”. This warrants that so long as the prohibitions and the safeguards specified in the Act are not triggered, the provisions of the Act should be interpreted to favour the efforts of a proprietor who has originated a ‘profitable design’. Accordingly, a more favourable approach should be taken towards protection of GUIs.

Finally, the order rightly points out that ‘only’ class number cannot be the basis for registration, and other conditions such as those in Sections 2(a) and 2(d) need to be satisfied. This, however, cannot imply a blanket denial of registration of GUIs as designs. Such an interpretation will render Class 14-04 of the Third Schedule redundant since these arguments can be made to deny registration for all forms of ‘Screen Displays and Icons’. This is not tenable even based on rules of statutory interpretation. This factor becomes particularly important since India has recently formally acceded to the Locarno Agreement and the Ministry of Commerce and Industry has released draft rules to align the Designs Act with the Agreement. The draft proposes deletion of the Third Schedule and Rule 10 directly refers to the Locarno classification. These attempts would be futile if an excessively restrictive interpretation is provided to the explicit recognition of registrability of designs in screen displays under Class 14-04 and of graphic symbols and logos under Class 32 of the Agreement. As a comparative, per the ICC Report, more than 14,000 GUIs were registered in 2017 alone in 11 key jurisdictions under Locarno Class 14-04. Hence, as India moves towards greater international harmonisation of laws, the need to reform its stance towards GUI protection becomes even more pertinent.

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Conclusion

The importance of this reformed application of design laws stems from the advantage they have over other forms of intellectual property protection for GUIs. As Rachel Stigler highlights, this includes greater leeway to elements that might have functional features attached to them and the specificity of protected elements. While this protection incentivises large scale innovation, it might impact creativity and innovation in light of potential infringements through smaller improvements, thereby reducing competition. However, under the existing Indian intellectual property laws, with similar infringement thresholds under different legislations, the above advantages coupled with lesser protection period of 14 years provides a better balance of interests.

In the long run, however, Stigler’s proposal for a sui generis regime for GUI protection might be an interesting idea to look at. Stigler suggests, inter alia, to have quick registration process for GUIs based on design laws standards such as originality and the functionality exception, and a protection for only three years which can be renewed if the design is still in commerce and has not become scène à faire. This will address not just the above drawbacks but also factors such as standardisation and the duration of protection that needs to be lower in the GUI world. While Stigler’s proposal still envisages the work to be a “design for an article of manufacture”, I believe we need to move a step further. With the proliferation of technologies such as holographic imaging, virtual reality, and augmented reality, the strict confines of design law requiring application to an ‘article’ become incompatible. This is because for applications running on these technologies, they are applying their interface to the world at large, with the everyday surroundings being their spheres of influence. It, thus, becomes impossible to define a single ‘article’ as necessary for design registration. With the murky protection available to existing interfaces, these developments would be at a greater risk of infringement under the existing Indian legislative framework. This limited elimination of the product specificity for GUIs would tackle the under-protection of innovative technologies, promotion of which is the goal of design laws in the first place.

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A few months ago, in May, I had sent a petition to the Ministry of Commerce, along with Rahul Bajaj, asking it to consider shutting down the Intellectual Property Appellate Board (IPAB). We had argued that not only was the IPAB non-functional for a long time but it was also poorly designed, especially with regard to the post of the ‘technical member’. Rather than continuing with this broken model, we recommended that the existing functions of the IPAB be shifted back to the High Courts and commercial courts. The Ministry of Commerce sent our petition to the Controller General of Patents, Designs and Trademarks, asking for his comments on the petition.

To my pleasant surprise the Controller General’s office has agreed with most of the contentions in our petition. While the entire set of its comments is not yet accessible, we did manage to access those comments which were reproduced in a file-noting of the Ministry of Commerce which we accessed through the RTI Act. That file noting can be accessed here. It is rare to see Indian bureaucrats speak in such categorically clear terms, in favour of reform and I can only hope the Ministry of Commerce shares this same vision.

A few of the key comments from the Controller General’s comments are reproduced below:

On the limited expertise of technical members for patent matter:

Comments of the Controller General: “It is true that subject matters of patents relate to different fields of technologies or sometimes relate to interdisciplinary subject fields and thus, inclusion of single/few technical member/s for appellate/revocation jurisdiction in IPAB cannot be considered to satisfy requirement of technical expertise in IPAB bench to deal with all such subject fields in IP litigation”

On the ability of High Courts to deal with scientific issues in patent litigation:

Comments of the Controller General: As per provisions of the Patents Acts, party/parties to various proceedings file/s evidence, reply evidence, rejoinder, etc. by way of affidavits from technical experts. Quasi-judicial authority (Patent Controllers) and judicial authorities (Appellate Board/High Court) mainly rely upon such technical evidences as questions of fact and decide issues related to inventive step or obviousness as question of law. Thus, need of technical expertise in IP litigation is not a problem for the High Courts. Moreover, for an independent assistance/inquiry as provided in the Patents Act, scientific advisors can be appointed by the High Court in any matter to report upon the question of fact and not involving the questions of interpretation of law.”

On the futility of splitting jurisdiction between the IPAB and the High Courts:

Comments of the Controller General: “It is a fact that although appeal jurisdiction is with IPAB, many times, parties approach High Courts using writ jurisdiction in the name of interpretation of statute instead of preferring for appeals in IPAB. Similarly, after grant of patents, mostly post-grant opponents also file revocation petition in IPAB, but matters ultimately reach to the High Courts due to infringement suits and counter claims of revocations by defendants, which results in very few matters end up in IPAB. Thus ultimately most of patent matters are litigated in the High Courts only and some cases even land up in the Supreme Court as SLPs. Thus, for avoiding overlapping litigations, shifting appellate functions back to the High Courts appear justified”.

On shifting the functions of the IPAB to commercial courts:

Comments of the Controller General: “In present scenario, where most of IP litigations ultimately land up in the High Courts due to no technical member/chairman/functional bench of IPAB, it would be always be better from judicial angle to shift all appellate functions back to the High Courts, which functions from across the country as against IPAB’s mostly works from Chennai and Delhi only. Therefore, recommendation that the IPAB be shut down and its functions be transferred to the Commercial bench in the High Courts seems a good idea”.

On shifting of the non-appellate functions of the IPAB to Commercial Courts:

Comments of the Controller General: “Since the Commercial Courts in the High Courts function from across the country, recommendation for transferring of IPAB’s functions to the Commercial Courts in the High Courts prima facie appears meaningful being non-functional IPAB with limited appellate jurisdictions. (sic) As mentioned above, the High Courts rely upon the technical evidences as questions of fact and decide IP litigations including technical points like inventive step or obviousness as question of fact and law. Even if required, the High Courts call upon independent assistance/inquiry from Scientific Advisors appointed to report the question of fact. Therefore, petitioner’s recommendation can be prima facie considered for initiation of discussion with stakeholders at least.”

It remains to be seen whether the Ministry of Commerce actually initiates discussions with stakeholders on this issue, as recommended by the Controller General. I presume a few nudges from the IP bar may get the ball rolling on stakeholder discussions but whether that first nudge will be provided is doubtful.

Some of the other interesting takeaways from the same file noting are as follows:

• The Chennai Office of the IPAB may shift from Guna Complex to Shastri Bhavan;
• A new bench of the IPAB will be setup in Nagpur;
• The Ministry made at least three requests to the Chief Justice of India last year to nominate a Chairperson for the IPAB. The process to appoint a new Chairperson has been initiated.
• After the post for Vice-Chairperson was advertised last year in October, the government received 13 applications. Since the new tribunal rules came into effect in January, 2020 the process of constituting the search and selection committee is underway.
• A meeting of the search and selection committee was held on August 31, 2019 for the 5 posts of technical members: 2 for copyright matters, 2 for trademark matters and 1 for patent matters. The recommendations of this committee were sent to the DoPT for approval from the Appointment Committee of Cabinet (ACC). The ACC has not replied and three reminders have been sent this year to the ACC. (Author’s note: Given the new tribunal rules announced in 2020, this process will have to be restarted – selections made under the old rules cannot be sustained under the new rules).

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The IPAB has recently stayed the revocation of Novartis’ patent over the anti-cancer drug Ceritinib. An examination of the revocation order reveals an unfortunate oversight in examining issues relating to genus-and-species patents, as well as several procedural lapses. IPAB’s stay order brings to light important doctrinal questions that the revocation left unanswered. This post attempts to deconstruct the maze of confusing orders surrounding the Ceritinib patent revocation.

Background

Ceritinib is a prescription drug used for treatment of non-small lung cancer, developed and patented by Novartis (IN 276026, US 8377921). Novartis obtained an Indian patent in 2016, claiming priority from the year 2007. It has been selling the drug under the brand name of ‘Spexib’ in India, and ‘Zykadia’ in international markets. In 2017, Natco filed a post-grant opposition against the patent under Section 25 of the Patents Act, 1970, on grounds of obviousness and lack of inventive step.

In March 2019, Natco started producing generic Ceritinib capsules branded as ‘Noxalk’. Novartis sued Natco for infringement in the Delhi High Court. The court held that the rights of a patentee continued to subsist even during a post-grant opposition and restrained Natco from manufacturing any more of the product. On 16th August 2019, the Controller of Patents passed an order revoking Novartis’ patent. Consequently, in the same month, the Delhi High court lifted its injunction against Natco, allowing it to manufacture generic versions of Ceritinib. Novartis then appealed to the IPAB, which has stayed the revocation order.

Controller’s Oversight in Admitting Evidence

IPAB has stayed the revocation of the patent as the Controller’s order was based on additional evidence filed by Natco (on 4th April) after the fixing of the hearing. This is in clear violation of Rule 60 of the Patent Rules 2003 which prohibits any party from filing further evidence, once the hearing has been fixed. While Rule 62(4) permits parties to rely on publications not cited before by giving a five-day-notice, Natco’s additional evidence has been filed under Rule 138, through which the Controller exercises discretionary power to extend time periods prescribed under the Rules.  Novartis claims that it was not provided any notice regarding the additional evidence. The Controller disputes this, stating that while no written notice was provided due to lack of a prescribed procedure for giving a notice under Rule 138, they informed Novartis orally (see para 25 of IPAB order). Since Rule 138 indeed provides no specific manner of giving notice, if the Controller did inform Novartis orally, no rules were flouted per se (more on this later).

After the hearing held on 9th and 10th April, Novartis filed affidavits replying to the additional evidence, but the same was not acknowledged.  It then approached the Delhi High Court which ordered the Controller to take into consideration all documents submitted till 11th July. This included the rebuttal evidence filed by Novartis on 9th July. The Controller’s revocation order reveals that it took into account Natco’s additional evidence, terming it a very important and relevant document. The Controller then suggests that a copy of the evidence was sent to Novartis (see para 6) and additional time allotted, but it failed to submit any ‘reasonable and convincing argument’.

This is where it gets cryptic. The Controller’s statements give the impression that Novartis’ rebuttal was considered, but was not found convincing. And yet, the entire order makes no reference whatsoever to the rebuttal evidence, whereas it has devoted a lot of space to discussing Natco’s evidence. The IPAB order indicates that the rebuttal evidence was not considered at all by the Controller. Natco admits the same (para 30). Did the Controller then actually mean to say that there was no reasonable excuse for the delay in filing on Novartis’ part? Even if that is the case, the High Court order directed it to consider the evidence anyway.

Either way, IPAB is convinced that the revocation has not been decided properly. This case resembles that of the Pharmacyclics v. Laurus Labs (Ibrutinib patent opposition) which was stayed by IPAB as the Controller had similarly bypassed a court order directing it to submit the additional evidence filed by parties to the Opposition Board (discussed on the blog here). This High Court order provides clues as to why IPAB may have stayed the revocation, despite there being lack of clarity on Rule 138. In Para 34, the court observes that Rule 138 has to be used ‘sparingly’ and in a manner that is ‘not detrimental to any party.’ It goes on to say that, ‘This power, however, would not result in extending the period specified in Rule 62(4).., where publications can be cited five days prior to the hearing. If the one month period is read into this provision, the entire purpose of the scheme would be set at nought and thus while under Rule 60 further evidence can be filed, once the notice of hearing is issued, no extension can be granted.’ Thus, even if an oral notice was given, the exercise of this Rule against Novartis’s interests is impermissible.

Why the Evidence Matters

Natco has opposed the patent, arguing that the compound structure of Ceritinib is a part of the Markush structure of two previous patents held by Novartis (IN 240560, US 7893074 and IN 232653, US 7964592). Those familiar with Patent law would know that Markush formulae represent chemical structures which contain a group of several related chemical compounds, often running into millions. According to Natco, Novartis already owns patents over the whole genera of chemical compounds. The additional evidence submitted on 4th April consists of excerpts from US FDA’s Orange Book: Approved Drug Products with Therapeutic Equivalence Evaluations wherein the US versions of these genus patents have been listed. Natco argues that the listing of these patents amounts to disclosure and thus constitutes prior art. Consequently, Novartis cannot hold a second ‘species’ patent over a specific compound within the genus patents.

Novartis’ rebuttal evidence compares Ceritinib’s structure to that of the genus patents. It suggests that while those patents disclose one or more broad genera of compounds that may encompass Ceritinib, only the application of a very specific combination of substituents from a wide list of possibilities would result in Ceritinib. None of these genus patents identify Ceritinib’s specific compound structure or its advantages. Novartis also argues that publication in the Orange book does not amount to disclosure, claiming that it is possible to disclose a genus of compounds without disclosing a specific sub-genus or species.

Clearly, both of these sets of evidentiary documents are crucial to the case.

Genus and Species Patents

While India’s Patents Act does not specifically address the conflict between genus and species patents, the issue has arisen before. In Novartis v. Union of India (Novartis), the Supreme Court looked into whether the species of imatinib mesylate and its betacrystalline form could have been covered by their genus, the Zimmerman patent while not being disclosed by it. The court refused, observing that the Zimmerman patent had disclosed the process of preparation of Imatinib Mesylate and decribed its pharmacological properties (see para 157). However, it refrained from ruling that a genus patent compulsorily precludes species patents. As regards the betacrystalline form, the court accepted its novelty but concluded that it provided no therapeutic efficacy beyond that of Imatinib Mesylate, and therefore failed the requirements of Section 3(d).

Applying this principle, if Novartis’ argument that Ceritinib was not disclosed and its advantageous properties were not identified by its genus patents is accepted, the case could turn in its favour. However, it would still have to withstand Section 3(d)’s test of therapeutic efficacy. So far, Novartis has not provided any in vivo efficacy data in comparison to compounds disclosed in the other two patents (para 5 of revocation order).

IPAB’s stay order must be contextualized in the background of Delhi High Court’s recent decisions in two cases based on genus-and-species patents. These cases concerned AstraZeneca’s Ticagrelor patent and had nearly identical factual scenarios but resulted in conflicting decisions. AstraZeneca claimed that Ticagrelor was not disclosed in its genus patent that consisted of a Markush structure covering 150 quintillion compounds. In the first case AstraZeneca v. P Kumar & Ors., decided in August 2019, Jayant Nath J. perused AstraZeneca’s statements in Form 27 and previous US litigations, wherein it had acknowledged that dealing in Ticagrelor is in breach of the US equivalent of the genus patent. The court then relied on Novartis to reject AstraZeneca’s argument that although the genus patent has worked through Ticagrelor, Ticagrelor is not disclosed in it.

The second decision for AstraZeneca v. Emcure and AstraZeneca v. MSN Labs, was delivered in January 2020, with Mukta Gupta J. arriving at the exact opposite conclusion. Relying on the fact that Novartis did not categorically reject species patents once disclosed by the genus patent, the court ruled that Ticagrelor was produced and marketed under the species patent despite being covered under the genus patent. A previous post on this blog has properly dissected this decision, criticizing the court’s interpretation of Novartis. As the post explains, the focus should not be on the coverage-disclosure dichotomy, but on whether the genus patent enables the species. In fact, SC had rejected Imatinib Mesylate because the Zimmerman patent enabled it by identifying its process and advantages.

The Ceritinib case depends strongly on what the IPAB makes of the assertion that the previous patents neither disclose Ceritinib nor identify its qualities. The revocation order is a short document that does not consider Novartis’ evidence. It compares the structures of Ceritinib with the genus patents and dismisses the former for lacking in novelty and inventive step. The IPAB has rightly stayed the revocation, as greater scrutiny into the scope of the previous patents is required in order to determine whether they did enable the working of Ceritinib.

As of now, the stay order may have the impact of breathing new life into the interim injunction that barred Natco from manufacturing generic versions of Ceritinib. Originally, the court had only restrained future manufacturing and allowed Natco to sell the stock of drugs it had already manufactured, taking into consideration the interest of cancer patients. After almost a year, generic Ceritinib drugs might go out of market again and the price of the tablets may go up.

The Ceritinib patent involves a complex set of issues that require greater deliberation and debate. Readers who have more light to shed on this matter are welcome to share their insights in comments!

Last night, Anushree Rauta of the IPRMENTLAW blog, made public an order of the Appointment Committee of the Cabinet (ACC) clearing the decks for the appointment of five technical members to the Intellectual Property Appellate Board (IPAB). The order is dated July 21, 2020. Of the five members, Joint Controller B.P. Singh has been appointed as Technical Member for Patents; Advocates Lakshmidevi Somanath and Vijaykumar have been selected for the posts of Technical Members for Trademarks and Advocates N. Surya Senthil and S. P. Chockalingam have been appointed as Technical Members for Copyright. After the clearance of the ACC, the selected members have to go through the process of medical tests and police verification before a warrant of appointment can be issued by the President.

I suspect these appointments may not be legal because they appear to have been made under the old tribunal rules rather than the new rules notified in January, 2020. I cannot confirm this but I will try to get more information in this regard. In the meantime, let me provide some background about the litigation regarding the tribunal rules. In 2017, with the enactment of the Finance Act, 2017 the government amended the Trade Marks Act, Patents Act and Copyright Act to fundamentally restructure the IPAB along with a whole other bunch of tribunals. The new framework for appointments to the IPAB was laid down in the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2017. Last year, in November, a constitutional bench of the Supreme Court struck down the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2017 as unconstitutional in the Roger Mathew case. Within a few months in January, 2020 the Ministry of Finance notified the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2020. The qualification criteria and the composition of the selection committee in the 2020 rules are different from the 2017 rules.

The question now is whether the appointments in the DoPT order were made under the 2017 Rules or the 2020 Rules. If these appointments were made under the old rules, they will be struck down in a court of law. I suspect (but cannot confirm) that these appointments have been made under the 2017 rules because the only advertisement for technical members for the IPAB on the DIPP’s website is dated July 25, 2018.  Further the first line of the DoPT’s order (image above) refers to the DIPP’s office memo dated November 25, 2019 i.e. prior to the notification of the 2020 Rules in January of this year. If my guess is correct, the 5 technical members have been appointed under the older 2017 rules which have been struck down as unconstitutional. If these appointments were made under the 2020 Rules, a new advertisement for the posts should have been published on the DIPP’s jobs website post January, 2020 to start a new recruitment cycle – which it is not. It is therefore very likely that these appointments are illegal under the law.

Changed patent law landscape ©

We’re pleased to bring to you a guest post by our former blogger Rajiv Choudhry, analysing the recent IPAB order that set aside the Patent Office’s order rejecting a patent application for a computer related invention (titled ‘method and device for accessing information sources and services of the web’) after re-examining it pursuant to the direction issued by the Delhi High Court last year.  

Rajiv is a practicing advocate based in New Delhi. He specialises in IP law, with a focus on high – technology and patent law. His core IP interest areas are the intersection of technology and IP, Indian IP policy, innovation, and telecommunications patents. His previous posts on the blog can be viewed here, here and here.

IPAB’s Ferid Allani Order and the Changed Indian Patent Landscape for Software Patents

Rajiv Choudhry

Shortly before the term of a patent (if granted) would expire, in an ex-parte order authored by Justice Manmohan Singh, the IPAB finally granted a patent to Ferid Allani for an application filed almost two-decades ago for an invention relating to a ‘method and device for accessing information sources and services of the web.’

Brief Prosecution History of the Application – from Filing to Grant

Ferid Allani had an idea and filed a provisional patent application for it on 30.12.1999 in France and it was given the number 99/16704. Thereafter, a PCT application was filed on 29.12.2000 (PCT/FR2000/003759) and it entered India as IN/PCT/2002/00705/DEL on 17.07.2002.  As such, the term of the patent expires on 29.12.2020 (twenty years is the life of a patent). The IPAB granted the patent on 20.07.2020 (i.e. about 5 months before expiry).

Critique

Even though the order takes the pain to explain what the technical effect of the invention is, and the differences in the prior art cited, what is missed is whether the claims incorporate the features having the technical effect. Hence, the claims run afoul of section 10(1)(c) of the Patents Act – invention is limited in scope to the claims.

In my view, the patent claims are directed towards a structured search syntax generation and displaying corresponding results to user. A structured search syntax is user generated / based on user input logically created.  For example, sports —-› teams —-› merchandise if the search is for a merchandise only.

The judgement (Para 23.e) provides:

“e. Through the preliminary selection steps of the present invention, the query of the user is refined and narrowed down at each step so that the user is interactively made to target a particular and well-defined information and a website address is particularly generated locally (without using the internet bandwidth). Thereby, the user is taken directly to the said website, limiting the use of the bandwidth resource only once per search.”

About the Claim

The way I read the claim (the key feature is that it stores certain pages in a tree structure (like a directory and files within it), sends out a query based on user input and displays to the user results based on query and populates the display based on information so obtained.

The claim here does not mention how the internal directory structure is created.  It just says…beforehand locally stored within said communication device…This means that the user provides the necessary feedback to structure the query.

Compare this with the US and European claims:  both are narrower and include the invention.

What is the Invention (from the specification)?

This part (about user choosing the tree) is simply stated as organized within the structure of a tree menu… and in my view should have been expanded to include this particular user input.

Second, I see this as a GUI (graphical user interface) to conduct a search which is itself optimized.  Of course, search optimization is not new, nor was new, in 1999 (before the priority date).  We had super computers which used time sharing concepts and had highly structured query systems for users to be able to make use (because time was a constraint, the problem had to be entered efficiently / optimized).

Consider an article of 1991, by I.V.Pottosin discussing ‘Analysis of Program optimization and further development’.  In the article the author notes that, ‘[F]or contemporary supercomputers, the requirement of the proper use of hardware peculiarities is added’ …in addition to… ‘saving computer resources such as time and memory’.   As such query optimization is well known in the art given that the cost of creating a software to run the supercomputer was almost equal to the hardware cost in the mid 1980s.

For more information, one may also see the interesting book by Russell C. McGee titled “My Adventures with Dwarfs: A personal history in mainframe computers”, available here, and on time-sharing of mainframes – The Origin of the VM/370 Time Sharing System by R.J. Creasy – available here.

If one sees the history of Graphical User Interface (GUI) (see Arstechnica article here), a search system like that of the operating system can be built using the GUI.  How does one search in the Windows / Linux / X-Windows / Apple GUI environments ? This was available in the 1990s to a person skilled in the art and whether it is obvious, is debatable.

But what is not debatable is that the key part of structuring the query is missing from the claim language.  This is where the invention resides and its absence in the claim is glaring.  In 1999 when the invention was made, the basic ingredients to reach the invention were there – search optimization to a query and GUI were both available – search optimization from decades of mainframe time sharing and GUI from the Windows system.

I have no doubt that the combination of search (for something on the web) with GUI was not there in 1999 but this aspect is missing in the claims.

Second, the Patent Office should have been clearer in its rejections – a two-page rejection for a matter that has travelled to both the IPAB and the High Court shows that it is somewhat different from other ordinary matters. Repeating a citation with the same rejection is a recipe for inviting trouble (for the Patent Office) – the least the Patent Office could have done at any point in the history of this application – is to at least have its cited references properly with specificity.  This should have not been left ambiguous.

Third, the Patent Office was not represented during the hearing at the IPAB.  Given that an expert body had already provided its views to the applicant multiple times – both before and after it went to the High Court and IPAB – the IPAB should have asked for written submissions from the Patent Office. This is even more important because the IPAB itself had rejected the patent application once before.

Further, given the IPAB had a different view – it should have heard the Patent Office – otherwise what stops any applicant going to the same forum and re-agitating the issue just because the bench composition is different.

There is no reasoning given by the IPAB on this aspect – what changed in the intervening period – that the application became patentable.

Other issues are highlighted as they appear in the post.

Journey of the Application

Patent Office  ‹—-› High Court ‹—-› IPAB ‹—-› High Court ‹—-› Patent Office

The arrows above are only indicative of the process followed by the application.  A request for examination for the patent application was filed on 19.11.2004 and the application was rejected by the Patent Office on 21.02.2005 on the grounds that the subject matter lacked an inventive step (Section 2(1)(j)) under EP0847019 (hereafter D1).

The Applicant then on 17.09.2005 replied to the First Examination Report (FER) arguing that the application was patentable.  Four days later, on 21.09.2005, the Patent Office again rejected the claims as being unpatentable under Section 3(k) of the Act.  No response was filed to the same and the application was deemed to be abandoned under Section 21(1) of the Act.

The Applicant then filed Writ Petition 6836 of 2006 challenging the order of abandonment on 2.05.2006.

The High Court of Delhi on 25.02.2008 directed the Patent Office to review the application by providing necessary opportunity of oral / written hearing.

The Applicant then filed a further response to the objection / rejection on 20.03.2008.  The agents appeared for the hearing and submitted written submissions on 12.08.2008.

A couple of months later on 18.11.2008, the Patent Office again refused the application.  An appeal against this refusal was filed before the IPAB on 20.02.2009 and the IPAB too dismissed this appeal.

Then an appeal against this IPAB rejection was filed before the Delhi High Court on 19.12.2013 and the High Court on 12.12.2019 disposed off the petition and directed the Patent Office to re-examine the patent application.

Then a hearing was held before the Patent Office on 27.01.2020 and on 07.02.2020 it once again refused the application under the same grounds that it lacks novelty, etc. under Section 3(k).

As already mentioned, the Patent Office should have been more clearer in its 2020 rejection and should have properly made out a case for rejection rather than repeat the content of the previous rejections.

That said, if one sees the delay – most of it is in courts – rather than before the Patent Office – so one really cannot point out the cause of delay as our Patent Office.

Analysis of the Patent by the IPAB (para 20 onwards)

The IPAB first discusses the state of art and the problem that was intended to be solved.  In para 23, it provides:

“23. As per appellant the present invention is that :-
a. As stated above, prior to the present invention, whenever a user wished to conduct a search over the internet, in response a high number of hyperlinks were returned and user had to make a choice again.

b. To overcome at least the said disadvantage(s), the present invention proposes to first extract clear and concise details of the information which the user is looking for, in a localized manner [i.e. on the user’s computer], before passing a well construed query to internet.

c. It is important to note that the access was only in relation to the address on the website and not to the data unlike the prior art document. 

d. The steps taken to extract the information on the user’s computer are called “preliminary selection steps”, which are implemented locally on the user’s computer itself, in order to avoid access to the web, unless necessary information for a well formed query is obtained from user.

e. Through the preliminary selection steps of the present invention, the query of the user is refined and narrowed down at each step so that the user is interactively made to target a particular and well-defined information and a website address is particularly generated locally (without using the internet bandwidth). Thereby, the user is taken directly to the said website, limiting the use of the bandwidth resource only once per search.”

Then in para 24, FIG. 1 of the application is reproduced with annotations (presumably provided by Applicant / agents).

“24. As in the present invention, the web site address is generated locally and passed on to a network for retrieving the required information /data and consuming the internet bandwidth only once, no bandwidth is assigned unless the user has provided sufficient information to take such user to the particular website address, therefore avoiding the unnecessary wastage of bandwidth.

Thus, essentially, the present invention delays emitting of a “final” request to the internet by locally implementing preliminary selection steps and using the said locally implemented selection to form a well-construed query (a locally formed website address) which is finally emitted to the Internet, thereby gaining the technical effects as detailed in the next section.”

Till here, the IPAB also structures the decision and identifies the key feature of the invention as essentially – forming a well-constructed query…emitted to the internet..

Given this background, the technical effect of reduction of bandwidth by a structured query is guaranteed.

“b. The technical solution provided by the present invention is to retrieve the detailed information about the result which the user is looking for, and thereafter taking the user directly to the desired internet resource (utilising the said detailed information) e.g. a website, rather than providing a list of results for user to choose from, therefore making it inconvenient for the user. As the user has accurately specified the resource required, the bandwidth so consumed is guaranteed to assure a successful result to the user.

c. Thus, the present invention delays emitting of a final request to the internet by locally implementing preliminary selection steps to form a well construed query, which is finally emitted to the internet.

d. The present invention drastically reduces the mean time duration for accessing the searched information, because the user does not spend time in selecting and reviewing multiple search results as returned by the other prevalent technologies in 1999. Therefore, the user gets the desired results without compromising on the relevancy and quality of results.

e. The present invention avoids the use of unnecessary bandwidth (for emitting a request on the internet) as the same is utilized only once per request, thereby saving the network resources. i.e. till the user has not provided sufficient details in the search request, no request is emitted to the internet and bandwidth is not consumed.

f. The present invention is also economical, as the internet bandwidth is consumed only once per search. Since, the present invention drastically reduces the use of bandwidth per user, it is likely to result in a decrease in network congestion, resulting in increased quality of internet service to the user.”

Para 27 of the decision discusses an example disclosed in the invention disclosure – but because it is not present in the claims it is kind of pointless in discussing it.  This is what should have been in the claim : i.e. this is the specific tree structure of icons as thought of by the inventor – and should have been claimed.  Because the current claims do not discuss this, they are overly broad.

Para 29 of the decision provides more details as regards the invention:

“29. The said findings are interpretations are not with the spirit of the order passed by the High Court. From the entire gamut of the matter, it appears to us that in view of previous invention, technical problem which the invention solves in the present application is that the present invention was a critical addition to the functionality of the internet in 1999, as the state of the art at the time, faced the following limitations –

a. Before the disclosure of the present invention, whenever a request was sent for accessing a particular information resource by a client / user, in response a high number of hyperlinks were returned and the client / user had to make a choice again, thereby making a constant to and fro. Repeated access was required to the internet and the connection to the internet had to be made multiple times, in order to derive the accurate result of the user’s query.

b. The technical problem which existed in the art prior to the present invention was that a typical user was made to use precious bandwidth even before the desired result was provided to the user.

c. Prior to this invention, a request for making a search was merely a generalized one which resulted in generation of multiple request-answer step(s) and such a delay corresponded for each such request for the information resource.

d. Such a delay corresponded to each request-answer step, which is emitted on the Internet. The existing art prior to the priority date of the invention, would immediately assign network resources in delivering a number of results to the user, even before the user could indicate whether the list of results so received are useful to it or not.

e. Allocation of network resources such as bandwidth, even before the user receives the desired results, resulting in jamming of network traffic, servers, and increase in the memory size of pages etc., and a corresponding delay in the search process, thereby making the search process long, tedious and uncertain. The said disadvantages increase manifold when multiple users would make use of the search process, as described above in points (a) to (d).

f. The search and navigation methodology being used in the art prior to the present invention was difficult to understand and non-intuitive, which created problems for users, who are unfamiliar with the system.”

Para 30 – 41 discuss that the Patent Office had not applied Indian but EU law as regards computer related inventions. Here, both Indian law (even if one considers the CRI guidelines issued by the Patent Office) or European Law, or for that matter even US or Japanese patent law – the basic principles are the same: one has to first construe the claims, then identify the contribution made, then determine whether it falls under any exclusion and finally to determine if there is any technical contribution.

Here, the Patent Office did exactly that – it found that claims as provided by the Applicant were not inventive – as they did not contain the key inventive step – of the creation of the tree structure and the query stopped. The Patent Office cannot be blamed if the applicant despite several opportunities does not bring the claim in line with the requirements.

Para 43 identifies that 19 ½ years have passed – but as identified earlier – the delay is not at the Patent Office’s end – but at the court’s end, either at the High Court or the IPAB.  In all about 12 years were passed just in courts – Patent Office took about 6 years including the time for filing of request for examination and about 1½ year in deciding multiple petitions filed by the Applicant.

In conclusion, this case will change the patent law landscape as it relates to software patents in India unless appealed. This is because courts now favour grant of patent applications for software.