We are pleased to inform our readers that NLSIU Bangalore’s Indian Journal of Law and Technology (IJLT) is inviting original and unpublished manuscripts for publication in Volume 17. For further details, please see the call for papers below:

Call for Papers: NLSIU’s Indian Journal of Law & Technology Vol. 17: Submit by October 31, 2020

The Indian Journal of Law & Technology (IJLT) is now accepting submissions for Volume 17. Please send in your submissions before October 31, 2020 in order for them to be considered.

About the Journal

The Indian Journal of Law and Technology (IJLT) is a student-edited, peer-reviewed, completely open access law journal published annually by the National Law School of India University, Bangalore. The IJLT is the first and only law journal in India devoted exclusively to the study of the interface between law and technology.

The journal carries scholarship in the areas of intellectual property rights, internet governance, information communication technologies, access to medicine, privacy rights, digital freedoms, openness, telecommunications policy, media law, innovation, civil liberties and technology etc. along with focusing on perspectives on contemporary issues involving the intersection of law, technology, industry and policy.

The previous issues of the IJLT have featured scholarly writings by renowned authors such as William Patry, Justice Pratibha Singh, Justice Michael Kirby, Yochai Benkler, Jonathan Zittrain, Donald S. Chisum, Justice S. Muralidhar, Benjamin Edelman, Gavin Sutter, Raymond T. Nimmer, John Frow, Christoph Antons, Lawrence Liang and Shamnad Basheer.

The Journal is now indexed on research databases such as WestLaw, HeinOnline, the Legal Information Institute of India, SCC and Manupatra. Following the policy of open access, all the articles from previous issues are available on our website: http://ijlt.in.

Categories of Submissions

1. Articles (5000-12000 words).
2. Essays (3000-5000 words).
3. Case Notes, Legislative Comments, Book/Article Reviews (2000-6000 words).

The above limits are exclusive of footnotes. Substantive footnoting is allowed.

Guidelines

1. All submissions must be accompanied by a cover letter stating the name(s) of the authors, their institution/affiliation, the title of the submission and contact details.
2. An abstract (not more than 250 words) must be submitted.
3. Co-authorship (up to a maximum of 3 authors) is permitted.
4. The body of the paper shall be in Times New Roman, font size 12, 1.5 line spacing. Footnotes should be in Times New Roman, size 10 single line spacing.
5. Kindly follow the OSCOLA (4^th edition) style of citation.
6. All submissions must be original, unpublished and should not have been submitted for review to other journals.
7. Please send in your submissions in MS/Open Word (*.doc OR *.docx OR *.odt).

Deadline

All submissions must be made on or before 11:59 p.m., October 31, 2020. Please send original, unpublished papers.

Submissions must only be sent to ijltedit@gmail.com – Submissions made to any other e-mail ID will not be considered. Please feel free to browse our website (www.ijlt.in). For any further queries, you can contact Jyotsna Vilva (Editor-in-Chief): jyotsnav@nls.ac.in and Karthik Rai (Deputy Editor-in-Chief): karthikrai@nls.ac.in.

Please click here for previous posts on call for papers and other opportunities.

We’re pleased to bring to you a guest post by Dr. Betsy Rajasingh on her recently released book ‘Digital Copyright Law: A Comparative Study of the Limitations and Exceptions Relating to Education’.

Dr. Betsy is an Assistant Professor at Saveetha School of Law, Chennai. Her research interest lies in IP laws, internet laws and the inter-relationship between IP, technology, and social and economic development. After completing her LL.B. at Dr. Ambedkar Government Law College, Chennai, she went on to pursue her LL.M. in IP and Technology Law at the National University of Singapore as a merit scholarship awardee. Subsequently, she completed her Ph.D. in Law studying the impact of digital technology on Indian copyright law, with specific reference to access to education, as a UGC Junior Research Fellowship awardee at the Tamil Nadu Dr. Ambedkar Law University. Apart from research and teaching, Dr. Betsy has also practiced law in Singapore and India, with a focus on intellectual property law.

Digital Copyright Law: A Comparative Study of the Limitations and Exceptions Relating to Education

Dr. Betsy Rajasingh

I am extremely grateful for the opportunity given by the SpicyIP team to share with the IP community at SpicyIP the news of the publication of my book Digital Copyright Law: A Comparative Study of the Limitations and Exceptions Relating to Education (Thomson Reuters, 2020, ISBN 978-93-89891-35-5).

Copyright, which provides monopoly rights to copyright owners, has since its inception aimed to foster a balance between the economic rights granted to the copyright owner with public interest in access to works. This is ensured by way of limitations and exceptions (L&Es) that provide remunerated as well as unremunerated access to copyright works for exempted purposes, including educational use. Historically, beginning from the first Copyright legislation of the world, the Statute of Anne 1710 – quite aptly titled “An Act for the Encouragement of Learning” – copyright has aimed at ensuring “access” for lawful exempted purposes. On the contrary, L&Es under international law, beginning from the first international convention relating to copyright, namely the Berne Convention of 1886, up until the more recent WIPO Copyright Treaty 1996, have remained largely unregulated and rarely mandatory. This can be fairly evident from the fact that most international copyright conventions had emerged as a result of substantial lobbying from copyright owners. For instance, the Berne Convention 1886 was the handiwork of the ALAI (a private organization representing authors); the TRIPS Agreement 1995 was the success story of 12 powerful CEO’s from MNCs in USA;[1] and the WIPO Copyright Treaty 1996 the result of unrelenting lobbying of copyright industries from developed countries, primarily the Motion Picture Association of America.[2]

Against this background, my book aims to question the dominant narrative propagated by developed countries that stronger copyright protection incentivizes the creation of new works. While doing so, the book aims to establish that developmental goals in developing countries such as India do not demand strong copyright protection, which is likely to tilt the traditional copyright balance in favour of copyright owners, but warrant a copyright system that evenly balances the rights of copyright owners with public interest in access to digital copyright works for educational purposes. To this end, the book discusses two important principles that facilitate access and use of copyright works, namely, the doctrine of fair use/fair dealing and the doctrine of first sale/exhaustion by engaging in a comparative study of the Indian Copyright Act 1957 with the copyright legislations of USA, EU and UK, set against international copyright law and its developments.

Structure of the book

The book comprises of seven chapters, which can be thematically divided into three parts, the introduction, discussions on fair use and discussions pertaining to first sale.

Introduction

The book begins with a general introduction and quickly moves on to the first chapter, which introduces the reader to the concept of copyright – its origin, its philosophical justifications, its place in international law and its impact on development. It is introductory in nature and helps the reader understand the basic concepts involved in the study.

The second chapter moves on to discuss the status of copyright law in the digital age, with special reference to Digital Rights Management (DRM), a concept that recurs in the book with relation to the doctrines of fair use and first sale. It introduces the concept of DRM, including its technological aspects. It subsequently discusses the lobbying for stronger copyright protection, by way of DRM legislation, by the copyright industries in developed countries, its induction into international law through the WIPO internet treaties and its subsequent transposition to domestic laws of both developed and developing countries. In particular, it discusses the legal provisions pertaining to DRM in India by comparing it with the DRM laws of USA and EU.

Fair use

The third chapter introduces the reader to the concept of fair use/fair dealing. It studies the origin of the concept of fair use and its current status in domestic laws. In particular it discusses the fair use models used by domestic legislations, namely the general fair use four factor test, the enumerated list of fair dealing exceptions and the hybrid model using a combination of both the enumerated list and factor test, by analyzing the laws of USA, EU, UK and Singapore. The chapter subsequently moves on to discuss the Indian fair dealing exceptions with case law and ends by suggesting the most relevant model for India. This chapter serves as an introduction to fair use, discussed in detail with relation to educational use in Chapter 5.

The fourth chapter analyses the implications of the three-step test, which has been introduced in international law as a limiting provision on the enactment and interpretation of limitations and exceptions to copyright. It traces the growth of the three-step test from a fairly obscure test to a significant limitation on the use of fair dealing exceptions by discussing international instruments relating to copyright, which incorporate the test. It also moves on to discuss the influence of the test in the domestic laws of USA, EU, UK and India and serves as an introduction for a detailed analysis of the test with relation to education and related exceptions under Chapter 5.

The fifth chapter discusses in detail the implications of digitization on education and related exceptions to copyright. It introduces the concept of e-learning and discusses its impact on higher education and copyright law. The chapter uses empirical data from a survey conducted among students and from interviews with lecturers to understand the penetration and use of e-learning in India in institutions of higher learning. It subsequently discusses the usage of digital content in e-learning, with reference to online distance teaching and learning, including through MOOCs. The chapter then studies the education exceptions in international instruments, namely the Berne Convention 1886, Rome Convention 1961, TRIPS Agreement 1995, WIPO Copyright Treaty 1996 and WIPO Performances and Phonograms Treaty 1996, and the implementation and treatment of such exceptions in the national laws of USA, EU, UK and India, with particular reference to the use of digital copyright works. It also suggests changes in the Indian law, where required, to accommodate usage of digital copyright content in e-learning infrastructures. The chapter finally engages in a discussion of the implications of DRM legislation on the exceptions relating to education by engaging in a comparative study of the laws of USA, EU, UK and India. (As the current Covid-19 era has made e-learning the single dominant mode of imparting higher education in India, this chapter gains added import as it discusses the legality of using digital copies of educational materials in the online space by way of the fair use exceptions)

First sale

The sixth chapter discusses the doctrine of first sale/copyright exhaustion. It introduces the concept of parallel imports and discusses the contextual need for parallel imports in India. The chapter then discusses the international instruments and the domestic laws of USA and EU with respect to the status of copyright exhaustion in analogue works. It subsequently engages in a detailed analysis of the legality of parallel imports in India by studying the legislative developments and case law pertaining to parallel imports in India.

The seventh chapter introduces the emerging concept of digital exhaustion and discusses the effect of digitization on the secondary market for copyright works, particularly intangible copyright works sold over the internet. It begins by discussing the arguments against digital exhaustion and analyses the international and domestic developments – particularly in USA and EU – pertaining to digital exhaustion, including the technical and legal difficulties surrounding its application and implementation. The chapter subsequently examines the status of digital exhaustion under Indian law and concludes by providing justifications pertaining to the need for digital exhaustion.

The concluding chapter contains a summary of the conclusions drawn in the course of study and suggests improvements in the Indian copyright law, where required, so as to facilitate unhindered use of digital copyright content for educational purposes.

The book is available for order on Amazon and Kstor (expect delay in delivery due to Covid-19 restriction in certain areas). Questions, feedback and comments are most welcome.

[1] Susan K Sell, Private Power, Public Law: The Globalization of Intellectual Property Rights (Cambridge: Cambridge University Press 2003).

[2] Jessica Litman, Digital Copyright (Prometheus Books 2006) 122–5 0.

Note: The book has been added to our recently published list of IP books (also accessible from the Resources section of the website here).

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

Recently, the United States Supreme Court (SCOTUS), in the Booking.com decision held that a generic .com domain name can obtain a trademark registration under certain conditions. With SCOTUS granting limited protection to generic .com domain names, an interesting question arises as to what will happen when there is a trademark dispute between a .com domain name and a .in domain name and if it is now possible for a trademarked generic .com name to block the registration of a generic .in domain name. This post explores these questions.

Background

Facts

This case concerned an application to register the trademark ‘Booking.com’. The registration was rejected by the United States Patent and Trademark Office (USPTO). USPTO held that the term ‘booking’ was generic for the services the applicant sought registration for and the addition of a ‘.com’ did not create a protectable mark.

The applicant sought a review of the USPTO’s decision in the District Court of Virginia (DC). The DC held that ‘Booking.com’ was non-generic and potentially protectable as a trademark. The Fourth Circuit Court affirmed the DC’s decision. On appeal, the case went to SCOTUS, which pronounced an 8-1 decision in favor of Booking.com for limited trademark protection.

Analysis

The evidence (pg. 37) submitted by Booking.com to the DC showed that 74% of consumers recognized ‘Booking.com’ as a brand name. The Court observed that although the word ‘booking’ is an unprotectable generic term, its combination with ‘.com’ giving rise to ‘Booking.com’ did transform it into a descriptive term that could be protected once it had acquired secondary meaning.

Affirming the same, SCOTUS also noted that the existence of a ‘Booking.com’ trademark does not restrict the registration of similar generic marks like ‘carbooking.com’ or ‘flightbooking.com’ (at pg. 59 in the judgment). The issue of overbreadth of the mark was addressed by holding that in any future case, to enforce their mark in an infringement suit, Booking.com would have to prove that there is a ‘likelihood of confusion’. The Court added, “given that domain names are unique by nature and that the public may understand a domain name as indicating a single site, it may be more difficult for domain name plaintiffs to demonstrate a likelihood of confusion.”

The case brings to the forefront the need to balance two fundamental principles of trademark law. First, the need to avoid a likelihood of confusion in the minds of consumers and second, to avoid trademark protection to generic names and terms in order to protect competition in the marketplace. As an exception trademark protection can, however, be offered to terms that are ‘descriptive’ when consumers associate the descriptive term with a single product.

Indian Position

On similar facts, in Bigtree Entertainment Pvt Ltd v. D Sharma (Bookmyshow case), where the plaintiff tried to enforce their trademark claim over the domain name ‘bookmyshow.com’ and the prefix ‘Bookmy’, the Delhi High Court noted that the prefix ‘Bookmy’ was not an invented word and that it was an apt description of the business the plaintiff was involved in (i.e., booking tickets for events). Section 9(1) of the Trade Marks Act, 1999 prohibits registration of marks “which serve in trade to designate the kind, quality, quantity, intended purpose…of the goods or services”. Given that ‘Bookmy’ was a common general term descriptive of the services which are sought to be provided, it could not be accorded trademark protection. The judge in the case also noted that the facts as to whether the prefix ‘Bookmy’ had acquired a secondary meaning and distinctiveness could only be established based on evidence.

Unique Domain Names and the Likelihood of Confusion

What is interesting to note from the Booking.com case is the observation that domain names indicate a single site. Booking.com, then, uniquely refers to a particular hotel booking organization’s domain name. What made a generic term like ‘booking’ qualify for trademark protection was the attachment of ‘.com’, a Generic top-level domain (gTLD).

Apart from gTLDs, there are also Country Code top-level domains (ccTLD) Test top-level domains (tTLD), Sponsored top-level domains (sTLD), and also other levels of domains which are commonly used as suffixes for domain name registrations. ccTLD’s such as ‘.in’ (India), ‘.au’ (Australia), ‘.uk’ (United Kingdom) etc., are generally reserved for particular countries to use and are used fairly extensively.

Given the existence of other levels of domain names, an interesting question arises as to the trademark protection available for domain names beyond one level of domain registration. For instance, if the trademark protection accorded to ‘Booking.com’ extends to ‘Booking.in’ too. Interestingly, even though there is no site under the name ‘Booking.in’, web searches for the same automatically go to ‘Booking.com’. However, leaving behind the mysteries of how the internet works and looking at trademark law, it is fairly intuitive that protection offered to ‘Booking.com’ would not automatically extend to a ‘Booking.in’ mark even if they refer to the same site on the internet. Trademark law looks at the arrangement of the mark and not the product. The USPTO argued that allowing trademark protection to domain names increases anticompetitive possibilities because trademark over a ‘generic.com’ completely monopolizes the use of that domain name.

This argument is particularly interesting for the Indian context, as the Trade Marks Registry has been quite liberal in granting trademark registration to generic domain names. However, as noted in this post, the enforcement of these trademarks has not been particularly successful. The question that arises is if the grant of trademark registration to a ‘generic.com’ can preclude the registration of a ‘generic.in’ mark.

With respect to domain name registration itself, an almost universally accepted policy for dispute resolution with respect to domain names is the Uniform Domain Name Dispute Resolution Policy (UDRP). Disputes concerning India’s ccTLD (the ‘.in’ suffix) are governed by the INDRP (.in Domain Name Dispute Resolution Policy). The procedure under UDRP and INDRP requires that any dispute between a trademark holder and a domain name holder be directed to arbitration. In disputes involving a gTLD and ccTLD, a ccTLD that has adopted the UDRP is consolidated with a gTLD list and other ccTLD domain names are consolidated against a single registrant in order to be able to file a single UDRP complaint. INDRP and UDRP’s dispute resolution policies are similar, and the INDRP reads that a complaint can be brought to it if –

1. the domain name is identical or confusingly similar to the trademark at issue;
2. the registrant has no rights or legitimate interests in the domain name;
3. the domain name has been registered and/or is being used in bad faith.

A party with a trademarked domain name with a gTLD registration that has a dispute against a .in domain (ccTLD) will have to take up the issue under the INDRP and will be subject to arbitration under a single arbitrator. Given the shaky precedent with respect to enforcing domain name trademarks and the fact that most disputes till date have been concerning the use of recognized and registered marks in a domain name by an entity that has no rights over the mark (for instance, parties using ‘Dell’, ‘HUL’ marks in bad faith) it remains to be seen how a dispute between a gTLD and ccTLD will be addressed. However, given that a search for a ‘generic.in’ automatically leads to a domain registered as a ‘generic.com’, it perhaps shows that the existence of, and domain registration and trademark in a ‘generic.com’ automatically prevents some other party from using a ‘generic.in’ domain registration. Unless the ‘generic.in’ is a country-specific website of the ‘generic.com’, like amazon.com’s India specific website is amazon.in.

Conclusion

Given that trademark law protects the arrangement of words in a particular mark, it can be said that protection accorded to a ‘generic.com’ does not block the trademark registration of a ‘generic.in’, however, given that domain names uniquely identify single sites, there cannot be an overlap in the domain names that use different suffixes. So, a ‘generic.com’ entirely monopolizes the combination of the term ‘generic’ with any domain suffix, however, the trademark recognition of the same comes from consumer perception and acquired distinctiveness, which is to be proved on a case-to-case basis.

Image from here

We’re pleased to bring to you a guest post by Eashan Ghosh, sharing some thoughts on where our law is headed with dynamic IP injunctions following the Delhi High Court’s Snapdeal order from a few weeks ago. Eashan has been practicing as an intellectual property advocate and consultant in New Delhi since 2011, and teaches a seminar on intellectual property law at National Law University, Delhi. Eashan writes about Indian intellectual property law, including a monthly review of Delhi High Court judgments, on his Medium page. He’s also the author of the recently released book ‘Imperfect Recollections: The Indian Supreme Court on Trade Mark Law’. Eashan has written several guest posts for us in the past as well, which can be viewed here, here, here, here, here, here, here, here and here).

What We Understand and Imagine Dynamic IP Injunctions To Be

Eashan Ghosh

The coverage of ‘dynamic injunctions’ on these pages has doubtless been of interest to several readers. An order for UTV by the Delhi High Court last April raised some good questions on the subject. Orders for Warner Bros in July-August last year prompted several more. An order for Disney three weeks ago saw the trend follow into 2020.

Yet another Delhi High Court order, won by Snapdeal last month, also merits inclusion in this conversation.

The Snapdeal Claim

Snapdeal arrived just a week prior to Disney and, in Mr Justice Shakdher, the orders have a common author. As such, the stylistic and framing similarities in the two orders – injuncting a host of rogue websites, with liberty to the Claimants to add to their number – is unsurprising.

There are, however, two key differences.

First, Snapdeal is a trade mark infringement claim, not a copyright claim. To the theory of dynamic injunctions this means little, but the technical shift is a perceptible one: from hosting content (where the conceptual gap between infringer and infringing material is prominent) to use in titles and promotions (where this gap is not quite so clear-cut).

Second, Snapdeal succeeds in setting up a case for fraudulent use. The object of its claim is fraudulent promotions and contests run by the Defendants allied to Snapdeal’s trade marks. Taken together, they create the impression of being suggestive and proximate to the manner in which the Claimant might run such schemes themselves. This, too, is distinct from copyright claims where Defendants run the risk of infringement but little else.

(To be clear, the overlay with copyright claims is far from perfect. This is perhaps to be expected when the claim seeks an injunction on the basis of a smelted version of infringing use instead of pirated content.)

The arguments against a liberal approach to dynamic injunctions are strong, and have been addressed at length on these pages previously. I do not propose to examine them here. Instead, I will focus on some characteristics of such claims that have, so far, escaped judicial attention.

The Mechanics of Dynamic Injunctions

The first observation is simply to do with the classification of these claims. They are, for the most part, exceptional cases in the sense that the mechanics of infringement are rarely contested. The natural parallel here is to pure counterfeit actions, and a casual classification of such cases in the same category would not be far wrong.

The upshot of this is significant. The mechanics of the infringing use are such that they inject explosive potential into the amount of damage they can do to intellectual property held online. To rightsholders who hold the majority of their intellectual property online, this potential for damage is unique and considerable. However, this remains a fact that Indian courts have acknowledged only adjacently so far.

Dynamic Injunctions as Long Range Tools

The second point that requires engagement from Indian courts is what they understand dynamic injunctions to be. In UTV, Warner Bros, Disney and now Snapdeal, courts have shown that they understand very well what dynamic injunctions do. However, they are less clear on what dynamic injunctions actually are.

From the manner in which they have been deployed in India so far, dynamic injunctions are long range tools. They are a modification to traditional injunctions that are uniquely effective at a range in which a class of target Defendants (usually located abroad, with nominally zero fear of Indian courts) operate. Shorter ranges, of course, permit the exercise of other remedial tools. However, in this specific slice of range, the appeal of dynamic injunctions is sizeable. (I have stumbled upon it incidentally here, but there is a serious discussion to be had on whether dynamic injunction Claimants should be asked to show that, on balance, no other tools are likely to be effective against the Defendants they are pursuing.)

A couple of markers are baked into this characterization.

The most important is that dynamic injunctions are a variation of the standard-form injunction. They are not, importantly, a category of relief in themselves. At a minimum, this means that the procedures they exercise must permit the same access to rights and opportunities that litigants would be entitled to in standard injunction proceedings.

Similarly, they are an improvement on the standard-form injunction, and not a fix for all its limitations. The central assumption of dynamic injunctions is that the target class of Defendants will get tired of playing a game of dodge and eventually stop committing infringement. The ease of circumvention of the initial injunction and the minimal cost of doing so, though, make this far from certain. Dynamic injunctions will always be incomplete solutions.

The New Normal

The third thing Indian courts must recognize is that the fear of dynamic injunctions being normalized is a valid one. Just one misapplied instance in a case unsuited to such relief will expose every harm of dynamic injunctions. Equally, the more such orders are issued, the easier it will inevitably be for judges to glaze over individual instances where dynamic injunctions may be a poor fit. As the recent Indian history of domain name claims suggests, the shift from variation to default often occurs furtively.

There is a further wrinkle here. The 2019 dynamic injunctions set up an enforcement mechanism through Registrar courts to avoid clogging up judicial time. The issue in 2020, best illustrated by the continuing Snapdeal case, is of where the value of these post-injunction proceedings truly lies. Does it lie in feeding the same infringement claim new Defendants who commit fresh acts of infringement? Or does it, instead, lie in adding phases of infringing actions to budget for circumvention? Here, too, there are important judicial choices to be made.

Dynamic Injunctions beyond Courts

The heavy duty of vigilance cast by dynamic injunctions has one final effect.

It ensures that the possibility of detaching these disputes from the court system remains a perpetually attractive one. That, of course, is a conversation we have seen on these pages, from the judiciary taking off from these pages, and well beyond these pages. This is not the time or place to venture into that debate.

There may, nevertheless, be value in framing the conversation in a different way. Perhaps the real question to be asked – and one that Indian observers have so far overlooked – is whether these cases are adjudications at all.

I frame it so because, upto this point, dynamic injunctions in India have broadly shadowed a fairly predictable legislative arc of dynamic injunctions abroad. The Snapdeal route, however, hints at a different model of management altogether. Under its terms, there is little to hold back rights holders from setting up master litigations on online infringement management and adding species to them, like chapters in a book. Should this be the shape of the future, there is every possibility that enforcing courts will fail to vigorously assess the characteristics, structure and function of Defendant use on an ongoing basis.

More likely than not, the end-game of dynamic injunctions will require courts to eventually step aside. What fills the breach will depend on the extent to which rightsholders and executing agencies can arrive at a mutually beneficial middle ground. This is the transition that Indian courts are currently stuck mediating. Naturally, the role of individual judges in maintaining what remains, for the moment, a nervous equilibrium can hardly be overstated.

However, it is now amply clear that keeping this balance will be beyond us unless we apply some serious thought to what we understand and imagine dynamic injunctions to be.

That, surely, is something gained.

Topical Highlights

Breaking News: Controller General’s Office Agrees with Our Petition for Scrapping the Intellectual Property Appellate Board

In this post, Prashant reports on a petition he had submitted to the Ministry of Commerce along with Rahul Bajaj, asking it to consider shutting down the Intellectual Property Appellate Board (‘IPAB’). As seen from a file-noting of the Ministry accessed through RTI, the office of the Controller General of Patents, Designs and Trademarks has agreed with most of their contentions. Prashant discussed few key comments from the Controller General (‘CG’). The CG agreed with the limited expertise of technical members for patent matters. The CG also noted that since High Courts have access to technical evidence as affidavits from experts filed by parties and scientific advisors, technical expertise is not a problem for them. The CG also considered shifting appellate jurisdiction from IPAB to commercial benches of High Courts to be a good idea due to overlapping jurisdictions and most cases anyways reaching the High Courts. Prashant also noted some other interesting takeaways from the file noting such as shifting of IPAB Chennai office, setting up of new IPAB bench, and appointments to the IPAB.

DIPP Appoints ‘Technical Members’ to IPAB – Legality under Doubt

In this post, Prashant discusses an order dated July 21, 2020 concerning the appointment of five technical members to the Intellectual Property Appellate Board (‘IPAB’). He suspects these appointments may not be legal because they appear to have been made under the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2017, that were struck down as unconstitutional in the Roger Mathew case. The qualification criteria and the composition of the selection committee provided in the new rules notified in 2020 is different from that of 2017 Rules. The fact that the only advertisement for technical members for the IPAB on the DIPP’s website is dated July 25, 2018, and that the DoPT’s order refers to an office memo dated November 25, 2019, support his suspicion that these appointments have been made under the 2017 Rules and likely to be illegal.

Thematic Highlight

What We Understand and Imagine Dynamic IP Injunctions To Be

In this guest post, Eashan Ghosh looks at the Indian jurisprudence on dynamic IP injunctions following the recent order by the Delhi High Court in Snapdeal’s favour. He highlights the differences between the Snapdeal order and the Disney order that I had covered earlier, particularly its nature being a trademark infringement claim as against a copyright claim. He also points out that the mechanics of dynamic injunctions largely remain uncontested in India. Furthermore, he argues that the Indian courts have not focused on the long range nature of dynamic injunctions. He emphasises how dynamic injunctions are merely an improved form of standard injunctions and thus must permit access to rights and opportunities, and that they will always be incomplete solutions. Additionally, he highlights the consequences of incorrectly applied dynamic injunctions. Finally, he contemplates the way forward for dynamic injunctions, should they be set up in the form of master litigations or would the court need to step aside.

Other Posts

The Dilemma of Graphical User Interfaces: A Need to Rethink Design Protection?

In this post, I study the protection provided by the Designs Act, 2000, and the accompanying rules, to Graphical User Interfaces (‘GUIs’). I note that Class 14-04 of the classification of articles deals with ‘Screen Displays and Icons’ and covers GUIs provided they satisfy other requirements such as originality and no prior publication prescribed by law. I then look at the unclear and contradictory stance taken by the Designs Office in granting registration for GUIs. Particularly, I assess a rejection of registration for an application filed by Amazon for registering a GUI, and contrast this to some recent instances where registration has been accorded. Furthermore, I argue that the Amazon order misapplied the existing principles of law concerning, inter alia, the non-functionality of GUIs, their visual appeal, and the understanding of the term ‘Article’. This becomes particularly problematic in light of India’s recent accession to the Locarno Agreement. I conclude by discussing a possible sui generis framework for protection of GUI designs, detaching protection from the article concerned.

Revocation of Novartis’ Ceritinib Patent Stayed: Unraveling the IPAB Order

In this post, Adyasha looks at the confusing orders surrounding revocation of Novartis’ patent in the cancer drug, Ceritinib. Based on a post-grant opposition filed by Natco, Novartis’ patent was revoked by the Controller on grounds of obviousness and lack of inventive step. Recently, the IPAB has stayed this revocation. The stay order points out that the Controller, while relying on Natco’s delayed evidence showing Ceritinib to be a part of the Markush structure of two previous patents held by Novartis constituting prior art, fails to consider Novartis’ rebuttal evidence that the said genus patents did not identify Ceritinib’s specific compound structure or its advantages. Adyasha then looks at the Indian jurisprudence on genus and species patents as developed from the Supreme Court’s decision in Novartis v. Union of India. She specifically looks at the conflicting treatment of this theme by the Delhi High Court in two cases concerning AstraZeneca’s Ticagrelor patent. She considers the stay order to be a right step since greater scrutiny is necessary to determine if the previous patents enabled the working of Ceritinib.

SCOTUS Grants ‘Booking.com’ Trademark Protection: How Far can Domain Name Trademark Protection Extend?

In this post, Namratha looks at the extent of protection of generic .com trademarks in light of the recent US Supreme Court decision granting limited trademark protection to ‘Booking.com’ while noting the ‘unique’ nature of domain names ‘indicating a single site’ making it difficult to prove likelihood of confusion. She particularly analyses if trademarks with Generic top-level domains (‘gTLD’) such as ‘.com’ could be used to block Country Code top-level domains (‘ccTLD’) such as ‘.in’. She considers that protection of ‘Booking.com’ would not automatically protect ‘Booking.in’ even if they refer to the same website since trademark law is not focused on the product but the arrangement of the mark. Finally, she explains the Uniform Domain Name Dispute Resolution Policy and how a dispute between a gTLD and a ccTLD might be brought forth.

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

In this guest post, Rajiv analyses a recent IPAB order setting aside the Patent Office’s order rejecting patent for a computer related invention. He charts out the complex trajectory of this application, stretching over 19 years across several forums. He provides a detailed description of the nature of the claim, its unclear wording and its invention in combining GUI with search optimisation. His primary objection with the IPAB’s order is that while it elaborates on the technical effect of the invention, it fails to assess whether the claims incorporate the features having the technical effect which had not been done here. This absence of specification meant it was in violation of Section 10(4)(c) of the Patents Act as the protection is confined to the claims. Additionally, he argues that the Patent Office should have provided a clearer order as against a two-page rejection in an application like this with a complex legal history. He adds that the Patent Office should have been represented before the IPAB and given a hearing.

Call for Papers: NLSIU’s Indian Journal of Law and Technology (IJLT) Vol. 17 [Submit by Oct 31]

Recently, we informed our readers about NLSIU Bangalore’s Indian Journal of Law and Technology (IJLT) inviting original and unpublished manuscripts for publication in its Volume 17. The deadline for submission is October 31, 2020. Further information on the submission guidelines is mentioned in the post.

Book Release: Digital Copyright Law – A Comparative Study of the Limitations and Exceptions Relating to Education

We had a guest post by Dr. Betsy Rajasingh announcing the release of her book ‘Digital Copyright Law: A Comparative Study of the Limitations and Exceptions Relating to Education’. The book aims to question the dominant narrative propagated by developed countries that stronger copyright protection incentivizes the creation of new works. It advocates for a copyright system that evenly balances the rights of copyright owners with public interest in access to digital copyright works for educational purposes. The book comprises of seven chapters divided in three thematic parts. The first two chapters provide an introduction on copyright law and Digital Rights Management. The next three chapters discuss the law on fair use, the three part test on exceptions to copyright, and the implications of digitization on education and related exceptions to copyright. The remaining chapters discuss the doctrine of first sale/copyright exhaustion, with particular focus on the emerging concept of digital exhaustion. The book can be found in the recently published list of IP books on this blog (also accessible from the Resources section of the website here). Further details on the essays and links for ordering the book online can be viewed in the post here.

Decisions from Indian Courts

• Madras High Court, in a division bench decision, stayed the single judge order restraining Patanjali from using the ‘Coronil’ mark and imposing costs to the tune of Rs. 10 lakh. [August 14, 2020]
• Delhi High Court, in TM25 Holding BV & Anr. v. Karthik Bhaskar & Anr., granted an ex-parte ad-interim injunction restraining the defendants from using the Plaintiff’s registered ‘WOKKIE’ device mark and other marks for selling its goods. [August 13, 2020]
• Delhi High Court, in FK Bearing Group Co. Ltd. v. Kunal Trading Corp. & Anr., granted an ad-interim injunction restraining the defendants from using the plaintiff’s registered trademark/ artistic work ‘FK’for dealing in bearings or other allied goods. [August 10, 2020]
• Delhi High Court, in Elementia Wellness Pvt. Ltd. v. Tes Beauty Services Pvt. Ltd. & Anr., granted an ad-interim injunction restraining the defendants from using the mark ‘Tatva Spa’ or any other mark deceptively similar to plaintiff’s earlier well-known mark ‘Tattva Spa’ for their spa services or on any website. [August 6, 2020]

Other News from Around the Country

• Punjab’s Chief Minister Amarinder Singh has opposed the inclusion of Madhya Pradesh in the states producing the Basmati rice claiming that it would hamper farmers’ interests and exports for states having a GI tag.
• A famous Ahmedabad based restaurant chain by the name of Honest Restaurants has sued a jelly producing company for trademark infringement for selling its products under the brand name of ‘Honest Jellies’.
• Pharma Company Zydus Cadila has launched the Remdesivir drug, used on severally critical COVID-19 patients in India, by the brand name Remdac.
• A Bengaluru based startup, IShield, has developed an affordable self-disinfecting mask for preventing the spread of COVID-19, and has applied for a patent for using the molecule involved on a fabric for disinfecting the virus.
• An Indian company named Excel 3D Advanced Technologies has made an N-100 mask called XD100 and has applied for a patent due to its unique design.
• Amazon has obtained patent in India for its method of auto authentication of mobile transactions based on user’s location and proximity of merchant location.
• A Surat-based software engineer has invented a low-cost touch-free panel for lifts called ‘Sparshless’ to reduce contact on common surfaces amidst the pandemic, and does not intend to patent the invention.
• Vivo’s sub-brand, iQOO, has filed trademark applications for the marks ‘iQOO PAD’ and ‘iQOOBOOK’.
• The Bengaluru-headquartered company, Mphasis, has received a US patent for its AI system to analyse unstructured data sets.
• Huawei has filed for a patent for an all-screen fingerprint technology in six countries including India.

News from Around the World

• The Australian government has made an announcement regarding proposed reforms in the country’s copyright laws concerning, inter alia, orphan works and the fair dealing exception in the digital world.
• The Brazilian Supreme Court has taken up the case to adjudicate the tussle between IGB Electronica and Apple on the exclusivity of rights over the trademark ‘iPhone’ in Brazil.
• Michael Skidmore, the lead singer and songwriter of the band Spirit, has petitioned the US Supreme Court to take up an appeal concerning copyright infringement by Led Zeppelin’s ‘Stairway to Heaven’.
• Apple has been ordered to pay over $500 million as damages by a Texas court in a 4G patent infringement suit filed by PanOptis.
• The US Postal Service has filed for a patent for safe mail-in polling amidst the pandemic using blockchain technology.
• The US Court of Appeals for the Ninth Circuit ruled in favour of Qualcomm, overturning a district court decision that found it to be in violation of the antitrust law owing to its patent licensing model.
• Microsoft’s new branding for providing low-code capabilities on its Power Platform and Teams Products as ‘Dataflex’ has been stalled due to the existence of a prior mark with the same name.

Inter-University Centre for IPR Studies (IUCIPRS),Cochin University of Science and Technology (CUSAT) is inviting applications for Minor Research Project 2020-21 in the research area of IPR for teachers from across Kerala and the rest of India. The applications must reach the University on or before September 25, 2020. For further details, please see the announcement below:

Minor Research Project at IUCIPRS, CUSAT

Inter-University Centre for IPR Studies (IUCIPRS), Cochin University of Science and Technology (CUSAT) is inviting applications for Minor Research Project 2020-21 in the research area of IPR for teachers from across Kerala and India. The Minor Research Project was instituted last year with the objective of encouraging young teachers from across Kerala and the rest of India, to undertake research in the area of intellectual property rights. Every year five (5) project awards are earmarked. One minor research project is kept open to teachers from Central & State Universities/ Government/Aided Colleges across India, provided sufficient number of eligible applications are not received from within Kerala. The norms of the Minor Research Project are available below and the Application format for the same can be accessed here. All the applications duly completed along with the research proposal should be sent to “The Director, IUCIPRS, CUSAT, Cochin University P.O., Cochin – 682022” and should reach on or before September 25^th, 2020.

Norms for the award of Project

1. The IUCIPRS at CUSAT may notify Minor Research Project in the area of IPR every year for Teachers teaching in Universities/Government/Aided Colleges in Kerala. One minor research project is kept open to Teachers from Universities/Government/Aided Colleges across India, provided sufficient number of eligible applications are not received from within Kerala. The Scholarship shall be known as IUCIPRS Minor Research Project.

2. Eligibility:

a) Applicants shall be a full-time teacher teaching in any University/ Government/Aided College in Kerala or India.

b) Shall be a teacher for a minimum of three years.

3. Duration of Project: Maximum of twelve months from the date of release of the research grant from IUCIPRS

4. Project funding: Funding available for a year is a minimum of Rupees 5,00,000 which may be increased from time to time depending on the availability of funds. The maximum amount that may be released for one Minor Research Project shall not exceed Rupees 1,00,000.

5. Details of application and research proposal: Application must be in the prescribed form along with detailed research proposal. The research proposal shall include the area of research in IPR, research problem, research questions, methodology, duration of the project, possible outcome, social utility of the research, the details of the expenditure, name of the Principal Investigator and others involved in the project etc.

6. Procedure for selection: A Committee consisting of three experts nominated by the Vice-Chancellor along with the Director of IUCIPRS shall scrutinize the application along with the research proposal and may recommend for the release of grant. The selection for Minor research project is based on the quality of the research proposal.

7. Notification for Project: The notification for the fellowship shall be posted in the website of IUCIPRS in the beginning of the Financial year. The last date for application is two months after the notification.

8. Terms and conditions of award of Project:

a) The Project is awarded in the name of the Head of the Institution where the applicant is working and the teacher shall execute a bond with IUCIPRS before releasing the release of the grant.

b) 50% of the total research grant shall be released by IUCIPRS after executing the bond by the teacher concerned. The cheque shall be in the name of the Head of the Institution. The Institution shall maintain a separate account.

c) Shall make a presentation and submit an interim report at the end of six months on the progress made and the final report of the research at the end of the project.

d) 25% of the grant shall be sanctioned after the submission of the interim report. However, it shall be released after providing proof of communication regarding the submission of the article for publication.

e) Shall submit an audited Utilization Certificate along with the statement of expenditure auditing the account by a Chartered Accountant on completion of the project. The balance of 25% of the grant shall be released only on the receipt of the audited UC and on providing proof of acceptance of the publication.

f) Shall publish the research report acknowledging the receipt of the funding from IUCIPRS.

9. The above norms may be suitably amended by way of deletion/addition by the Executive Committee of IUCIPRS.

Application Procedure

The application format for the Project can be accessed here. All the applications duly completed along with the research proposal should be sent to “The Director, IUCIPRS, CUSAT, Cochin University P.O., Cochin – 682022” and should reach on or before September 25, 2020.

Please click here to view other opportunities published on the blog recently.

The movie Lootcase was recently released on Disney+ Hotstar with considerably positive reviews. However, one day prior to its release the Delhi High Court heard a petition filed by Mr. Vinay Vats seeking interim injunction on the release of the film owing to a copyright infringement claim. The court dismissed the application and declined to grant the injunction. Interestingly, the plaintiff’s claim was based on similarities as apparent in a trailer released by them in 2011 and the trailer of the film Lootcase. The court, thus, had to consider the question of protectability of the theme of a movie, a issue recently in focus due to the Bombay High Court’s decision in the Singardaan case discussed previously on the blog here and here. It is in this context that I analyse the court’s order in the Lootcase dispute on the issue of copyright protection and also its stance on last minute injunctions.

Facts

The plaintiff is the writer of the film Tukkaa Fitt that was completed in 2012 but has not yet been released. However, a trailer of the movie was uploaded on social media websites including Youtube as can be seen here. The official trailer for the movie Lootcase was released on July 16, 2020, and can be seen here. Based on this trailer the plaintiff argued that there were “substantial similarities between the plot of … Lootcase and his script”.

Copyright Protection Based Solely on Trailer of a Film

In the instant case, the court noted that the Plaintiff’s script was never available in the public domain and that “public knowledge of which is being sought to be attributed on the basis of a trailer, for a film which never saw the light of day”. Accordingly, the only element of plaintiff’s work based on which a claim of infringement could be assessed was the trailer of the movie. Given that trailers generally capture only a part of expression of the movie, it is important to note the dicta of the court in R.G. Anand v. Delux Films (‘R.G. Anand’) where the court noted as follows:

“There can be no copyright in an idea, subject matter, themes, plots or historical or legendary facts and violation of the copyright in such cases is confined to the form, manner and arrangement and expression of the idea by the author of the copyrighted work.”

As per this, no copyright can exist in mere ideas, themes, or plots of any copyrighted work. It, thus, needs to be assessed whether the defendant had copied the expression of the plaintiff’s work or merely the general theme of it. At this juncture it must be noted that while the Bombay High Court in Singardaan appears to accord protection to the theme of a work, as Anupriya rightly points out, “‘theme’ was used to refer to the rather developed story line”. ‘Theme’ in its general sense to refer to the central idea was held not to be copyrightable.

With the above backdrop, I turn to the similarities in the two works. After watching both the trailers, I believe that the only major similarity between the two of them is that they involve a bag of money lost by a gangster and found by a common man. Apart from this commonality of the abstract theme, there does not appear any similarity in the expression. Rather, based on the trailers, the way both the works express this general theme is significantly different. For instance, Tukkaa Fitt involves experiences of three men with the money, with the female protagonist also attempting to con them. Lootcase, on the other hand, focuses on a middle class man with a family including his wife and his son. In any case, the mere possibility of holding an entire movie to be infringing anyone’s work judged solely by a trailer sounds like an absurd proposition. The hypothetical that a movie with a runtime of 132 minutes can be made based solely on a less than 3-minute trailer sounds highly stretched. This could have led to an infringement only if parts from the trailer were directly lifted and placed in the movie which is not the case here.

Despite the above direct argument, possibly in order to be full proof, the court also goes through the plaintiff’s script to determine if there were any similarities with Lootcase. The only possible reason for doing so would be if there was an allegation against the defendants that they somehow gained access to the plaintiff’s script. This, however, appears to be missing in the instant case. Nonetheless, after going through the script, the court noted that there were considerable differences between the script and the film. Moreover, in relation to the common broad theme, the court rightly highlighted that this “plot idea is as old as the hills” and that it was not the “exclusive province of the plaintiff”. After conducting this analysis, I believe the court arrived at a correct decision to protect the idea-expression dichotomy and the principles laid down in R.G. Anand. A contrary decision would have been against the long standing tenets of copyright law and the welfare theory, and would lead to overprotection.

An interesting hypothetical here would have been if the plaintiff had filed an infringement claim against merely the trailer of Lootcase as against the entire film. In that case the element of absurdity as I mention earlier would have been eliminated and the focus would have solely been on a comparison of the two works. However, the result would still possibly have been the same. While Tukkaa Fitt’s trailer focuses more on the turn of events after the three men find the money, Lootcase’s trailer barely touches upon the movement of money, focusing more on the backstory of the protagonist finding the bag of money and a comical NatGeo punchline. The similarities would again in the broad theme and unprotected. In any case, an action against the trailer would not have achieved much gain for the plaintiff anyways, which is why this issue was not raised.

Last Minute Injunctions

In addition to the discussion concerning the infringement of rights, if any, the court also was averse to grant the interim injunction on the last minute approach of the plaintiff. It highlighted the defendant’s arguments claiming that the promos of Lootcase were in public domain since June 2019 and its story had been covered in print media since September 2019. Even otherwise, the court noted that as the trailer was launched on July 16, 2020, there was “no justification for the plaintiff having approached this Court on the eve of the release of the film” and considered it an example of “misuse of the judicial process”. It cited the Bombay High Court decision in Dashrath B. Rathod v. Fox Star Studios India Pvt. Ltd. (‘Dashrath Rathod’) (covered in an amusing piece by Prateek here) discussing these last minute tactics seeking to pressurise a favourable result, and how neither balance of convenience nor irreparable injury can be ruled in favour of the plaintiff. Based on this rationale, the court rightly refused to grant the injunction against Lootcase “twenty-four hours before it is due for release”.

Interestingly, Akshat Agrawal in his post on IPRMENTLAW has highlighted three more instances of such last minute tactics employed by petitioners and similar rationales adopted by courts. As J. Patel rightly came down heavily in Dashrath Rathod against these last minute injunctions, this facet of using intellectual property to stifle free speech is particularly worrying. The instant case involved a big banner production house that was able to assemble a strong team of lawyers to argue its claim at such short notice. In a hypothetical scenario, however, if there exists disparity in the bargaining powers of parties weighing against the defendant, such a defendant would be in a precarious situation. They might be compelled to enter into a settlement with the plaintiff in such cases to avoid greater loss owing to the possibility of an injunction on the release. This becomes even more problematic in light of the courts’ reliance on the word of the larger party in some cases while granting interim reliefs (I had highlighted one such instance here). In this backdrop, it is good to see the courts giving greater focus on the elements such as balance of convenience or irreparable harm that are necessary for securing interim relief which are usually given a mere lip service in application.

Featured image from here

The Centre for Law and Policy Research is working on the project ‘The Philosophy and Law of Information Regulation in India’. As a part of this project, they are calling for papers to be published  as a volume of inter-disciplinary studies reflecting upon the law and practice of information regulation in India. The full call for papers is here. Brief details of the project are below:

‘The Philosophy and Law of Information Regulation in India’ project is an effort to collate multi-disciplinary scholarship on the subject of the law and philosophy of information regulation, with a specific focus on India. We recognise that such an effort cannot be bound by legal scholarship alone, and must encompass and contend with the normative assumptions of various approaches towards information technologies. We invite multi-disciplinary submissions from fields of law, history of science, science and technology studies, informatics and information sciences, political and economic philosophy, design studies, and other related fields to reflect on the relationship between law, technology and information, with specific reference to the institutions of public law in India. Submissions taking a comparative approach between jurisdictions addressing similar concerns are particularly appreciated.

We are accepting submissions of articles between 5,000-10,000 words, which may be empirical case studies relating to information regulation in India, or normative and theoretical analyses of the subject. All submissions will be editor-reviewed. Some suggested thematic areas include:

1. The history of information regulation in India
2. Privacy, data protection, and algorithmic governance
3. Due process in algorithmic systems
4. The political economy of information regulation
5. Discrimination law, equality and algorithmic fairness
6. Disinformation, misinformation and new media technologies
7. Information and electoral democracy
8. Competition law, information and markets
9. Smart cities, urban governance and automated decision making
10. Biometric technologies and embodied information
11. The Indian judiciary’s engagement with information governance
12. Identity, identification and citizenship
13. International law, trade and geopolitics of information governance

Procedure for Submission

Please email your original and previously unpublished paper abstracts to divij[dot]joshi[at]clpr.org.in by 10th September, 2020, with the subject line ‘Proposal Submission | The Philosophy and Law of Information Regulation in India’.

Abstracts should be no more than 1,500 words and be attached in a separate document in a doc/docx format.

Each proposal must contain:

1. Author’s name(s) and institutional affiliation(s).
2. Introduction to the topic.
3. Thesis statement(s) and/or research question(s).
4. Research methodology.

Accepted proposals will be required to produce a 5,000 to 10,000 words article within the project’s timeline. The articles will be workshopped at a virtual symposium held in December 2020. A selected group of discussants will be invited to write short response pieces to the accepted papers.

The final edited articles will be published as an open-access monograph.

Important Dates

1. September 10 – Submission of proposals [1500 words]
2. September 17 – Acceptance of proposals by the editors
3. November 15 – The first draft of the submissions to be sent to editors [5,000 to 10,000 words]
4. December 15 – Accepted and edited submissions will be presented at a workshop to be held virtually, in December 2020
5. March 1 – Publication of the monograph

Contact

Please reach out to Divij Joshi (divij[dot]joshi[at]clpr.org.in) if you would like to discuss potential topics or any for any other clarifications.

Please click here for previous posts on call for submissions and other opportunities.

We’re glad to inform you that LexisNexis is organizing a a virtual conference on ‘Be The Game Changer: IP Drives Business Growth’ on September 16 – 18, 2020. For further details, please read the announcement below:

LexisNexis’s Virtual Conference on ‘Be The Game Changer: IP Drives Business Growth’ [Sep 16 – 18]

Lexis Nexis is delighted to invite you to join a virtual conference organized by us, that will feature a wide range of IP experts from various corporates, law firms, government offices in Asia and the United States who will be sharing their views on how IP contributes in driving business growth.

To grow business with IP, we must explore newer, innovative or unconventional ways. Given the increased pressure on businesses and resultant uncertainties triggered further by Covid-19, now is the time to listen to opinions of renowned experts from IP industry. This conference is designed to help professionals better understand how fact-based, objective and proactive intellectual property strategies, patent filing strategies, and litigation strategies work for businesses.

When?

The conference will be held on September 16-18, 2020 from 9:30 am IST.

Who?

The conference will be led by renowned IP experts from corporates, law firms and government offices in both Asia and the United States who will be sharing their views on how IP contributes towards driving business growth.

Some of our speakers scheduled include:

• Dr. Prithipal Singh, Assistant Controller of Patents and Designs, Indian Patent Office
  An Insight Into The Field Of IPR’s in India: Recent Developments and Looking Ahead
• Mr. Gopinath A.S, Partner, K&S Partners
  Alignment Of Patent Prosecution in India in line with Global Standards
• Mr. Masato Higa, Department Manager, IP Strategy Dept. IP Division, Hitachi
  Intellectual Property Strategy at Hitachi Ltd. – Past, present and in a future
• Mr. Michael A. Sartori, Ph.D., Partner, Baker Botts L.L.P.
  The Impact on Patents by The Type of USPTO Examiner: Insights and Strategies
• Ms. Sangmi Han, General Manager, KT
  How to Manage and Optimize Patent Portfolio in the Viewpoint of Patent Prosecution

Registration

Limited seats are available. Sign up now and join us on September 16-18, 2020, for insight from global IP experts. Please click here to register.

Contact Details

If you have any questions, please feel free to contact us at ip@lexisnexis.com.

You may follow the updates on our events on our LinkedIn page here.

We’re pleased to bring to you a guest post by our former blogger Rajiv Choudhry, discussing the implications for India of a recent decision by a German court granting an injunction restraining Mecedes maker Daimler for infringement of a standard essential patent (SEP) held by Nokia. 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, here, here and here.

Nokia Gets Injunction against Mercedes Maker Daimler for Infringement of its SEP in Europe

Rajiv Choudhry

Recently a German court, in a SEP / FRAND matter involving Nokia and Mercedes maker Daimler Motors, issued an injunction against Daimler for its infringement of Nokia’s SEP.  See press release issued by the court here in German (you may choose to automatically translate the press release in English).

Basically, Daimler had infringed Nokia’s patent EP2981103. This patent is related to Zadoff-Chu sequences.  You might ask what is so great about Zadoff-Sequences: well they are the basic access signal in LTE.  In particular, the patent uses ZC sequences in the preamble for random access (i.e. to connect the mobile unit to the base station) / PRACH signal.  Those that are technically oriented may see TS 36.211 to see the use of the signal.

Florian Mueller, who broke out the news in his blog Foss Patents notes that Nokia may have to give a bond of € 7 Billion (yes – you-read-that-right) Billion – with the capital B.

Florian also points out the Court failed to follow an injunction roadmap as laid down in Huawei v. ZTE – with the patentee first making a FRAND offer, and the would be licensee would then have to give a counter offer (with reasoning as to why its offer was FRAND and not the licensors).

He also points out that the judgement was given despite the fact that Daimler’s component manufacturers approached Nokia to get a FRAND license – but were not licensed.

Whether or not Nokia is fined for obtaining an injunction against a willing licensee (suppliers included) as per Motorola Samsung cases remains to be seen. I would say that this is a shocking development. In the rest of the post, I will consider the implications for India.

For starters, I am thankful that this patent is not registered in India or else everyone from mobile phone manufacturers to car / truck makers would be under its domain.

And because it is not registered in India, this is evidence that my theory regarding illegality of portfolio licenses.  This is a prime example of why each patent should be held to be consistent review and not all patents be licensed under portfolio terms. Just imagine, this is a key patent for Nokia – as it pertains to the very basic structure of the LTE uplink signal.  All devices that use LTE, infringe the patent, and it is immaterial whether a person is in Europe, India, or the United States (as all use LTE, but see caveat below).  But surprisingly it is not even filed here in India.  And when it is licensed to anybody under a portfolio here in India, it is brazen violation of the law.  What is the value of something that is not even registered here?

This also proves my theory about perversity of confidentiality clubs – this is the kind of information that is designed to be protected by the licensor.  The inclusion of this patent here in a portfolio license for an India specific license is illegal.

Caveat – China is not covered because it was smart enough to develop its own LTE standard – called TDD LTE – and is somewhat different than the one is used elsewhere.  And Chinese companies do not have to pay such absurd royalties to companies that are not from China.  I wish we too had such a system!  But anyhow, back to the post.

One can only wonder why this patent was not filed in India – perhaps it is clear that it is hit by Sections 3(m) and 3(n) (because it is presentation of structure of a signal) and also Section 3(k) and we may speculate that the person responsible took the call that it was not worth it to spend money here.  Whether or not my speculation is correct about the person responsible, I believe that our law has moved to the opposite end of the spectrum given the recent Ferid Allani judgement.

Featured image from here 

Please click here and here to view our previous posts on SEPs and FRAND issues.

As a law school student, I once heard an accomplished practitioner of international law stating that “International law is English”. The WTO Appellate Body’s Report in the tobacco plain packaging dispute issued in June this year proves something more than this statement: “International law is convoluted English”. I had previously written about the WTO Panel Report in this dispute (or set of disputes), which are available here and here.

Background

To recollect, this set of disputes concerned Australia’s legislative measures to impose plain packaging norms on tobacco products (“Tobacco plain packaging” or “TPP” measures), whereby the domestic law eliminated the possibility of applying figurative trademarks, or figurative or stylised elements of composite and wordmarks to tobacco retail packaging and products. The Panel dismissed the complaint (available here). This was appealed to the WTO Appellate Body (here), which dismissed the appeal and agreed with the Panel Report.

There are multiple treaties and issues involved in this dispute, though not all are relevant for the present blog. The present focus is the TRIPS Agreement. The primary issues concerned the protection of Article 16.1 and Article 20 of the TRIPS Agreement.

Quick summary

On Article 16.1 of the TRIPS Agreement, the Appellate Body agreed with the Panel that there is no obligation on member countries to confer the positive right to use a registered trademark; there is only a mandate to confer a negative right to “prevent” others from using the registered trademark. Correspondingly, there cannot be a violation of Article 16.1 of the TRIPS Agreement if a member country prohibits the use of certain registered trademarks. All arguments of the Complainants/appellants that the right to use is necessarily inherent/implied were rejected on the application of customary rules of treaty interpretation (paragraphs 6.571-6.619).

On Article 20 of the TRIPS Agreement, though the Appellate Body did point out a particular error in the reasoning of the Panel (paragraphs 6.692-6.694), it ultimately agreed with the conclusion reached by the Panel (paragraphs 6.635-6.699). That is to say, the TPP measures were not “unjustifiable” encumbrances on the use of a registered trademark. As a matter of interpretation, without necessarily exhausting the list of factors to be considered under Article 20, the Appellate Body agreed with the Panel that the factors in determining whether an encumbrance “unjustifiable” or not, included (paragraphs 6.651, 6.659):

• the nature and extent of encumbrances resulting from special requirements, taking into account the legitimate interest of the trademark owner is using its trademark in the course of trade;
• the reasons for the imposition of special requirements; and
• a demonstration of how the reasons for the imposition of special requirements support the resulting encumbrances.

History would show that nothing is as simple when it comes to an Appellate Body report. On the specific topic of whether one must consider alternatives that impose lesser restriction/encumbrance, in 1 of the most convoluted passages I have ever read the appellate body holds (paragraph 6.653):

“…Therefore, we do not consider that the test of necessity, which includes a consideration of alternative measures, could be transposed into the examination of whether the use of a trademark is unjustifiably encumbered by special requirements under Article 20 of the TRIPS Agreement. This does not mean that, in the circumstances of a particular case, the existence of an alternative measure involving a lesser degree of encumbrance on the use of a trademark cannot be used as a consideration in evaluating the justifiability of special requirements and related encumbrances on the use of a trademark. However, such an examination is not a necessary inquiry under Article 20 of the TRIPS Agreement.”

The critique qua Article 16.1

One of the fundamental arguments raised by the Complainant in the context of Article 16.1 is that by prohibiting the use of the registered trademark, the TPP measures, over time, would make it impossible for the right holder to demonstrate a “likelihood of confusion” in an infringement proceeding. I had previously examined this in my earlier post on the Panel Report, where I had concluded that though the Complainant had not particularised their arguments clearly, this is a strong argument in a certain subset of situations (similar goods and identical/similar wordmark). Unfortunately, the particularised arguments were not raised at the Appellate Body level either.

Nevertheless, the Appellate Body agrees with the Panel’s reasoning in rejecting this argument (paragraphs 6.597-6.602; 6.614-6.619), which was this: the creation or maintenance of the factual circumstances that would result in such “likelihood of confusion” is not an obligation under the TRIPs Agreement and thus, by reducing the instances where a likelihood of confusion arises (factually), a member does not violate Article 16.1.

Immediately, what comes to my mind is a well-known doctrine: what cannot be done directly, cannot also be done indirectly. From an interpretation point of view, I would typically pigeonhole this doctrine within the broader ambit of the principle of effective interpretation (the famous ut res mages… principle), which requires that every word and every provision must be given meaning and effect, to the best extent possible. If a right is granted only on paper simply to be taken away in practice, I would consider it to be in violation of the treaty. Granted, that the TPP measures, in my analysis, erode or indirectly take away the right under Article 16.1 in a certain subset of situations. However, to not even acknowledge this is just intellectual dishonesty.

The critique qua Article 20

Another amusing part of the Appellate Body judgement concerns the interpretation of Article 20 and its relationship with Article 16. According to the Appellate Body, Article 20 does not confer a “right” on the trademark holder but only imposes an obligation on the member country from “unjustifiably” encumbering the use of the trademark (paragraph 6.610). Suddenly, it took me back to my 1st semester in law school, when I learned about jural correlatives (Hohfeld): the presence of duty in one indicates the presence of right in another. Yet, the Appellate Body believed that the presence of an obligation on member country to not “unjustifiably” encumber the “use” of a trademark does not imply that the trademark holder has a right to “use” by default.

As illogical and nonsensical as the Appellate Body this finding may be, it justified its conclusion on the customary rules of treaty interpretation because Article 20 does not use the word “right” whereas Article 16.1 explicitly uses the word “right”. Just another example of where interpretation transcends logic.

In other parts of the Report, the Appellate Body does recognise based on precedents that “[e]very trademark owner has a legitimate interest in preserving the distinctiveness, or capacity to distinguish, of its trademark so that it can perform that function [of distinguishing goods and services of undertakings in the course of trade]” (paragraph 6.667, citing the Panel Report in EC-trademarks and geographical indications (US)). Thus, “use” of a trademark is a “legitimate interest” for a trademark owner but not the “right”, even though there is a duty/ obligation placed on member countries as far as placing restrictions on “use” is concerned.

Concluding thoughts

I do not have a conclusive view on whether the TPP measures are TRIPS compatible. However, with the deepest respect, I believe the Appellate Body Report is intellectually dishonest; it is a play on words. And, as cynical as it may sound, I suspect the Appellate Body wrote the Report to justify a predetermined conclusion rather than to reach a conclusion.

Featured image from here

We’re pleased to bring you a guest post by Praharsh Gour, highlighting the recent Call for Applications put out for the post of the IPAB Chairperson, along with AIPPI’s application for extending the incumbent Chairperson’s tenure yet again. Praharsh is a graduate from Hidayatullah National Law University, Raipur and is presently an LL.M. candidate at the Faculty of Legal Studies, South Asian University, New Delhi. He’s also co-authored two posts on the blog previously, which can be viewed here and here.

A New IPAB Chairperson? Maybe, Maybe Not

Praharsh Gour

On 21st August, 2020, the Department for Industry and Internal Trade (DPIIT) called for applications for the post of the Chairperson of the IPAB. This comes 11 months after the last regular posting terminated, and almost 8 months after Justice Manmohan Singh’s extension (post his age of superannuation), was directed by the Supreme Court. Presently, with approx. 20 working days left in the incumbent chairperson’s extension term, the application deadline for the position (18th September 2020) is just 3 days prior to the end of Justice Singh’s extension term (21st September 2020). From the above, it seems that the DPIIT is open to the possibility of the IPAB having yet another period of having no chairperson – unless of course they act in record time and finalise a selection over the weekend of 19th-20th September. As Prashant and Prannv had calculated in an earlier post, “in its 17 years of existence, the IPAB has not had a Chairperson for a cumulative total of 1,130 days!’ It’s worth noting that the Delhi High Court has reprimanded the government in the not so recent past, for not taking timely measures to address the problems arising from such vacancies. As readers would know, the issue of vacancy of important portfolios in the IPAB isn’t a new one. Only recently the question of vacancies of different technical members was somewhat addressed. (Refer to Prashant’s post on the controversy surrounding these appointments here.)

Meanwhile, shortly prior to the DPIIT’s call for applications, there was an interim application asking for Justice Singh’s tenure to be extended yet again, filed by the International Association for the Protection of Intellectual Property  (AIPPI – Association Internationale pour la Protection de la Propriété Intellectuelle) on 6th August, 2020. The application (No 73597/2020) is listed for hearing by the Supreme Court tomorrow (24 August 2020), and is a part of the on-going writ in the AIPPI (India Group) v. Union of India. Prashant in a previous post expressed serious concerns about the writ filed by AIPPI and the consequent order granting Justice Singh the extension which he is currently serving. 

It’s to be noted that the currently on-going and soon to expire extension was supposed to have been an interim arrangement, granted by the Supreme Court under the assumption that the “appointment process of the new Chairman of the Board according to law is likely to be complete soon.” Will this ‘interim’ arrangement be extended once again, given that the position is likely to be vacant once again? The Supreme Court has earlier held that the post of Chairman of Intellectual Property Appellate Board (IPAB) cannot be allowed to be vacant”. However, given that the DPIIT has subsequently put out the call for application, however belatedly, it’s also possible that the Supreme Court views that there is no longer cause for concern of (long period of) vacancy, and/or that it to be more desirable to get a regular appointment to the post, rather than delaying the whole (regular appointment) process yet again. 

It is of course worth noting this development in the context of the various developments that have taken place with the IPAB in the recent past – from the vacancy issues mentioned above as well as lack of technical members on the bench, discussed by Rishabh here, here and here, to the appointment issues as covered by Prashant here and by Pankhuri here. And of course, Prashant’s petition to do away with the IPAB altogether. Whichever side of the fence one is on, it would be hard to deny that it is high time the appellate landscape for IP matters in India undergo a reform. In fact one can refer to the response of the office of the Controller General, which is in agreement with Prashant’s apprehensions about the IPAB, reflecting the call for reform not just by IP enthusiasts and practitioners but also by the bureaucracy as well.    

Topical Highlight

Lootcase, Copyright and Last Minute Injunctions: A Failed Attempt towards Overprotection

Image from here

Nikhil discussed the recent case of Vinay Vats v. Fox Star Studios India, wherein the Delhi HC rejected the plaintiff’s request for interim injunction a day before the release of the defendants’ movie ‘Lootcase’, which was alleged to be infringing the copyright in the plaintiff’s movie, ‘Tukkaa Fitt’. He agrees with the court’s reasoning, explaining that the two movies are only similar so far as they revolve around a stolen bag full of money, but since no copyright subsists over themes, plots and ideas, there is no infringement. Nikhil explores the hypothetical question of whether an infringement claim would be sustained if the copyright in Tukkaa Fitt’s trailer had been argued to be infringed rather than the whole movie, but concludes that the result would have been the same as there are far too many differences apparent from the two trailers. He then discusses the disturbing trend of seeking last moment injunctions against movie releases in an attempt to misuse intellectual property as a weapon to stifle free speech, especially when it comes from powerful players in the industry against those with fewer resources at their disposal.

Thematic Highlight

A New IPAB Chairperson? Maybe, Maybe Not

In a guest post, Praharsh Gour wrote about the worrying state of the position of IPAB Chairperson, which is set to go vacant after the expiration of Justice Manmohan Singh’s extension on 21st September. He pointed out that the recent Call for Applications for the position released by DPIIT has a deadline of 18th September, meaning that the IPAB is likely to go through another spell without a Chairperson. He contextualizes this in the background of the possibility of another term extension for Justice Singh, for which an application has been filed by the International Association for the Protection of Intellectual Property (AIPPI) and is set to be heard by the Supreme Court. He concludes by reminding the readers that the Supreme Court has reiterated previously that the position of IPAB Chairman cannot be allowed to remain vacant and that this is one of the many issues plaguing the IPAB today, among other vacancy issues, lack of technical members on the bench, appointment issues and overall functional problems.

Other Posts

Call for Applications: CUSAT’s Minor IP Research Project for Teachers 2020-21 [Apply by Sep 25]

We announced the Inter-University Centre for IPR Studies (IUCIPRS), Cochin University of Science and Technology (CUSAT)’s Minor IP Research Project 2020-21. CUSAT is inviting applications from teachers across Kerala and the rest of India. All the applications completed in the specified format along with the research proposal must be submitted by 25th September 2020. The format and other details on the Research Project are available on the post.

Call for Papers: The Philosophy and Law of Information Regulation in India

We also informed our readers that the Centre for Law and Policy Research is inviting papers to be published as a volume of inter-disciplinary studies for their project on ‘The Philosophy and Law of Information Regulation in India’. They are looking for multi-disciplinary submissions from fields of law, history of science, science and technology studies, informatics and information sciences, political and economic philosophy, design studies, and other related fields to reflect on the relationship between law, technology and information, with specific reference to the institutions of public law in India. Abstracts have to be submitted in the specified format by 10th September 2020. The format and submission guidelines are available on the post.

LexisNexis’s Virtual Conference on ‘Be The Game Changer: IP Drives Business Growth’ [Sep 16 – 18]

We further notified the readers of LexisNexis’s virtual conference on ‘Be The Game Changer: IP Drives Business Growth’ on 16th – 18th September, 2020. The conference will be led by renowned IP experts from corporate law firms and government offices in Asia and the United States who will be sharing their views on how IP contributes towards driving business growth. Details about the conference and registration procedure are available on the post.

Nokia Gets Injunction against Mercedes Maker Daimler for Infringement of its SEP in Europe

Image from here

In a guest post, our former blogger Rajiv Choudhary analysed the recent decision by a German court granting an injunction restraining Mercedes maker Daimler from infringing Nokia’s SEP relating to Zadoff-Chu sequences (basic access signals in LTE). He discusses how the Nokia-Daimler judgment was given despite the fact that Daimler’s component manufacturers had approached Nokia to get a FRAND license but were turned down. He points out that in restraining a willing licensee, the Court failed to follow the injunction roadmap previously laid down in Huawei v. ZTE. Rajiv relies on this case to argue against the legality of portfolio licenses, explaining that had this SEP been registered in India, this being a key patent for Nokia pertaining to the very basic structure of the LTE uplink signal, all devices using LTE would have been infringing the patent. He concludes with the speculation that this patent was probably not filed in India because it is hit by Sections 3(m), 3(n) and 3(k) of the Patents Act, but cautions that that Indian patent law has changed in the light of recent Ferid Allani judgement.

Of Paper Tigers and English: WTO Appellate Body Report in Tobacco Plain Packaging Dispute

Image from here

In this post, Adarsh deconstructed the WTO Appellate Body Report in the set of disputes concerning Australia’s legislative measures to impose plain packaging norms on tobacco products. He specifically criticises the Appellate Body’s interpretation of issues concerning the TRIPS Agreement. The Complainant had argued that by prohibiting the use of the registered trademark, the TPP measures, over time, would make it impossible for the right-holder to demonstrate a “likelihood of confusion” in an infringement proceeding, thus violating Article 16.1 of TRIPs. The Appellate Body rejected this by stating that the creation or maintenance of the factual circumstances that would result in such “likelihood of confusion” is not an obligation under the TRIPs Agreement. According to Adarsh this interpretation supports an indirect violation of the treaty. He further argues that the Appellate Body’s statement that Article 20 does not confer a “right” on the trademark holder but only imposes an “obligation” on the member country from unjustifiably encumbering the use of the trademark is simply a play of words that is logically unsound as the presence of a duty in one indicates the presence of right in another.

Other Developments

Decisions from Indian Courts

• Delhi High Court, in Hari Chand Shri Gopal v. Evergreen International, passed an ad-interim injunction restraining the defendants from using KRISHNA 100, KRISHNA 355 and KRISHNA 351 trademarks and packaging deceptively similar to plaintiff’s registered GOPAL trademarks, trade dress and Lord Krishna logo in relation to tobacco products [August 13, 2020].
• Delhi High Court in Peps Industries Private Limited v. Kurlon Limited directed the parties to settle their dispute regarding the use of NO-TURN trademark [August 14, 2020].

  Image from here

• Delhi High Court , in McDonalds Corporation & Anr v. National Internet Exchange of India & Ors., passed an interim injunction restraining several corporate entities from infringing McDonalds’ registered family of trademarks and  copyright in the artistic work of its Golden Arches logo [August 17, 2020].
• Delhi High Court, in Audioplus v. Manoj Nagar,called for further evidence in a passing off action against use of STUDIOMIN trademark [August 18, 2020].
  • Bombay High Court, in Hindustan Unilever Ltd. v. Emami Ltd.,passed an interim injunction restraining Emami from using the ‘Glow and Handsome’ mark as it found HUL to be the prima facie prior user of the mark [August 19, 2020].

Other News from around the Country

• The National Digital Library of India has launched the Draft of India’s first Copyright Guide for Indian Libraries for public consultation. The deadline for submitting comments/feedback is September 30, 2020.
• Ministry of Education is conceptualizing a National Intellectual Property Literacy initiative as part of the new National Education Policy 2020.
• DPIIT has called an inter-ministerial meet on 25th August to discuss royalty payments in case of technology transfer or collaboration involving foreign entities either directly or indirectly through Indian entities.
• KVIC has issued legal ­­­notices to two firms, Khadi Essentials and Khadi global, alleging unauthorised and fraudulent use the brand name ‘Khadi’, seeking damages from these firms for causing harm to its reputation and loss of wages to Khadi artisans due to the sale of fake Khadi fabric.

  DD logo

• SaReGaMa has claimed copyright violation by Doordarshan’s YouTube telecast of musical band performance of Saare Jahan Se Achha by members of Armed Forces on the occasion of 74th Independence Day.
• Solan-based Shoolini University has been ranked 3rd in the country for the number of patents filed and 4th in the country for the number of patents granted.
• ITI Berhampur has filed patents for 3 innovative products, i.e., Robo warrior, UVC Sole Sanitizer, and mobile swab collection kiosk developed to fight COVID-19.
• WIPO data has shown that Huawei, Mitsubishi Electric, Samsung and Qualcomm have filed more international patent applications each than the 2053 applications by the whole of India in 2019, accounting for only 1% of global filings.
• Rajiv Gandhi National Institute of IP Management has proposed to conduct online training workshops on IPR in collaboration with other organisations upon request.
• A piece carried by MediaNama discussed the intellectual property implications of the draft report released by the Committee of Experts on Non-Personal Data Governance Framework (formed by MEITY) last month.
• A piece on Analytics India Magazine discussed the benefits and considerations involving AI patenting in India.

News from around the World

• China has granted the first COVID-19 vaccine patent to a vaccine co-developed by biopharmaceutical firm CanSino Biologics Inc.

• Image from here

  The High Court of Justice of England and Wales has held that the shapes of the Jaguar Land Rover Defender cars are not eligible for trade mark registration.

• The US Court of Appeals for the 7th Circuit held that punitive damages award of $280 million against Tata Consultancy Services in a trade secrets suit filed by software firm Epic Systems was ‘constitutionally excessive’, and reduced damages to $140 million.
• A new US Copyright rule on Group Registration of Short Online Literary Works allows single or joint authors to register the copyrights in online written content, easing registration for bloggers.
• The US Court of Appeals for the 2nd Circuit has vacated the district court’s summary judgment holding Costco liable to Tiffany for willful trademark infringement and counterfeiting of ‘Tiffany rings’.

  Image from here

• The US District Court for Northern California has denied Amazon’s motion to dismiss Williams-Sonoma’s infringement claim over WSI’s copyrighted images on Amazon’s marketplace sellers’ listings, finding that Amazon acted with volition based on Amazon’s algorithms.
• Bangladeshi Nobel laureate Muhammad Yunus has called for COVID-19 vaccine to be made accessible to all and not be restricted by patents rights.
• A piece carried by The Guardian discussed the entanglement of copyright laws and licensing rules surrounding the Australian Aboriginal flag.

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

We’re pleased to announce that NLU Jodhpur’s Journal of Intellectual Property Studies (JIPS) is inviting original, unpublished manuscripts for publication in the Winter 2020 Issue (Volume IV, Issue 1) of the Journal. The last date for submissions is September 15, 2020. For further details, please read the journal’s call for papers below:

Call for Papers : Journal of Intellectual Property Studies (Volume IV, Issue 1)

The Board of Editors of the Journal of Intellectual Property Studies (JIPS), published under the aegis of National Law University, Jodhpur is pleased to invite original, unpublished manuscripts for publication in the Winter 2020 Issue of the Journal (Volume IV, Issue 1) in the form of articles and notes. The manuscripts must pertain to the field of intellectual property law or to related fields such as media and technology law. The deadline for submission for manuscripts is 15th September, 2020.

Volume III Issue 2 was recently released and can be found with our previous issues here. The Journal subjects all articles to a review process by our student editors prior to publication. We also benefit from the guidance of our illustrious board of advisors who help the journal attain its objectives. The Journal stands by the ideals of open access to scholarly works and it will be published online on an open-access platform for everyone to read and cite freely.

Manuscripts may be submitted via email to the Editors in Chief at jips@nlujodhpur.ac.in. We request all authors to carefully read and follow the submissions guidelines. For further details regarding JIPS, contribution guidelines, and our editorial policy, please visit our website.

We’re pleased to inform you that DPIIT IPR Chair, NLU Delhi and Rajiv Gandhi National Institute of Intellectual Property Management are jointly organising an online symposium on WIPO-WTO-WHO trilateral study on promoting access to medical technologies and innovation on September 2, 2020. For further details, please read the announcement below:

Online Symposium on WIPO-WTO-WHO Trilateral Study on Promoting Access to Medical Technologies and Innovation

2^nd September, 2020

The symposium aims to discuss the recent trilateral report from an integrated health, trade and IP perspective in the post-COVID-19 pandemic scenario. The symposium will be jointly organised by DPIIT IPR Chair at National Law University, Delhi and Rajiv Gandhi National Institute of Intellectual Property Management, Nagpur. It will start at 3:00 pm IST on September 2, 2020 and will be for a duration of 90 minutes (including floor discussion /Q&A). Since this is a unique academic symposium, participants are expected to read the executive summary of the Report for an informed discussion.

Eligibility: Everybody (faculties, students, practitioners, researchers etc.)

Date: September 2, 2020

Time: 3:00 pm IST

Location: Online

Registration Process: Please register by sending an email to ipr.chair@nludelhi.ac.in

Registration Fees: No fee

Deadline: Register by 5:30 pm, August 30, 2020

Contact: ipr.chair@nludelhi.ac.in

Official link: https://nludelhi.ac.in/up-event1.aspx?id=35095

Featured image from here

Image from here

Recently, the Madras High Court restrained Patanjali from using the word ‘Coronil’ on its immunity-booster tablets (Arun has discussed the order, here). Soon afterwards, Patanjali obtained a stay on the order from a Division Bench, arguing that ‘coronil’ is a generic term derived from coronavirus and used by nearly 191 companies right now, and the vast difference between their product and the plaintiff’s ensures that there is no likelihood of confusion between them. This is a reasonable decision, since the restraining order did not adequately consider the question of consumers drawing a mental association between the marks in question. In this post, I will be focusing on the Single Judge’s interpretation of dilution under Section 29(4) of the Trade Marks Act 1999, and the serious inconsistencies created by it.

Theory of Dilution

To put it simply, the Plaintiff (‘Arudra’) who manufactures industrial chemical agents under the trademarks ‘CORONIL-92 B’ and ‘CORONIL-213 SPL’ claims that Patanjali’s coronil tablets would dilute the value of its trademark. Propounded by Frank Schechter in his seminal work, The Rational Basis of Trademark Protection, the theory of dilution holds that some trademarks achieve a degree of fame so as to develop a psychological hold over the public. This hold creates an independent selling power which is impaired even when the mark is used on dissimilar goods. In such a situation, consumers are not ‘confused’ about the source of goods, they are quite aware of the different sources denoted by the marks. This parallel association with a second source dilutes the brand‘s value and loosens the psychological hold achieved by the first mark. Thus, that mark must be granted protection even against trade in dissimilar goods.

The anti-dilution provision is contained in Section 29(4) of Trade Marks Act 1999. It protects against a mark that –

 (a) is identical with or similar to the registered trade mark and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered : and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

Well-known trademark v. Mark with Reputation

In the present case, Patanjali relied on the Ford Motors decision (covered on the blog here) to argue that the term ‘reputation in India’ in Section 29(4) implied that the mark in question had to be a ‘well-known mark’. Ford Motors had acknowledged Parliamentary discussions stating that the (then) Trademark Bill ‘…seeks to extend protection for well-known trademarks…’ Patanjali thus insisted that Arudra’s trademarks did not meet the well-known mark threshold for Section 29(4) to apply.

Rejecting this, the Single Judge interpreted ‘reputation in India’ in the literal sense, finding that it meant ‘nothing more, nothing less.’ Relying on several decisions including US Supreme Court’s 2020 decision in Bostock v Clayton County a literal interpretation was favoured, stating that there is no ambiguity in the statute giving rise to multiple interpretations that would require an inquiry into the legislative intent.

While ‘reputation in India’ in itself appears unambiguous, it has to be noted the statute neither defines the term, nor provides any means of assessing this reputation. On the other hand, well-known trademark is defined in Section 2(1)(zg) as ‘..a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other  goods or services would be likely to be taken as indicating a connection in the course of trade..’ Further, Section 11(6) lays down a set of factors that are to be considered by the registrar in determining whether a trademark is well-known. If ‘reputation in India’ is intended to be a separate standard altogether, it is strange that there is no mention of it elsewhere in the statute while considerable explanation has been devoted to well-known marks.

Moving further, Section 11(2) of the Act which provides relative grounds for rejection of a trademark appears almost like a mirror-image of Section 29(4).

“A trade mark which-

(a) is identical with or similar to an earlier trade mark and

(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor

shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.”

The Single Judge’s interpretation gives rise to a situation where a claim under Section 29(4) can be brought if a trademark can establish a reputation in India (an apparently lower threshold), but if the offending trademark is preemptively opposed during registration, the senior mark will have to prove that it is a well-known trademark (higher threshold) to ensure refusal. This creates an inconsistency in the larger scheme of trademark law which could effectively promote bringing dilution claims under Section 29(4) rather than opposing registration. Further, it completely inverts trademark theory, which treats dilution as an exception to the general rule available only to very famous trademarks.

Patanjali had also pointed out that the provision corresponding to Section 29(4) in UK’s Trademarks Act 1994 which uses the exact same language in its Section 10(3), i.e., ‘reputation in the UK’ remains consistent in its use of that phrase even in Section 5(3) (corresponding to India’s Section 11(2) on well-known trademarks). Thus, there occurs no duality in standards of fame for trademarks.

Interestingly, ITC v. Phillip Morris (a judgment which relies on the ECJ judgment of General Motors Corp v. Yplon) explains the term ‘reputation’ to mean a mark ‘known by a significant part of the public concerned by the products or services covered by that trade mark.’ It is noteworthy that this definition is very similar to that of well-known trademarks under Section 2(1)(zg). (If anything, this appears to be an even higher standard so far as it requires the mark to be known by people ‘concerned with it’, as opposed to those who ‘use it’ per Section 2(1)(zg)).

The Single Judge however reflected on the multitude of provisions in India’s Trade Marks Act dealing with well-known marks to suggest that this is deliberate and shows Parliament’s intent that well-known marks be treated as separate from those with reputation in India. It did not satisfactorily address the problems brought about by this duality.

Arguably, the whole problem of dual standards can be resolved if well-known trademarks and marks with reputation are interpreted as same in the light of the objects of the statute and trademark law in general. Prof. Gangjee has suggested this approach in his paper, pointing out that Trademark Rules 2002 in Rule 48(b)(vi) implies that well-known trademarks are those that ‘have a reputation’. But the Single Judge through a literal interpretation has impliedly treated reputation in India as a checkpoint on a spectrum of which well-known mark forms the terminus.

Reputation Analysis

The analysis of Arudra’s ‘reputation’ too is questionable to an extent. Its products are industrial chemical agents and are directed at a very specialized consumer base, whereas Patanjali’s tablets are for the general public. Relying on this, Patanjali had argued that Arudra’s consumer base is far too remote and will not draw a mental association with their tablets, ruling out the possibility of dilution. In ITC v. Phillip Morris, this need to establish ‘mental association’ or ‘linkage’ was emphasized by quoting Prof. McCarthy, ‘if a reasonable buyer is not at all likely to think of the senior user’s trademark in his or her own mind, even subtly or subliminally, then there can be no dilution’. This question has not been scrutinized in detail. Instead the judgment discusses Patanjali’s initial coronavirus-cure claim being changed to immunity-boosting claim and acknowledges Arudra’s apprehensions that an association would make the public think that their products will also water down to something of inferior quality than what is suggested (see para 119). It also relies on Blue Hill v. Ashok Leyland which ruled that use of the word ‘Luxuria’ infringes upon the trademark ‘Luxura’ for comfort buses (see para 125), overlooking the fact that the class of goods of both marks in that case were the same, which is not the case presently.

Lastly, the court has concluded that Arudra having only 31 customers cannot be used against it because the number of heavy industries in India is limited. It has also strongly suggested that Patanjali cannot browbeat its 10,000 crore turnover to downplay Arudra’s reputation. While this appears equitable, stepping back from the ‘big fish v. small fish’ lens, one may argue that reputation of a brand is in fact correlated to the scale of its operations, public perception and financial success. Notwithstanding the well-known mark v. reputation in India issue, Arudra seems to be reaping the benefits of what is known as the ‘niche fame’ problem. A trademark present only in a highly specialized channel with far fewer consumers has a lower burden of proof to establish its reputation but is nevertheless enjoying anti-dilution protection against marks that have a larger, more diffused customer base. Conferring this extended protection to Arudra across classes may well be anticompetitive as it allows niche-fame-trademarks a wide, and seemingly undeserved monopoly. Hopefully, this will be examined further in the upcoming decision.

Importantly, on 27th August, the Supreme Court refused to interfere with the Division bench’s stay order in response to a special leave petition filed by Arudra, leaving the matter to be disposed off by the High Court in the final hearing scheduled on 3rd September. While the Supreme Court’s intervention could have helped settle the question of dilution in its entirety, for now, it is up to the Division Bench to address the issue.

Image from here

Social research that inquires into power structures is often riddled with hierarchies itself. For instance, the difference in the status of the researcher and the research subject is not devoid of crucial power differentials. Women and minorities in protected works are often written about from an external gaze. Their personhood, expressions and contributions are reduced to that of a passive ‘muse’ or a ‘subject’, being acted upon by the genius author who claims sole authorship of the work to which they may have contributed substantially and indispensably. Similarly, the subaltern Indian research subject exists in the white male imagination as devoid of agency. Research must focus on according these subjects, on whose behalf and for whose empowerment it purchases legitimacy, the right to representation on their own terms. The right to attribution under the Indian Copyright Act can in some sense, allow women and minorities to assert control and agency over their narratives and labour as part of their creative expression.

However, the norm of anonymity is typically a part of research ethics in India and abroad. Social research organisations and institutions provide for this through guidelines such as- “No personal identifier should be collected in research tools to maintain confidentiality and anonymity of participants.”

Social research concerning marginalised communities usually entails involvement with sensitive topics that challenge established hierarchies along the fault lines of class, caste, gender, religion etc. In these contexts, attribution can lead to harmful consequences whereas anonymity (as an expressive strategy itself) can be empowering. It allows the work to be situated in the time, space and location of the research subjects without concerns regarding their privacy, safety or fear of retaliation towards them.

Analysis

However, such norm-setting or mandating can work to silence voices from marginalised communities and assumes a lack of agency on their part to choose to be named for their works (as protected by the Copyright Act). For instance, many women respondents in rural Bihar actively rejected the idea of anonymity as part of a study by a white woman. Similarly, Richa Nagar is a scholar who has co-authored multiple works with grassroots activists in villages in India, hailing from diverse caste and religious backgrounds. She emphasises the necessity of sharing authority in knowledge production and dissemination, and the importance of co-authorship to mobilise experiences, explore power relations that cause social violence and challenge dominant methodologies and pedagogies within and outside the academy.

Section 13 of the Indian Copyright Act provides for the subsistence of copyright in original literary, dramatic, musical and artistic works, among others. When these works are fixed into any tangible form (in this case, as part of social research for a project), the copyright and moral rights (right to attribution and integrity) for them automatically accrue to those from whom they originate. Fixation is a prerequisite for copyright protection in India but it does not grant copyright or moral rights in works to whoever mechanically fixes the creative expression of another. This is because the contribution made must also be original for it to be protected. The Indian Copyright Act does not define the word ‘original’. However, as per settled case law, it is said to be a work that owes its origin to the author and is created from her skill and labour independently, i.e., it is not a copy of another work.

As per the case of Eastern Book Company & Ors. vs D.B. Modak, we do not follow either the sweat of the brow approach which protects works based on the diligence and labour required to create them or the creativity standard which requires novelty while assessing originality. The work created should not just be the product of mere labour or capital and requires a minimum degree of creativity. As usual, the inquiry into originality would be determined on a case to case basis and depend on the nature of the contribution.

Hence, for works originating from the subject and only mechanically fixed by the researcher, the subject as the author of the literary or dramatic work would remain the first owner as per Section 17 of the Copyright Act. Even when the subjects’ contributions are elicited at the instance of the researcher, the subject would be the first owner unless she assigns her copyright or a particular coterie of rights out of those constituting her copyright, to the researcher via a written, duly executed assignment agreement as per Section 19 of the Act. However, it can be easy for the researcher to fix the subjects’ ideas with a minimum degree of her own creativity in expressing those ideas. That said, research ethics also require interviews with research subjects to be recorded. These contemporaneous or subsequent recordings of the subjects’ expressions by the researcher acting mechanically as a scribe would meet the requirement of fixation, vesting the copyright with the subject.

While copyright in the work can be assigned, moral rights persist with the originators of protectable expressions and are not waived as part of this assignment. As I have noted previously, Indian Copyright law provides authors a near absolute right to “claim authorship of the work” as per Section 57(1)(a) of the Indian Copyright Act, 1957 (‘Act’). This is distinct from statutes in other jurisdictions, for instance Canada where the authors only have “the right, where reasonable in the circumstances, to be associated with the work”. Thus, even if it is not reasonable by some assessment to provide attribution to research subjects, due to time and resource constraints, that would not impact their claim for authorship. As long as their contributions qualify as ‘works’ in which copyright subsists, their right to attribution would remain unaffected by variables like research budgets or deadlines. Attribution increases the researcher’s responsibility. Checking transcripts, approving edits, quotes, translations etc., with the authors named in the work costs time and money but cannot be an excuse for denying authorship for contributions to these works. Further, Nandita Saikia has argued that if crediting the work of an author is a matter of public policy, then the waiver of the moral right to “claim authorship of the work” would fall foul of the Indian Contract Act since it would negate the right (to initiate legal proceedings or claim otherwise) to exercise another right (i.e. attribution).

This also throws open a host of questions regarding ownership of the work, permission to use, monetise and benefit from it. It is interesting to explore whether consent forms as required by research ethics would constitute a waiver of copyright by the research subjects, making the researcher the author of the work in question. This would depend on the contents of the forms and interrogation of any unfair terms therein. However, since consent forms do not typically acknowledge the protectable nature of participants’ inputs beyond the maintenance of confidentiality, it is unlikely that they would constitute a waiver of participants’ copyright. Consent forms may mention a plan for sharing results, including a broad reference to dissemination of research findings via conferences, publications etc. Participants’ consent to this may obviate the need to obtain permissions to use their inputs for purposes covered by the consent form. Further, giving any research subject the power to censor pieces based on their expression can conflict with the fair dealing exemptions in the Indian Copyright Act, under Section 52(1)(a) permitting the use of materials for research, criticism, review or reporting of current events. In the aforementioned study wherein many women respondents rejected anonymity, the researcher reflected, “I wonder whether there would be any difference in their thinking about using names if the research had…..criticised the work they were doing.” However, ensuring participants’ meaningful consent is a more honest, ethical and constructive way to initiate dialogue instead of seeking their inputs deceitfully, and hence coercively. Interestingly, an ‘informed’ consent form template for qualitative research by the World Health Organisation mentions that participants can be misled by the researcher if essential, justified and approved by an ethics committee.

Conclusion

There is a need to reconcile institutional guidelines with the rights provided by the Copyright Act. Guidelines requiring anonymity as a norm should move to a system which presupposes research subjects’ agency to opt for or out of anonymity.

Copyright’s male gaze of invisibilising contributions from marginalised communities while depicting their stories denies them the right to be seen and heard on their own terms. Pertinently, the right to attribution can disembed women out of oppressive social structures that have historically relegated them to the domestic sphere. In communities where the honour of women is inextricably tied to the degree of control exercised over them, the right to attribution can be a tool to create works to which their reputation and honour can attach independently. It can operate as a means for self-actualisation and self-determination. Universal privacy or anonymity values can be oppressive in these contexts.

This is another way to reimagine authorship and critique it in its current form for it fails to protect the role of the other, ubiquitous, silent contributor in copyright enterprises. However, inasmuch as the law recognises and protects the creative expression of the other (the alienated subject whose experiences are meant to be foregrounded in social research), the norm of anonymity in research ethics should not presume the waiver of that protection.

Topical Highlight

Patanjali’s Coronil Trademark: The Dilemma of Dilution

Image from here

In this post, Adyasha discusses the Madras High Court’s recent order restraining Patanjali from using the word ‘Coronil’ on its immunity-booster tablets. She argues that the Single Judge’s interpretation of dilution under Section 29(4) of the Trade Marks Act 1999, is riddled with serious inconsistencies. Patanjali contended that Arudra’s trademarks did not meet the well-known mark threshold for Section 29(4) to apply. However, the Court held that ‘reputation in India’ was to be interpreted literally. Adyasha argues that this leads to an absurd situation where a claim under Section 29(4) can succeed if reputation in India (an apparently lower threshold) can be established, whereas if the offending trademark is preemptively opposed during registration, the senior mark will have to prove that it is a well-known trademark (higher threshold) to ensure refusal. This creates an inconsistency that could promote bringing dilution claims under Section 29(4) rather than opposing registration. Further, she notes that the Court relied on Blue Hill v. Ashok Leyland in its reputational analysis, overlooking the fact that the class of goods of both marks in that case were the same, which was not the situation in the present case. She concludes that trademarks present only in highly specialized channels with few consumers such as Arudra’s mark, have a lower burden of proof to establish their reputation but enjoy anti-dilution protection at par with marks that have a larger consumer base. Extending protection to such niche-fame-trademarks across classes could arguably be anticompetitive.

Thematic Highlight

Interrogating the Norm of Anonymity in Research Ethics- Visibility, Representation and The Right to Attribution 

Image from here

In this post, Anupriya questions the norm of anonymity, typically a part of research ethics in India and abroad. She argues that such norms assume a lack of agency on part of research participants to choose to be named for their works. She explores how the right to claim authorship under the Indian Copyright Act can allow women and minorities to assert control and agency over their narratives as part of their creative expression. She explores various scenarios where copyright in the research may vest in the researcher, the research subject or be covered by fair dealing exemptions as per the Indian Copyright Act. She also discusses if consent forms, as required by research ethics, can be said to constitute a waiver of copyright. She argues that anonymity has some benefits regarding safety, privacy and concerns regarding retaliation towards subjects. However, guidelines requiring anonymity as a norm should move to a system which presupposes research subjects’ agency to opt for or out of anonymity. She concludes that there is a need to reconcile institutional guidelines with the rights provided by the Copyright Act.

Other Posts

Call for Papers: NLU Jodhpur’s Journal of Intellectual Property Studies Vol 4, Issue 1 [Submit by Sep 15]

Recently, we informed our readers that NLU Jodhpur’s Journal of Intellectual Property Studies (JIPS) is inviting papers for publication in the Winter 2020 Issue (Volume IV, Issue 1) of the Journal. The manuscripts must pertain to the field of intellectual property law or to related fields such as media and technology law. The deadline for submission for manuscripts is September 15, 2020. Further information on the submission guidelines is mentioned in the post.

Online Symposium on WIPO-WTO-WHO Trilateral Study on Promoting Access to Medical Technologies and Innovation [September 2]

Image from here

We also informed our readers that DPIIT IPR Chair, NLU Delhi and Rajiv Gandhi National Institute of Intellectual Property Management are jointly organising an online symposium on WIPO-WTO-WHO trilateral study on promoting access to medical technologies and innovation on September 2, 2020. The symposium aims to discuss the recent trilateral report from an integrated health, trade and IP perspective in the post-COVID-19 pandemic scenario. More details regarding the symposium are mentioned in the post.

Decisions from Indian Courts

• Allahabad High Court in Mohammad Chand & Anr. v. State of U.P. & Ors., dismissed the petition to quash the FIR in the case, concerning the preparation of counterfeit Dabur Amla Oil, and held that the case deserved to be tested based on material collected during investigation. [August 28, 2020]
• Delhi High Court passed an order in Super Cassettes Industries Ltd. v. Relevant E Solutions Ltd. & Ors., wherein TSeries filed a suit against the defendants for using the short video sharing app Roposo, whose music library allegedly infringed the plaintiff’s copyright. The Court allowed the defendants to cooperate with the plaintiffs and ensure compliances of the alleged violation. [August 27, 2020]

  Image from here

• Delhi High Court in AstraZeneca AB & Anr. v. Micro Labs Ltd., granted an ex-parte ad-interim injunction in favour of plaintiffs for prima facie making out the case that defendants infringed their patent for the drug molecule DAPAGLIFLOZIN. [August 27, 2020]
• Delhi District Court in Adidas India Marketing Ltd. v. Kumar Garments, restrained the defendants from using the plaintiff’s trademark ADIDAS in relation to any of their apparel and ordered them to hand over all impugned finished and unfinished goods bearing the violative trademark and pay punitive damages worth Rs.5,00,000/­, along with interest at 12% per annum during the suit’s pendency till its realization. [August 27, 2020]
• Delhi High Court in Pharmacyclics LLC & Anr. v. BDR Pharmaceuticals Ltd., issued notice to defendants to file a response within a week, on account of the allegation that their Indiamart profile allegedly marketed the product IB-TIB, a generic version of the plaintiff’s patent protected compound IBRUTINIB, sold under the brand name IMBRUVICA. The Court held that the matter deserves further consideration. [August 25, 2020]

  Image from here

• Delhi High Court in AstraZenca AB & Anr. v. West Coast Pharmaceuticals Works, decreed the suit due to settlement arrived at between the parties wherein the defendant acknowledged the plaintiff’s patent rights in the compound DAPAGLIFLOZIN. Defendants undertook not to use the compound or any formulation of it in its own pharmaceutical products and not to file any application seeking the cancellation of the plaintiff’s patent. [August 25, 2020]
• Delhi District Court in Adidas India Marketing Ltd. v. Shiv Chetna Hosiery, restrained the defendants from using the plaintiff’s trademark ADIDAS in relation to any of its apparel and ordered them to hand over all impugned finished and unfinished goods bearing the violative trademark, pay punitive damages worth Rs.5,00,000/­, along with interest at 12% per annum during the suit’s pendency till its realization. [August 20, 2020]

Other News from around the Country

• The IPAB maintained the stay on the Controller’s order which revoked the Indian patent granted to Pharmacyclics LLC covering the product IBRUTNIB vide its order dated August 7, 2020.
• The Indian IT Ministry launched Project Chunauti, a start-up challenge from which around 300 projects will be selected and provided with up to INR 25 lakh seed funding, IPR and patent advisories, incubation and mentorship facilities, among other kinds of support.

  Image from here

• The Indian Performing Right Society Limited (IPRS) unveiled IPRS 2.0 with its state of the art license administration and announced the implementation of the world’s most advanced operating system to enhance the monetisation capacity for copyright societies.
• As per latest amendments to the Companies (Corporate Social Responsibility) Rules, 2014, the Ministry of Corporate Affairs inserted a provision allowing firms to claim CSR benefits for investing in efforts to find drugs to combat Covid-19.
• SAS India and its partner CSM Technologies has associated with the Govt. of Odisha to respond to the Covid-19 pandemic using data analytics and evidence based policymaking through its innovative software and services.
• Uttar Pradesh government created a corpus worth Rs 150 crore to encourage start-ups in UP, funding them at the stages of ideation, patent registration, participation in domestic and international events, among other things.
• Khadi and Village Industries Commission (KVIC) issued legal notices to Khadi Essentials and Khadi Global for unauthorized and fraudulent use of its brand name Khadi.
• Reliance Retail issued a caution notice informing the public that it did not operate any dealership or franchisee model yet, and would not hesitate to take legal action against persons who were misusing its trademarks by creating fake websites or duping others by pretending to grant franchisee of Jiomart services.
• In a piece in the Financial Express, T.V. Ramachandran noted that India’s recent Report on Non-Personal Data Governance Framework can lead to regulatory turf wars, blurring the lines of jurisdiction between the Data Protection Bill, the Copyright Act, the Competition Act, the fundamental Right to Privacy, and their governing authorities.
• IIT Kharagpur researchers filed for a patent in India for developing a micro-needle, thinner than human hair for injecting drugs to patients painlessly.

  Image from here

• India may soon carry out saliva-based tests for diagnosing COVID-19 if the government approves the process which is said to be safer for healthcare workers and less discomforting for individuals.
• 70 year old Ahmedabad-based ice-cream brand Havmor sued Delhi based pickles and cereal brand, Usha Aunty’s Havmore for trademark violation.
• A Noida-based factory manufacturing and selling counterfeit products of popular household brands like Harpic, Dettol, Surf Excel etc. was busted by the police.
• The Indian Patent Office has granted a patent to Japan Tobacco entitled “Nitrogen containing spiro-ring compound and medicinal use of same” covering the commercial product, Delgocitinib.
• Charotar village in Gujarat earned registration under the The Protection of Plant Varieties and Farmers’ Rights Act, for traditional varieties of its ginger and turmeric, which have recently garnered attention as immunity boosters.

News from around the World

Image from here

• Activist researchers revealed that Moderna, a Massachusetts biotech company which is also a frontrunner for  developing a Covid-19 vaccine, failed to disclose government financial support for any of the 126 patents filed in its 10-year history, violating the 1980 Bayh-Dole Act, which requires companies to disclose the receipt of government help in their patent applications.
• Sparks Group, claimed to be one of the largest online piracy organisations by the Europol which shut down many of the Group’s servers, regularly bootlegged unreleased movies and TV shows, and two of its members have been arrested by the U.S. Department of Justice.
• The UK Supreme Court affirmed a decision holding that Huawei would either have to pay a global rate set by U.K. judges for patent royalties to Unwired Planet International Ltd. or face an order restricting its British sales.
• Berkeley Lights Inc. faces a legal battle against Vancouver-based rival AbCellera Biologics Inc., over patents pertaining to technology being used to develop antibodies against Covid-19.
• Merck Sharp & Dohme Corp. filed a petition in the US District Court for the District of Delaware, against Aurobindo Pharma Ltd. alleging that the Indian drug maker plans to launch generic versions of its drug Janumet before expiration of Merck’s patent.

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

We’re pleased to inform you that Centre for Intellectual Property Studies, National Law University, Jodhpur is organising an essay writing competition for law students from Indian universities on the theme ‘Copyright Societies and Performers’ Rights Societies in India’. The deadline for registration is September 20, 2020 and that for submission of essays is September 27, 2020. For further details, please read the announcement below:

NLUJ’s Centre for IP Studies Essay Competition

Call for Essays | Submit by September 27, 2020

About CIPS

Centre for Intellectual Property Studies, National Law University, Jodhpur was established in 2018 with an aim to promote research and studies in the field of intellectual property rights. The Centre also monitors, designs and disseminates various courses and programmes pertaining to training and research in intellectual property rights.

About the Competition

Copyright societies and performers’ societies play a very significant role towards the collection and distribution of revenue from authorized utilization of works and performances. There are many significant issues concerning the working of these institutions.

Eligibility

CIPS invites original, genuine and unpublished contributions from students pursuing 3-year LL.B. programme/5-year integrated LL.B. programme or LL.M. programme in any recognized university in India.

Essay Topic

The essay topic shall be based on the theme ‘Copyright Societies and Performers’ Rights Societies in India’. Any pertinent research question related to the theme may be chosen by the author to provide a succinctly worded relevant work (1500 words, excluding footnotes).

Important Dates

1. Last Date of Registration: 20^th September, 2020 (by 11:59 pm)
2. Last Date of Submission of Manuscripts: 27^th September, 2020 (by 11:59 pm)
3. Declaration of Results: 10^th October, 2020

Prize Information

1. The first, second and third prizes are worth ₹5000/-, ₹3000/- and ₹2000/- respectively.
2. Top 6 submissions including the prize-winning essays will be awarded e-certificates of Merit. Their entries will also be published on The NLUJ Centre for Intellectual Property Studies Blog to be launched soon.
3. All entries will be awarded e-certificates of participation.

Registration Process

1. The students shall register by paying a fee of Rs. 500 at http://www.nlujodhpur.ac.in/fee.php at ‘Payment Other than Semester Fee’ specifying the purpose of payment as ‘CIPS Essay Competition’ latest by September 20, 2020.
2. The payment receipt shall be emailed at cips@nlujodhpur.ac.in. The subject of the e-mail shall be ‘Registration Receipt: Essay Competition’.

Program Coordinator

Mr. Rohan Cherian Thomas

Assistant Professor, Faculty of Law

Executive Director, CIPS

Contact Information

Any queries may be directed to cips@nlujodhpur.ac.in or the following:

1. Harshita Jaiman, Convenor, CIPS (+91-9829463431)
2. Janhavi Somvanshi, Member, CIPS (+91-8874911952)
3. Kirti Harit, Member, CIPS (+91-7060804553)

For detailed submission guidelines, submission process and evaluation criteria, visit http://nlujodhpur.ac.in/news_detail.php?news=826 or download brochure at http://nlujodhpur.ac.in/uploads/23052008251045.pdf.

Image from here

After the recent ban on TikTok by the government, several alternative short-video sharing services have seen a rise in their following. One such application is Roposo, a video creation and sharing app, available in 12 Indian languages. Riding on the ‘Made in India’ advantage, it saw a surge of 22 million in its user base in merely two days after the TikTok ban. MyGovIndia has also joined the platform to connect with Indian audiences and Indian achievers such as Babita Phogat and Sangram Singh have also collaborated with Roposo in the past. However, the platform has recently found itself in a legal tussle with T-Series. Earlier this month, it had received copyright infringement notices from T-series wherein the company president Neeraj Kalyan had stated that apps such as Roposo were “habitually infringing music content” and “blatantly infringing our copyright”. T-Series has now filed a suit for permanent injunction before the Delhi High Court to stop Roposo from using its copyrighted content. In an order, the court agreed to the defendant’s request to grant them two days time to sit with the plaintiff and ensure legal compliances. In this piece, I analyse the legal issues surrounding the development.

Features of the Application

In order to understand the legal implications, it is essential to have an overview of the features of the app. While I have not personally used the app, based on Google searches and some YouTube videos, there are two particular features that are of relevance. First, the app provides an option to ‘collaborate’ which in turn has two options wherein users can take the audio from a video posted by any user and use it in their videos or they can mix and match to create a form of duet video. This feature essentially works on the premise of using the content posted by other users which might or might not have infringing content. The second feature is the creation of a music library from which users can not only use music stored within their phones but they can also choose from a curated list of songs to add to their videos. From the recent reviews on Play Store, it appears that Roposo has removed both these features subsequent to the order, at least for the time being.

Does Roposo Qualify as an Intermediary?

As Divij has examined in detail earlier, under Section 2(1)(w) of the Information Technology Act an intermediary is defined with respect to those “particular electronic records” which it acts upon “on behalf of another person”. Accordingly, so far as the ‘collaborate’ feature is concerned, the platform is merely hosting content posted by other users without any personal involvement and would hence qualify as an intermediary. However, as far as the music library is concerned, even if the curated list might be created using songs from the phones of various users, the same is not done ‘on behalf of’ them. It is, arguably, a personally conducted act and, hence, it would be difficult to consider the platform as an intermediary for the music library feature. This appears to be the case from Roposo’s admission before the court it “created a music library which contain popular music including to which the plaintiff had the copyright” and had “taken down substantial portion of the music library, extracting and effects tools, which allegedly infringed the plaintiff’s copyright” after T-Series’ notice. This would be strengthened if T-Series’ claim is true that even the rights management information of these copyrighted songs has been removed by Roposo in its music library. In such a scenario, the creation of the music library, as vividly explained by Ameet Datta, requires obtaining several licenses from rights holders, with major players such as T-Series, Saregama, and IPRS. In the absence of such adequate licenses, Roposo appears to be prima facie infringing the copyright of the rights holders through its music library feature.

Can Roposo Claim Safe Harbour Protection?

The question that now remains is whether safe harbour protection could be claimed with regards to the collaborate feature for which Roposo acts as an intermediary. While it might be argued that Section 81 of the Information Technology Act makes safe harbour exemptions inapplicable to copyright infringements, as explained by Divij here and here, the courts have held to the contrary. Hence, protection under Section 79 can be claimed provided that it is not hit by Section 79(3). Section 79(3) entails absence of “actual knowledge” on the part of the intermediary and that the intermediary should not have “conspired or abetted or aided or induced” the unlawful act. The Delhi High Court in MySpace v. Super Cassettes Industries has held ‘actual knowledge’ to mean compliance of takedown notices which isn’t at issue in the instant dispute. On the second point, the Delhi High Court in Christian Loubatin v. Nakul Bajaj has held that the standard of having “conspired or abetted or aided or induced” requires the intermediary to be an “active participant” in the infringement. It appears difficult to see if such threshold would be met solely by providing a platform where users have the option to collaborate and use each others’ tunes. Hence, arguably Roposo could claim safe harbour protection for the collaboration feature.

Fair Dealing

In case the previous prong is held against Roposo and it is denied safe harbour protection, it is interesting to note whether it could adopt the defence of fair dealing as provided in Section 52(1)(a) of the Copyright Act in relation to both the ‘collaborate’ feature and the music library. Anupriya had recently argued that video-sharing platforms could possibly be protected under the fair dealing provision due to the transformative nature of the use. While I agree with her analysis, I must add an important caveat. Her analysis is aptly applicable to the ‘collaborate’ feature where the users are making short videos of transformative nature, even if with some commercial motive. However, this argument does not extend to the creation of a dedicated music library on part of the platform. This action by the platform falls foul of all the factors of the four-factor test in that the use is not transformative, it is for a commercial purpose, the nature of the work is creative as against factual, the entirety of the songs are part of the library, and it has a negative effect on the market of the work.

Conclusion

While Roposo has always claimed to be “ethical” and “clean” in terms of their serious efforts concerning content moderation, it appears that similar diligence hasn’t been shown in their copyright efforts as they find themselves in slightly shaky waters. Although T-Series have gone on the extent of calling Roposo as “music pirates” and “a matter of shame” for its investors, they have clearly stated that they are “always open to license” their content. Notably, Sharechat, after similar infringement claims by T-Series, recently inked a licensing deal with it. With the growing monetary value of Roposo, through over 90 million downloads and campaigns featuring celebrities such as Amol Parashar, it appears that it will follow a similar path and enter into a licensing deal. If such a deal is not entered into, as against Roposo’s tagline of “The world is watching”, T-Series would probably be watching them in court.

As a parting aside, these onerous licensing requirements have a considerable impact on the user generated content (‘UGC’) potential that TikTok had started opening up in India. While Anupriya highlighted their impact on cultural production and free speech, particularly for the marginalised, there is also the commercial angle to it. TikTok had opened up UGC as an innovative marketing strategy for brands in India, particularly for connecting with Gen Z users which prefer what is known as “S-I-N-C (Short- form, Influencer Driven, Native and Co-Created)” campaigns. However, these licensing obligations, with major players such as T-Series charging substantial royalties, would end up reducing the Indian UGC market to only a select few major players. Moreover, the Indian alternatives with lesser economies of scale might offset these costs by reducing the revenues shared with UGC content creators. This would, in turn, lead to the same remuneration disparities that TikTok was plagued with which Indian alternatives are hoped to resolve. To end with a fun fact, it is interesting that Gulshan Kumar allegedly started off by selling pirated Bollywood music before starting T-Series and now T-Series is earning around 70% of its revenues from online royalties.