SpicyIP Fortnightly Review (January 11-24)

Topical Highlight

Delhi HC Order Cripples Authors’ Royalty Rights in Underlying Works

Image from here

I critiqued the Delhi High Court’s order in IPRS v. ENIL, which held that underlying works incorporated in sound recordings are not utilized and do not incur royalty when the sound recording is used. I briefly review how the 2012 Amendment was brought in to recognise authors of underlying works’ inalienable right to royalty. In this order, the court has accepted the argument that it is the producer of a sound recording who owns copyright over it as the underlying works are not independently commercially viable. It further holds that utilization of a sound recording does not amount to utilization of the underlying works and neither authorization nor royalty is owed to the latter’s authors. I explain how this goes against the literal words of the statute post-amendment. I further point out that the observation that sound recordings are works of joint authorship contradicts the other observations of the order. Lastly, I argue that the court’s ruling that 2012 amendment has no legal effect on broadcast of sound recordings as authors only have royalty rights over non-sound recording uses completely ignores the legislative intent and defeats the purpose behind the amendment, thus causing serious economic losses to authors.

Thematic Highlight

Delhi High Court Interprets ‘Export’ as ‘Use’ in India; Grants Interim Injunction to Lundbeck

Praharsh analysed order in the case of Lundbeck A/S v. Hetro Drugs Ltd. wherein the Delhi High Court ruled that ‘export’ of products from India would amount to ‘use’ of the product in India under Section 107 of the Patents Act. Praharsh explains that equating ‘export’ to ‘selling’ contradicts established precedent on statutory interpretation which requires words to be accorded their plain and natural meaning and to be construed by keeping in mind the context and purpose of the provision. He then discusses how this understanding of ‘use’, risks allowing patentees to claim remedies against export of patented products, thereby permitting an extraterritorial application of the law. Further, it creates room for the argument that products in transit through India are used as well, which runs counter to India’s stance in the EU-Certain generic medicines in transit case where India firmly argued that products transiting through EU territory could not be said to be violating EU patent rights. Finally, he then draws attention to the Form 27 amendment in Patent working disclosure norms. Reading exports as “use in India” runs the grave risk of enabling the manufacturer to claim that it is fulfilling the working requirement without actually making it available for the public in India.

Other Posts

IPAB’s First Statutory License Order Overhauls Radio Royalty System

I discussed the IPAB’s Statutory License order fixing royalty rates for radio broadcasts of sound recordings. Other than the lack of witness cross-examination in the proceedings, I also criticize IPAB’s admittance of IPRS’s intervention petition for fixing of royalties in underlying literary and musical works. Specifically, the interpretation of a ‘shared right’ of royalty is confusing and risks harming the very authors who are the intended royalty recipients. I explain how IPAB has adopted the needle-per-hour model for fixing rates to accommodate differences in city-wise listenership and timeslot traffic. Further, the rates have been driven more by considerations of fair market value and balancing of interests of both radio companies and copyright owners as opposed to the public interest considerations that had led to the fixing of a low rate on the basis of radio industry’s poor financial health. Moreover, IPAB also chose to refuse pleas to fix higher rates for new songs, for playing of complete tracks and for repeated playing of popular songs on grounds that there was no evidence that these caused harm. Lastly, IPAB allows space for negotiation of voluntary licenses if parties so will.

Patent Drafting Positions at Remfry & Sagar, Bengaluru & Gurgaon

We informed our readers that Remfry & Sagar, one of India’s leading IP law firms, is looking to recruit two candidates for patent drafting for its Bengaluru and Gurgaon offices. Further details are available in our announcement post.

Other Developments

Decisions from Indian Courts

• Image from here

  IPAB in Hewlett Packard v. The Registrar of Trademarks & Anr ordered that the trademark ‘OBELISK’ bearing registered No. 3227569 in class 9 be removed from the Register forthwith on the grounds that it is wrongly registered by Respondent No.2 and is covered under the provisions of Section 47 and Section 57 of the Trade Marks Act, 1999 [December 30, 2020].

• IPAB in Wisig Networks Pvt Ltd v. Controller Of Patents And Designs allowed the appeal against the decision of the Assistant Controller of Patents & Designs on grounds that it was devoid of any reasoning and remanded the application back to it to be decided on merits [January 8, 2021].
• IPAB in Asthristis Relied Plus Ltd v. Controller Of Patents And Designs allowed the appeal against the decision of the Assistant Controller of Patents & Designs rejecting a patent application and directed the respondents to grant patent to the appellant on the amended set of claims [January 11, 2021].
• Delhi High Court in Bharat Biotech International v. Optival Health Solutions Pvt. framed the issues in a dispute concerning ‘TCV,’ ‘TCV/TYPBAR- TC’ and related trademarks and listed it for hearing [January 11, 2021].
• Gujarat High Court in M/s Vipul v. Akshar Sweets And Namkeen, in a case of trademark infringement, directed the trial Court to decide the application of the appellants for grant of interim injunction as expeditiously as possible, preferably within a period of three months [January 11, 2021].
• Delhi High Court in Aktiebolaget Volvo & Ors v. Vaishali Travels & Anr passed an ex-parte interim injunction against the Defendants, restraining them from using the Plaintiff’s trademark ‘VOLVO’ and/or any deceptively or confusingly mark in relation to online booking of bus tickets, live tracking of buses, telephonic booking of bus tickets or in relation to any other goods or services, in any manner, including the impugned domain name, www.vaishalivolvo.com, meta- tags associated with the impugned domain name, as a part of the email id vaishalivolvo35@gmail.com [January 11, 2021].
• Delhi High Court in Gs1 India v. Global Barcodes Sl & Ors granted a permanent injunction and damages in favour of the Plaintiff restraining the Defendants and their associates from using, selling, offering for sale, issuing or allocating 13-digit barcode numbers starting with ‘890’ or any deceptively similar marks leading to confusion as to origin or association or mistaken impression as to certification regarding compliance with GS1 standards (GS1 General Specification), amounting to infringement of Plaintiff’s registered trademark [January 12, 2021].
• Delhi High Court in Quikr India Private Limited v. Nike Innovate C.V & Anr. noted procedural inadequacies in the granting of an ex-parte injunction in a matter relating to the infringement of trademark through counterfeit goods sold under trademarks NIKE, SWOOSH DEVICE, NIKE PRO, NIKE+, NIKE AIR JORDAN, JORDAN, JUMP MAN (DEVICE) and directed that the application under Order 39 Rules 1 and 2 CPC be restored to the file of the trial court and be decided afresh [January 13, 2021].
• A Delhi District Court in Burberry Limited v. Dinesh granted a decree of permanent injunction to the plaintiffs, restraining the defendants from selling, offering for sale, marketing, advertising, distributing or dealing in/under the impugned trademark ‘BURBERRY EQUESTRIAN KNIGHT LOGO, CHECK’ or deceptively similar trademark to the plaintiff’s trademark ‘BURBERRY’, along with compensatory damages in sum of Rs. 1 lakh lumpsum on account of unfair economic and commercial advantage which the defendants tried to gain at the expenses of the plaintiff’s reputation as well as costs towards litigation expenses in the sum of Rs. 33,000/- in favour of the plaintiff  [January 18, 2021].

  Image from here

• A Delhi District Court in Levi Strauss & Co v. Dinesh, granted a permanent injunction to the Plaintiffs restraining the defendants from selling, offering for sale, marketing, advertising, distributing or dealing in/under the impugned trademark ‘LEVI’s’ with/without the ‘Two Horse Logo’ and/or House mark ‘LEVI’s’, along with compensatory damages in sum of Rs. 1 lakh lumpsum on account of unfair economic and commercial advantage which the defendants tried to gain at the expenses of the plaintiff’s reputation as well as costs towards litigation expenses in the sum of Rs. 33,000/- in favour of the plaintiff [January 18, 2021].
• Delhi High Court in Blue Heaven Cosmetics v. Bhcosmetics Llc, granted the plaintiff’s request and amended its previous order dated January 8, 2021 wherein it was stated that ‘BH’ is a registered trademark of the plaintiff whereas in fact the trademark is pending registration [January 18, 2021].
• Delhi High Court in V Guard Industries Ltd v. Sukan Raj Jain & Anr granted an interim injunction against the Defendants restraining them from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in machines, electronic, electrical, parts and fittings or any other products under the impugned mark ‘N-GUARD’/ domain name ‘www.nguard.in’, any other trade mark/trade name/trade dress/domain name/designs as may amount to infringement of the plaintiff ‘s registered and well-known trade mark ‘V-GUARD’ [January 18, 2021].
• IPAB in Dotcom Retail Ltd. v. The Registrar of Trademarks directed that the entry of registered Trade mark No. 2015388 for the mark ‘beautybay’ (device) in Class 35 in the name of Respondent No.1 be deleted from the Register under the provisions of Section 47(1)(a) and (b) and Section 57 of the Trade Marks Act, 1999 [January 19, 2021].
• IPAB in Krishna Chetty & Sons v. Deepali Co. Pvt. Ltd. acknowledged an allegation of bad faith registration and stayed the trademark Application Nos. 2936330 in class 42, 3743497 in class 14, 3743498 in class 35, 3743500 in class 42, 3743504 in class 42, 3743505 in class 14, 3743506 in class 35 and 3743507 in class 36 [January 19, 2021].

Other News from around the Country

• Ashish Kaul, the author of ‘Didda: The Warrior Queen of Kashmir’, has accused the Kangana Ranaut’s film ‘Manikarnika Returns: The Legend Of Didda’ based on the Kashmiri Queen Didda’s life, of copyright infringement.
• Serum Institute of India has filed its response to a lawsuit by pharma manufacturer Curtis-Biotech over the brand name ‘Covishield’, saying both companies operate in different product categories and there is no scope for confusion over the trademark.
• The Bombay High Court allowed the German personal care brand Sebamed to continue comparative advertisements naming FMCG major Hindustan Unilever Ltd soap brands Dove, Pears and Lux as long as it is backed by right scientific data. However, it must remove HUL’s detergent brand Rin reference from campaigns which compare the pH level of soap brands Pears and Dove to that of Rin.

• Image from here

  The Delhi High Court refused to stay the release of the film ‘The White Tiger’ in a last minute petition as it was scheduled to release on the online streaming platform, Netflix on the very next day on January 22.

• Zanjeer copyright case is set to be probed by Crime Branch of Mumbai Police.
• Com Olho, a leading cloud-based machine learning platform, becomes India’s first company to receive patent for advertising fraud detection.
• A Geographical Indication tag has been sought for Gucchi, also known as Morel, one of the world’s most expensive mushrooms growing in Kashmir’s Doda district, valued at over INR 20,000 for every kilogram.
• Maha Movie TV channel’s CEO Sanjay Verma has been arrested by Mumbai Police in an alleged copyright violation case as well as TRP rigging accusations.
• Gujarat police has arrested four persons in Surat for selling whole wheat flour using Reliance’s Jio trademark.

News from around the World

• Bitcoin developer Craig Wright is reportedly suing Bitcoin.org and Bitcoincore.org for copyright infringements of the Bitcoin Whitepaper.

  Image from here

• Google has signed a deal with Alliance de la Presse d’Information Generale, a group of French publishers, paving the way for digital copyright payments for online news content and negotiation of individual licensing deals with publishers.
• Pfizer Inc and associate companies have sued Aurobindo Pharmaceuticals Ltd in a US court for patent infringement of its arthritis drug Xeljanz.
• Germany’s Federal Court of Justice has affirmed the personality and image rights of two celebrity plaintiffs whose images were used without consent.
• NBA star Michael Jordan has faced defeat in a Shanghai Court decision in a trademark dispute against Chinese sportswear manufacturer Qiaodan Sports Company who brought a lawsuit against him for consistent unauthorised use of the trademark “Qiaodan”, which is the Chinese translation of the word “Jordan” without any authorisation.
• US Supreme Court rejected a bid by Merck & Co.’s Idenix to revive a case against Gilead Sciences Inc. in a dispute over a patent for a hepatitis C treatment.