Last week was pretty action-packed here on the blog. We featured 8 posts discussing important IP developments like the Bombay High Court’s important clarification on the re-assignment of copyright, the opacity on public money spent on R&D by the government, in the last decade. We also featured important news reports about the change in the roster of Delhi High Court IPD and the declaration of results for the 2023 Patent and Trademark Agent Exams. Here is our quick recap of all things Spicy and related to IP from last week. Anything important we’re missing out on? Drop us a comment below!
This post is co-authored with SpicyIP intern Anshuman Kar. Anshuman is a third year law student at National Law University, Odisha. He shares a keen interest in Patent related issues and wishes to discover more in the field of IP.
Highlights of the Week
Results for Patent and Trademark Agent Exams Are Out!!!
The Office of Controller General of Patents, Designs and Trademarks released the results for the 2023 Patent and Trademark Agent examinations. While 103 applicants have passed the Trademark Agent exam, 529 applicants have cleared the Patent Agent exam.
Delhi High Court revises its IP Division’s roster, bringing the number of member judges down to two. Justice Prathiba M. Singh and Justice C. Hari Shankar to function as the IPD from July 3, 2023.
In the last decade, almost 1 Lakh crore has been directed by the Government towards R&D, but what’s come out of it, and who’s keeping track of this? Prashant Reddy T. and Saranya Ravindran in their incisive guest post highlight the questions of accountability and transparency regarding this spending of tax payer’s money, and the need for a strict legislation to tackle these issues.
The Tussle with NCERT: A Copyright Angle
In the background of the Suhas Palshikar and Yogendra Yadav – NCERT Row, Pranav Aggarwal writes an insightful post discussing how the request made by the 35 academicians to remove their names from the NCERT textbooks will fall under the ambit of moral rights u/s 57.
Other Posts
Re-Assignment of Copyright – Conflicting Claims on the Interpretation of Long-Form Agreements
In a dispute involving who’s who of media and entertainment industry, Bombay High Court clarified that there cannot be an automatic re-assignment of copyrights to the assignor and asserted the need for executing a re-assignment deed. Niyati Prabhu explains the nitty gritties of the order in her post.
‘Win-Win Situation’: Compulsory Licensing Royalties Decided by Madras High Court
Adding another twist to the 2-decades long litigation saga, the MHC has inter alia clarified that the 2010 compulsory licensing royalty rates for radio broadcasting, fixed by the Copyright Board will not apply against all music providers. In this analytical guest post, Devangini Rai discusses the order in detail and highlights the questions that lie ahead.
‘Where thou documents?’ asks BHC, denying interim injunction to Shemaroo
Recently, in a copyright dispute involving two heavyweights of the Indian media and entertainment industry, Shemaroo sued T-Series for infringement. Surprisingly, however, it did not file the necessary link documents citing them to be “voluminous”. Gaurangi writes on this unique case and the subsequent Bombay High Court order.
Proving ‘Bonafide’ Marriages: Del HC’s ‘Sanskari’ Interpretation of Section 52(1)(za)
The issue of using sound recordings for wedding festivities popped up again before the DHC, this time in the form of an application against the threats of litigation by the copyright owners. Anjali Baskar writes that while the court dismissed the application, it nonetheless goes on to discuss the exception u/s 52(1)(za) narrowly which may have problematic implications.
Case Summaries
K’taka High Court refuses to quash FIR against Rahul Gandhi and other Congress leaders in the KGF: Chapter 2- Copyright Infringement case
Case: Jairam Ramesh and Anr. v. State of Karnataka and Anr. on 28 June, 2023 (Karnataka High Court)
The dispute pertained to the petitioners’ unauthorized use of Respondent no. 2’s sound recordings, from the movie ‘KGF Chapter 2’, for the “Bharat Jodo Yatra”. The petitioners argued that the use of the impugned song was for 30 seconds and would fall under the fair use exception and therefore the criminal complaint should be quashed. The respondent argued that the petitioners meddled with the source code of the song and thus infringes its rights. The court held that the petitioners’ reliance on Section 52 exceptions is a matter of trial and the complaint cannot be quashed on this ground alone. The court, relying on Mangalore New Sultan Beedi Works v. Karnataka, clarified that it is not the law that merely because a civil remedy exists on infringement, a criminal case cannot be registered. Furthermore, the court prima facie observed that tampering with the source code and playing the impugned song without authorization amounts to copyright infringement and refused to quash the complaint against the petitioners.
Madras High Court sets aside the Controller’s order for incomplete grounds of objection in the hearing notice
Case: Monsanto Tech v. Union of India on 9 June, 2023 (Madras High Court)
The petitioner filed an application for grant of patent for an transgenic event. First Examination Report was issued by Controller of Patents and objections were filed. Amended claims were filed by the petitioner due to which an hearing notice was issued by the Controller. The order held that the claims were not in conformity with Section 10(4). The order draws reference from Section 10(4) (a), (b), (c) whereas the hearing notice only had objections under Section 10(4) (ii) (D). Hence, the petitioner was denied the opportunity of responding to the objections. The order also makes reference towards paragraph 53 of specification and records a finding which is not referred to in the FER or hearing notice. Hence, the writ was upheld. The Controller was asked to rehear the matter.
Madras High Court holds that the plaintiff is the rightful owner of the movie “Elangeswaran”
Case: N.Ravi vs The Director, Doordarshan Kendra on June 6, 2023 (Madras High Court)
The plaintiff presented evidence and documents proving his copyright over the film ‘Elangeswaran’ and argued for the reliefs sought. The defendants claimed ownership of telecasting rights based on a subsequent transfer, but the relevant documents required to prove such ownership could not be produced by them. The court hence concluded that the plaintiff is the rightful owner of the copyrights and granted the requested declaration and permanent injunction, with costs awarded to the plaintiff.
Madras High Court dismissed the plaintiff’s suit seeking a declaration that he is the owner of the films ‘Chingari’ and ‘Shrikanta’
Case: C.Prakash v M/s S.N. Media & Ors on 6 June, 2023 (Madras High Court)
The plaintiff filed the present civil suit seeking a declaration that he is the sole and absolute owner of all the rights in respect of dubbed cinematograph film ‘Chingari’ and ‘Shrikanta’ in Tamil and Malayalam and connected internet and non-theatrical rights. The plaintiff averred that he acquired dubbing rights and internet and non-theatrical rights of the films from the 2nd and 3rd defendants through assignment deeds. However, the court held that the plaintiff failed to lead acceptable evidence to prove the execution of these documents. It, therefore, dismissed the suit, making no order as to costs.
Madras High Court imposed simple imprisonment on the directors of the defendant for wilful disobedience of the interim injunction order
Case: ITC Limited vs. Golden Tobacco Limited and Ors. on 26 July, 2023 (Madras High Court)
A contempt petition was filed against wilful disobedience of the interim injunction order restraining the defendants from using the “Golden’s Gold Flake” label. The petitioner argued that the respondent is using the impugned mark, which is different from the mark agreed by the parties in an earlier compromise agreement. The respondent on the other hand questioned the maintainability of the petition and argued that due to changes in the packaging laws, the available advertising space has been reduced substantially, causing them to print the impugned mark. The court however disagreed with the defendant and held that reduction in available space to advertise was not a valid reason to disobey the injunction order. Holding the respondent guilty of disobedience, the court imposed a term of simple imprisonment, for 2 weeks, on the directors of the defendants.
Madras High Court refuses to pass a John doe order in a property dispute, limits its application to IP infringement matters
Case: Dr. G.V. Varajarajulu@Sekar v. R. Muthappa on 26 July 2023 (Madras High Court)
The petitioners sought an interim injunction to prevent interference with their properties alongside requesting police protection. The petitioners impleaded the first defendant, and a John Doe order was sought against others. The court made the injunction absolute against Respondent no. 1, however the court was reluctant in placing a John Doe order. The court explained that John Doe orders are “to provide pre- infringement injunction & is granted in the intellectual property rights of the creator of an artistic work against unknown nameless infringers” and if such an order is allowed in the present case concerning possession of a property, then it may result in unscrupulous persons invoking an order against the original owners/occupiers.
Madras High Court clarifies that the exception of bona fide use of a name as a trademark u/s 35 will not extend to the name of the spouse of the defendant
The petitioners sought a permanent injunction against the defendant’s use of “New Sangeetha” by the respondent for being deceptively similar to its “SVR Sangeetha” mark. The respondent argued that there is a delay of 8 years since the filing of the suit by the plaintiff and; “Sangeetha” is the name of the defendant’s proprietor’s wife and thus, he is a bona fide user. The court held that the plaintiff is not guilty of acquiescing as earlier the defendant had assured to change the name of the restaurant and the same was not done till 2013 after which a fresh notice was issued and the suit was instituted. On the honest use by the defendant, the court said that the exception under Section 35 of the Trademark Act does not extend to the spouse of the person adopting a trademark. Upon comparing the competing marks the court held that the defendant’s adoption of the impugned mark will cause confusion in the minds of the general public. The court also noted that the impugned mark was earlier denied registration by the Registry, citing similar trademarks.
Madras High Court refuses an injunction to the plaintiff, holds “Sprinkle” is a word common to the food industry, the plaintiff cannot claim monopoly over it
Case: M/S.Veppolodai Chemicals vs Ds Spiceco Private Limited on 9 June, 2023 (Madras High Court)
The plaintiff sought a permanent injunction against the defendants for using the mark “Sprinklers/Sprinkle”. The plaintiff’s mark is “Sprinkle” whereas the defendant is using the mark “Catch Sprinklers”. Dismissing the present suit with costs, the Madras High Court held that the word “Sprinkle” is not a distinctive word and is common to the food industry, especially in the context of salt and spices. The court observed that the plaintiffs have adopted a mark that is so common to the trade, that it cannot claim monopoly over it.
Madras High Court grants a permanent injunction to the plaintiff in a dispute involving copyright of the film “Nearupoo’
Case: Sanjay A.Wadhwa-Huf Ii vsM/S.Royal Talkies on 5 June, 2023 (Madras High Court)
The plaintiff filed the suit for permanent injunction restraining the 2nd defendant from infringement or interference with the copyright of the plaintiff over the Tamil feature film ‘NEARUPOO’. The plaintiff had entered into an agreement with the 1st defendant (who was the producer of NEARUPOO) for acquisition of exploitation rights of the feature film for a total consideration of Rs.4,75,000/-. The 1st defendant, who had earlier published a notice that the film would be released on 25th October, 2001, wrote a letter to the plaintiff to hold back the overseas release of the film, as the film could not be released in India due to a dispute with the 2nd defendant. However, the 1st defendant did not cancel the agreement with the plaintiff; and the plaintiff was not made a party to any subsequent agreement between the 1st and 2nd defendants. The court held that any assignment in favour of the 2nd defendant is only subject to the rights already acquired by the plaintiff, and granted the decree for permanent injunction as prayed for.
Madras High Court grants a permanent injunction to the plaintiff in a copyright dispute over the film “Kodi”
Case: M/S.Sun Tv Network Limited vs Hero Talkies on 19 June, 2023 (Madras High Court)
The plaintiff filed this suit seeking a permanent injunction restraining the defendants from exhibiting or exploiting the Tamil film ‘Kodi’ and sought damages from them for allegedly uploading the film on Youtube. The plaintiff argued that it had been assigned the satellite and exploitation rights of the film by the actor Dhanush through an agreement for consideration of Rs.5,00,00,000/-. It was submitted that Dhanush, via an earlier tripartite agreement had acquired the satellite rights and other exploitation rights except the theatrical rights, dubbing and remaking rights. The court held the assignment to the plaintiff was valid and granted the decree for permanent injunction. However, the suit was dismissed with regard to the prayer for damages, as the plaintiff failed to lead any evidence to ascertain the alleged damage caused by uploading of the film by the defendants.
Other Developments
- Ratan Tata announces his disassociation with cryptocurrency and issues clarifications amidst crypto scam.
- Grant of sublicense by Shionogi amidst UN backed program allows Indian Firms to Manufacture Potent Antiviral Medication for Mild and Moderate Covid-19 in Vaccinated People.
- A couple in Chhattisgarh managed to preserve 350 variety of paddy to protect biodiversity and traditional seeds.
- Phonepe issues warning to the Indian National Congress over unauthorized use of its mark in political campaign against the BJP in Madhya Pradesh.
International IP Developments
- Sole Showdown: Skechers takes on Steve Madden in ‘confusingly similar’ Kennie Design Lawsuit.
- Genius vs. Google: Does the turndown of Genius’ appeal by the Supreme Court open doors to content theft by big tech?
- Apple and Nokia signs fresh pact over 5 G tech.
- Class action law suit filed against Open AI and Microsoft, alleging privacy violation and copyright infringement.
- Mattel opposes Burberry’s ‘BRBY’ trademark. Alleges similarity with the “Barbie” trademark.