SpicyIP Weekly Review (10th – 24th April)

This review is brought to you by Rahul Bajaj, SpicyIP Fellow 2016-17.

SpicyIP Highlight

Our highlight of the week definitely was a two-part post from our SpicyIP fellowship applicant, Prateek Surisetti, on the copyrightability of literary characters. In his first post, Prateek notes that courts typically apply two main tests: the “especially distinctive” test and the “story being told” test for determining whether a character is copyrightable. He then examines the main factors that have been evolved by courts for the application of the first test before proceeding to examine the 3 factors set forth by the 9^th circuit for its invocation. In his second post, Prateek discusses the principles underpinning the “Story being told” test before outlining its main flaws. He then explains how Indian courts have failed to clearly enunciate the factors that should guide the copyrightability inquiry and finally opines that the 3-factor version of the “Especially Distinctive” test developed by the 9^th circuit should be followed by Indian courts.

In our first post during the review period, Prashant Reddy analyzed the Government’s decision to shift the Copyright Office from the Ministry of Human Resources Development to the Department of Industrial Policy and Promotion in the Ministry of Industry and Commerce. Prashant examines how Indian copyright law has traditionally been inextricably intertwined with India’s education policy and cites many concrete examples of key interventions by the HRD Ministry that have helped in maintaining the appropriate balance between following copyright law and making academic material widely available. He finally explains how it would be unwise to expect the move to improve the efficiency of the Copyright Office, in light of the DIPP’s failure to effectively manage the Patent Office and the Trademark Registry.

In our next post, Balaji analyzes BDR and Lee Pharma’s reported decision not to pursue an appeal against the rejection of their compulsory licensing application with respect to Astrazeneca’s Saxagliptin and BMS’ Dasatinib. Noting how this decision was motivated by the Government’s private assurance to US pharma lobbies that it would not grant compulsory licenses for commercial purposes, Balaji delineates 3 specific reasons why this development has the potential of rendering nugatory the Section 84 process and the promise of adequate supply of drugs at affordable prices that the section embodies.

Next, Kartik brought us a tidbit about the Bombay High Court’s refusal to grant an interim injunction against the screening of the movie Fan which stars Shahrukh Khan. He examines how the court analyzed the two central questions that the case posed and briefly delves into the reasoning adopted by the court.

Rupali then analyzed a recent WIPO report that offers an empirical analysis of the effect of patents on access to medicines. She sets forth the methodology adopted by the WIPO analysts for arriving at their conclusions before proceeding to highlight the key flaws in the analysis that raise serious question marks about the accuracy of their conclusions. Finally, she opines that the report fails to adopt a holistic perspective in examining the problem of lack of access to medicines by asking the wrong questions.

Next, Shan brought us an update about the plagiarism allegations against the DIPP pertaining to its paper on standard essential patents that we had covered here. She notes that the DIPP has taken cognizance of these allegations and has issued a revised version of the paper and also shares the response offered by the DIPP to these allegations.

Next, I discussed a Bombay High Court judgment by Justice G.S. Patel which pertains to the grant of injunction in a trademark infringement suit. I examined the key arguments put forth by both the parties with respect to the nature of the mark before discussing the main reasons advanced by Justice Patel for holding that the mark was used by the defendant as a trademark and not merely for a descriptive purpose.

Thereafter, Shamnad Sir welcomed our second SpicyIP fellow for this year, Ritvik Kulkarni from the ILS Law College, Pune. Let’s hope he enjoys this fellowship as much as I am!

Swaraj then discussed the contours of the IP Chapter in the RCEP negotiations leaked by Knowledge Ecology International. He notes that India has been making a concerted effort to prevent the agreement from becoming a TRIPS plus agreement, by advocating the inclusion of a separate paragraph on the TRIPS flexibilities embodied in the Doha Declaration and a distinct section on the protection of traditional knowledge. He finally points to a worrying trend of countries pushing for the incorporation of more stringent norms into the agreement – a problem exacerbated by the opacity that has characterized the negotiation process.

Prof. Basheer then offered an analysis of another judgment of Justice Patel of the Bombay High Court which held that copyright disputes, essentially being disputes in personam, are arbitrable. He discussed the line of reasoning adopted by the court for reaching this conclusion and expressed some doubt about the proposition that all disputes of copyright infringement are essentially questions of fact.

Next, Shruthi shared the details of a conference on the WTO Dispute Settlement Process that is going to be held on 2^nd and 3^rd May, 2016, by the Centre for WTO Studies, Indian Institute of Foreign Trade. Registration closes at 10 AM on 25^th April.

Following this, our SpicyIP fellowship applicant, Inika Charles, discussed the controversy as to who the true inventor of the email was, that has flared up again following the death of Ray Tomlinson. In order to examine the veracity of Mumbai-born Shiva Ayyadurai’s claim that he invented the email, Inika sketches the emergence of the email from a historical perspective and notes the distinctive contribution of Tomlinson and Ayyadurai in this process. She notes, in my view rightly, that the development of the email was a collective accomplishment, in which both men played a crucial role. She then situates this controversy within a broader context, noting how the invention of such things as the telephone and calculus also threw up similar questions.

In the next post, Balu Nair, a SpicyIP fellowship applicant, examined Xiaomi’s patent portfolio expansion strategy from a comparative perspective. At the outset, he notes how the patent portfolio theory offers the most compelling justification for the phenomenon commonly described as the ‘patent paradox’. He then examines the intricacies of Xiaomi’s strategy and notes its competition law implications. Finally, he notes with dismay that other mobile manufacturers have been unable to adopt a similar strategy and points out the advantages that attend such expansion.

Vasundhara Majithia, our SpicyIP fellowship applicant, then expatiated upon the Delhi High Court’s judgment, restraining the IPRS from issuing licenses or recovering any fee with respect to Jagjit Singh’s work. She examines the arguments advanced by the plaintiff and the decision of the court. Finally, she praises the decision for offering greater clarity on the rights of IPRS vis-à-vis authorized agents and for recognizing Jagjit Singh’s personality rights.

In the final post of this week, Aparajita offered a succinct yet lucid analysis of a recent American judgment that found TCS guilty of stealing confidential information and imposed a mammoth $940 million as damages. After noting the factual matrix of this case, she refers to a similar dispute involving Satyam that we had blogged about here. Finally, she briefly analyzes the manner in which courts in India have sought to punish the stealing of confidential information.

International Developments

1. A U.S. district court judge has ordered a jury trial to ascertain whether Led Zeppelin’s iconic song, Stairway to Heaven, is substantially similar to a song known as Taurus, composed by Randy Wolfe for the band Spirit.
2. In submissions to the US Copyright Office, record labels such as UMG, Sony Music and WMG have claimed that YouTube’s Content ID system, which is aimed at detecting plagiarized content on the site, is not sufficiently robust, resulting in a lot of plagiarized content falling through the cracks.
3. The We Shall Overcome Foundation, based out of California, has filed a lawsuit against a pair of businesses, contending that the latter do not own the copyright in the song “We Shall Overcome” and that the same should belong to the public domain.
4. Apple has paid $24.9 million to a patent troll and a university in order to settle a patent infringement claim involving the Siri voice assistant found on its devices.
5. Microsoft and Google have entered into an agreement to settle around 18 patent infringement cases in the U.S. and Germany that they were contesting against each other and have agreed to negotiate before going to court in future.