Karnataka High Court
Case BriefsHigh Courts

   

Karnataka High Court: While deciding the instant appeal filed by ‘Vogue Institute of Management’ challenging the Trial Court’s permanent injunction restraining the appellants to use the trademark ‘VOGUE’ as a part of their name and trading style, the Bench of M.I Arun J., held that the respondent publishes an internationally acclaimed fashion magazine, whereas the appellant runs an institution pertaining to fashion technology ; since the appellant is not publishing any magazine by the name of ‘Vogue’, hence, there is no infringement of trademark.

Furthermore, while considering that whether the use of the word ‘Vogue’ by the appellants amounted to passing-off, the Court held that while Vogue magazine is generally read by a limited section of society who are aware about fashion, its purchasers are likely to know that the magazine is only involved in the business of publishing and not running an institute. The Court stated that it is highly unlikely that the students joining the appellants’ institute will get confused between Vogue- the fashion magazine and Vogue- the fashion technology institute.

Facts and Legal Trajectory of the Case: Advanced Magazine Publisher’s Inc. had been publishing the internationally popular fashion magazine VOGUE since 1892 and is the registered proprietor in India of the trademark VOGUE under Class-16 of Trademarks Classification of Goods and Services, in respect of magazine publications.

In 1998, the respondent (then plaintiff) came to know about the appellant (then defendant) running a training institute named- VOGUE Institute of Fashion Technology using slogans like – “VOGUE, the great career option”. Consequently, the respondent-plaintiff took the legal route.

The Trial Court framed and answered the following questions-

  1. Whether the plaintiff proved that it is the proprietor of the trademark VOGUE in respect of fashion magazine and is using the trademark for over a century and is the registered proprietor in India as well? – Affirmative

  2. Whether the plaintiff proved that using the trademark for over 100 years, the mark VOGUE is now been exclusively identified with the plaintiff?– Affirmative

  3. Whether the plaintiff proved the defendant’s use of the world-famous trademark to trade upon and benefit from the reputation attached to the said mark? Affirmative

  4. Whether the defendant was able to prove the dissimilarity between the names and that their name is sufficiently distinct? Negative

  5. Whether the plaintiff is entitled to seek relief of permanent injunction; direction to render an account of profits and decree for the amount due after rendering of account, against the defendant? Affirmative for all three

As a result of the afore-stated verdict rendered by the Trial Court, the instant appeal was preferred.

Contentions by the appellants/defendants:

  • The appellants/defendants argued that VOGUE is a generic word- a common English word which has not been coined, therefore, the respondent cannot monopolise the same.

  • The appellants/defendants further argued that the respondent has failed to demonstrate the awareness regarding Vogue magazine in India.

  • It was contended that Class 16 of registered trademark, does not cover the activity of the appellants i.e., running a fashion institute. Thus, no trademark infringement has been committed. Furthermore, it was argued that since the people of India are not that aware of the existence of VOGUE magazine, therefore, the appellants/defendants using the name for their institute does not amount to passing-off.

  • It was also argued that mere assertion of transborder reputation of a trademark is not sufficient for the Court to give conclusions regarding infringement of the trademark.

  • The appellants/defendants further submitted that they are honest and concurrent user of the word VOGUE and have spent their effort time and money to build a goodwill.

  • The Trial Court was confused as to whether the dispute is of trademark infringement or passing-off.

Contentions by the respondent/plaintiff:

  • The respondent/plaintiff argued that in a passing-off action, there cannot be a defence of generic word and what matters in a passing-off action is the reputation of the person.

  • It was submitted that the reputation of the magazine had already reached India prior to the adoption of the mark by the appellant/defendant. It was further contended that the respondent/plaintiff has been able to show a connection in the course of trade between goods of the two parties.

  • It was further submitted that the respondent/plaintiff has also sufficiently proved that the appellant/defendant’s use of identical or deceptively similar mark is for deceiving and causing confusion withing the customers.

  • Vis-à-vis transborder reputation, it was contended that it is not necessary to ascertain existence of real market and that the presence of the respondent/plaintiff, through its mark, in a subtle form, is sufficient.

  • It was contended that even though the businesses are different, both the parties cater to the same pool. Whosoever is interested in latest fashion trends, will also be interested in a fashion magazine; and it is a fashion technology institute that produces professionals like fashion designers, fashion journalists etc. Anyone who aspires to be fashion professional, is aware of VOGUE magazine.

High Court’s Observations and Decision:

  • Perusing the facts and contentions, the Court observed that there is no dispute that both the parties are using the word VOGUE. The Court also observed that the respondent/plaintiff in course of their argument, have given up their claim for infringement.

  • The Court further observed that the gist of a passing-off action is that it is an action for violation of common law rights and is enforceable in respect of registered and unregistered trademark. “False and misleading representation resulting into deception, is the key to the answer

  • Perusing the contents of Class 16 Trademarks Classification of Goods and Services, the Court held that no trademark infringement has been committed by the appellant/defendant.

  • The Court considered that whether the appellants/defendant’s mark is likely to deceive the public, who may buy their goods as if they were the respondent/plaintiff’s goods. The Court referred to several case laws on point and noted that in such cases, there is a need to analyse the nature of goods/services in respect of which the word ‘VOGUE’ was being used by both the parties. The need to analyse the class of purchasers who are likely to good/services offered by the parties, was pointed out as well.

  • The High Court held that the Trial Court failed to appreciate the afore stated factor. The Court held that the Trial Court came to an erroneous conclusion by applying a test that is applicable to a common man who would get confused by use of the word VOGUE. The verdict of the Trial Court was thus set aside.

[M.M. Kariappa v. Advance Magazine Publisher’s Inc., 2022 SCC OnLine Kar 1593, decided on 10-11-2022]


Advocates who appeared in this case :

SS Naganand and Summa Naganand and Vikram U.R. for Just Law, for the Appellant;

Veena P., Constituted Attorney, for the Respondent.


*Sucheta Sarkar, Editorial Assistant has prepared this brief.

Case BriefsHigh Courts

   

Delhi High Court: In a suit filed seeking permanent injunction restraining the Defendants, their partners or proprietors, principal officers, servants, agents and distributors and all others acting on its behalf, from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in any manner with products including but not limited to tobacco products, pan masala products, confectionary and/or any other goods and/or services using the mark RAJNI PAAN, RAJNIPAAN, infringing plaintiffs’ trademarks RAJNI, RAJNIGANDHA including trade dress and any other mark deceptively similar, Jyoti Singh, J., held that defendants are guilty of infringement by dishonestly adopting nearly identical trademark and identical packaging, trade-dress, etc., and have chosen to deliberately stay away from the proceedings, despite service, for which repeated efforts had been made by the Plaintiffs.

It is the case of the Plaintiffs that they are a part of the Dharampal Satyapal Group (DS Group), which is a multi-diversified conglomerate, founded in the year 1929 and have a strong presence in high growth sectors such as Food & Beverages, Confectionary, Hospitality, Mouth Fresheners, Pan Masala, Tobacco, Agro Forestry, Rubber Thread and Infrastructure.

The Conflicting marks are as follows:

Plaintiffs label

Defendants label

Counsel for plaintiff submitted that the RAJNIGANDHA products being Plaintiffs’ flagship product and the world’s largest selling premium flavoured pan masala are sold in a unique packaging having a distinct layout, getup and colour scheme.

An ex-parte ad interim injunction has been granted by this Court in favour of the Plaintiffs and against the Defendants vide order dated 29-11-2018. Order sheets indicate that there was no appearance on behalf of Defendants 3 and 4, despite service through several modes, including dasti.

In Dharampal Satyapal Limited v. Suneel Kumar Rajput, 2014 SCC OnLine Del 687, the Court declared the mark “Rajnigandha” as a well-known trademark, under Section 2(1)(zb) r/w Section 2(1)(zg) of the TradeMarks Act, 1999.

The Court noted that the Plaintiffs are registered proprietors of the trademark RAJNIGANDHA and have filed the Certificate of Registration in this regard which is valid and subsisting. No evidence to the contrary has been produced by the Defendants who chose to abstain from the proceedings.

The Court further noted that having analyzed the competing marks and the impugned label/packaging, it is clear that there is deceptive similarity between them as the packaging of the impugned product, has been designed in an identical colour scheme, font and labels, to give an overall look and feel of the Plaintiffs’ products under the RAJNIGANDHA marks, which has been done intentionally to trade off the significant goodwill and reputation of the Plaintiffs in their RAJNIGANDHA marks.

Thus, the Court held that Defendants have mischievously and deliberately adopted a deceptively similar mark and have only replaced ‘GANDHA’ with ‘PAAN’ with an intention to ride upon goodwill and reputation established by the Plaintiffs as the goods are allied and cognate and the triple identity test is satisfied as the trademark is nearly identical and the trade channels are identical with the same consumer base.

[Dharampal Satyapal Limited v. Youssef Anis Mehio, 2022 SCC OnLine Del 3307, decided on 27-09-2022]


Advocates who appeared in this case:

Mr. Pravin Anand, Ms. Vaishali Mittal and Mr. Shivang Sharma, Advocates for plaintiff

Defendants 1 and 2 ex-parte vide order dated 19-09-2022.

Defendants 3 and 4 ex-parte vide order dated 15-07-2019.

Suit decreed qua Defendants 5 and 6 vide order dated 06-02-2019


*Arunima Bose, Editorial Assistant has put this report together.

Gujarat High Court
Case BriefsHigh Courts

   

Gujarat High Court: While deciding the instant matter concerning copyright infringement, the Bench of Niral Mehta, J., observed that a bare perusal of Section 51 of the Copyright Act, 1957 makes it clear that if any person uses any product without the permission of the license owner or from the Registrar, the same would amount to infringement of copyright.

The instant application was filed before the Court seeking quashment of the FIR against the applicant. The counsel of the applicant submitted that present impugned FIR is nothing but a sheer abuse of process of law. It was further submitted that the impugned FIR has been filed by respondent with an objective to oust the applicant from the business. Heavy reliance was placed upon the certificates of registration of copyright issued by the Registrar of Copyright and Section 51 of the Copyright Act, which states that if any person without a licence granted by the owner of the copyright or the Registrar of Copyright under the said Act does anything, then it would amount to infringement. It was contended that since the applicant had the certificates issued by the Registrar of Copyright, therefore, they cannot be said to have committed any infringement.

Meanwhile the respondents strongly opposed the application.

Perusing the contentions presented, the Court observed that issues raised in the matter require consideration. However, the Court did grant an interim relief to the applicant while stating its prima facie reasons for the same’

  • Section 51 of the Copyright Act is clear as to what amounts to copyright infringement. However, in the present case, the applicant is a holder of a certificate issued by the Registrar of Copyright; thus, prima facie, ingredients of Section 51 have not been satisfied.

  • The Court further stated that invocation of Section 64 of the Copyright Act by the police in the FIR is nothing, but a sheer non-application of mind by the police because Section 64 is not an offence, but the power given to the Police or Investigating Officer to seize the material if any infringement is found.

[Maheshbhai @ Kanbhai Haribhai Sojitra v. State of Gujarat, 2022 SCC OnLine Guj 1308, decided on 14-09-2022]


Advocates who appeared in this case:

Pratik Jasani, Advocate, for the Applicant(s) No. 1;

Pranav Trivedi, APP, Advocate, for the Respondent(s) No. 1.


*Sucheta Sarkar, Editorial Assistant, has prepared this brief.

Delhi High Court
Case BriefsHigh Courts

   

Delhi High Court: In a case filed by Livspace Pte. Ltd. (‘plaintiff 1') and Home Interior Designs E-Commerce Private Limited (‘Plaintiff 2') seeking permanent injunction against the domain name on which a website is being hosted, called www.livspace-reviews.com (‘defendant') where extreme derogatory reviews were written against the plaintiffs which are disparaging and defamatory in nature, Prathiba Singh, J. directed Department of Telecommunications (‘DoT’) and Ministry of Electronics and Information Technology (‘MEITY') to issue blocking orders within 48 hours, and then ensure that the website www.livspace-reviews.com, shall remain blocked till the next date of hearing.

The plaintiffs claim rights in the mark ‘LIVSPACE' and logo since 2013. Plaintiff 2 is the subsidiary of plaintiff 1 and plaintiff 1 conducts all its business in India through the plaintiff 1. The plaintiffs are also users of the domain name www.livspace.com. The said mark ‘LIVSPACE' is used in respect of interior designing services, and the plaintiffs claim to offer one of the world's largest interior design and home renovation platforms that connects interior designers, homeowners and vendor.

The Court noted that the present suit highlights the perils of internet-based businesses. The impugned domain name – www.livspace-reviews.com, is merely one such domain name, which has been registered by an unknown person of whom no details are known. It is not clear as to who has booked the domain name, who has hosted the website, from where the reviews have been collected, and where the content has been developed. None of the details are decipherable from the said website.

The Court further noted that the content is extremely critical of the plaintiffs that could have a serious and deleterious impact on the plaintiffs' business as these are online reviews, for a business that largely operates online. While there can be no doubt that general criticism and review would be permissible in terms of any business, the fact that the entire website, its operations, the persons reviewing, etc., have been totally masked, without any details provided whatsoever, clearly gives the Court the feeling that the same is ingenuine and clandestine.

Thus, the Court observed that while using the trademark ‘LIVSPACE' of the plaintiffs and the trade name, in a surreptitious manner, defendant 1 is intending to cause irreparable harm to the Plaintiffs’ business.

The Court thus directed MEITY and DoT to issue blocking orders against the domain name www.livspace-reviews.com which has been duly complied with by DoT vide notice dated 01-09-2022.

[Livspace Pte. Ltd. v. Livspace Reviews.com, 2022 SCC OnLine Del 2729, decided on 30-08-2022]


Advocates who appeared in this case :

For plaintiff: Mr. Pranjit Bhattacharya, Advocate

For defendant: Ms. Nidhi Raman, CGSC with Mr. Zubin Singh and Mr. Vinod Tiwari, GP for D-4 & 5.


*Arunima Bose, Editorial Assistant has put this report together.

VISTARA
Case BriefsHigh Courts

   

Delhi High Court: In a case filed by Tata Sia Airlines (‘plaintiff') seeking decree of permanent injunction against company selling keychains and baggage tags bearing the ‘VISTARA Marks' in the aubergine and gold colour-combination, on a Chinese e-commerce platform, namely AliExpress, by the seller (‘defendant'), Navin Chawla J., raised security concerns of national and international nature at airports due to the infringing material and thus, granted permanent injunction against the infringing defaulter and entitled it to pay Rs. 20 Lakh as damages.

Since their launch in the year 2014, the plaintiff has adopted and extensively used the colour combination of violet (aubergine) and gold as a part of its trade dress, inter alia, as part of its logo; on the uniform of its airline staff; its advertisement panels and its sign-boards/message panels at airports. The plaintiff also issues baggage tags to its crew members which bear the plaintiff’s ‘VISTARA Marks'.

In July 2020, the plaintiff received information about the sale of keychains and baggage tags bearing the ‘VISTARA Marks' which were being sold on a Chinese e-commerce platform, namely AliExpress, by the seller, despite the e-commerce platform being based mostly in China, the website contained several listings by the defendant of infringing baggage tags and keychains bearing the ‘VISTARA Marks' which were eligible for shipping to India.

Thus, the present suit was filed seeking inter alia a decree of permanent injunction restraining the defendant, their associated companies, subsidiaries, directors, wholesalers, distributors, partners or proprietors, its officers, servant and agents from advertising, directly or indirectly offering any goods or services, using or registering corporate names, domain names, or listings on social media platforms as also e-commerce websites which bear the plaintiff’s registered trademarks ‘VISTARA' and/or along with relief against passing off, dilution, tarnishment and unfair competition

VISTARA

Placing reliance on TATA SIA Airlines Limited v. Pilot18 Aviation Book Store, 2019 SCC OnLine Del 9535, the Court noted that the use of the “VISTARA Marks” not only amounts to infringement and passing off of the mark of the plaintiff but would cause dilution of the mark of the plaintiff, further causing deception and confusion in the mind of the unwary consumer.

The Court remarked “Airports are an incredibly critical junction of not only travel but also of trade and commerce; any lapse in security, especially by permitting the sale of vagrantly-infringing goods, would be turning a blind eye to obvious wrongdoings of the defendant.”

Considering the fact that the plaintiff is the registered proprietor of the ‘VISTARA Marks' and none has entered appearance for the defendant, this Court is of the opinion that the defendant has no justification for the adoption of an identical trade mark for sale of their goods.

Reliance was placed on Tata Sons Ltd. v. Manoj Dodia, 2011 SCC OnLine Del 1520 wherein it was held that when a person uses another person’s “well-known trade mark”, he tries to take advantage of the goodwill that such a “well-known trade mark” enjoys. Such an act constitutes unfair competition. It also causes dilution of a “well-known trade mark” as it loses its ability to be unique and distinctively identified and distinguish as one source and consequent change in perception which reduces the market value or selling power of the product bearing the well-known trade mark.

The Court thus granted permanent injunction against the entity selling infringing keychains and baggage tags bearing the ‘VISTARA Marks' and in view of the object and mandate of the Commercial Courts Act, 2015; the Delhi High Court (Original Side) Rules, 2018; and the Delhi High Court Intellectual Property Division Rules, 2022, the plaintiff was held entitled to damages and costs quantified at Rs 20 Lakh (Rupees Twenty Lakh only).

[Tata Sia Airlines Limited v. Shenzhen Coloursplendour Gift Co. Ltd., CS (Comm) 352 of 2020, decided on 31-08-2022]


Advocates who appeared in this case :

Mr. Mukul Kochhar & Mr. Aditya Gupta, Advocates, for the Plaintiff;

None for respondent.


*Arunima Bose, Editorial Assistant has put this report together.

Delhi High Court
Case BriefsHigh Courts

Delhi High Court: In a case relating to two marks being ‘Theobroma’ (‘defendant’) and Theos (‘plaintiff’), based out of Bombay and Delhi respectively and having various disputes pending between the parties, settlement was arrived before Prathiba M Singh J. The parties listed terms of settlement wherein Theo declared recognizing the ownership of Theobroma over the marks in dispute.

Plaintiff 1 and 2 are ‘THEOS FOOD PVT. LTD.‘ or ‘THEOS PATISSERIE & CHOCOLATARIE‘ (hereinafter, ‘Theos’), which are based out of Delhi and Noida, and the Defendant is ‘THEOBROMA FOODS PVT. LTD.‘ (hereinafter, ‘Theobroma’), which is based out of Mumbai, Maharashtra. ‘THEOBROMA’ and ‘THEOS’/ ‘THEOS’ used in respect of bakery related products, patisseries, confectionery etc. The dispute, in the present case, relates to two marks being ‘THEOBROMA’ and ‘THEOS’/‘THEO’S’ used in respect of bakery related products, patisseries, confectionery etc.

There are two proceedings pending between the parties. The said two proceedings are:

  1. The first is a Commercial IP Suit “Theobroma Foods Pvt. Ltd. v. Mr. Karan Narula” pending before Bombay High Court seeking an injunction restraining Theos from using the marks ‘THEOBROMA’, ‘Theobroma’ ‘theobroma’, ‘theo’, ‘Theo’, ‘Theo’s’, ‘Theos’ and various other variant and derivatives thereof, as also, any other mark which is identical or deceptively similar to Theobroma’s marks. The suit stands pending with no relief granted.

  2. The instant suit being the second proceeding was filed seeking permanent injunction restraining Theobroma from infringing the trademark ‘THEOS’, ‘THEO’S’ and ‘THEO’S PATISSERIE & CHOCOLATARIE’, passing off, unfair competition, dilution, blurring, damages, rendition of accounts, and delivery up, and other reliefs.

The instant suit was filed alleging that Theobroma is using the mark ‘THEOS’ as a prefix to the names of various food items being sold in the outlets of Theobroma. However, a perusal of a plaint filed before Bombay High Court shows that Theobroma claims to be the prior adopter and user of the impugned marks. In the year 2004, Theobroma opened its first retail outlet/café next to Cusrow Baug at the iconic Colaba Causeway, Mumbai, under the mark and name ‘THEOBROMA Food of the Gods’. It has acquired immense goodwill and a reputation and has become a household name having total of 81 retail outlets/cafés at Mumbai, New Delhi, Pune, Noida, Bengaluru, amongst others having several trademark registrations in respect of the mark ‘THEOBROMA’ and its variants.

Theos, however, operates a chain of bakeries/restaurants/cafés/lounges under the mark ‘THEOS’/‘THEO’S’ in the Delhi-NCR region having a wide variety of products on its menu such as chocolates, cookies, a wide selection of desserts and cheesecakes, hot/cold beverages among other milk and nonmilk- based products. It was submitted that the mark ‘THEOS’/ ‘THEO’S’ was coined and adopted in the year 2008 and is using the mark continuously and uninterruptedly.

The Court on the last date of the hearing i.e., 08-07-2022 observed that considering the extent of the business and commercial activities of both the parties, an amicable resolution of the disputes between the parties must be explored.

Thus, the parties agreed to settle their disputes in the following terms:

i) Theos recognizes and acknowledges Theobroma as the owner and proprietor of the mark ‘THEOBROMA’. Theos has also agreed not to use the mark or name ‘THEOBROMA’ in any manner whatsoever, either in respect of any products of its manufacture, or sale, or any other services.

ii) Though, Theobroma had initially objected to the use of the mark ‘THEOS’/‘THEO’S’ by Theos, however, in view of the amicable resolution today, Theobroma no longer objects to the use of the mark ‘THEOS’/‘THEO’S’ in respect of its goods and services, as also, as part of its trading style/name ‘Theos Food Pvt. Ltd.’ and ‘Theos Patisserie & Chocolaterie’, so long as Theos restricts its business activities to the Delhi-NCR region.

iii) Insofar as the use of the mark/name ‘THEOS’/‘THEO’S’ in the physical menu cards and signages of Theobroma, as also, on online menu cards and social media of Theobroma is concerned, Theobroma shall restrict such use of the mark ‘THEOS’/‘THEO’S’ only for the following five food items offered by it, along with variants being egg/without egg and sized i.e., pastry slice, per kg. size thereof

1. Theos Dutch Truffle Cake

2. Theos Chocolate Mousse Cup

3. Theos Mava Cake

4. Theos Dense Loaf

5. Theos Quiche

iv) The said usage of the mark, as set out in (iii) above, shall only be in the menu cards used at the physical outlets of Theobroma, and shall not extend to online menu cards of Theobroma.

v) Theos shall also not make any online sales outside Delhi- NCR region under the mark/name ‘THEOS’/‘THEO’S’. If it intends to extend its commercial activities outside the Delhi- NCR region, either in physical or in online mode, the same shall be done under a mark/name which is neither identical nor deceptively similar to ‘THEOBROMA’. Theos, however, is free to use a prefix or a suffix along with ‘THEOS’/‘THEO’S’ for such expansion, so long as the totality of the mark/name which is used for such expansion is not identically or deceptively similar or does not create confusion with ‘THEOBROMA’.

vi) Theobroma shall continue to retain all its trademark registrations for ‘THEOBROMA’ and its registered variants and derivatives, including ‘THEOS’ and ‘THEO’, and shall also be entitled to protect and take all enforcement-related steps and opposition-related actions to safeguard its rights in these names and marks.

vii) Theos shall be free to register its own mark ‘THEOS’/‘THEO’S’ as a word mark or in any logo form thereof, and use the same only in respect of goods and services offered in the Delhi-NCR region. The applications or registrations of the said marks by Theos shall be geographically restricted to the Delhi-NCR region.

viii) Neither party shall oppose each other’s marks or object to the same, in any manner, so long as the same are in compliance with the terms of this settlement.

ix) If Theos receives any requests for online supply or deliveries outside the Delhi-NCR region, the same shall be serviced under a different mark and name, as set out in (v) above. The said mark/name shall not be identical or deceptively similar to ‘THEOBROMA’.

x) Theobroma is free to expand its outlets under the mark/name ‘THEOBROMA’ across the country. However, Theos shall be restrained to the Delhi-NCR region, insofar as its goods and services provided under the mark/name ‘THEOS’/ ‘THEO’S’ are concerned.

Thus, all the disputes between the parties stand resolved, in the terms specified above. The Court thus listed the case for 24-08-2022 for receipt of the settlement application.

[Theos Food Pvt Ltd. V. Theobroma Foods Pvt Ltd., 2022 SCC OnLine Del 2309, decided on 29-07-2022]


Advocates who appeared in this case :

For plaintiff: Mr. Jayant Mehta, Sr. Advocate with Mr. Kapil Wadhwa, Ms. Surya Rajattan and Mr. Abhishek Tiwari, Mr. Srikar, Advocates along with Plaintiff No.3 – Mr. Gaurav Wadhwa and Plaintiff No.4 – Mr. Vikram Narula.

Mr. Rahul Vidhani and Mr. Manoj Menda, Advocates along with Ms. Kamal Messman, Advocates, for the Defendant.


*Arunima Bose, Editorial Assistant has reported this brief.

Case BriefsInternational Courts

   

European Court of Justice (ECJ): In a far-reaching decision, the Bench of C. Lycourgos (Rapporteur), President of the Chamber, S. Rodin, J.-C. Bonichot, L.S. Rossi and O. Spineanu-Matei, JJ., held that sending of a warning letter for trademark infringement, per se, will not break the limitation period and end acquiescence for use of the similar later trademark.

The German Federal Court of Justice had requested the ECJ for a preliminary ruling on the interpretation of Article 9 of Directive 2008/95/EC of the European Parliament of 22-10-2008 to approximate the laws of the Member States relating to trademarks, and Articles 54 and 111 of Council Regulation (EC) No 207/2009 of 26-02-2009 on the Community trademark.

The European Union law in question provides that where, in a Member State, the proprietor of an earlier trademark has acquiesced, for a period of five successive years, use of a similar later trademark while being aware of such use, he shall no longer be entitled either to apply for a declaration that the later trademark is invalid or to oppose the use of the later trademark in respect of the goods or services for which the later trademark has been used; unless registration of the later trademark was applied for in bad faith.

Factual Backdrop

The request had been made in proceedings between HEITEC AG (the applicant) and HEITECH Promotion GmbH and RW concerning the use of the trade name HEITECH Promotion GmbH and trademarks containing the word element ‘heitech' by the latter.

The applicant is the proprietor of the EU word mark HEITEC, with seniority claimed as from 13-07-1991, and registered on 04-07-2005. It was entered in the commercial register in 1984 under the name Heitec Industrieplanung GmbH which was later changed to Heitec GmbH. Since the year 2000, it has been operating under the name of Heitec AG.

Heitech, of which RW is the managing director, was entered in the commercial register on 16-04-2003 as the proprietor of a German figurative mark containing the word element ‘heitech promotion' and of an EU figurative mark containing the word element ‘heitech', applied for on 06-02-2008 and registered on 20-11- 2008, which it has used since 06-05-2009 at the latest.

Chronology of Events

The applicant became aware of Heitech's application for registration of the EU figurative mark containing the word element ‘heitech' on 07-07-2008 and by a letter dated 22-04-2009, it sent Heitech a warning letter regarding the latter's use of its tradename and the EU trademark containing the word element ‘heitech'. In its reply, Heitech proposed to enter into a coexistence agreement.

On 31-12-2012, the applicant approached the Nuremberg Regional Court to initiate proceedings against Heitech and RW. However, the proceedings could not begin since the applicant had failed to make the advance payment and lodge the originals of the application initiating proceedings. It was only on 30-12-2013 that the Regional Court received written submissions dated 12-12-2013 from the applicant, together with a cheque for court fees and a new application initiating proceedings bearing the date 04-10-2013. The preliminary proceedings were finally opened on 16-05-2014 and a notice was served to the defendants in the main proceeding on 23-05-2014.

Meanwhile, in a letter dated 23-09-2013, the applicant informed Heitech that it refused to conclude a coexistence agreement and proposed to conclude a licence agreement while stating that it had initiated legal proceedings.

Finally, the applicant claimed the infringement of its trademark rights and contended that Heitech should be ordered to refrain from identifying its company by the trade name ‘HEITECH Promotion GmbH', to refrain from affixing the word elements ‘heitech promotion' and ‘heitech' on goods and from marketing or advertising goods or services under those signs, to refrain from using or transferring, for commercial purposes, the website heitech-promotion.de and to agree to the removal of its company name from the commercial register.

The applicant also brought claims for information, for a finding of an obligation to pay compensation, for the destruction of goods and for the payment of the costs of sending the warning letter.

Findings of the Nuremberg Regional Courts

The Regional Court ordered Heitech to pay the applicant EUR 1 353.80, plus interest, for the costs of sending the warning letter and rejected the other claims. Aggrieved, the applicant appealed before the Nuremberg Higher Regional Court, which held that the applicant's action was unfounded as it was time-barred.

The Higher Regional Court noted that Heitech had used its later signs for an uninterrupted period of at least five years and that the applicant had acquiesced in such use, since, although it was aware of that use, it had not taken sufficient measures to stop that use.

The Higher Court held that the court action had not interrupted the period of limitation, since it had been served on Heitech and RW only after five years had elapsed since the warning letter which preceded that action.

The applicant challenged the afore-mentioned findings before the Federal Court of Justice, Germany (referring court).

Questions Referred

That referring court noted that the outcome of the appeal depends on the interpretation of European Union (EU) law on whether the applicant is time-barred from bringing its claim for an injunction and its ancillary claims. Therefore, the referring court referred the following questions to the Court of Justice for a preliminary ruling:

  1. Can acquiescence be excluded not only by means of an administrative or court action but also through conduct not involving a court or administrative authority?

  2. Does the sending of a warning letter, in which the proprietor of the earlier sign, before initiating legal proceedings, requires the proprietor of the later sign to agree to refrain from using the sign, and to enter into an obligation to pay a contractual penalty in the event of an infringement, constitute conduct precluding acquiescence?

  3. When seeking judicial redress, is the bringing of the action before the court or the receipt of the action by the defendant decisive for calculating the five-year acquiescence period? Is it significant in this regard that receipt of the action by the defendant is delayed beyond the expiry of the five-year period through the fault of the proprietor of the earlier trademark?

  4. Does the limitation of rights encompass consequential claims under trademark law; i.e., claims for compensation, provision of information or destruction, as well as prohibitory injunctions?

Analysis and Findings

Is a warning letter sufficient to break the limitation period and end acquiescence?

Relying on Levi Strauss, C 145/05, the Court noted that by setting a period of limitation in consequence of acquiescence of five consecutive years with knowledge of the use of the later trademark, the EU legislature sought to ensure that the protection conferred by an earlier trademark on its proprietor remains limited to cases where the proprietor shows itself to be sufficiently vigilant by opposing the use of signs by other operators likely to infringe its mark.

Opining that the rule on limitation in consequence of acquiescence is intended to safeguard legal certainty, the Court stated,

“Where the proprietor of an earlier mark or other earlier right, within the meaning of Directive 2008/95 or Regulation No 207/2009, has knowingly ‘acquiesced' in the use of a later mark applied for in good faith for a continuous period of five years, the proprietor of the latter mark must be certain in law that such use can no longer be challenged by the proprietor of that earlier mark or other earlier right.”

As regards the conditions under which the proprietor of the earlier mark or other earlier right may be regarded as having carried out an act that interrupts the period of limitation, the Court observed that the proprietor must bring an administrative or court action before the expiry of the limitation period.

The Court observed that where the proprietor of the earlier mark has issued a warning letter with which the proprietor of the latter mark did not comply, the warning letter will only interrupt the period of limitation in consequence of acquiescence when, following the unsatisfactory response to the warning letter, the proprietor of the earlier mark invokes an administrative or court action to enforce its rights. In contrast, in such a scenario, the failure to bring an administrative or court action will mean that the proprietor of the earlier mark has failed to take the measures available to it to put an end to the alleged infringement of its rights. The Court opined,

“Any interpretation to the effect that sending a warning letter is sufficient to interrupt the period of limitation would allow the proprietor of the earlier mark or other earlier right to circumvent the regime for limitation in consequence of acquiescence by repeatedly sending a warning letter approximately every five years. Such a situation would undermine the objectives of the regime for limitation in consequence of acquiescence and would deprive that regime of its effectiveness.”

Date of action v/s Date of receipt by Defendant: Which one is decisive for calculating the five-year acquiescence period?

Referring to the rule as followed in civil matters, the Court observed that the date on which the application initiating proceedings was lodged is the date on which a court action must be deemed to have been brought.

The Court, though agreed with the opinion of the Advocate General that the lodging of the application initiating proceedings reflects the genuine and unambiguous wish of the applicant to assert its rights, which is sufficient to end acquiescence and to interrupt the period of limitation, it noted that the conduct of that party may nevertheless, raise doubts as to that wish and the seriousness of the action brought before the court.

Noting that the Regional Court with which the applicant had lodged an application initiating proceedings, repeatedly contacted it in order to draw its attention to irregularities that prevented service of the notice on the defendants, the Court opined that the applicant could not claim to have put an end to the acquiescence of the use of the later mark by lodging the application initiating proceedings. The Court noted,

“Where the application initiating proceedings, although filed before the date of expiry of the period of limitation, did not, owing to a lack of diligence on the part of the applicant, satisfy the requirements of the applicable national law for service and was rectified only after that date the action must be regarded as time-barred.”

Consequently, the Court held that it is for the referring court to ascertain whether the date on which the application to initiate proceedings was rectified to enable the court to commence the proceedings and to serve that document on the defendants was within the period of limitation and whether the conduct of the applicant in initiating proceedings could be characterized as lack of diligence.

Whether a proprietor of the earlier mark being time-barred from seeking a declaration of invalidity of a later mark, is also time-barred from bringing ancillary or related claims?

Affirming the opinion of the Advocate General that it would be contrary to the objectives of the regime for limitation in consequence of acquiescence to allow the proprietor of the earlier mark to bring an action against the proprietor of that later mark for damages and injunctions after the end of the limitation period, the Court held,

“If such action or such claims were to succeed after the expiry of the period of limitation, it would amount to leaving intact, beyond that date, the possibility of a finding that the use of the later mark infringes the earlier mark and to attributing a non-contractual liability to the proprietor of the later mark.”

The Court added,

“Such an interpretation of the regime of limitation in consequence of acquiescence would undermine the objective pursued by that regime, which is to give the proprietor of the later trademark the certainty, at the end of that period, that the use of that mark can no longer be challenged, by whatever legal means, by the person that has knowingly acquiesced in its use for an uninterrupted period of five years.”

Conclusion

In the backdrop of above, the Court ruled:

  • A warning letter, by which the proprietor of an earlier mark or other earlier right opposes the use of a later mark without taking the necessary steps to obtain a legally binding solution, does not stop acquiescence and, consequently, does not interrupt the period of limitation.

  • The application of action will be time-barred where the application initiating proceedings, although filed before the date of expiry of the period of limitation, did not, owing to a lack of diligence on the part of the applicant, satisfy the requirements of the applicable national law for service and was rectified only after that date for reasons attributable to the applicant.

  • Where the proprietor of an earlier mark is time-barred from seeking a declaration of invalidity of a later mark and from opposing the use of that later mark, that proprietor is also time-barred from bringing ancillary or related claims, such as claims for damages, the provision of information or the destruction of goods.

[HEITEC AG v. HEITECH Promotion GmbH, C466/20, decided on 19-05-2022]

*Kamini Sharma, Editorial Assistant has reported this brief

New releasesNews

by Elizabeth Verkey and Jithin Saji Isaac

Overview:

Intellectual Property law is an emerging area of law and envelopes all creative activities of mankind. The development of society being interlinked to creativity, the importance of this branch of law assumes much significance in modern days. In this context it is worthwhile to learn the gamut of laws in the realm of intellectual property. Learning of intellectual property combines legislative interpretation with case laws and also a tangy touch of science in some branches.

Apart from the legislations, our courts place much reliance on the case laws of foreign jurisdictions while deciding cases on intellectual property law. As practicing lawyers we could stir and spice up the book with the right flavour of case laws needed for a practitioner and a student of law. A creator of intellectual property would also need to look into the case laws to understand the law in practice.

This revised edition has updated the case laws of India and also the important cases in other jurisdictions. The judgment in Britannia Industries Ltd v. ITC Ltd.1 which has laid down the test for assessing deceptive similarity in an action for infringement and passing off and the landmark judgment in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd.2 which re-defined transborder reputation are also included in this revision. We have strived to keep the readers abreast with the latest developments and have also included the latest Tribunals Reforms Act, 2021.

We are indebted to the many authors who have thrown light to us on the various aspects of intellectual property law and also our teachers and the many legal luminaries in intellectual property law in the University of Edinburgh and the King’s College, London with whom we had the opportunity to interact.We owe our gratitude to our legal team at Isaacs’ Advocates, Cochin and our dear colleague Adv. O.K. Shamsudeen, who has painstakingly done research work for the revision of this book. In this venture we were constantly supported by Mr Sumeet Malik and Mr Abhinandan Malik of Eastern Book Company, our publishers and also Ms Nilufer Bhateja who was constantly in touch with us during the completion of this book.

 We hope this revised edition would prove useful to the legal fraternity, law students, universities and other institutions.

 August 25, 2021 —Dr ELIZABETH VERKEY

—JITHIN SAJI ISAAC


Get Your Copy Here: Intellectual Property by Elizabeth Verkey and Jithin Saaji Isaac

Supreme Court of The United States
Case BriefsForeign Courts

Supreme Court of The United States: While deciding the patent dispute between Minerva Surgicals and Hologic Inc., the Court made certain significant observations with regards to the application of the doctrine of assignor estoppel. The Court held that the doctrine of assignor estoppel, which is grounded in the centuries-old fairness principles, applies only when the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.

Facts and Contentions: In the late 90s, Csaba Truckai invented a device to treat abnormal uterine bleeding known as the NovaSure System. The system used a moisture-permeable applicator head to destroy targeted cells in the uterine lining. Truckai filed a patent application and later assigned the application, along with any future continuation applications, to his company, Novacept, Inc. The PTO issued a patent for the device. Novacept, along with its portfolio of patents and patent applications, was eventually acquired by Hologic, Inc.

In 2008, Truckai founded Minerva Surgical, Inc., where he developed a purportedly an improved device to treat abnormal uterine bleeding, called the Minerva Endometrial Ablation System. The new device used a moisture-impermeable applicator head to remove cells in the uterine lining. The PTO issued a patent, and the FDA approved the device for commercial sale. Meanwhile, Hologic filed a continuation application with the PTO, seeking to add claims to its patent for the NovaSure System. Hologic drafted one of its claims to encompass applicator heads generally, without regard to whether they are moisture permeable. The PTO issued the altered patent in 2015. Subsequently, Hologic sued Minerva Inc. for patent infringement.

It was Minerva’s contention that Hologic’s patent was invalid because the newly added claim did not match the invention’s written description, which addresses applicator heads that are water permeable. Minerva also argued that estoppel should not apply because it was challenging a claim that was materially broader than the ones Truckai had assigned.  Hologic invoked the doctrine of assignor estoppel and contended that because Truckai had assigned the original patent application, he and Minerva could not impeach the patent’s validity.

The District Court, Court of Appeals and the Federal Circuit agreed with Hologic argument that assignor estoppel barred Minerva’s invalidity defense. Minerva thus appealed before the SCOTUS to either abandon or narrow the application of assigner estoppel.

Observations: The Court, with a ratio of 5:4 upheld the doctrine of assignor estoppel and also clarified the limits of the doctrine. The majority comprising of John Roberts, C.J., and Elena Kagan, Stephen Breyer, Sonia Sotomayor and Brett Kavanaugh, JJ., referred to the SCOTUS case of Westinghouse Elec. & Mfg. Co. v. Formica Insulation Co., 266 U. S. 342 (1924), wherein the Court approved the “well settled” patent-law doctrine of assignor estoppel. The Courts have applied the doctrine in order to deal with inconsistent representations about a patent’s validity as the doctrine limits an inventor’s ability to assign a patent to another for value and later contend in litigation that the patent is invalid.

The Majority disagreed with Minerva’s contention to abandon the doctrine. They noted that abandonment of the doctrine is not possible as it would foreclose applying in patent cases a whole host of common-law preclusion doctrines (a broad result that would conflict with this Court’s precedents) and subvert the Congressional intent of including assignor’s estoppel in the US law. The Court further observed that the Supreme Court’s precedents have never decided the fate the doctrine but rather suggested that the doctrine “needed to stay attached to its equitable moorings”.

The Majority further noted that, “Assignor estoppel reflects a demand for consistency in dealing with others. When a person sells his patent rights, he makes an (at least) implicit representation to the buyer that the patent at issue is valid. In later raising an invalidity defense, the assignor disavows that implied warranty. By saying one thing and then saying another, the assignor wants to profit doubly”. Such a course of conduct, as per the Majority, is, unfair dealing, and the need to prevent such unfairness outweighs any loss to the public from leaving an invalidity defense to someone other than the assignor.

Assignor Estoppel- Limitations: Shedding light on the limitations of the doctrine of assignor’s estoppel, the Court observed that-

  • It applies only when its underlying principle of fair dealing comes into play. “The principle demands consistency in representations about a patent’s validity. When an assignor warrants that a patent claim is valid, his later denial of validity breaches norms of equitable dealing. But when the assignor has made neither explicit nor implicit representations in conflict with an invalidity defense, then there is no unfairness in its assertion—and so there is no ground for applying assignor estoppel”.
  • When a later legal development renders irrelevant the warranty given at the time of assignment.
  • A post-assignment change in patent claims can remove the rationale for applying assignor estoppel. As per the majority, this situation arises when most often when an inventor assigns a patent application, rather than an issued patent. The assignee may return to the PTO to enlarge the patent’s claims, assuming that the new claims are materially broader than the old ones, the assignor did not warrant to the new claims’ validity.

Amy Coney Barret, J., (along with Neil Gorsuch and Clarence Thomas, JJ.) and Samuel Alito, J., filed their dissenting opinions.

[Minerva Surgical Inc. v. Hologic Inc., No. 20–440, decided on 29-06-2021]


Sucheta Sarkar, Editorial Assistant ahs reported this brief.

Case BriefsHigh Courts

Delhi High Court: C. Hari Shankar, J., addressed a matter regarding passing off and granted interim relief.

Plaint alleged that defendant 1 was passing off its products as those of the plaintiffs by using the label which was confusingly and deceptively similar to that of the plaintiffs.

The product sold and manufactured by the plaintiff is “KESRI MARHAM” and the plaintiff claimed to have adopted the same in 1998.

Plaint asserted that the label of the plaintiffs reflected a unique trade dress with individual components being placed at specific locations.

Defendant is engaged in manufacturing and marketing of ayurvedic product including pain relief balms, dant manjan, creams etc. The said balm was sold under the name “Paharhi Garhwali Balm”.

Identical 

Prima facie on a bare glance of the labels of the defendant and plaintiffs, it was indicated that there had been a conscious effort to copy the plaintiff’s labels, to the extent that the colours used by the defendant, placing of various features on the label and the photographs representing the ailments which the balm was expected to alleviate are also identically placed.

Therefore, in view of the above discussion and finding, prima facie it appeared that defendant was passing off its products as those of the plaintiffs.

High Court opined that plaintiffs made out a good prima facie case for grant of ex-parte ad interim relief.

Bench also added that in case the relief was not granted and the market was permitted to be flooded with defendant’s product, prejudice to the plaintiffs would be irreparable.

Plaintiffs are directed to comply with the provision of Order XXXIX Rule 3 CPC within the time stipulated in that regard. [B C Hasaram and Sons Ayurvedic Pharmacy v. Pahari Garhwali Ayurvedic Pharmacy, 2021 SCC OnLine Del 3057, decided on 17-05-2021]


Advocates before the Court:

For the Plaintiffs: Ms. Tusha Malhotra & Ms. Yamini Jaiswal, Advs

Case BriefsForeign Courts

The High Court of Justice: The instant claim was brought by Performing Right Society Ltd. against Qatar Airways for global copyright infringement. The question before Deputy Master Francis was whether there should be an order for extended disclosure and if so then the extent of such an order; the Court observed that for the instant case, it is appropriate to issue Extended Disclosure, but such order should be limited to outward-facing advertising and other promotional materials.

As per the facts, the dispute revolved around the in-flight entertainment system known as Oryx One which Qatar Airways operates on its flights worldwide, together with two complementary apps known as the Oryx One Play App and the Oryx One App, through which Qatar Airways provides its passengers with entertainment services and access to a wide range of entertainment content, including music, films, television shows and games. PRS claimed that the content which Qatar Airways makes available through the Services includes many thousands of musical works to which it is the assignee of the worldwide performing rights (referred to as “Repertoire Works”) and that in making such content available to its passengers without licence from PRS, Qatar Airways has infringed those rights. Thus PRS sought injunctive relief to restrain the infringement and damages.

The claim engaged not only UK and Qatari copyright law, but also the laws of many other territories from where Qatar Airways flights take off and land, and also of those territories over which its flights pass in transit.

Some of the relevant issues for the consideration of the Court were as follows-

  1. Whether Qatar Airways only communicated such work to the public when the Repertoire Work was actually played by one of the Defendant’s passengers?
  2. Whether sections 19 and 20 of the Copyright Designs and Patents Act, 1988 are inapplicable when the relevant aircraft was only in the territorial airspace of the United Kingdom in transit to some other territory?
  3. Whether Articles 7(6) and 7(7) of the Qatari Law No. 7 of 2002 apply whenever the relevant aircraft was in the territorial airspace of a country other than Qatar in transit to Qatar or to some other territory?

The relevant provisions under UK law which were involved in the issue were the public performance right under Section 19 of the Copyright Designs and Patents Act 1988; and the communication to the public right under Section 20 of the CDPA.

The PRS contended that Qatar Airways makes all such content available to its passengers by an on-demand streaming service accessible through its Oryx One Play app which it states can be downloaded by passengers onto and used on both personal electronic devices (phones and tablets) and laptops in advance of their flight. The PRS further put forth that it has identified various issues for disclosure under section 1A of the Disclosure Review Document in relation to the preliminary issues trial, together with the Models for Extended Disclosure which it contends to be appropriate.

Qatar Airways stated that the Oryx One Play app was only made available to passengers on 10 of its aircraft which were not equipped with the Oryx One on board system, none of which are presently in service. It accepts that the Oryx One Play app could be downloaded by passengers before their flight but only onto personal electronic devices and not also laptops, and it asserts that the content made available through the app could only then be accessed by passengers when on board the aircraft using the on board WiFi.

Analysing the aforementioned issues (mainly 3 and 4 which concerned the Oryx Play App), the Court observed that the in-flight entertainment system operated by Qatar Airways enables content to be made available to passengers when on the aircraft by means of individual on-board touch screens located in front of the passenger and headphones connected by a socket in the passenger’s seat. The Court noted that the Performing Right Society might be justified in seeking in seeking disclosure (under Model C of their DRD) of outward-facing advertising and other promotional materials used by Qatar Airways to sell its flights to see the extent to which the in-flight entertainment system is promoted as a selling point. “Whilst it may be reasonable and proportionate for there to be an order for search-based disclosure of documents within the former class, I do not consider it would be reasonable or proportionate for that to be extended to documents of the latter class”.  [Performing Right Society Ltd. v. Qatar Airways Group, [2021] EWHC 869 (Ch), decided on 13.04.21]


Sucheta Sarkar, Editorial Assistant has reported this brief.

Supreme Court of The United States
Case BriefsForeign Courts

Supreme Court of The United States: In a major decision in the copyright dispute between Google and Oracle over copying certain lines from Oracle’s Java SE API (Application Pro­gramming Interface) code; the SCOTUS while deciding in favour of Google, held that Google’s copying of the Java SE API, which included only those lines of code that were needed to allow programmers to put their ac­crued talents to work in a new and transformative program, was a fair use of that material as a matter of law. The Court decided the issue with a ratio of 6:2, with Justice Stephen Breyer authoring the majority opinion. He was joined by John Roberts, C.J., and Sonia Sotomayor, Elena Kagan, Neil Gorsuch and Brett Kavanaugh, JJ. While Clarence Thomas and Samuel Alito, JJ., dissented. Amy Coney Barret, J., took no part in considering or deciding the matter.

Facts: Oracle America, Inc. owns a copyright in Java SE, a computer platform that uses Java computer programming language (invented by Sun Microsystems). In 2005, Google acquired Android, seeking to build a new software platform for mobile devices. To allow the millions of programmers familiar with the Java programming language to work with its new Android plat­form, Google copied roughly 11,500 lines of code from the Java SE pro­gram. The copied lines are part of a tool called an Application Pro­gramming Interface (API). An API allows programmers to call upon prewritten computing tasks for use in their own programs. Oracle had claimed to be owed as much as $9 billion, while Google claimed that its use of the code was covered under the doctrine of fair use and therefore not subject to copyright liability.

Issues Involved: Over the course of a prolonged litigation, the following points of consideration emerged-

  • Whether Java SE’s owner could copyright the copied lines from the API.
  • Whether Google’s copying constituted a permissible “fair use” of that material freeing Google from copyright liability.

The Federal Circuit had ruled in Oracle’s favour and held that the portion is copyrightable and Google’s copying did not constitute a “fair use”.

Significant Observations: The SCOTUS had to review the Federal Circuit’s determinations vis-à-vis copyrightability and fair use, therefore in order to settle the matter ‘for argument’s sake, the Court assumed that the material was copyrightable. The Court discussed the dispute under the following important heads-

  • Regarding Copyright- The majority observed that the objective of copyrights and patents as per the US Constitution is to “promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writ­ings and discoveries.” It was observed that copyright encourages production of works that others might cheaply reproduce, by granting the author an exclusive right to produce the work for a period of time. However, in order to dilute the negative consequences of such exclusivity, the Congress and the Courts have limited the scope of copyright protection to ensure that a copyright holder’s monopoly does not harm the public interest. The Court also noted that the dispute involves 2 aspects enshrined in Section 107 of US’ Copyright Act, namely- copyright protection cannot extend to “any idea, procedure, process, system, method of operation, concept, princi­ple, or discovery”; a copyright holder may not prevent another person from making a fair use of a copyrighted work.
  • Regarding Fair Use- The majority noted that ‘fair use’ is a flexible doctrine which takes account of changes in technology. “Computer programs differ to some extent from many other copyrightable works because computer programs always serve a functional purpose. Because of these differences, fair use has an im­portant role to play for computer programs by providing a context-based check that keeps the copyright monopoly afforded to computer programs within its lawful bounds”. The Court also observed that fair use question is a mixed question of fact and law, and the re­viewing courts should appropriately defer to the jury’s findings of un­derlying facts, but the ultimate question whether those facts amount to a fair use is a legal question for judges to decide de novo. “The “right of trial by jury” does not include the right to have a jury resolve a fair use defense”. Applying these observations to the current dispute, the Court noted that it needs to scrutinize the issue vis-à-vis the four guiding factors specified in the Copyright Act’s fair use provision-

The purpose and char­acter of the use In order to inquire about the “purpose and character of the use”, it must be examined whether the copying at issue was “trans­formative,” i.e., whether it adds something new, with a further pur­pose or different character. The Court observed that Google’s limited copying of the API is a transformative use. Google copied only what was needed to allow programmers to work in a different compu­ting environment without discarding a portion of a familiar program­ming language. Google’s purpose was to create a different task-related system for a different computing environment (smart phones) and to create the Android platform which would help achieve and popularize that objective. Google’s purpose was therefore consistent with that creative progress that is the basic constitutional objective of copyright itself

The nature of the copyrighted work- The nature of the work at issue favors fair use. The copied lines of code are part of a “user interface” that provides a way for pro­grammers to access prewritten computer code through the use of sim­ple commands. As part of an interface, the copied lines are inherently bound together with non-copyrightable ideas i.e. the overall organization of the API and the creation of new creative expression (the code inde­pendently written by Google). Unlike many other computer programs, the value of the copied lines is in significant part derived from the in­vestment of users (computer programmers in this case) who have learned the API’s system. Given these differences, application of fair use here does not undermine the general copyright protection that Congress provided for computer programs.

 Amount and substantiality of the portion used in relation to the copyrighted work as a whole- Observing that the 11,500 lines of code that Google copied, even though which amounts to virtually all the declaring code needed to call up hundreds of different tasks; however the lines in question form only 0.4 % of the entire API at issue, which consists of 2.86 million total lines. Therefore the 11,500 lines of code should be viewed as one small part of the considerably greater whole. “Google copied these lines not because of their creativity or beauty but because they would allow pro­grammers to bring their skills to a new smartphone computing envi­ronment”.

Effect of the use upon the potential market for or value of the copyrighted work- The Court noted that Google’s new smartphone platform is not a market substitute for Java SE. it was also pointed out that Java SE’s copyright holder would benefit from the reimplementation of its interface into a different market.

 Dissenting Opinion: Disagreeing with the majority, Justices Clarence Thomas and Samuel Alito observed that the nature of the copyrighted work (which in their opinion was the sole factor possibly favoring Google) cannot by itself support a determination of fair use because holding otherwise would improperly override Congress’ determina­tion that declaring code is copyrightable. They also pointed out that, “The majority purports to save for another day the ques­tion whether declaring code is copyrightable. The only ap­parent reason for doing so is because the majority cannot square its fundamentally flawed fair-use analysis with a finding that declaring code is copyrightable. The majority has used fair use to eviscerate Congress’ considered policy judgment”. [Google LLC v. Oracle America Inc., No. 18–956, decided on 05-04-2021]


Sucheta Sarkar, Editorial Assistant has reported this brief.

Case BriefsForeign Courts

United States Court of Appeals (2nd Circuit): While deciding the instant dispute between renowned celebrity photographer Lynn Goldsmith and Andy Warhol Foundation for Visual Arts, involving the Prince Series of photographs, the Circuit Court ruled in favour of Goldsmith and held that 1980s portrait series by Andy Warhol depicting the singer Prince did not constitute “fair use” of the photograph by Lynn Goldsmith that it was based on. Thus Warhol’s Prince Series works are substantially similar to the Goldsmith Photograph as a matter of law. After a detailed discussion, the decision of the Dist. Court was reversed and the matter was remanded for further proceeding consistent with 2nd Circuit Court’s opinion.

Background

The dispute is centers around a series of silkscreen prints and pencil illustrations created by visual artist Andy Warhol based on a 1981 photograph of Prince that was taken Lynn Goldsmith in her studio, and in which she holds copyright. A professional photographer focusing mainly on celebrity photography, Lynn Goldsmith (also the founder of Lynn Goldsmith Ltd. [LGL]), in December 1981 took a series of portrait photographs of musician Prince Rogers Nelson (popularly known as Prince) for the Newsweek Magazine. The lighting and the makeup was arranged in a way so as to highlight and accentuate Prince’s “chiseled bone structure and his sensuality”- “Goldsmith was trying to capture his willingness to bust through what must be his immense fears to make the work that he wanted to make.” Goldsmith took a total number of 23 photographs- 12 black and white and 11 colour photographs and retained copyright in each of the photographs that she took.

In 1984, Goldsmith though her firm LGL, licensed the Goldsmith Photograph to Vanity Fair magazine for use as an “artist reference”, which meant that an artist would create a work of art based on the image reference. The license allowed Vanity Fair to publish an illustration based on the Goldsmith Photograph in its November 1984 issue; it further required that the illustration be accompanied by an attribution to Goldsmith. Goldsmith however was unaware of the license at the time and played no role in selecting the Goldsmith Photograph for submission to Vanity Fair. The magazine then commissioned Andy Warhol to create an image of Prince for its November 1984 issue. Warhol’s illustration, together with an attribution to Goldsmith, was published accompanying an article about Prince by Tristan Vox. Additionally, a separate attribution to Goldsmith was included elsewhere in the issue, crediting her with the “source photograph” for the Warhol illustration. Vanity Fair did not counsel Goldsmith that Warhol was the artist for whom her work would serve as a reference, and she did not see the article when it was initially published. Unbeknownst to Lynn Goldmsith, Andy Warhol created 15 additional works based on the Goldsmith Photograph, known collectively (including the Vanity Fair image) as the “Prince Series”. The Prince Series consisted of fourteen silkscreen prints (twelve on canvas, two on paper) and two pencil illustrations.

After Warhol’s demise, the Andy Warhol Foundation for Visual Arts (AWF) acquired title to and copyright in the Prince Series. Between 1993 and 2004, AWF sold or otherwise transferred custody of 12 of the original Prince Series works to third parties, and, in 1998, transferred custody of the other four works to The Andy Warhol Museum. AWF also retains copyright in the Prince Series images and through The Artist Rights Society (a third-party organization that serves as AWF’s agent), continues to license the images for editorial, commercial, and museum usage.

All the aforementioned developments took place with Lynn Goldsmith being unaware of it. However that changed in 2016 post Prince’s demise. Condé Nast, Vanity Fair’s parent company, contacted AWF with the intent to determine whether AWF still had the 1984 image, which they had hoped to use in connection with a planned magazine commemorating Prince’s life. Condé Nast obtained a commercial license, to be exclusive for three months, for a different Prince Series image for the cover of the planned tribute magazine. Condé Nast published the tribute magazine in May 2016 with a Prince Series image on the cover. Goldsmith was not given any credit or attribution for the image, which was instead attributed solely to AWF.

Legal Trajectory

Goldsmith for the first time became aware of the ‘Prince Series’ and she contacted the AWF to advise it of the perceived infringement of her copyright. In November 2016, Goldsmith registered the Goldsmith Photograph with the U.S. Copyright Office as an unpublished work. In April, 2017, AWF sued Goldsmith and LGL for a declaratory judgment of non-infringement or, in the alternative, fair use. Goldsmith countersued for copyright infringement.

The District Court however granted summary judgment in favour of AWF. The Dist. Court decided that the Prince Series was “transformative” because, while the Goldsmith Photograph portrays Prince as “not a comfortable person” and a “vulnerable human being,” the Prince Series portrays Prince as an “iconic, larger-than-life figure”. It was also held that the Goldsmith’s photograph being creative and unpublished work holds little import in the dispute because the Prince Series works are “transformative works,” and in creating the Prince Series, Warhol “removed nearly all of the Goldsmith Photograph’s protectible elements”. Aggrieved by this decision, Goldsmith filed the instant appeal.

Observations and Conclusions

In order to decide the matter, the Court delved into the core concepts of copyright. The Court reviewed the case under the following important heads-

Copyright, Fair Use and Derivative Works

Transformative Works: The Court observed that the Dist. Court’s decision that the Prince Series is transformative work as they can reasonably be perceived to have transformed Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure was erroneous. It was observed that it may well have been Goldsmith’s subjective intent to portray Prince as a “vulnerable human being” and Warhol’s to strip Prince of that humanity and instead display him as a popular icon, whether a work is transformative cannot turn merely on the stated or perceived intent of the artist or the meaning or impression that a critic – or for that matter, a judge – draws from the work”. The word ‘transformative’ if given too broad an interpretation can also seem to authorize copying that should fall within the scope of an author’s derivative rights, therefore the district judge should not assume the role of art critic and seek to ascertain the intent behind or meaning of the works at issue. That is because judges are typically unsuited to make aesthetic judgments and because such perceptions are inherently subjective. Instead, the judge must examine whether the secondary work’s use of its source material is in service of a “fundamentally different and new” artistic purpose and character, such that the secondary work stands apart from the “raw material” used to create it. The secondary work’s transformative purpose and character must, at a bare minimum, comprise something more than the imposition of another artist’s style on the primary work such that the secondary work remains recognizably deriving from, and retaining the essential elements of, its source material.

The Court thus concluded that the Prince Series is not “transformative”- “That is not to deny that the Warhol works display the distinct aesthetic sensibility that many would immediately associate with Warhol’s signature style – the elements of which are absent from the Goldsmith photo. But the same can be said, for example, of the Ken Russell film, from a screenplay by Larry Kramer, derived from D.H. Lawrence’s novel, Women in Love: the film is as recognizable a “Ken Russell” as the Prince Series are recognizably “Warhols.” but the film, for all the ways in which it transforms (that is, in the ordinary meaning of the word, which indeed is used in the very definition of derivative works, its source material, is also plainly an adaptation of the Lawrence novel”.  The Prince Series retains the essential elements of its source material, and Warhol’s modifications serve primarily to magnify some elements of that material and minimize others. While the collective effect of those alterations may change the Goldsmith Photograph in ways that give a different impression of its subject, the Goldsmith Photograph remains the recognizable foundation upon which the Prince Series is built.

The Court also highlighted that “each Prince Series work is immediately recognizable as a ‘Warhol’” is an irrelevant logic to this Court’s analysis- “Entertaining that logic would inevitably create a celebrity-plagiarist privilege; the more established the artist and the more distinct that artist’s style, the greater leeway that artist would have to pilfer the creative labors of others. But the law draws no such distinctions”, thus agreeing with the argument presented by Goldsmith that “Martin Scorsese’s film The Irishman is recognizably “a Scorsese” but “does not absolve him of the obligation to license the original book” on which it is based”.  

 Commercial Use: Even though the 2nd Circuit Court agreed with the Dist. Court’s observations regarding Prince Series being commercial in nature, and that they produce an artistic value that serves the greater public interest; however, the Court refused to conclude that Warhol and AWF are entitled to monetize it without paying Goldsmith the “customary price” for the rights to her work, even if that monetization is used for the benefit of the public. “Just as the commercial nature of a transformative secondary use does not itself preclude a finding that the use is fair, the fact that a commercial non-transformative work may also serve the public interest or that the profits from its commercial use are turned to the promotion of non-commercial ends does not factor significantly in favor of finding fair use under the circumstances present here”.

Nature of Copyrighted Work: The Court again pointed out that Dist. Court correctly held that the Goldsmith Photograph is both unpublished and creative, but in concluding that these factors should favor neither party as LGL had licensed the Goldsmith Photograph to Vanity Fair and the Prince Series was highly transformative, the Dist. Court committed an error. “Having recognized the Goldsmith Photograph as both creative and unpublished, the Dist. Court should have found this factor to favor Goldsmith irrespective of whether it adjudged the Prince Series works transformative within the meaning of the first factor. And, because we disagree that the Prince Series works are transformative, we would accord this factor correspondingly greater weight”.

Amount and Sustainability of Use: The Court observed that two considerations are necessary in order to judge this factor in relation to the original work- the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and, the quantity of the materials used’ but also their quality and importance. The Court noted that copyright does not protect ideas, but only “the original or unique way that an author expresses those ideas, concepts, principles, or processes”. The Court observed that it is true that Goldsmith cannot copyright Prince’s face, but the law grants her a broad monopoly on its image as it appears in her photographs of him, including the Goldsmith Photograph. It was concluded that, “the Prince Series borrows significantly from the Goldsmith Photograph, both quantitatively and qualitatively. While Warhol did indeed crop and flatten the Goldsmith Photograph, the end product is not merely a screen print identifiably based on a photograph of Prince. Rather it is a screen print readily identifiable as deriving from a specific photograph of Prince, the Goldsmith Photograph”.

The Effect of the Use on the Market for the Original: The Court stated that it was not persuaded by the Dist. Court’s rationale that the Prince Series poses no threat to Goldsmith’s licensing markets. Fair use is an affirmative defense; as such, the ultimate burden of proving that the secondary use does not compete in the relevant market is appropriately borne by the party asserting the defense: the secondary user. Since Goldsmith has identified a relevant market, AWF’s failure to put forth any evidence that the availability of the Prince Series works poses no threat to Goldsmith’s actual or potential revenue in that market tilts the scales toward Goldsmith. “The Dist. Court entirely overlooked the potential harm to Goldsmith’s derivative market, which is likewise substantial. Most directly, AWF’s licensing of the Prince Series works to Condé Nast without crediting or paying Goldsmith deprived her of royalty payments to which she would have otherwise been entitled”.    

 Substantial Similarity

The Court observed that the Dist. Court did not analyze the issue of substantial similarity when the issue is logically a precursor to that of fair use. In general, two works are substantially similar when “an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work. The Court concluded that, “This is not to say that every use of an exact reproduction constitutes a work that is substantially similar to the original. But here, given the degree to which Goldsmith’s work remains recognizable within Warhol’s, there can be no reasonable debate that the works are substantially similar. Prince was much photographed. But any reasonable viewer with access to a range of such photographs including the Goldsmith Photograph would have no difficulty identifying the latter as the source material for Warhol’s Prince Series”.  [The Andy Warhol Foundation for the Visual Arts v. Lynn Goldsmith, 2021 SCC OnLine US CA 2C 1, decided on 26-03-2021]


Sucheta Sarkar, Editorial Assistant has reported this brief.


Image credits: The Wall Street Journal

Op EdsOP. ED.

I. Introduction

Copyright and the protection regime thereof is a sub-class of intellectual property rights that seek to safeguard certain rights of authors and owners from infringement or unfair dealing in their works. The copyright regime can be classified into two main divisions, subject-matter copyright, and copyright infringement. While the latter aspect deals with protecting identified copyrights and enforcing the rights of owners and authors, subject-matter of copyright aims to delineate what kinds of works can be afforded copyright protection in the first place. This article shall focus only on the subject-matter of copyright, and therefore, will not address the open versus close-ended approaches in other aspects of the copyright debate.[1]

There are broadly two approaches observed in determining what subject-matter is protectable by different copyright jurisdictions, an open-ended approach, and a closed list approach.[2] Closed list jurisdictions attempt to elaborately outline the contours of different categories of subject-matter that is protectable under its copyright regime e.g. literary works, artistic works, musical works, etc. Examples of these jurisdictions include Australia[3], the United Kingdom[4] and India.[5] In all of these jurisdictions, there are legislations that exhaustively lists categories of works which cumulatively designates what can be afforded copyright protection. The result of such an approach is that non-conventional works such as perfumes, graffiti, computer-generated patterns, etc. will by definition fall outside the scope of copyright protection.[6] Per contra, the open-ended approach does not aim to identify the contours of copyrightable subjects but rather seeks to identify critical common requirements for a work to be afforded copyright protection, such as originality of the work, fixation in a medium, requirement of intellectual creation, etc.[7] Countries that follow this approach usually align their domestic copyright system along the lines of Article 2(1) of the Berne Convention, which recognises copyrightable subject-matter in all forms of artistic and literary works whatever their mode of expression.[8] Examples of these countries include Trinidad and Tobago, France[9], and Canada.

While the open-ended approach to copyright subject-matter is increasingly gaining scholarly attention and is being seen as the adequate improvement upon the closed list approach, the present system adopted by open-ended jurisdictions might have their own problems. This article seeks to critically analyse the discourse on these two approaches to subject-matter copyright and to conclude by recommending a hybrid approach as a possible framework that can form the basis of a reformed system of copyright protection that maximises the best of both these approaches in the Indian context.

II. International perspectives ― Foreign copyright regimes

To appreciate the varying systems of copyright protection throughout different jurisdictions, this section shall briefly touch upon the approach to determining copyrightable subject-matter by different countries.

United Kingdom – The closed list approach

In the United Kingdom, the Copyright, Designs and Patents Act, 1988 (CDPA) is the legislation that codifies the copyright regime. The CDPA follows a strictly closed system whereby 4 kinds of authorial works and 5 kinds of entrepreneurial works are afforded protection.[10] Notwithstanding the existence of these categories, several definitions of works have been vague and have invited courts to more precisely define the extent of a subject-matter.[11]

In Green v. Broadcasting Corpn. of New Zealand, the plaintiff attempted to claim copyright protection for a talent show called “opportunity knocks” as a “dramatic work”.[12] “Dramatic works” is not exhaustively defined under the CDPA, but simply deemed to include a recorded work of mime or dance.[13] The Court dismissed the case claiming that the format of the TV show lacked creativity as well as sufficient unity.

This decision has been criticised for failing to recognise the creativity that is required in the creation of TV shows, and also for being blind to the future direction of the entertainment sector which is increasingly captured in TV show formats similar to the one in Green v. Broadcasting.[14]
Similar criticisms have been made by scholars in decisions of what constitutes an artistic work[15] whereby courts have refused to classify face tattoos as paintings on a very narrow construction, holding that a face could never be the surface of a painting.[16]

Canada–Trinidad and Tobago ― A transition from closed list to open-ended

Canada previously had a similar closed list system of subject-matter copyright, which only afforded protection to four categories of works.[17] After acceding to the Berne Convention, however, Canada amended Article 2 of its Copyright Act to introduce a non-exhaustive subject-matter list.[18]

Trinidad and Tobago has also followed this trajectory and has gone one step further than Canada since it explicitly states that works are subject-matters of protection solely on the basis of their creation rather than any regardless of their form of expression, content, quality and purpose.[19]

Some copyright scholars have argued that these forms of inclusive definitions rather than an exhaustive list of subject-matters strengthen copyright protection by extending it to any authorial work which meets the relevant legal standards of originality.[20]

III. Indian copyright regime

With the advent of independence, the Copyright Act, 1914, was replaced with the Copyright Act, 1957 (“the Act”). With the Act, the Indian legislature sought to achieve two broad goals, firstly, to protect the result of man’s labour, skill and work and secondly, to protect works from annexation by others.[21]

Subject-matter copyright under the Copyright Act, 1957

Under the Act, works eligible for copyright are listed in Section 13. Within this provision, copyright can be claimed for original literary, dramatic, musical and artistic works; cinematography films and sound recordings.[22] Each class of work is further defined under the respective clauses of Section 2.[23] These clauses reveal that, while musical, artistic works and records are defined exhaustively, other works are more broad definition.[24] In addition to this, Indian courts have also identified the rights of a performer over his performance as part of copyright-protected work under Section 38 of the Act.[25] Therefore, subject-matter copyright extends to all works that fall within the ambit of a simultaneous interpretation of Sections 13 and 38 of the Act.

Though the initiation of a statute was premised on the need to widen copyright protection, the Act potentially restricts its reach by limiting copyright protection only to the classes of work enumerated in the legislation. Despite being a signatory to the Berne Convention, India has adopted a closed copyright regime with an arguably narrow scope.[26] This approach is evident in the statute which clarified that copyright protection is derived solely from the statute.[27]

Jurisprudence

In addition to the Act, Indian courts have also restricted the scope of copyrightable works to statutorily enumerated categories. To illustrate, in Time Warner Entertainment Co. v. RPG Netcom Globe, when resolving the question of whether an individual has the right to claim copyright infringement over future work of a cinematographic film, the High Court clarified that protection of the work concerned is not stipulated in the legislation and is, therefore, ineligible for copyright.[28] The Court reasoned that from a plain reading of Sections 13, 14, 16 and the object of the Act, it can be rightly inferred that copyright is restricted to the properties in the statute and does not prevail de hors or beyond the Act.[29] This position has been emphasised by the courts by consistently maintaining that copyright is a creation of the legislature.[30] Consequently, no copyright can be claimed based on customary rights.[31]

This approach has restricted the scope of copyright protection solely to the enumerated works in the Act. For example, the Bombay High Court has denied a claim brought by an actor who pleaded protection for his performance in a cinema film[32], and the Delhi High Court has denied copyright to an artist who printed multicoloured work on a carton.[33] In both instances, the Court has strictly adhered to the categories outlined in the Act to conclude that copyright for the subject-matters concerned is not prescribed in the legislation.[34] However, Indian courts in certain other circumstances, have expanded the definitions of the properties listed in the statute to bring a broader spectrum of works under copyright protection.[35]

Therefore, the copyright laws in the country are a close representation of the British system, however, an expansive interpretation which has sometimes been the approach of the courts can consciously convert the rigid statutory structure of copyright laws to a more open-ended regime. Such a shift would bring the present system in par with the objectives that influenced the enactment of the legislation and induce more authors to create original works by protecting such works from invasion by others.

IV. Open versus close-ended approaches to subject-matter copyright

Having gone through the various approaches which different copyright regimes take in determining what subject-matter should be afforded copyright protection, this section will analyse the merits and demerits of these approaches.

Subject-matter copyright systems can be seen in light of the dialectic of flexibility and rigidity.[36] Since copyright protection can only be effective if it can identify a particular work with accuracy to establish whether it can be protected, and what would count as infringement, the rigidity of categories becomes important.[37] On the other hand, copyright must also be flexible in determining what works may be protected since this flexibility allows for unanticipated future works of creativity to be claim protection.[38] A lack of such flexibility could lead to gaping holes in protectable subjects jeopardising the development of unconventional creative works and industries.[39]

Closed list systems

A closed list system having clearly defined categories of copyright subject-matter has the advantage of legal certainty. This in itself is very beneficial to mainstream subject-matters that have long been recognised in the copyright system. Common law countries with a closed list over time develop an extremely efficient system of determining subject-matter challenges to copyright due to a vast body of subject-matter copyright jurisprudence.

However, this legal certainty comes at the cost of flexibility. The use of a strictly closed list system results in the exclusion of various non-conventional works such as contemporary sculptures despite the works being artistic and the products of intellectual labour.[40] Further, in common law countries with a heavy reliance on the system of precedents, the development of case law on the scope of a particular category will be inversely proportional to the scope of future works that can be afforded protection within that category, leading to further minimisation of the subject-matter of copyright.[41]

Open-ended systems

An open system on the other hand allows for any work to be afforded copyright protection as long as it meets certain qualifying criteria. These systems lack the rigidity of the closed list systems and therefore are more susceptible to affording copyright protection to non-conventional but qualifying works. Example of such a system is Trinidad and Tobago.[42]

However, where the open-ended system makes up for rigidity, by loosening the definition of work, it reduces legal certainty. Legal certainty is lost on both fronts, apropos of what works may be protected intelligibly and what an infringement would entail. For example, in the case of the Dutch system of copyright, jurisprudence has developed to allow for perfume scents to be copyrighted.[43] In such cases of works as perfumes, the lack of a scientifically sound method of distinguishing between one perfume and another, coupled with deciding what would count as a copyright infringement, would result in deeply subjective analysis, often rendering copyright protection unfeasible.[44] When courts extend copyright protection to subject-matters which cannot be objectively ascertained, it does not effectively protect the work, and at the same time, it also deters innovation in the field due to lack of certainty as to future protection and possible unintended infringement.[45]

Another critical demerit of such open systems is the tendency of such broad protection to become a misappropriation law and to overlap with other forms of intellectual property.[46] Computer programs for example are usually given limited protection under copyright law despite often meeting other qualifications of a protectable work. It is only by excluding computer programs as a subject that intellectual property as a system can meaningfully distribute various kinds of protections.

Finally, copyright protection inevitably leads to certain advantages for the owner of the copyright, and this advantage must inevitably be at the cost of the freedom of the public at large.[47] Given the possible ramifications of extending copyright protection to a specific subject-matter on the public at large, the specific categories which should be afforded copyright protection should be decided only through some form of representation i.e. it must be a legislative decision on the basis of public interest, rather than a judicial or administrative decision.[48]

Hybrid systems

In contrast to the black and white approaches of closed list systems, hybrid systems attempt to tackle the issue of subject-matter in a more nuanced manner. Frequently, these jurisdictions allow for the definitions of works to be open-ended and accompany such definitions with inclusive lists and a list of exceptions. Such a system may be observed in the new copyright regime of Canada[49], France[50] and some scholars have argued that such a system was initially envisaged by the United States.[51]
This system retains the benefits of both open and closed list systems inasmuch as it allows for all works to be generally protected, and then specifically enunciates and excludes certain categories depending on various factors.

A caveat ― Dual stages of protection

It is important to note here that there are always two levels at which copyright systems operate and consequently two stages at which the approach of the specific jurisdiction will become important.
The first stage is at the level of legislation i.e. the legislation that defines the specific subject-matter categories. Here, a hard outer limit of what subjects are protectable is set, and this is usually more rigid. The second stage of subject-matter determination happens at the level of administrative copyright protection agencies and courts. At this stage, an outer limit has already been set, however, courts and copyright agencies may nevertheless boost or restrict copyright protection by the use of interpretive techniques.

While the hybrid approach can ensure adequate protection at the legislation level, even this system may breakdown at the second stage due to a narrow interpretation of categories and introduction of artificial requirements by administrative authorities and judicial bodies. A good example of this breakdown is the case of the United States Copyright Act of 1976. Here, despite the Congress employing arguably inclusive and broad language in defining “authorial works” in the Copyright Act of 1976[52], the copyright office and various judicial decisions have consistently refused to afford protection to unenumerated works of authorship.[53]

V. Conclusion

After considering the merits and demerits of the various approaches to subject-matter copyright, hybrid systems of copyright subject-matter determination seem to be a more nuanced take on the issue and could be designed to strike an adequate balance between the interests of copyright owners and the public interest in fostering innovation.

However, there are two important aspects that India must take into account while reforming copyright law on subject-matter. As has been seen from the case of the United States, simply drafting legislation which allows for an open-ended interpretation is not enough. The Insolvency and Bankruptcy Board of India (IBBI) and courts which stand at the second stage of copyright identification and enforcement must also be encouraged through policy documents and explicit legislative intent to follow this open-ended approach.
Secondly, as has been noted, a heavy reliance on either a closed list or an open-ended approach to subject-matter determination has significant cons. Thus, while amending the copyright law, the drafters must ensure that copyright protection is not extended to subjects which cannot be feasibly identified and protected, such as copyrights based on olfactory, tactile, or taste.

Such a system should take the form of a general non-exhaustive definition of works accompanied by an inclusive list of subjects which are broadly worded, and a list of narrowly worded subject-matters which cannot be granted copyright protection. However, since such a system can only work as long as it constantly keeps up with the innovations in the free market, the parliamentary standing committee on human resource development[54] should make suggestions to include and exclude subject-matters in constant intervals.


*4th year BBA LLB (Hons.) students, Jindal Global Law School, O.P. Jindal Global University, Sonipat.

[1]For an analysis of EU Law on open-ended versus rigid interpretations of transformative works, see Julien  Cabay and Maxime Lambrecht, Remix Prohibited: How Rigid EU Copyright Laws Inhibit Creativity (2015) 10 JIPLP 5.

[2] Pamela Samuelson, Evolving Conceptions of Copyright Subject -Matter (2016) 78 U Pitt L Rev 17.

[3] The Copyright Act of Australia, 1968, § 32.

[4] The Copyright, Designs and Patents Act, 1988, § 1 and §§ 3-8.

[5]  The Copyright Act, 1957.

[6] Phillips v. Pembroke Real Estate Inc., 459 F 3d 128, 131(1st Cir 2006).

[7] Pamela (Note 2).

[8] Berne Convention for the Protection of Literary and Artistic Works, S Treaty Doc No. 99-27, 828 UNTS 221, Art. 2(1) (Berne Convention).

[9] French Intellectual Property Code, Art. L. 112-1; T. Aplin, “Subject-Matter” in E. Derclaye (Ed.), Research Handbook on the Future of EU Copyright Law (Edward Elgar, Cheltenham 2009) 70.

[10] The Copyright, Designs and Patents Act, 1988, § 1, §§ 3-8.

[11] Some authors have even tried to assert that the United Kingdom does not have a closed system of subject matter protection, See e.g. Dr Poorna Mysoor, Does UK Really Have a “Closed” List of Works Protected by Copyright?, (2019) 41 Eur. Int. Prop. R 474. (Arguing that the breadth of certain category definitions is broad enough to classify the UK as an open-ended jurisdiction.)

[12] (1989) 2 All ER 1056.

[13] The Copyright, Designs and Patents Act, 1988, § 3(2).

[14] Jason Haynes, Subject-Matter of Copyright Protection in the UK: A Road Map to Effectuating Statutory Reform, (2013) 39 (2) Commonw Law Bull 319.

[15] The Copyright, Designs and Patents Act, 1988, § 4(1).

[16] Merchandising Corpn. of America v. Harpbond Ltd., 1983 FSR 32; Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs (3rd Edn.,  London 2004) 226.

[17] The Copyright Act (RSC, 1985, c. C-42), Art. 5(1).

[18] The Copyright Act (RSC, 1985, c. C-42), Art. 2  reads– every original literary, dramatic, musical and artistic work includes every original production in the literary, scientific or artistic domain, whatever may be the mode or form of its expression, such as compilations, books, pamphlets and other writings, lectures, dramatic or dramatico-musical works, musical works, translations, illustrations, sketches and plastic works relative to geography, topography, architecture or science.

[19] Trinidad and Tobago, Copyright Act, Ch. 82:80, Section 5(2).

[20] Haynes (n 14).

[21] Sulamangalam R. Jayalakshmi v. Meta Musicals, 2000 SCC OnLine Mad 381.

[22] The Copyright Act, 1957, S. 13. While S. 13(a) protects original works, the two sub-sections extend copyright to derivative works.

[23] The Copyright Act, 1957, S. 2.

[24] V.K. Ahuja, Law Relating to Intellectual Property Rights, (3rd Edn., 2017).

[25] Star India (P) Ltd. v. Piyush Agarwal, 2012 SCC OnLine Del 5691.

[26] Avishek Chakraborty, Non-Conventional Copyright: Do New and Atypical Works Deserve Protection?   (2019) 8(2) CULJ 85-99.

[27] The Copyright Act, 1957, S. 16.

[28] 2007 SCC OnLine Del 759.

[29] Ibid.

[30] University of Oxford v. Rameshwari Photocopy Services, 2016 SCC OnLine Del 5128; Sungro Seeds Ltd. v. S.K. Tripathi, 2020 SCC OnLine Del 591.

[31] Upendra Baxi, Copyright Law and Justice in India, (1986) 28(4) JILI 497, 499.

[32] Fortune Films International v. Dev Anand, 1978 SCC OnLine Bom 156.

[33] Camlin (P) Ltd v. National Pencil Industries, 1985 SCC OnLine Del 378.

[34] Ibid.

[35]Agarwala Publishing House v. Board of High School and Intermediate Education, U.P., 1966 SCC OnLine All 124. (The definition of what constitutes a literary work is an inclusive one, and this category of work includes “all works that is expressed in the form of writing, despite it having literary merit or not”.); Daily Calender Supplying Bureau v. United Concern, 1964 SCC OnLine Mad 29. (The definition of what is included within an artistic work includes all works of artistic craftsmanship and therefore, copyright protection was extended to images of deities printed in calendars as part of artistic work).

[36] Andrew F. Christie, A Proposal for Simplifying United Kingdom Copyright Law, 2001 EIPR 26, 28.

[37] Ibid.

[38] Ibid.

[39] Enrico Bonadio & Nicola Lucchi, Non-Conventional Copyright – Do New and Atypical Works Deserve Protection? (Edward Elgar 2018).

[40] Creation Records Ltd. v. News Group Newspapers Ltd., 1997 EMLR 444 (In this case the Court refused to extend the category of a sculpture to a photograph of an assortment of objects and people. While the thrust of the Court’s opinion hinged on the lack of an intelligible pattern of assortment, several scholars have also argued that the Court’s hesitation also stemmed from the plaintiff’s argument that the humans present in the photograph were themselves part of the “sculpture”, Pamela Samuelson, Evolving Conceptions of Copyright Subject-Matter, (2016) 78 U. Pitt. L. Rev. 17).

[41] Dr Mysoor (n 11).

[42] Trinidad and Tobago, Copyright Act, Ch. 82:80, Section 5(2).

[43] Kecofa BV v. Lancôme Parfums et Beauté et Cie SNC, Supreme Court of the Netherlands (First Chamber), 16-6-2006.

[44] Willem Leppink and Michel Veltman, Netherlands Court Grants Copyright Protection to Perfume Scent, 1 J Intell Prop L & Prac 756 (2006).

[45] Ibid.

[46] National Commission on New Technological Uses of Copyrighted Works, Final Report 26-27 (1978), at 26.

[47] R. Anthony Reese, What Should Copyright Protect? in Rebecca Giblin and Kimberlee Weatherall (Eds; Canberra), What if we could Reimagine Copyright? (Australian National University Press, 2017).

[48] Ibid.

[49] Dr Mysoor (n 11).

[50] Ibid.

[51] R. Anthony Reese, Copyrightable Subject-Matter in the “Next Great Copyright Act,” 29 Berkeley Tech. L.J. 1489 (2014).

[52] 17 U.S.C. § 102(a) (2012), [“Copyright protection subsists … in original works of authorship … Works of authorship include the following categories.” (emphasis supplied)].

[53] Reese (Note 51).

[54] This Committee has previously submitted its suggestions on reform of the Copyright Act in its “Two Hundred Twenty-Seventh Report on the Copyright (Amendment) Bill”, Parliamentary Standing Committee on Human Resource Development, 2010 Rajya Sabha 227, November 1932.

Case BriefsHigh Courts

Bombay High Court: G.S. Patel, J., refused to pass an interim injunction restraining Zee Entertainment from using the word “Plex” in its new pay-per-view channel.

Plaintiff sought restraint against the defendant’s use of the word ‘PLEX’ in an online movie channel service which was to be launched on 2-10-2020. Defendant (Zee) has a number of media channels and services including internet, OTT, DTH, Satellite, cable, etc.

On 1-10 2020, it announced its proposed launch about a month later of a ‘cinema-to-home’ pay-per-view service.

Plaintiff was represented by Tulzapurkar and claimed that it adopted this mark in May, 2008 in the United States. Further, Plex obtained international trademark registrations in several jurisdictions, but not India. It however claims that it had its first registered user in India on 23-07-2008.

Tulzapurkar, Advocate claimed that PLEX had built up a user or subscriber base of 5,50,00 users.

Bench stated it is concerned with domestic sales and these are used to provide prima facie evidence of reputation and goodwill.

Mr Tulzapurkar’s complaint is that despite the two words being used disjunctively in the actual branding Zee seems to have combined the two words into a single unit ‘ZEEPLEX’.

Court stated that the plaintiff had an objection to the use of ‘Plex’ by Zee for any service and in any manner, whether it is combined with Zee as one word or is used in conjunction with Zee as two words.

The question, therefore, is not about the use of Plex as the second of two words.

Question is whether the Plaintiff has been able to show any prima facie case in passing off.

“Passing off” is an action for damages in the tort of deceit, that is to say, deception by Zee in duping or misleading consumers as to the provenance and leading them to believe that Zee has somehow tied up with PLEX.

Plex must establish its reputation and must demonstrate that it has such brand recognition and awareness amongst even Zee’s consumers or digital consumers that such an association at least in India would readily be made.

Bench stated that it does not see sufficient material from Plex to be able to establish its reputation at least within India, whatever may be its reputation, registrations and sales in other jurisdictions.

There is musch greater reputation and standing of Zee amongst subscribers across the length and breadth of the country with a large number of channels in various languages.

Mr Dwarkadas pointed out that the word Plex was being used by Zee to specifically connote the niche or specialized service now being offered, i.e. a variety of regional and other licensed films being streamed on a pay-per-view basis to the subscribers.

To show deception and especially to show deception to obtain a quia timet injunction the Plaintiff must be able to show considerably more.

High Court stated that merely pointing to other established and reputed players in the field is not enough, and it is hardly a credible argument to say that “if Sony provides content and has a reputation, since I, too, provide content, I must be presumed to have an equivalent reputation. So if Sony could maintain such action and get an order, so must I.”

Every claimant in a passing-off action stands or falls on his own merits and case.

“…parties in IPR matters cannot expect Courts to push aside all other cases.”

Court added that it repeatedly happens, whether it is movie releases or otherwise. It must stop. It is unfair to courts and it is unfair to other litigants waiting their turn.

Where a plaintiff has had enough notice and yet chooses to move at the eleventh hour — and makes no allowance at all for any adjustment that may be required — the plaintiff must be prepared to face the consequences.

In the present matter, bench found no prima facie case.

The grant of the injunction Plex sought would cause immense and immediate financial loss and harm to Zee — it says it has already spent more than Rs 11 crores (rather more than Plex’s combined India sales for the last five years) on this new channel.

Hence, the Court found no reason to grant an ad-interim injunction. [Plex, Inc v. Zee Entertainment Enterprises Ltd., 2020 SCC OnLine Bom 989, decided on 01-10-2020]

Case BriefsForeign Courts

Supreme Court of the United Kingdom: While deciding the instant appeal raising questions important to the international market in telecommunications such as –

  1. Whether a court in the United Kingdom has jurisdiction and may properly exercise a power, without the agreement of both parties to grant an injunction to restrain the infringement of a UK patent where the patented invention is an essential component in an international standard of telecommunications equipment, which is marketed, sold and used worldwide, unless the implementer of the patented invention enters into a global licence of a multinational patent portfolio.
  2. Whether a UK Court can determine royalty rates and other disputed terms of such a global licence
  3. The circumstances in which it is appropriate for English court to grant a prohibitory injunction or to award damages.

 Answering the aforesaid questions, the Full Bench of Lord Reed, Lord Hodge, Lady Black, Lord Briggs and Lord Sales, JJ., unanimously held that English courts have the power to require telecoms companies and smartphone makers to take out a global patents licence or face a UK Court injunction. It was further observed that the contractual arrangements European Telecommunications Standards Institute (ETSI) has created under its IPR Policy give the English courts jurisdiction to determine the terms of a global license of a multi-national patent portfolio.

The instant matter consisted of 2 appeals which concern actions for infringement of UK patents said to be essential to the implementation of international standards for mobile telephony, such that it is not possible to make, sell, use or operate mobile phones and other equipment that is compliant with the standards without infringing the patents. Patents of this kind are called Standard Essential Patents (SEPs). The international standards in question are those set by the ETSI for 2G (GSM), 3G (UMTS) and 4G (LTE). Under its IPR Policy, ETSI requires the SEP owner to give an irrevocable undertaking to license their patented technology on terms that are “fair, reasonable and non-discriminatory” (FRAND). The first appeal concerns an action brought by Unwired against Huawei for infringement of five UK patents which Unwired claimed to be SEPs. The second appeal concerns an action brought by Conversant against Huawei and ZTE for infringement of four of its UK patents.

Acknowledging the importance of the issues raised in the instant appeal vis-à-vis international market in telecommunications, the Full Court meticulously addressed the questions-

  • Regarding Jurisdiction and Forum Conveniens – It was contended that properly construed, ETSI’s IPR Policy only permits the English courts to determine the terms of a license of UK SEPs. Dismissing the contention, the Bench held that English courts have jurisdiction and may properly exercise their powers of granting injunctions etc. Questions as to the validity and infringement of a national patent fall to be determined by the courts of the state which has granted the patent. It was observed that the IPR Policy envisages 2 things namely- the courts may decide whether or not the terms of an offered licence are FRAND and that the courts should look to and draw on commercial practice in the real world while making this assessment. Regarding the issue of proper Forum, the Court noted that Chinese courts currently do not have the jurisdiction needed to determine the terms of a global FRAND licence, unless all parties agree that they should do so.
  • Regarding Royalty- upon perusing the contention that Unwired should have offered Huawei a licence with a worldwide royalty rate because non-discrimination limb of the FRAND undertaking means that ‘like situations must be treated alike and different situations differently’, the Court observed that non-discriminatory part of the undertaking indicates that, to qualify as FRAND, a single royalty price list should be available to all market participants. This must be based on the market value of the patent portfolio, without adjustment for the characteristics of individual licensees.
  • Regarding Injunctions and Damages- it was contended by Huawei that, even if it is infringing Unwired and Conversant’s SEPs, the more appropriate and proportionate remedy would be for the Court to award the claimants damages. Rejecting the argument, the Bench held that an award of damages would not be an adequate substitute for an injunction. It was observed that there is no risk that Unwired or Conversant could use the threat of an injunction as a means of charging exorbitant fees, since they cannot enforce their rights unless they have offered to license their SEPs on terms which the Court is satisfied are FRAND.

[Unwired Planet International Ltd. v. Huawei Technologies (UK) Co Ltd., 2020 Bus LR 2422, decided on 26-08-2020]


Sucheta Sarkar, Editorial Assistant has put this story together

Op EdsOP. ED.Uncategorized

Everyone has the right freely to participate in the cultural life of the community, to enjoy the arts and to share in scientific advancement and its benefits. Everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.

Article 27, Universal Declaration of Human Rights.[1]

Dampening economies, severe climatic conditions and depleting resources are changing the narrative of survival. As distress calls emerge from various countries, the collective conscience of humanity is being put to test. Domestically, rising woes of a weak economy are gradually taking form of a crises and it is time to contemplate alternate ways to sustainable productivity the benefits of which are accessible by a larger public. While development is imperative its
haphazardness must be contained now more than ever due to its impact on human rights.

What role does Intellectual Property (IP) play, one may wonder. To contextualise, World Intellectual Property Organisation (WIPO) brought forth a rather well-timed announcement on the IP theme of the year 2020 — Innovate for a Green Future [2] stressing the need for collective action. This instantly brings me back to my interpretation[3] of the 11th Global Innovation Index (GII) released in 2018 that was themed Energising the World with Innovations. GII, 2018 studied the importance of green technology and increasing requirement of encouraging innovations along the line.

A key finding in the detailed GII Report was that imbalances in regional innovations continue to hurt economic conditions as well as human development, indicating that innovation, Intellectual Property Right (IPR) and human rights must go hand in hand for a sustained development. This finding raises a pertinent question — whether there exists a relationship between human rights and IPR. Opposing views emerge and I am of the opinion that existence of a relationship between these rights cannot be denied, the trick question is interpretation of its nature i.e. whether it is a positive or negative one. In the next sections, I briefly look at the contentious human rights-IP relationship from the international viewpoint.

Human Rights and IPRs: A Connect-Disconnect

The debate on linkage of human rights and IPR has continually attracted two extreme views — a conflict approach and a coexistence approach. There are a broad range of political, economic, social, practical and philosophical issues that straddle the intersection of human rights and IP. These fascinating and challenging issues are attracting increasing attention from Judges, government officials, attorneys and scholars, whose activities are mapping the contours of a rapidly changing legal landscape.[5]

As quoted at the beginning here, Article 27 of the Universal Declaration of Human Rights (UDHR) enunciates an inherently strong connection between human rights and IPR. Following closely to Article 27, the International Covenant on Economic, Social and Cultural Rights (Icescr), under Article 15(1) further validates rights to take part in cultural life; to enjoy the benefits of scientific progress and its applications and; to benefit from the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.[6]

Nearing the end of 20th century a critical movement began in the field of IPR when a host of nations made concerted demands for access to medicines, access to knowledge and protection of cultural and traditional knowledge systems thus demanding an IP regime that is respectful of the rights of indigenous communities as well as the diverse developmental levels. Although this idea was not new, it drew little attention until the formal internationalisation of Intellectual Property Rights (IPRs) through the Trade-Related Aspects of Intellectual Property Rights (Trips) agreement. Professor Peter K. Yu in fact suggests a lack of interest from policymakers, scholars and activists that was due in part to the arcane, obscure, complex, and highly technical nature of intellectual property law and policy and in part to the ability of countries to retain substantial policy space for developing their own intellectual property systems[7]. After several negotiations when Trips was finally formalised the global outlook towards IPR underwent a massive transformation however developing and less-developed countries remained belligerent on the potential conflicts of the agreement vis-à-vis realisation of economic, social and cultural rights. Later, the World Trade Organisation (WTO) emphasised the flexibilities built into the Trips agreement and other international trade agreements in order to boost the potential coexistence of human rights and IPR.

The debate on the two rights’ systems was advanced by the Committee on Economic, Social and Cultural Rights (Cescr) in 2006 through General Comment No. 17[8]. The comment provided authoritative interpretation of Article 15(1)(c) of the Icescr making clear that not all attributes of IPRs have human rights status[9]. To summarise, the comment differentiated between the two rights by linking human rights as safeguarding the personal link between authors and their creations and between communities and their collective cultural heritage whereas linking intellectual property regimes primarily to protection of business and corporate interests and investments. It further clarified that the scope of protection of the moral and material interests of the author provided for by Article 15(1)(c) does not necessarily coincide with what is referred to as IPR under national legislation or international agreements.

Coming back to the Trips agreement, the impact it has made is considered far-reaching than that of pre-existing international legal instruments. Taking stock of the post-Trips era, it is observed that some key elements of IP regime like subject-matter and scope of protection have expanded rapidly in treaties and in national laws — including the laws of developing countries in response to new online information technologies, the Trips and the adoption of maximalist IP protection standards and robust enforcement mechanisms in plurilateral, regional and bilateral “Trips Plus” treaties[10]. In the same timeline for assessing the trajectory of human rights regime, the changes include increased attention to indigenous peoples’ rights and traditional knowledge; the adverse consequences of expansive IP protection rules for economic, social and cultural rights; a growing awareness of the human rights responsibilities of multinational corporations; and attempts by those same corporations to invoke the human right of property as an alternative legal basis for protecting intangible knowledge assets[11].

Constantly changing global dynamics keep the debate between human rights and IPR alive. A persisting challenge in this environment is to strike the right balance between human rights and IPR. Often it is not easy to see how specific intellectual property norms interact with provisions of human rights instruments that are usually drafted in broader language[12]. Moreover, this challenge gets even bigger when there is not a one stop solution for all nations to abide given the differing rates of development.

Re-approaching the Discussion on Human Rights and IPRs

A considerable volume of literature subsists on the complex framework of human rights and IPR, however it is the need of the hour to reignite the discussion on how these rights fit together. A continued debate in resolving a complex inter-relationship between the two rights may generate solutions having a far-reaching impact on the growing concerns of sustainable development for all. I take cue from Professor Yu’s scholarly work to understand some global advancements that justify revisiting the human rights-IPR relationship[13].

First, the tendency of like-minded countries, mostly the developed ones coming together to set a higher benchmark through plurilateral agreements like the highly controversial Anti-Counterfeiting Trade Agreement (ACTA) or Trans-Pacific Partnership (TPP). For negotiations on ACTA no more than four per cent of the world’s developing countries were involved which raises questions on the genuity of stronger nations[14]. TPP contained controversial new protections for prescription drugs, including a new class of medications known as biologics[15]. It is pertinent to note during the Trips negotiations, developing nations voiced significant apprehensions on issues like transfer of technology, bio-piracy and reduction of traditional or indigenous communities’ control over their pool of genetic, natural and cultural resources and restrictions on access to medicines as a serious impediment to enjoyment of the right to health.

Second, the possibility that current enforcement measures run a risk of turning obsolete due to rapid development of disruptive technology alongside sophisticated networks of piracy and counterfeiting which in turn threatens human rights in many cases. For example, a producer’s lost opportunity of earning premium over his product registered as a geographical indication in India sold over the internet without his knowledge. How does the producer enforce his rights on cross-border online infringement? Must he lose out on his right to protect economic, creative and cultural aspects residing in his IP owing information asymmetry arising from an online platform where the consumer is unaware of the product origin and rights in it.

Third, a larger group of individuals are collectively participating in creative communities producing “user-generated content”, a term that has stormed the world of IP in recent times meaning thereby that the ability to create in today’s digitally advanced world is no longer limited to a specific class of intellectual workers or creative labourers. The growing community of creative individuals means the human rights to benefit from creations are getting more universal in nature.

Looking at the above reasons, we can safely deduce the gravity of issues like digital advancements and their broad implications (not necessarily deleterious). It is also safe to say the re-examination of the inter-relationship between intellectual property and human rights is justified. Research in this area can prove beneficial for necessary collective actions at the international platform.

Conclusion

Do human rights connect with the entirety of IPR? Are certain IPR attributes immune from the human rights purview? While analysing the inter-connection, which rights should be considered from the giant structure of human rights? The answers to these questions inevitably depend on one’s
worldview, basic assumptions,  ideological values and philosophical dispositions[16].

Challenging as it is but this relationship between human rights and IP rights needs renewed and collective attention. After thorough assessment of drastic changes threatening sustenance of several habitats around the globe, nations might want to explore the possibility of human rights framework existing within the contours of intellectual property regime in order to encourage innovations and creations towards a green globe that reach out to humanity as a whole. While individual goals and benefits matter it is certainly time to think of collective and sustainable development.


*Hetvi Trivedi is Research Associate, GNLU-GUJCOST Research Centre of Excellence in IP Laws, Policies & Practices, Gujarat National Law University and can be contacted at htrivedi@gnlu.ac.in.

[1] Universal Declaration of Human Rights, 10-12-1948

[2] World Intellectual Property Day — 26-4- 2020 Innovate for a Green Future, World Intellectual Property Organisation, available at <https://www.wipo.int/ip-outreach/en/ipday/>.

[3] Hetvi Trivedi, Moving Towards Better Integration of Energy Innovation and Intellectual Property, (2018) PL (IPR) September 89, available at <https://blog.scconline.com/post/category/experts_corner/gujcost-gnlu/>.

[4] Laurence R. Helfer, Mapping the Interface Between Human Rights and Intellectual Property, Research Handbook on Human Rights and Intellectual Property, Ed. Christophe Geiger, Edward Elgar (2015) 6-15, 6.

[5] Ibid

[6] International Covenant on Economic, Social and Cultural Rights, 16-12-1966.

[7] Peter K. Yu, Intellectual Property and Human Rights in the Non-Multilateral Era, 64 Florida Law Review (2012) 1045- 1100, 1049.

[8] UN Committee on Economic, Social and Cultural Rights (CESCR), General Comment No. 17: The Right of Everyone to Benefit from the Protection of the Moral and Material Interests Resulting from any Scientific, Literary or Artistic Production of Which He or She is the Author (Art. 15, Para. 1 (c) of the Covenant), 12-1-2006, E/C.12/GC/17, available at <http://docstore.ohchr.org/SelfServices/FilesHandler.ashxenc=4slQ6QSmlBEDzFEovLCuW1a0Szab0oXTdImnsJZZVQcMZjyZlUmZS43h49u0CNAuJIjwgfzCL8JQ1SHYTZH6jsZteqZOpBtECZh96hyNh%2F%2FHW6g3fYyiDXsSgaAmIP%2BP>.

[9] Id, 1.

[10] Supra note 4, at 7.

[11] Ibid

[12] Catherine Trautmann, Foreward, Research Handbook on Human Rights and Intellectual Property, Ed. Christophe Geiger, (Edward Elgar 2015) xii-xxiv, xii.

[13] Supra note 7, at 1055

[14] Supra note 7, at 1056

[15] James McBride, Andrew Chatzky, What is the Trans-Pacific Partnership?, Council on Foreign Relations, available at <https://www.cfr.org/backgrounder/what-trans-pacific-partnership-tpp>

[16] Supra note 7 at, 1100

Case BriefsForeign Courts

United Kingdom Supreme Court: Lord Sumpton, speaking for himself and Lord Mance, Lord Kerr, Lord Reed and Lord Hodge, decided an appeal in favour of the Internet Service Providers (ISPs) directing the respondents- Cartier International AG, to pay the expenses for implementing the order of injunction passed against the ISPs.

Earlier, in 2014, the English High Court had passed an injunction restraining major ISPs including British Telecommunications Plc and others from allowing access to the websites selling counterfeit luxury products such as jewelry and watches. The High Court further ordered the ISPs to pay the cost incurred in the implementation of the website blocking order. The ISPs preferred an appeal before the Court of Appeals against the direction for payment of implementation cost, which was, however, dismissed. Aggrieved thus, the ISPs approached the Supreme Court.

The Supreme Court disagreed with the Court of Appeals. It referred to Norwich Pharmacal Co. v. Customs and Excise Coms, [1974] AC 133, and observed that the English Courts have long had jurisdiction in certain circumstances to order innocent parties to assist those whose rights have been invaded by a wrongdoer. Further, the incidence of compliance cost as a matter in English law requires that any remedy should be fair, proportionate and not unnecessarily costly. In English law, the incidence of costs generally depends on a legal distribution of risk as founded by the Court. An innocent intermediary is ordinarily entitled to be indemnified by the rights holder against the cost of complying with the website blocking order. The Supreme Court held, “an ISP serving as a mere conduit would not incur liability for trademark infringement under English law even in the absence of safe harbor provisions. There is no legal basis for requiring a party to shoulder the burden of remedying an injustice if he had no legal responsibility and is acting under the compulsion of an order of the Court”. The Court rejected the suggestion that since ISPs benefit financially from the volume and appeal of content available on the internet, including content that violates intellectual property rights, it is fair to make them contribute to the cost of enforcement. Such suggestion, the Court held, assumes a degree of responsibility on the part of the intermediary which does not correspond to any legal standard. Website blocking injunctions were sought by the rights holder in their own commercial interests. There was no reason why the rights holder should be entitled to look for contributions to the cost of defending his rights from anyone other than the infringers. Finally, it was held that the rights holder should indemnify the ISPs for the compliance cost in blocking the websites as ordered. [Cartier International AG v. British Telecommunications Plc,[2018] 1 WLR 3259, dated 13-06-2018]

Intellectual PropertyLegislation UpdatesNotifications

The Union Cabinet approved India’s first Intellectual Property Rights (IPR) policy on 13-05-2016. This policy is for awareness, creation, commercialization, protection and enforcement of Intellectual Property in India. This policy is the result of the previously published draft IPR policy by the Indian Patent Office (IPO) on 9-01-2015 for the comments from the stakeholders. This present policy has been finalized after discussions and comments provided by the stakeholders. The structural basics of the policy are seven broad objectives which are as follows:

  • Awareness: outreach and promotion
  • Generation of IPRs
  • Legal and legislative framework
  • Administration and management
  • Commercialization of IPR
  • Enforcement and adjudication
  • Human capital development

Under the aforementioned seven objectives, the policy seeks to cover aspects which are broadly summarized below:

  • bringing the administration and implementation of all IP-related laws as well as Copyright Act, 1957 and Semiconductor Integrated Circuits Layout-Design Act, 2000 under the Department of Industrial Promotion and Policy (DIPP)
  • Amending existing IP laws, rules and regulations in consultation with the stakeholders to bring clarity, simplification and transparency in administration and enforcement of IP rights.
  • Creating awareness about the economic, social and cultural benefits of IPRs in India and launching a nationwide promotion program under the umbrella slogan “Creative India, Innovative India”.
  • The aim of the policy is to formulate and implement sector-wise programs to tap the evaluated potential, assessing needs and providing support towards creation of IP.
  • Providing incentives to promote R&D including tax benefits, financial support for sale of products based on IPR generated from public funded research. Promoting the infusion of funds to public R&D as a part of corporate social responsibilities of companies and strengthening the enforcement mechanism for better protection of IPR.
  • Developing IPR expertise in industry, academia, legal practitioners, judiciary, IP users and civil society by proper training and introduction of multidisciplinary IP courses in all major training institutes such as judicial academies, the National Academy of Administration, police and customs academies etc.
  • Increasing the manpower and enhance Information and Communications Technology (ICT) infrastructure at different offices that administer IPR to ensure document management, adherence to timelines and time bound disposal of IPR applications.

Note by Khaitan & Co, Advocates since 1911. For more information contact editors@khaitanco.com

Picture credits: business-standard.com