Bidding Adieu...

Due to reasons solely professional, this will have to be my last post on this blog. I have immensely enjoyed my time here, sharing my thoughts and ideas with the readers. My good wishes will always remain with the blog and its writers. I have a lot to thank my co-blogger Sai for - especially all the support, faith and freedom of thought that he has let me enjoy!!! Cheers and Keep Smiling!!!

The Duel between Well-Known marks and the Standard they Represent

As I was drafting a set of pleadings this week, a question came to mind-

Say a mark X has become extremely well-known , such that it is a symbol  of a high quality multi-purpose product that finds application in various industries.  Mark X now moves against Mark XA in a contentious proceeding, such as an opposition. Can Mark X object to XA on the ground that XA in fact misrepresents a certain kind, quality, etc. that the mark X is symbolic of?

The objection I have detailed above, is under S. 9(1)(b) of the Trade Marks Act, 1999, as an absolute ground of refusal to registration of a mark.

One vehement view that came out of an informal discussion was that making such an argument would attract an objection of genericism to the mark X itself. However, I hold a slightly different opinion.

I think, the moment a mark is well-known, all other objections somewhat fade out. In other words, if a mark is so well-known to become symbolic of a certain quality, any other mark that is deceptively similar, would fall in the ambit of S. 9 (1)(b).

Moreover, while Section 9(1)(b) is an absolute ground of refusal, covering various aspects relating to lack of distinctiveness, the fact that a mark is extremely well known, such that it is symbolic of a certain stature, in many ways does append “acquired distinctiveness” to the mark. As well established, distinctiveness attributed to a mark may be either inherent or acquired.

I am not convinced that a well-known mark may not be able to adduce the ground of S. 9 (1)(b) to establish its case. The fact that a mark is well-known, well-protected, and so long as the proprietor of the mark has undertaken every possible effort to prevent the mark from becoming a generic term, to my eyes, such ground must be available.

On the other hand, am sure the opinion is, that if a mark has become symbolic of a standard, it must fall into the public domain, for anyone meeting those standards to use. My reply to that is, wouldn’t such allowable use, result in giving and using an implied naked license, which by itself is voidable (even if not void)??

It must be appreciated that the concept of a well-known trademark arose through the law of passing off and was later incorporated under relative grounds of refusal. Well-known marks, in my view, having acquired immense distinctiveness, must be allowed to take advantage of what they stand for, i.e. the quality and stature they command, and S. 9(1)(b) be allowed to move, as a ground during contentious proceedings.

Copyright Amendment Bill and Royalties- Whose Share is it Anyway?

The Copyright Amendment Bill, that saw its way ahead to be included as a part of the existent Copyright legislation, causes me more worry than lending comfort. What is most astounding is that there are several who believe that Bollywood has in fact been victorious by having the Bill passed at both the Houses of Parliament. 

In my eyes, it is their own doom’s day! Javed Akhtar’s ecstatic speech is available here. On one hand, the apparent motive for bringing the amendment, with respect to royalty sharing is claimed to be the number of erstwhile music directors, lyricists etc. who did not get their due share, and whose families now remain in poor financial state. 

However, I wonder how the Parliament plans to enforce the provision “retrospectively”, considering that Bollywood celebrates its centenary this year.  To my eyes, this is a case of crying “Wolf! Wolf!”. While several legendary names are being propagated as the reason for the need for such a royalty-sharing provision, it appears that the real beneficiaries may only be today’s interested parties. The Copyright Act has a provision governing “work done in the course of employment “ and “work for hire”. 

The manner in which work is undertaken in the film industry, being “work for hire” is clearly contractual in nature. In this view, any and all terms including royalty are negotiable- a situation similar to that existent amongst authors and publishers. In this light, I fail to see the basic need to move for such an amendment- clearly it is only with the motive of securing the position of certain “interested parties”, who do not (atleast on the face of it) settle for a financially lopsided deal.

This having been said, I wonder why the Parliament, in spite of having some eminent lawyers on board, chose to ignore this. I wonder now, if inventors, (perhaps through some one as well- liked as Dr. Kalam) have their demand for royalty-sharing voiced. After all it is just fair, that everyone gets a due piece of the pie...

Social Networking beyond Networking

Social Networks are beyond posts, likes, notes, tags, albums and akin. As evident, they’ve become an excellent platform for those who wish to promote their brands, work, et al. This having been said, it is necessary to look at some more implications- What happens when a user at such a website posts content such as videos that in fact are someone else’s work of authorship? 

I have been thinking of the implications of my own postings for some time now- While I remember old songs and think I must remind these long lost ones to friends who share the mutual love, I wonder about the unauthorized display and distribution at my end. 

A question that almost instantly comes to mind is whether making a video available on a platform like YouTube lead to an implied consent to share it further down the line? The answer may be a yes and a no. Yes, because so long as sharing the work merely promotes and aids the commercial interests of the author, he may not really have reasons to complain. No, because the author in fact may desire for his work to remain only on one medium, for any reason whatsoever. 

I wonder what the balancing metaphor is. Like the four-factor test, is it usurpation of commercial benefit, or, the violation of moral rights? Is the possibility or option to take down a determinate to the possible violation of one’s rights? It would be lovely to hear from other social networking enthusiasts on what their views are!

Darjeeling Tea Steams in Dispute

Darjeeling Tea seems to be in the midst of a dispute, over its GI registration and related trade mark rights. The Tea Board of India, which holds rights to the GI (a device as shown here) and a Certification mark, moved against ITC Limited for naming a ‘section’ of its hotel ITC Sonar as “Darjeeling Lounge”. 

The Tea Board of India, has asserted exclusivity over "Darjeeling", and has moved an action for infringement and passing of both the Registered GI and certification mark, as well as dilution of the "Darjeeling" brand. 

Defending the Interlocutory Petition, ITC asserted that the rights under the Trade Marks Act and GI Act were meant to be restrain “use” only on goods and not services. They specifically asserted that the GI Act sought to protect indications with respect to goods only, on account of the quality, reputation or other characteristics attributable to their geographical origin. 

In giving due weight to the arguments, the Court examined the provisions of the GI Act as well as the Trade Marks Act. The Court, recognizing a cause of action in an unauthorized use of a good's certification mark by any service provider, felt that in view of the GI Act, infringement as under Section 22(1) of the GI Act was not available to Tea Board, since the use by ITC was not in connection with any designation or presentation of good. 

The Court, further ruled that against Tea Board on the passing off action, stating that by virtue of its registration as a GI or as a certification mark, they could not claim exclusive rights to “Darjeeling”. The Tea Board of India moved in appeal to this order. 

The Division Bench addressed the question of the scope of the Tea Board’s rights in view of its existing registrations. The Bench in view of Sections 28 and 29 (dealing in Rights conferred by registration and Infringement of registered Trademarks) and Sections 75 and 78 ( corresponding to rights in Certification trademarks). 

The Court particularly deliberated upon the infringement by use of a registered trademark by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered [sec 29 (5)] and observed that a corresponding provision is absent under Section 75. 

The Court opined that extrapolating the provisions in Section 29 to rights conferred under Section 75, is hence disallowed. With respect to the passing off action, the Court held that a prima facie case was not made out, since the Tea Board I of India neither traded in tea nor is in the service of rendering hospitality. The Court found that ITC in using the word DARJEELING did not falsely assert that it had the right to certify that the tea served in the lounge grows in Darjeeling. 

Further, the Court concluded that Tea Board's prima facie failure in proving violation of its registered certification trademark in terms of sec 75 of the TM Act, as it had not registered its name as holder of the mark DARJEELING in respect of hotel business but for the purpose of certification of tea as one grown in Darjeeling where benefit of Sections 28 and 29 of the TM Act is not available. 

The suit filed by Tea Board is pending before the High Court of Calcutta and the Intellectual Property Appellate Board (IPAB) is also set to hear this dispute, in respect of a challenge in opposition proceedings. Tea Board moved to IPAB challenging ITC’s application to register "Darjeeling Lounge" under class 42. This application had earlier been abandoned by the Registrar, since ITC had failed to file its counter-statement in time.

IPAB Revisits considerations under the Trade Marks Act

A month old order from the IPAB, available here, has revisited aspects that we touched on in an earlier post. The dispute had two large newspaper publications involved, namely Financial Times (FT) and Times Publishing House Ltd (TPHL). 

The decision looks at five applications together, for rectification and cancellation of registration of “Financial Times”. 

The IPAB at the very outset took note that TPHL had included the Rhizome Distilleries decision in its written submissions, but did not give consideration to its ruling, under the wide discretion that the statutory power of rectification gives the IPAB. In other words, the IPAB decided in the interest of justice, not to throw out the case of TPHL merely because they have invoked Ss 9 and 11 of the Act. 

The Court substantiating its decision to entertain the case of TPHL stated that “[w]e have a duty to see whether the registration has been granted in accordance with law, whether the provisions of the Act have been violated or whether the public interest is affected by the said registration and while examining so, whether the entry in the register shall not remain.

We necessarily have to examine if the Registrar has performed his duty in accordance with the provisions of the Act". The grounds to file the rectification proceedings included descriptiveness, lack of distinctiveness, and that the mark was registered contrary to the provisions of the Press and Registration of Books Act, 1867 (PRB Act in short), which regulates the publication of a newspaper in India and also protects the grant of title.

According to TPHL, FT had not complied with the provisions of the PRB Act, and was not entitled to have the mark registered, or have the mark remaining on the register. According to TPHL, FT had not produced evidence to establish sufficient use, distinctiveness or trans-border reputation in India. They added that proof of trans-border reputation by itself will not dispense with the requirement of use of the mark in India without which the mark shall not remain in the register and ought not to have been granted registration. 

They also stated that the evidence adduced before the City Civil Court, in a prior suit, clearly showed that FT had no intention of printing or publishing newspaper in India. 

That apart, they stasted that there existed other contradictions between the statements of the witnesses before the Civil Court and the affidavit of the sole witness before the IPAB. FT stated that its circulation was not in violation of the PRB Act, since the scope of the Act was limited to printing and publishing, and did not cover ‘circulation’. They added that FT was established 125 years ago and had built an enviable reputation as one of the leading newspapers on economic affairs. 

They stated that the mark had been coined for the first time in 1888 and it had acquired distinctiveness and the adoption of the said mark by TPHL is dishonest. They added that the use of the newspaper could not be determined by numbers alone, the price , quality, target audience, etc. are factors which must determine the question. 

The Board looking at the overlap between the PRB Act and the legislation on Trade Marks observed that if an Examiner would be expected to look at whether every newspaper owner who seeks registration of his mark has complied with the provisions of the PRB Act, he would be transgressing his jurisdiction. 

The IPAB however noted that in case the applicant chooses to register a descriptive mark, he would have to depict, that as on the date of application, the mark had acquired distinctiveness. The IPAB noted that the PRB had no authority to go into this aspect. Looking at other aspects, FT was found to have trans-border reputation, however the IPAB did not find evidence substantiating FT’s claimed use since 1948, as had been vouched by them. On this count, the Board ordered that the mark was liable to be removed from the register. The Board in arriving at its conclusion looked at a plethora of decisions. 

Further, in careful consideration of the facts, the Board has come to careful conclusions on each of the applications. The decision, although may appear convoluted in terms of the number of applications it deals with, the same is definitely worth a read for all trademark practitioners!

Time for Ooh La La! To say Ui Amma!?!?!?

The Dirty Picture that won perhaps the most awards last year, appears to have fallen into trouble, in spite of making the “Ooh La La”!!! 

The blockbuster song, that had audience’s attention captured, was alleged to be infringing an old song called “Ui Amma Ui Amma”. 

Interestingly, the song Ui Amma (an expression originally meaning Oh Mother! ) was composed by Bappi Lahiri, who gave his voice to Ooh La La.

However, to my eyes, this appears to be a case of crying “Wolf!!! Wolf!!!”. The movie all set to be released for television viewing this Sunday, had the plaintiffs moving just in time to perhaps prevent the same.

The Calcutta High Court heard the interim application,and was of the opinion that damages would suffice in this instance to bring about a balance of convenience. In deciding the verdict, the Hon’ble judge heard both the songs and reached a prima facie finding of infringrment. 

The court ordered for a deposit of Rs. 2 Crores to be made to the Court and ordered the Registrar to invest the deposit the sum in a short term deposit. Being an interim order, am sure we all appreciate that the order is likely to be overturned, either in appeal to the interim order itself, or during the course of trial.

In the course of hearing, the issue of assignment also came about. The court noted, that in the absence of the term of assignment being absent, the same is construed to be for a period of five years. However, in this case, the court observed that the deed was entered into much before this provision was incorporated into the Act. I am not sure how well this argument would play out, in view of all aspects associated with the case.

The Court to my eyes, however has left a few loose ends, perhaps for the final order to address.

The music for the movie, as the Court order points out, was released on October 21, 2011. The Court does not question why a delay was made in instituting the suit for infringement, especially if such a striking aspect of the song was in question. Further, in the normal course of civil proceedings, the limitation period to institute a suit is three months.

This brings us back to the question, that while no copyright exists in the portion of a work of authorship, would the fact that it forms the substantial and representative bit of a work, be enough to make a finding as to infringement.

Further, while the infringing song was sung by Bappi Lahiri and the infringed song was also his composition, it is unlikely that there could have been an instance where he wouldn’t have recognized a striking similarity between the compositions. Even if he did, perhaps Bappi da thought that being the composer of Ui Amma, his singing Ooh La La was an exercise of implied acquiescence to the use of a similar tune/riff. The Court is absolutely silent on this aspect as well.

With the multifarious questions that appear to have been shoved under the carpet, I just find myself wishing for Pink Floyd’s Let There Be More Light!

A Twist In the Rectification Tale?

In consequence to my last post on rectification of trade marks, a senior and friend, who has prolific experience in the area, had an engaging discussion with me on the issue. For someone who has a different take and reads the law crystal clear, he brought to attention certain aspects, that to my mind, bring a twist in the tale!

Undoubtedly, rectification petitions, are an opportunity to correct certain errors or defects that may be on the Register with respect to a mark. The provision also allows for removal. However, can the provision be read so broadly as to override all authority and prudence that the Trade Marks Registry exercises while examining a mark?

To my mind, the answer is a May Be Not. The Trade Marks Registry, being a quasi judicial body, does the first round of screening by raising objections under Sections 9 and 11 of the Act. To remind ourselves, Section 9 deals in Absolute grounds for refusal while Section 11 deals in relative grounds for refusal, i.e. cases that cover deceptively similar marks.

If one were to look at the language of Section 57, the section allows “any person”. In this view, it would also allow, commoners like you and me to move a petition. This should be acceptable, since there are grounds under Section 9 that may impact one’s sentiments, such as the ground disallowing marks that are offensive to religious sentiments to be registered.

Perhaps in the Rhizome Judgment discussed, the overriding of the Authority of the Registry is what the Judge aimed to emphasize on. But what if one would really want to challenge the registrability of a mark on either of these two grounds? Could one merely adduce these on the basis of common law, without statutory backing? May be!

I have been thinking of this issue for some time now, but have not been able to find the light. On one hand, it appears that the opposition is aimed at creating a market place where competitors exercise diligence. On the other hand, what if an individual or small scale proprietor, without registered trademark rights, but perhaps long enough existence and repute, miss the opportunity to oppose?

I believe that this twist will need substantial research. I hope some trade mark practioners here, in the meanwhile, will render their valuable inputs.

Rectification Proceedings- Is a disjointed approach acceptable?

A recent writ petition adjudicated by the Madras High Court, opined its view on certain crucial principles governing proceedings in Trade Marks. 

The judgment of Rhizome Distilleries Pvt.Ltd vs Union Of India, addressed two questions, which can be generalized as:

(i) Whether an entity can claim an exclusive right over an individual element ('IMPERIAL' in this case), when a trade mark consists of several matters ?

(ii) Whether the Intellectual Property Appellate Board has committed any error in allowing the cancellation/rectification application filed by applying the provisions of section 11 of the Trade Marks Act?

While the first question is well settled, the Court reiterated the well established judicial principle of entirety, albeit in its own words.

As far as the second question goes, the Court concluded as below:

“But, all of a sudden, the 4th respondent filed an application under section 57 of the Act for rectification of the registration and the Board by applying the principles embodied under sections 9 and 11 i.e.the grounds for refusing the registration, allowed the application filed by the 4th respondent. … Further, in our considered opinion, the grounds embodied under sections 9 and 11 are available to the persons only at the time when they raise objection for registering the trade mark. The said principles cannot be applied for rectification of the registration”

This extract demand that one thoroughly revisit the statute, in order to adjudge the accuracy of the Hon’ble High Court’s opinion.

To revisit the provisions under a tug here, S. 57 of the Trade Marks Act, 1999 deals with the Power to cancel or vary registration and to rectify the register. Under Sub-section 2 of the provision, reads:

“Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Appellate Board or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.”

This provision, without limitation as to time (in contrast to opposition), allows a third party to have an entry pertaining to a mark rectified. As I read the provision, for removals, all that a third party needs to demosrate is that the mark remains or is entered either:

(a) without sufficient cause; or

(b) wrongly/in error; or

(c) exists a defect in the entry in the register.

With respect to S. 9 and S. 11, the two provisions constitute conditions for Registration. The former provision covers absolute grounds for refusal, while the latter governs relative grounds for refusal.

While these provisions, constitute vital conditions for registration,. How can they not be used to meet the demands of a rectification petition? It is strange, because if these conditions have by error, defect, without sufficient cause or, even deceit been shown to be satisfied, shouldn’t third parties be given an opportunity to challenge them?

Undoubtedly S. 9 and 11 come up as objections during Examination, but the Act, no where restricts these to be considerations to be looked at only during that stage of prosecution. Further, distinctiveness, which is the first consideration under Absolute grounds for refusal, is a volatile c oncept- volatile because a mark which is devoid of distinctiveness to start with, may become so vide extensive use; or, the use of an extremely distinctive mark, can make it generic! 

In light of this, shouldn’t the conditions for registration be given its due, throughout the course of enforcement of one’s rights in a trade mark?

In my view, the reading of the statute by the Hon’ble court is disjointed and fragmented, thus ignoring the basic tenets constituting the very foundations of Trade Mark law. To my eyes, the provision acts as a check, by giving third parties an opportunity beyond opposition, to rectify entries on the Trade Marks Register, after due consideration by the Registrar or the IPAB.

Stacking it up...

Taking cue from the questions that Sai left off at, in one of his earlier posts- “” Does copyright law preclude the possibility of a book with a single-quote being bought and read by people? Also, does “literary work” always mean a “book”?”, ticks off my mind, to think more so in a social networking context.

In a world where many of us live a part of our lives in a virtual world, what is the role that Copyright plays? We all leave status updates, wall posts, tweets etc.- sometimes rattling off statements that are nothing short of brilliant. Would these posts qualify for copyright protection? To be honest, I do not have a clear cut answer.

As I see it, what one may post, may often be an expression of a thought - which perhaps can be construed to be an idea, or at least its equivalent. But would that be construed as a subject matter capable of copyright protection?

Drawing a contrasting analogy (and perhaps even contradicting myself), why is it that we always refer quotes to the people they come from? It definitely is a sort of goodwill gesture, but may be beyond. Additionally the need for accreditation in the academic context, also leaves me confused, since fair dealing clearly covers academic contexts.

Further, what if one wrote a sentence each day to construct a story or poem, say over a couple of months or a year on a social networking platform? A collective reading of these, could at least be treated as a compilation.

Although this reminds me of the Feist case, the differentiator could be that the line by line breakdown of a telephone directory takes us to facts, unlike the hypothetical situation. In this view, with at least a minimum modicum of creativity being met, copyright must vest.

In my mind, the questions are stacking up!!! I eagerly look forward to a court rendering its view, just to clear the air up a bit!

Evaluating Substantiality

Sai indeed has raised an interesting question in his post- what is substantial enough to make a case for copyright infringement?

I will attempt to answer this question, in the context of Chanakya’s Chant. Am sure readers will appreciate that it is often easier to answer questions, when one uses a live example!). For starters, I agree the book is an awesome read. However, I would like to take a look at the situation from a somewhat different perspective..

As I see, the prolific use of quotes in the book, can be compared to a sort of compilation. One has learnt from the US Supreme Court decision in Feist, that the modicum of creativity required in a work of authorship, to be copyright eligible, is minimal. 

In other words, what I am attempting to say is that it is possible to look at what Sanghi did, to be in fact a weave/compilation of perhaps, his favourite quotes, into an altogether different historical setting, an attempt, which (in my humble opinion) is extremely creative in fashion.

I am not sure if what I say above holds good. Let me try to substantiate that by layering it with another line of thought.

We all know that copyright is an exclusive right over the expression of an idea. In other words, the expression describes the idea. If a known expression is picked up (say Oh My God! From FRIENDS) and used in a distinct set up, with a different plot, I think the expression, would be inextricably linked to the new idea. 

In such a scenario, if a couple of lines commonly used, were to be taken and looked at, they perhaps, would be associated with multiple scripts. Just because they have been used again in a different context, may not necessarily mean that they are infringing the copyright subsisting in the previous work. This in my view, is especially true, since copyright subsists in a work, and not in an “extract” from a work.

Coming to the point on fair dealing, the test of fair dealing under S. 52 must be applied before determining Infringement. As Sai rightly pointed out, “criticism” is covered as an exception there under.

But, to answer his question, I believe that praise would also be included under the ambit of “criticism”, especially because,criticism is not merely understood to be a negative opinion, but is in fact an opinion rendered by someone with knowledge or expertise in the field, and whose opinion on a particular work, may give rise to a positive or negative opinion about it. With this in mind, I think an ode or tribute would definitely qualify as fair dealing.

Further, to answer the question of substantiality of the work, I think the Folsom v. Marsh test used to determine fair use proves useful. The four factor test, which has been incorporated in the Indian jurisprudence, takes the following into account:

1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

2. the nature of the copyrighted work;

3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

4. the effect of the use upon the potential market for or value of the copyrighted work.

Let me attempt applying these to the Chanakya’s Chant case:

1. Yes, Chanakya’s Chant is a work for commercial gains. The purpose and character could perhaps be said to be descriptive of a character’s response.

2. The nature of the copyrighted work is literary

3. The amount and substantiality of the portion in relation to the original work, is miniscule- few dialogues, as compared to the whole book

4. Effect on the commercial value of the copyrighted work –negligible. I don’t think the sales of any of the works whose dialogues/quotes have been referenced would be affected by Sanghi’s use.

If at all any, the only cause of action that the authors have against Sanghi's use, is one of “violation of moral rights”. Under S. 57 dealing in Author's Special Rights, they would have to make out a case showing that either (a) there is a distortion, mutilation or other modification of the said work; or (b) that an action prejudicial to his honour or reputation has been taken.

Having said all of this, mostly on impulse, I think Sanghi played it safe by giving due credit to the authors of the quotes. Whether his use is decided to be fair or not, he at least cannot be accused of blatant plagiarism!

Phone Booth rings a Bell- A Knock Out Punch at Mumbai High Court!

A few weeks back, I expressed my worry about “Inspirational Plagiarism”. To my delight, I was turned to a decision of the Mumbai High Court rendered in 2010, Twentieth Century Fox Film Corporation vs. Sohail Maklai Entertainment Pvt. Ltd., discussing a similar issue, albeit in the context of film scripts.

The extremely popular “Phone Booth”, produced by Twentieth Century Fox moved a suit against the producers of Bollywood flick Knock-Out, alleging infringement and praying for an injunction against the release of the movie and distribution of copies of the movie, in any manner. The decision reveals that several letters had been exchanged between Twentieth Century Fox and Sohail Maklai Entertainment Ltd., even before the matter moved to Court.

The producers of Knock-Out claim that the only similarity between the scripts is that “the guy is trapped in a phone booth”.

For our readers who have seen the English movie, will agree when I say that such “Entrapment” (and what a movie that was!) is central to the Twentieth Century Fox production. The judge, in cognizance of this fact, states, amongst other points of comparison:

"The conversation between the caller and the protagonist are rather similar; such similarity cannot be co-incidental. Its style as well as the content of the conversation and the design in bringing out the conduct of the man would leave an unmistakable impression that one was copied from the other. That is the basic concept of the two films.”

Further the Judge taking note of the differences between film making styles in Hollywood and Bollywood says:

“It is seen that the duration of both the films is rather different; though the first is long enough the second is far longer for the message it conveys. Consequently and naturally, the second has further and other aspects to convey and portray more specially the political drama with several more characters and scenes which are essentially embellishment and ornamentation in developing the expression of the idea or the prime thought of the first film.”

In the paragraphs that follow, the judge makes a rather interesting comparative:

“These ideas can be understood by the distinction of a discovery and an invention. Whatever is there but not brought out would be discovered; but whatever is not there is invented for the first time. The inventor would, therefore, alone have copyright in the expression of that invention which is the artistic work. Hence copyright is contained in the original expression of the idea. It is expressed in the frame of the product. It is the thought that is sought to be portrayed and conveyed which carries a copyright and not the original idea. Hence whilst the idea may not be unique to the author, the image portrayed or the expression made is essentially unique to the author. If such an expression in the shots of a film is copied, lifted from an earlier film, the infringement is complete.”

I think this paragraph sums up the view that the judge takes, rather succinctly and drawing an interesting comparative, while doing that! For those who worry about the rampant Inspirational Plagiarism like me.. Here Comes the Sun!

Of Markets, Exhaustion and Trade Marks..

A recent Delhi High Court decision, has left me rather perplexed! The decision rendered in Samsung Electronics Company ... vs Kapil Wadhwa & Ors, deals in exhaustion of rights vis-à-vis trade marks, and an associated claim of infringement. 

The decision leaves me taken aback for the interpretation that it takes on the legislation, albeit attempting to justify its stand, under the layers of dicta that guide legislative interpretation, and drawing international comparatives- both of which are, in my humble opinion, unnecissitated.

To summarize the 156 page long decision, the allegations made by Samasung, upon the defendants were that by way of parallel importation and lack of consent or authorization, the defendants sold the products, thus committing infringement as envisaged under the Trade Marks Act. 

Also by way of deep hyperlinking and meta-tagging, they had committed infringement and mislead consumers to believe the source of products to be Samsung itself. The court while determining infringement, states that the law of Trade Marks in India, follows the scheme of National Exhaustion of rights, which I am in vehement disagreement with.

For the benefit of our readers, the operative part of the provision governing exhaustion of rights is reproduced here:

30. Limits on effect of registered trade mark.—

3) Where the goods bearing a registered trade mark are lawfully acquired by a person, the sale of the goods in the market or otherwise dealing in those goods by that person or by a person claiming under or through him is not infringement of a trade by reason only of—

(a) the registered trade mark having been assigned by the registered proprietor to some other person, after the acquisition of those goods; or

(b) the goods having been put on the market under the registered trade mark by the proprietor or with his consent.

In discussing whether the mark has in fact been infringed, and whether the provision acts as a defence (or “limit”, in statutory language), the Judge looked at the use of the term “market” in its different forms – viz. “in the market” in the body of the provision, while “on the market”. The use of prepositions, 'in' and 'on' are construed as below:

“[O]nce the situation becomes clear about the import of the opening words of the section, then the said lawful acquisition due to the controlling words registered trademark must originate from the domestic market/ national market, and the subsequent wordings has to be also given contextual reading and the wider import of the same words "in the market" cannot be given to include "worldwide market"…

However, this makes little sense to me. The provision describing “use of a trademark”, under S. 29(6)(c) clearly qualifies “imports or exports goods under the mark”.

As a fall out, how can the term “in the market” or “on the market” be construed as being the domestic market? “Import” as we all understand means bringing “into one’s country” (I deliberately choose not to use the term market here, because, the two need not necessarily coexist!)

Another reason I refute this interpretation is the way the law of trade marks is designed to operate. While the law may be to grant territorial rights, it does not deny rights to register or apply for registrations to corporations outside India. One can appoint an Indian agent and have a body incorporated in a foreign location to apply for the mark. If “in the market” were to be construed strictly, as deliberated by the learned judge, then every applicant would have to furnish an address and accompanying proof of residency in India.

Additionally, as many of us would have encountered in our practice, one of the most concrete and reliable proofs of use,are invoices and bills of lading, to prove “use in India”. In this view, if exhaustion is only meant to be national, have we been wrong so far, as to advice registrants to maintain records of their voluminous shipping documents? If exhaustion of a trade mark was only meant to be “national”, then we would only have invoices from distributors or local subsidiaries.

To further attempt bolster as to why a trademark may originate from a registrant, having presence in India vide imports, is the fact that we have recognized the principle of “well-known trade marks” and accompanying secondary significance way too well in our jurisprudence. If law were to interpreted absolutely in a territorial structure, then what we are ALSO indirectly saying is that the opening up of our economy, as executed by the present Indian Prime Minister, (during his term as a Finance Minister in the 1990s), was superfluous!

Further in the judgement, the Learned Judge also reasons that :

“This is due to the reason that the word "market" is not qualified by any other word either in clause (3) or sub clause (b). It is just mentioned "in the market" and "on the market". Had there been a separate meaning ascribed to the word "market" in sub clause (3) and in (b), then there must have been a qualification before or after the word "market" in both the provisions which is not so present.”

I do not think the word market needs to be defined or qualified by another term, so as to monitor trade mark. The law of Trade Marks is for the consumers, who very clearly define the market - so long as demand for a product or brand exists, the market does. 

The Trade Marks Act, 1999 also carefully omits defining this term- for reasons beyond the obvious. “Likelihood of confusion” is also deciphered on this very basis constituting of trade channels, class of consumers, price disparities and the akin- something that you and I as the commoner would consider during our shopping escapades.

All in all, I think this judgment clearly misreads the law. I shall revisit the judgment soon for a fresh take. In the meanwhile, I hope that we will hear from our readers on what they think of this ruling.

P.S. Thank you to a dear friend of the blog, for pointing this decision to me.

Any room for Inspirational Plagiarism?

I think aloud as I listen to one of my favourite George Harrison/The Beatles numbers “My Sweet Lord” - I am reminded of the plagiarism suit that went along. Someone as great as Harrison was not excused, although he admitted that he never had “He’s so fine” on his mind, while composing My Sweet Lord. More about the row here.. My personal opinion, is that the judgment was a bit harsh.

And then, as much as a Bollywood loyalist that I am, I often wonder, can “inspiration” be really an excuse to copy music??? Although I hate to admit, the fact is that I often find myself listening to new songs, and I know that the riffs, chords, et al. are a pick up from some old song. The first one was as a very young child, listening to the inspirational version of “The Final Countdown” and the most recent one being last night - a Boney M rip off..

As I think of it, since copyright is apparently a pan-jurisdiction right, thanks to the Berne convention and non-requirement of registration, National Rights should be applicable to enforce such rights violated out of such “inspiration”.

Assuming a plausible situation, where an international artist came about to enforce rights against an act of “Inspiration” in India, “fair use” would be an obvious defence taken up in the issue. However, if we carefully look at the Act, S. 52 dealing on Fair use, titled “Certain acts not to be infringement of copyright”, covers Parody and not “inspiration”. That apart, whether rights have been violated to the extent of being “infringement”, is one meant to be decided on facts.

That having been said, it appears that irrespective of a case for infringement having been made out or not, would violation of moral rights stand a chance? I believe it would! Section 57 under the Copyright Act, 1957, reads:

“Author' s special rights. Independently of the author' s copyright, and even after the assignment either wholly or partially of the said copyright, the author of a work shall have the right to claim the authorship of the work as well as the right to restrain, or claim damages in respect of,-

(a) any distortion, mutilation or other modification of the said work; or

(b) any other action in relation to the said work which would be prejudicial to his honour or reputation…”

For a jurisdiction that in fact does give prominent weight to the violation of moral rights, I wonder why we haven’t had many cases in Music covering such “inspirational plagiarism” as I would like to call.

Though the idea-expression dichotomy would prevail as a premise, yet these cases should find a favourable verdict for copyright owners. Knowing the caliber and musical inclination that our judges have, in making line by line comparisons, the cases shouldn’t be a difficult slide.

On a funny note, a friend of mine and I discussed how one particular "original song" had been converted to a Devotional number, by replacing the lyrics. We discovered this on our school trip in Grade 4. And he asked "What would the Divine Gods do? Which Court would they approach?" I but of course had no answer, however this is definitely a point to consider!

Off-Topic: The storm between the Fest- The Satanic Verses plays Tempest

The Indian media over the last one week, has been flooded with news relating to one man- Booker prize winner Salman Rushdie. As the Jaipur Literary festival took stage, a few authors chose to read from his book “The Satanic Verses” – his work that was banned from release in India in 1988, on the pretext that the contents were hurtful to the religious sentiments of Muslims residing in India.

The controversy surrounding the book really took centre stage, as some authors chose to read excerpts from The Satanic Verses . The readers of excerpts state that they did so, not from the book, but in fact from excerpts available online. The readers of the excerpts, were advised to leave Jaipur for the fear of arrest.

The fact that disturbs me is that while the book is banned for release, sale, import etc. in India, would reading of its excerpts also qualify as an act that would be actionable under law???

One of the issues that bothers me is the issue of access. Although physical copies of the book are unavailable, the presence of its extracts in the internet space, does facilitate access, even though the extent of it may be limited. In this view can reading an excerpt really put one into trouble?

Another aspect is, what about freedom of expression? We know of several authors, painters,and film makers who choose rather provocative subjects. And so long as the readers chose extracts that were in fact not so provocative, should they be really threatened? And more so, in the context of a book, how would one judge what is distasteful to many, separated from the rest of the body of the work that travels with it?

While everyone, including retired Justices of the Supreme Court of India, has had something to say, this issue and the blowing up of it itself has left a bad taste in my mouth.

On one hand, in the world of Intellectual Property we talk of creative freedom, so much so that we have disregarded registration as an essential to enforce one’s rights in a work; On the other, the world of constitutionality talks of freedom of speech and expression. And yet some authors in appreciation, criticism or by reference, referring to a banned book is a taboo..

I am really at loss of an opinion- is this a reflection of the fact that we are still where we were, close to 25 years back??? Or, is this just an attempt to make a noise, specially since, we are considered a society that has always been open to interpretations, versions and fables to follow..

Can the use of Numerals qualify as Descriptively Fair?

As trademark practitioners, a phrase that becomes an integral part of our daily jargon, and one that we rattle off, at the drop of a pin, is “likelihood of confusion”. Undoubtedly, a vital concept, that forms the central theme of trademark jurisprudence, however, cannot be a sole ground to move civil action in Court. 

In other words, while an action of infringement or passing off against another trademark, must have a finding that leads in the direction of “likelihood of confusion”, the same does not suo moto form the basis for civil action.

Perhaps, what I have just summarized is the crux of what an appeal at the Delhi High Court, in the case of Radico Khaitan Ltd. v. Carlsberg India Pvt. Ltd, held. Interestingly, two alcohol manufacturers were at row with each other, for their marks that used the numeral 8 in common. The action was said to be "one for infringement and in the alternative for passing off". 

Radico are registrants of the mark 8PM used for whisky, while Carlsberg sells beer under the mark “PALONE 8”. Further grievance was that Radico’s slogan “AATH KE THAATH” (the luxury of eight) pertaining to the trademark “8 PM” had been piggy ridden on by Carlsberg by using the slogan “8 KA DUM”, meaning the potency of 8 .

The decision makes for an interesting read, albeit on other fronts- While the decision does not delve on the slogan being under copyright or trade mark protected, the court looked at the viability of numerals,and related non-exclusivity under the scope of trade mark protection.

However, observing here (as also in the impugned judgment), that the numeral 8 was in common usage in the alcohol industry, perhaps to describe the percentage strength of the alcohol, the Judge stated that:

"A holder of a protectable descriptive mark has no legal claim to an exclusive right in the primary, descriptive meaning of the term; consequently, everyone is free to use the term in its primary, descriptive sense; but with a caveat. 

The caveat is that: "so long as such use does not lead to consumer confusion as to the source of the goods". And in an action for infringement the "fair use" defence is available only to situations where the alleged infringer employs a trademark in its descriptive sense, as opposed to as a trademark.”

In analyzing whether Carlsberg’s use of the numeral 8 qualified the “descriptive fair use” standard, the Court addressed three questions:

(i) Does the numeral 8 indicate any quality, functionality, property, content etc. of the product itself?

In addressing the first question, the Court noted that the alcohol content in the beer being 7.5%, the adoption of 8 was in fact arbitrary. I personally disagree, and believe that the adoption was in fact descriptive, atleast in the choice of numerals. Else, why not any other number?

(ii) Does the numeral “8” appear „in a manner of speaking on the label or has been given undue prominence so as to appear as a trademark?

The Court here observed that the numeral being several times larger than the text was clearly not written with an intention to be a mere descriptor, but to be the most prominent component of the label, which cannot be termed as descriptive fair use and is clearly in the nature of trademark use.

(iii) Does the product, aside from the numeral "8", carry any other mark which is intended to be the "brand name" or "trademark" by which consumers are to ask for the product?

The Court opined that the consumer is most likely to tell the bartender or the salesman at a liquor vend: "Give me beer 8" and not "Give me beer Palone 8", since 8 is the single most prominent feature of the label and that consumers are most likely to identify with the same. I disagree with this too- I don't think most beer drinkers would be so oblivious of their brand preferences.

The Court denying injunction concluded as:

A. Radico had a registration for “8 PM” as a composite mark. Thus, it could not claim exclusivity over the single numeral “8” to restrain Carlsberg for trademark infringement.

B. Carlsberg cannot rely on descriptive use as a defence to pre-empt Radico's claim.

C. For passing off, the last two prongs of the classical Jif Lemon trinity have to be applied to test if there is any consumer confusion (or likelihood thereof) and any resultant damage caused to Radico by the impugned use of the numeral "8" by Carlsberg.

While it is admirable that this court attempted be creative and introduce to Indian Trade mark jurisprudence a concept such as descriptive fair use, I feel this wasn’t the best instance to do so. The concept to my mind finds application in the use of a trademark itself, and not a numeral or colour, that has been denied exclusivity in the regular course of trade mark prosecution history.

Having admitted that this was a composite mark, I think the court should have looked at factors akin to the Polaroid factors, rather than dwelling so deep into the doctrine of fair use.

Trade Marks and Domain names - Can there be a broken link?

A recent decision of the Delhi High Court, deals with the inextricable link between Domain names and Trade Marks, and more specifically a domain name containing a generic term - namely,“internet”. 

The decision addresses petitions that challenge an award by the sole Arbitrator, appointed by the National Internet Exchange of India (NIXI) to adjudicate the issue.

The domain name “internet.in” was registered by one Stephen Koenig, and was complained against as being identical and confusingly similar to Jagdish Purohit’s trademark “internet”. It was alleged that the acquisition of the domain name was a fall out of Koenig having no legitimate interests in the domain name, and hence, acquired in bad faith. 

The Arbitrator in view of the nature of the term "internet" and .IN Dispute Resolution Policy (INDRP), had awarded that the domain name be struck down and denied the plea to transfer the domain name to Purohit.

The High Court, however, held that the cancellation of the registration of the domain name ‘internet.in, would not automatically entitle the transfer of the domain name in favour of the defendant. Clearly, as the Court noted, the Respondent was unable to show that he was actually using the trademark ‘internet’ in his business.

Additionally, the Court stated that the fact that the word ‘internet’ is generic and that the trademark ‘internet’ of the Respondent is therefore a weak one, are relevant considerations that support the decision of the learned Arbitrator to decline the prayer for transfer of the domain name ‘internet.in’ in the respondent's favour.”

To this extent, the Delhi High Court, was in agreement with the Arbitrator’s decision. However, in one sentence, the Judge held that the direction in the impugned Award that the domain name ‘internet.in’ should be confiscated and kept by the .IN Registry, be set aside.

This to me, seems somewhat strange. If a term is generic, and hence a holder of a related domain name is said to be squatting upon the use of such a domain, why should the same not be confiscated? After all, if the law governing domain names follows the rationale behind trade marks, this is a natural corollary, especially since generic terms are disentitled from protection as trade marks.

If this is the case, what about trademarks that have become generic? The most common example that comes to my mind is Google, which has attained a tone of usage similar to a verb, rather than being used as a proper noun or adjective. 

Am sure a player as big as Google has acquired domain names with nearly every possible top-level domain name. So in a hypothetical situation, where a deceptive or confusingly similar variant of google.com is registered as a domain name, will Google loose all its rights? Or is Genericism a trade off to being as big a brand as Google is?

I think some of our readers will be able to throw in some predictions. For now, I hope that 2012 brings about interesting quirks and questions for the blog to pursue!!

Policing Netizens?!?!?!

I am told that during one of India’s toughest political times, when editorials were curtailed due to an Emergency, one prolific newspaper carried Nobel laureate Rabindranath Tagore’s wonderful words:

Where the mind is without fear and the head is held high

Where knowledge is free

Where the world has not been broken up into fragments

By narrow domestic walls

Where words come out from the depth of truth

Where tireless striving stretches its arms towards perfection

Where the clear stream of reason has not lost its way

Into the dreary desert sand of dead habit

Where the mind is led forward by thee

Into ever-widening thought and action

Into that heaven of freedom, my Father, let my country awake

Recently, our Minister for Communications and Information Technology, Kapil Sibal who is also one of India’s most renowned figures in the legal fraternity, made a statement regarding policing the internet and social media. While his statements were the much heated subject of discussion in the Indian media over the course of last week, they indeed do attract one’s attention, at least for a moment or two, to look at the pros and cons of doing so, pertinently in the context of social media.

Of course as far as policing one’s parallel life on the internet goes, in my mind several issues may arise. The most prominent of these issues is the constitutionality of such policing, vis-à-vis the Freedom to Speech and Expression, guaranteed under the Constitution. Undoubtedly, as we all tweet, Facebook or share via Google+, not just do we share our lives, but these platforms have given us an opportunity to become more vocal and on several occasions, severely critical as well.

However, with the expansion of media, whereby one can “voice” one’s opinion, is the need for policing also called for? My personal opinion, which I believe is the majority opinion, is an emphatic NO. While the Constitution guarantees the Freedom to speech and expression, the same is unrestricted across the media of communication. Additionally, since Art. 19(1)(a) is a guaranteed freedom, I believe that the only action viable, if at all, would be a civil defamatory suit for libel.

Having said this, my concern runs somewhat deeper, beyond what Mr. Sibal has to say. I worry most about copyrighted content and sharing the same, particularly of videos.

If one were to consider such content, the same is being dealt with by making access to the content itself unavailable to a particular geography -just as many websites, youtube videos, online telecasts are not available to a particular ISP addressee.

However, I am unsure if the walling off content would prevent someone from “reposting” a link on an online forum. The catch here is that while a video may be unavailable in a particular geography, I may be able to access the same the moment I shift location.

On one hand, since one may consider the absence of commercial benefit to the profile hosting such content, and may advocate this use to be fair, on the other hand, the mere lack of commercial benefit shouldn’t amount to misuse. If a pay-per-view system be in place, would this form of contributory infringement come to rest? Or, since songs, et al. do speak our minds the best, more often than not, would our Freedom of Expression?!?!?

There is a new song that has become a rage amongst the Indian public, called Kolaveri di, and has had over a couple billion hits. Thanks to social media and sharing, the song has acquired the popularity that it has. Now, that was someone’s mind without fear and head held high!!!

Musings over Moral Rights

The world of Copyright, in my opinion, today best reflects the fine move that went on from Industrial to Intellectual Property, albeit in the opposite order.

Copyright, has under its wings, a wide array of creative works (not that inventions cannot have their creative side), most of which today, have undoubtedly acquired a more commercial nature than ever. However, what seems to create the fine balance between its commercial and creative characterestics, is perhaps the presence of a scheme for moral rights.

The Hegelian theory of Personality Justification, that appears to fit the mould of copyright in the best way, talks about property being an extension of one’s personality. We see that in every piece of creative work around us, thus creating room for art critics, historians, curators and so on. Perhaps the theory of Moral rights, also grew in and from the European era of Renaissance, wherein self- expression, freedom of thought and concepts akin came to life.

This having been said, the law in the United States never ceases to amaze me.

On one hand, the United States Constitution, vide Article 1, Section 8, Clause 8, empowers authors with the gift of copyright. On the other hand, the only place for moral rights appears to be in the Visual Artists Rights Act (VARA). Moral rights as outlined therein allow an author of a visual work to avoid being associated with works that are not entirely his/her own, while also preventing the defacement of their works.

However, the importance of Moral rights in the US has found some life, through judicial deliberation.

A much debated scheme of thought came by, vide the Google Book Settlement decision, rendered by Justice Denny Chin of the Southern District of New York.

While it is impossible to quote from the decision, since the thoughts of the judge are weaved throughout the judgment, the approach to moral rights is exceptionally subtle, with reference in a couple of instances as “international” rights or concerns.

I have read this forty eight page decision, now, over a couple of times. And,to be honest, the simplicity with which Justice Chin appears to have brought about the nexus between Copyright as an Intellectual Property, the Commercialization that often drives authors, and associated concerns is a delightful read.

Almost Famous

In the recent past, the Delhi High Court, seems to have been flocked by cases dealing with celebrity personalities. One such case that has caught my attention, and more so has begged me to put in some thought, is the judgment dealing with Arun Jaitley’s right to use his name as a domain name, viz., Mr. Arun Jaitley vs. Network Solutions Pvt. Ltd.

To be brief about the facts, Arun Jaitley, spokesman for one of India’s leading political parties, moved to get www.arunjaitey.com registered. Facing difficulty in doing so, he sent a letter addressing Network Solutions, LLC (the registrant as revealed by a whois.net search), to which a reply was received stating that the said domain name was already taken. 

An offer to purchase the said domain through Network solution’s Certified Offer Service was also made. However, on scouting around a bit, Mr. Jaitley discovered that the website was “Pending Deletion”, since it had not been renewed by the previous owner.

While I agree with the final outcome of the case, deciding that Arun Jaitley should be the rightful regstrant of the domain name, I am somewhat unconvinced by the manner in which the law of passing off was applied.

To cut a long story short, the judgment relies on decisions dealing in the applicability of trade mark law in the sphere of domain names, primarily keeping focus on Satyam Infoway Ltd. Vs. Sifynet Solutions Pvt. Ltd. To describe these decisions in the broad sense, these decisions apply trademark law to afford protection to domain names that were being infringed vide the use of deceptive URLs.

In my view, the application of these decisions to the case is somewhat flawed. As I read the judicially deliberated law protecting domain names, the law on trademarks is applied to domain names owing to the commercial nature facilitated by both. Where a domain name does not refer to a trade mark per se, I think the tennets of the Uniform Domain Name Resolution Policy should be relied upon, as against an extensive reliance on trade mark law, as in this decision.

As averred by his counsel, Arun Jaitley is a name that has acquired fame and reputation, as one of India’s most renowned lawyers. However, now that he is a full time politician, I wonder if he could still project his name to have a trade mark sort of status. In my view, the only reason to adopt a passing off sort of argument would be its judicially adopted straight jacket treatment vis-a-vis cyberlaw.

Further, while our law does recognize a common law right in a trade mark, however, from a reading of the Act, a name that acquires a trade mark status, whether under common law, or by registration based on acquired distinctiveness, the same must be used in relation to goods and services. 

Additionally, acquired distinctiveness is only a means to acquire a trademark registration, but the Act nowhere purports that every name, personality or term that has acquired a secondary significance to it, should necessarily be protected as a Trade Mark.

This case in my view is a case of false and misleading description, which per the Indian Trade Marks Act, does not cover individual personalities. This is a stark contrast to the Lanham Act, that covers the protection of personalities as well.

Further, I think this case makes one for a tortious claim of misrepresentation.

Although the law of passing off has its roots in the law of torts, and a case such as this could only be best described by using the term “passing off”, however, I strongly feel that in this instance, delinking from the law of trade marks, and the adoption of a direct tort related approach was necessitated.