Copyright

Mattel Files Appeal in Scrabulous Matter: Jaitley vs Singhvi Again


SpicyIP has just learnt that Mattel has preferred an appeal against Justice Bhat’s order in the SCRABULOUS matter. For our previous posts on this case, see here and here. The appeal is being heard by a Division Bench consisting of Justice Vikramajit Sen and Justice S L Bhayana.

The matter came up in court last Thursday and was argued by Jaitley on behalf of Mattel. The Agarwalla brothers are represented by Dr. Abhishek Manu Singhvi and Mr. Sanjay Jain. Interesting that in the big ticket IP litigations before Indian courts now, Arun Jaitley appears to be the most sought after IP counsel (having appeared in Roche vs Cipla, Warner Bros vs Times Entertainment [Harry Potter vs Hari Puttar] and now in this Mattel appeal).

More interestingly perhaps, just as in Roche vs Cipla, Jaitley (a BJP spokesperson) is pitted against Singhvi (a Congress spokesperson) here as well. Depending on the fate of the elections next year, one of them is certainly bound to become a senior cabinet minister.

The Bench has posted the matter for detailed hearing on 12th January 2009. Both parties are likely to file a written note summarizing their arguments.

As reported in our last post, the trial judgement by Justice Bhat maybe summarized as:

1. The SCRABBLE board is not an original work and does not meet the standard of ‘modicum of creativity’.

2. The board cannot be protected under copyright law because of the idea-expression merger

3. The board is not entitled to copyright protection because of section 15 (2) of the Copyright Act, 1957

At the hearing on Thursday, Jaitley gave the Bench an overview of the copyright findings in the order and Mattel’s objections to these findings.

On procedure, Jaitley argued that the originality argument and the idea-expression argument was neither pleaded nor raised in the course of the Defendants’ submissions before Justice Bhat. He argued that Mattel had no opportunity to respond to these issues.

Jaitley also took the Judges through foreign judgments relied on by Justice Bhat to illustrate the doctrine of merger. He argued that Justice Bhat had reproduced only certain portions of these foreign judgments, without noticing that the same paragraphs he relies on in his order actually recognize that copyright protection is available to game boards.

In fact, this appears a problem in some of Justice Bhat’s other judgments as well. Prashant Reddy pointed me to a serious mistake committed by J Bhat in the Roche vs Cipla case, where he cites Roussel Uclaf Vs. G.D. Sarle and Company Ltd. 1977 FSR 25, where, according to him, the Court of Appeal observed that even a limited injunction ensuring that a patient already on the drug in question should be continued to be supplied, as a condition for interlocutory restraint of the defendant, could prove inadequate.

J Bhat goes on to note:

“A life-saving drug is in an exceptional position. There are often cases where a number of drugs exist alongside each other and are in general all equally efficacious for a particular ailment or disease. If the evidence shows it to be the fact that there may well be cases where it would make little, if any, difference to the public, apart from satisfying personal preference, whether a particular drug was no longer available or not, then in such a case it may well be proper to grant an injunction. At the other end of the scale, however, there is the unique life-saving drug where, in my judgment, it is at least very doubtful if the court in its discretion ever ought to grant an injunction and I cannot at present think of any circumstances where it should. There are infinite variations between these two limits.”

What Justice Bhat failed to notice was that the Roussel Ulcaf facts really involved a generic drug that was on the market and an innovator company which hadn’t yet released any drug in the particular market. In other words, the generic version was the only one that patients had access to (whether or not they could afford the innovator version–since the innovator version was not present in the market at all!)

Given that Justice Bhat appears to be bringing some semblance of sanity to IP jurisprudence by swinging the pendulum away from an extreme IP rights owner tilt, these small mistakes do not bode well and could destroy his credibility in the years to come. He ought to be more cautious in future judgments.

SpicyIP Take on Scrabulous Appeal

Justice Bhat may have pegged the standard of “originality” a wee bit too high by stipulating that the Scrabble board is not “original”. It would appear therefore that this part of the ruling is likely to be overruled.

As for the ruling on the idea expression dichotomy: Am not sure. Could go either way.

And lastly, on section 15(2): If one were to go by recent cases which have interpreted this section (Microfibre etc), Mattel does not appear to have a winning case on this count. I personally think that this section is redundant and does not make any sense whatsoever–but that is a matter for another post altogether!

Shamnad Basheer

Shamnad Basheer

Prof (Dr) Shamnad Basheer founded SpicyIP in 2005. He is currently the Honorary Research Chair of IP Law at Nirma University and a visiting professor of law at the National Law School (NLS), Bangalore. He is also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof Amartya Sen. Professional History: After graduating from the NLS, Bangalore Professor Basheer joinedAnand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Prof Basheer has published widely and his articles have won awards, including those instituted by ATRIP and the Stanford Technology Law Review. He is consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also serves on several government committees.

10 comments.

  1. AvatarAnonymous Coward

    I’m quite glad someone else pointed it out too. “All hail Justice Ravindra Bhat of the Delhi High Court . . . who is the only one (it seems) capable of pulling us out of IP quagmires,” I had written at one point. But later, I tried to show in another comment how Justice Bhat’s analysis and his decision did not match up. Further, as Mr. Naniwadekar correctly points out, Justice Bhat drew an absurd analogy to the Patent Act while deciding the Oxford case.

    Still, his analysis of IP is much better than what I am generally used to reading from the courts. (Someone please explain to me what on earth Justice Naolekar is trying to say in EBC (and here’s a small sampling of a problematic paragraph).)

    You’re bang on the mark when you say that Justice Bhat’s (limited) bad analysis will mar his generally good decisions.

    A. Cow.

    Reply
  2. AvatarShamnad Basheer

    Thanks AC,

    I just went through some of your other comments that you linked up to in your response. And cannot agree with you more. If you look at the Oxford decision as well as the Scrabulous, Justice Bhat does seem to require somethign more than mere skill and labour. He has indeed inducted the “modicum of creativity” test into Indian jurisprudence.

    I fear that he may be overruled on this count–since the best reading of the EBC judgment (of all the alternatives that we have) would be that the court endorsed CCH and “skill and labour”. It uses the term “creativity” as a proxy for “skill” (meaning thereby that where it has found copyrightability for certain aspects of the judgment, those portions would have satisfied even the “creativity” threshold. But that does not necessarily mean that the court was saying that it had to be “creative” in order to be protected. Rather, the best reading of this judgment would be that since it expressly endorsed CCH stating that CCH was the right test, the standard is one of “skill and judgment”. No doubt, as you rightly say, the court could have a lot clearer on this count.

    Reply
  3. AvatarAnonymous Coward

    @Shamnad Basheer:
    I hate to be the one to point this out, but you’ve accidentally referred to “skill and labour” (“the court endorsed CCH and ‘skill and labour'”) in a couple of places when you meant to say “skill and judgment”.

    As for your reading of EBC, I can’t come to agree with it, as much on the basis of policy (I think a higher standard is better), if not more, as on principle (a bare application of judicial interpretation).

    I believe the most relevant parts of the judgment are:
    para 40, where he goes on to state:
    “Novelty or invention or innovative idea is not the requirement for protection of copyright but it does require minimal degree of creativity.”

    And again (para 40):
    “Although for establishing a copyright, the creativity standard applies is not that something must be novel or non-obvious, but some amount of creativity in the work to claim a copyright is required. It does require a minimal degree of creativity.”

    —–
    While in para 38 he states:
    “On the face of the provisions of the Indian Copyright Act, 1957, we think that the principle laid down by the Canadian Court would be applicable in copyright of the judgments of the Apex Court. We make it clear that the decision of ours would be confined to the judgments of the courts which are in the public domain as by virtue of Section 52 of the Act there is no copyright in the original text of the judgments. To claim copyright in a compilation, the author must produce the material with exercise of his skill and judgment which may not be creativity in the sense that it is novel or non-obvious, but at the same time it is not a product of merely labour and capital.”

    This results from a mis-reading of Feist and Matthew Bender, both of which take great pains to point out that “modicum of creativity” does not mean novelty (“Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying.”). That shows that “modicum of creativity” does not rule out the copyright principle of independent creation (which is what “novelty”, a concept in patent law, if somehow applied to copyright law, would do). Thus, while “skill and judgment” doesn’t refer to “creativity in the sense that it is novel or non-obvious”, neither does “modicum of creativity”.

    Further, I don’t think that para 39 represents the ratio decidendi of the case (based again, on Goodhart-ian analysis).

    In para 40, the judgment says:
    “No doubt the appellants have collected the material and improved the readability of the judgment [that shows skill/judgment] by putting inputs in the original text of the judgment by considerable labour and arranged it in their own style [“own style” again shows exercise of skill/judgment], but that does not give the flavour of minimum requirement of
    creativity.”

    In para 39, the court lists out all the corrections, additions, etc., that EBC makes (including adding citations where none is provided in the original text, correcting incorrect quotes in the original judgment, suggesting corrigenda to the Court and incorporating changes if suggestions are accepted, etc.), and in para 40 rejects them all as not having even “minimal degree of creativity”. Still, in para 41, the Court talks of how difficult it is to number paragraphs, introduce internal paragraph referencing, and to declare that a judge has “concurred”, “dissented”, “partly concurred”, etc. It goes on to state that those bits of the judgment are protected by copyright as it requires “skill and judgment”, and that “Creation of paragraphs by separating them from the passage would require knowledge, sound judgment and legal skill. In our opinion, this exercise and creation thereof has a flavour of minimum amount of creativity.”

    Thus, the ultimate test still seems to be “minimum amount of creativity” since in this particular case, the exercise of skill and judgment has led to a minimum amount of creativity.

    One other interpretation would be that since most of the additions/correction were rejected from copyrightability because the amount of skill and judgment show was “trivial”, the test is not “skill and judgment”, but “minimum amount of skill and judgment”.

    Frankly, only lawyers would spend time dissecting a judgment that is so badly written that it can’t seem to tell its head apart from its netherside, nor “skill and judgment” apart from “modicum of creativity”. I’m okay if a person doesn’t understand the difference between the two. But for a person to (seemingly) understand the difference and _then_ to go mix them up so badly is unpardonable.

    AC

    Reply
  4. AvatarAnonymous

    The Scrabble order applies EBC quite blindly, without noticing at least two basic facts:

    (a)The EBC decision is concerned with derivative works, as opposed to artistic works. The standards, even assuming that there are any set, cannot be applied across the board.

    (b) The definition of artistic works under section 2 (c) (i), is qualified as follows:

    “2.(c) “artistic work” means—

    (i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, WHETHER OR NOT ANY SUCH WORK POSSESSES ARTISTIC QUALITY;…”

    How can the court venture into a discussion on “modicum of creativity” without as much as dealing with this definition?

    The definition, in my opinion, precludes any discussion on “modicum of creativity”.

    Anon

    Reply
  5. AvatarShamnad Basheer

    Thanks AC,

    Yes, you’re right: I did mean “skill and judgment” as opposed to “skill and labour” as the standard endorsed by the court. Let me first respond to your point about the “principle” that one can crystallise from the judgment.

    Firstly, why do you say that: “Further, I don’t think that para 39 represents the ratio decidendi of the case (based again, on Goodhart-ian analysis)”. Why is para 39 important at all particularly when all that the judge does is a “factual” analysis. Or am I missing a deeper message that you were seeking to convey?

    Secondly, rather than a piecemeal reading of individual paragraphs, may I suggest that we read read the judgment as a whole to distill out the ratio (am sure Goodhart would agree with that:).

    Thirdly, and most importantly perhaps, may I recommend a reading of the Canadian SC case (CCH) since the Indian court apparently draws significantly from this.

    You’ve lambasted the Indian SC quite vociferously, but you’ve overlooked the fact that the doctrinal confusion by our SC stems (in some part) out of the doctrinal confusion inherent in CCH itself. Let me explain:

    1. The Canadian SC misreads Feist and the US creativity standard. When it speaks about creativity, Feist does not speak to a novelty standard as used in patent law. In fact, if that were the case, then no matter how creative one was, one could never gain a copyright protection for an independently created expression that was already part of the “prior art”! Since that would never be novel as per patent law!

    In Feist, the US Supreme Court explicitly stated that ‘originality does not signify novelty’ and, moreover, that the creativity standard is ‘extremely low’.

    In fact, given this mischaracterisation of the Feist standard by the Canadian SC, one might even argue that in some ways, the Canadian SC by its use of the term ‘skill and judgment’ meant pretty much what Feist meant by the term ‘creativity’. See See, for example, Daniel J. Gervais, Intellectual Property: The Law in Canada (2005): ‘But it seems that the Supreme Court [of Canada] chose a “middle-path” only in appearance. Canada instead has taken on a standard essentially identical to those of our American neighbours and to the Continental systems.’

    And to this extent, our SC, by conflating these two allegedly distinct doctrines (skill and judgment vs creativity) may have done nothing more than expose the commonality b/w Feist and CCH.

    So, although the Indian SC admits allegiance to the Canadian SC “skill and judgment” standard (para 38), it goes on to suggest a suggest a minimal level of creativity test (Feist) in other paragraphs. But if CCH and Feist are similar, then perhaps the Indian SC was right in conflating these terms?

    2. The above contextual explanation may also explain why the court chose to qualify even “skill and judgment” as something more than merely “trivial” skill and judgment”. See the Canadian SC which held as below:

    ” The exercise of skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise. For example, any skill and judgment that might be involved in simply changing the font of a work to produce ‘another’ work would be too trivial to merit copyright protection as an ‘original’work.”

    This is not to say that the Indian SC judgment is rich in doctrinal clarity or to exonerate it in any way. But only to suggest that if you look to the context and read the judgments relied on, you’ll tend to be a little more sympathetic to the confusion engendered.

    Based on the CCH case and its endorsement by the Indian SC case, I would argue that the current test in India appears to be: “anything that is not merely the product of labour and investment qualifies as “original”. Which is why I think Bhat’s version of creativity which is higher than the minimal degree that even Feist calls for might be overruled. The Scrabulous pattern is clearly more than mere labour and investment.

    Thirdly, you make a unqualified statement that you think a higher standard is always better from a policy perspective. If that is the case, let’s make copyright protection subject to the highest possible standard (a literary work shall merit copyright protection only when it wins the Nobel prize in literature?).

    I must once again reiterate the value that folks like you bring to the blog. You alone have raised the quality of the discussions on this blog by several notches. In fact, if one of our posts does not attract an AC comment, we know that it hasn’t met the mark:)

    Reply
  6. AvatarShamnad Basheer

    Dear Anon,

    Thanks for your comment. I think you’re broadly right when you suggest that one must look to the specific facts of EBC (derivative works) and qualify the SC ruling to that extent. However, I don’t see any reason for restricting the application of the broad standard (whether we call it “minimum degree of creativity” or skill and judgment) depending on the class of work that one is dealing with.

    No doubt, to be protected, artistic works need not show artistic merit. But then would the mere drawing of two straight lines qualify as an artistic work? Clearly not, since this is nothing more than mere labour and does not involve skill and judgment.

    Reply
  7. AvatarAnonymous Coward

    @Shamnad Basheer
    1. I actually happen to agree (!) for once. This lack of clarity between skill and judgment and modicum of creativity was what I was hinting at when I said, “I’m okay if a person doesn’t understand the difference between the two.” And I meant to say para 38, not 39.

    2. I agree that the Indian SC might have exposed the fraud committed by other SCs, but I can assert with great confidence that it did not mean to. This wasn’t a case of a Judge Kozinski or a Lord Denning (did I just compare the two?) clearing out the air and bringing about theoretical clarity. This exposé is, at best, serendipitous, and I’m not sure the courts have noticed it yet. I believe we are in agreement on this too.

    Justice Bhat doesn’t seem to have noted it either, given that he too goes on to draw attention to the distinction between the two standards, and say that the Indian SC has adopted the lower one.

    3. The policy perspective I was talking about is merely a personal opinion, not an argument I seek to push forth. But, yes, I do believe that only Nobel laureates should have rights over their intellectual activities. What if you’ve won the Bastiat prize or the Fields medal or the Man Booker? Tough luck. (How a book like The White Tiger could win the Booker is beyond me!)

    Reply
  8. AvatarAnonymous

    Hello,

    I think essentially that the differences of opinion amongst all of us (I refer to Mr. Basheer, Naniwadekar, Anon Cow and myself) are not too great; perhaps more illusory than actually substantial.

    I think the main issue is what is the correct issue of ebc. As the discussion so far has suggested; it is rather difficult to make out. Somewhere in the comments, there was a question about whether legislative clarification is needed.

    I would suggest that instead of a legislative explanation; it will be better if the sc admits an appeal from one of these judgments at some point in the near future; and refers it to a 3 judge bench. Ideally, the bench should make clear:
    1. What does the Bench think CCH say?
    2. What does the Bench think Feist say?
    3. Does the bench agree with either of the two?
    4. If yes, which one of the two? If not, what is the standard to be applied; and importantly, in application how is it different from CCH and Feist.

    This might seem rather obvious; but unfortunately neither EBC nor Justice Bhat have clarified this aspect.

    (sorry for the rather rambling nature of this post; will fill in a bit of detail later)

    Best,

    Another Anonymous Coward.

    Reply

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