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!