SpicyIP Weekly Review (March- Week 4)

This week has been quite exciting and action packed with SpicyIP covering various recent legal developments – cases, Copyright Rules, 2013 and other important legal issues. 

Copyright Rules, 2013 

The week started off with news regarding notification of the Copyright Rules, 2013 (Anubha’s post here). The new rules (available here) are pursuant to the recent Copyright Amendment Act, 2012. Prashant in his post (here) highlighted certain changes that the new rules have made with regard to the composition of the Copyright Board. One welcome change that was pointed out was with regard to Rule 3(2) sub-rule (d) which now allows advocates with ten years experience in copyright law to be appointed as members of the Copyright Board. However, Prashant exposed an inherent flaw in the Rules in that they allow bureaucrats and ILS officers to be appointed to the Board. Such a provision could render this rule susceptible to a constitutional challenge. 

Sai through his succinct post drew our notice to the IPAB’s decision in the Natco/Bayer compulsory license case. This was a landmark decision that upheld the compulsory license granted to Nacto for Bayer’s patented kidney cancer drug- Nexavar. The decision first dealt with certain technical issues raised by Bayer and then went on to address the substantive issues. The IPAB also stressed on the overwhelming public interest dimension in compulsory license issues and in this regard perused the Ayyangar Report and provisions from TRIPS, the Paris Convention and the Doha Declaration on Access to Medicines. 

This post was followed by another recent and far-reaching decision by the US Supreme Court on parallel imports of copyrighted works. Shamnad covered this decision (here). This case was between John Wiley a famous US book publisher and Kirstaeng a Thai student studying in the US. The question in this case was whether Kirstaeng’s import into the US of certain books sold in Thailand violated Wiley’s exclusive right to distribution and Section 602’s import prohibition. The Supreme Court based its decision on the principle of international exhaustion and dismissed Wiley’s claim of unauthorized importation. Shamnad highlights various implications this judgment will have on India. 

I posted on the recent ‘AUML-IMUL’ trademark controversy. The proprietors of the registered trademark AMUL opposed registration of the mark IMUL. The registrar rejected the opposition and held IMUL’s mark to be honest and not deceptively similar. On appeal, however, the IPAB set aside the registrar’s order as it found ‘IMUL’ to be phonetically similar to ‘AMUL’ and therefore held that IMUL was deceptively similar and likely to cause confusion among the public. 

Prashant updated our readers about certain interesting details that may have implications on the Pratibha Syntex lawsuit brought by the State of California. The Californian Attorney General has allegedly misled the court by stating that Pratibha (defendant) “has not asserted any valid defence as to its use of pirated Microsoft programs.” This statement seems to be false because Pratibha Syntex has actually been trying to put up a fight and as pointed out, on Sep. 25, 2012 Pratibha Syntex filed an Order 7 Rule 11 application seeking dismissal of the lawsuit. These and other interesting findings pointed out in post leave us to question the conduct of the Californian A-G. 

This insightful post was followed by Prashant’s tidbit on the release of a new novel by Dr. Kalyan Kankanala a leading Indian IP lawyer. The book is titled ‘Road Humps and Sidewalks’ and is about a national epidemic, a cure, a doctor, a blind lawyer, a patent and a pharmaceutical company. This combination certainly makes for a promising and exciting read. 

Thereafter, Madhulika blogged about the recent comments and concerns raised by Roy Waldron (Chief IP Counsel for Pfizer) over India’s ‘protectionist’ IP regime. Pfizer questioned India’s patentablity standards, accused India of abusing the compulsory license system and threatened to remove trade benefits and GSP prevelidges. Madhulika has comprehensively dealt with these concerns in her post. 

SpicyIP then brought in a clarification with regard to our post on the Fox ‘Knock-Out’ copyright dispute where due to Mid-Day’s reportage we were given to believe that the Fox had won the case and was awarded damages. But later it was brought to our notice that the matter was actually settled amicably by the two parties and there was no question of damages being award. 

Gopika brought to our notice that producers of the popular TV show ‘Mad Men’ are involved a dispute regarding the unauthorized use of Ms. Gita May’s image in the main title sequence of the show. The complaint lists eight causes of action which include the misappropriation of right of publicity for commercial purposes, invasion of common law rights of privacy; and violation of the unfair competition law, false advertising law, quasi contract and the principle of unjust enrichment among others. 

SpicyIP was then informed of the inevitable – leading music labels – T Series, Venus Records and a certain Bharat Anand have challenged the constitutional validity of sections 17,18, 19, 30 and 33 of the amended Copyright Act. Shamnad’s posts here and here highlight the issues raised by these parties. 

This was followed by Gopika’s post on the statistics of patent grants in India. The data tabulates patent applications filed in medicines from 2009 to January 2013. The post analysis these statistics on the basis of time-period of grant, state-wise grant, pending patent applications, patent applications filed by Indians through PCT and other such parameters. 

This is a new section we’re introducing which will highlight some of the best comments we’ve received over the week – 

1. To Gopika’s post on the ‘Mad Men’ controversy – SAV said “Similarly in the Indian case of Titan Industries Limited v Ramkumar Jewellers ([CS(OS) 2662 of 2011]), the plaintiff had asked celebrity couple Amitabh Bachchan and Jaya Bachchan to endorse and advertise its range of diamond jewellery which was sold under the brand name Tanishq. The couple had assigned all the rights in their personality to the plaintiff for use in the advertisements in all media, including print and video. The plaintiff had invested huge sums of money in the promotional campaign. The defendant, a jeweler dealing in identical goods to those of the plaintiff, was found to have put up a hoarding identical to the plaintiff’s, including the same photograph of the celebrity couple displayed on the plaintiff’s hoarding. Since the defendant had neither sought permission from the couple to use their photograph, nor been authorized to do so by the plaintiff, the court held it liable not only for infringement of the plaintiff’s copyright in the advertisement, but also for misappropriation of the couple’s personality rights. The court thereby recognizing the couple’s rights in their personalities.”

Register of Copyrights Calls for a Complete Rewrite of Copyright Law (reported by Plagiarism Today)– Maria Pallante, the Register of Copyrights at the U.S. Copyright Office, has recently called for a complete rewrite of U.S. copyright law. According to Pallante, “The law is showing the strain of its age,” and requires the attention of Congress. As plagiarism today points out, Pallante’s proposals are centered around – what copyright holders should control in the digital age, performance rights of sound recordings, reduction of copyright term, an opt out provision for libraries and archives and other miscellaneous issues. 

German Parliament Votes To Protect News Snippets From Republishing– The German Upper House has finally passed an amendment to the German copyright law which will now provide auxiliary protection to extracts from press articles. This change shall prevent internet platforms from using publishers’ content without licensing (and payment) except for “single words” or “minimal extracts.” 

More about the Kirtsaeng v. John Wiley & Sons US Supreme Court case on parallel imports – http://www.ip-watch.org/2013/03/19/us-supreme-court-applies-first-sale-doctrine-worldwide/; http://www.ip-watch.org/weblog/wp-content/uploads/2013/03/Kirtsaeng-pdf.pdf 

Nation-states enter contentious patent-buying business (Reuters)– Patent competition in the United States is usually a fierce arena for private companies, but now the South Korean, French, Japanese and Chinese governments are entering the business too. They have set-up patent-acquisition companies, with the goal of helping domestic technology firms and possibly making some money in the process.