Weekly Review (4th Week of November)

We started this week with my post on the ruling of the United States District Court of New York that the Google Books Library Project was permissible fair use. Under the Google Books Library project, Google has scanned more than twenty million library books in their entirety from libraries such as the  New York Public Library, the Library of Congress, and a number of other university libraries. Google did not obtain or seek permission from the copyright holders prior to scanning the full text of their books and making snippets of them available through its search engine.  Therefore,  suit was filed by the Authors Guild alleging a violation of copyright. The Court held that while there was a prima facie infringement of copyright, the Google Books Library Project would fall within the fair use exception. This is because it satisfies three of the four conditions required to be satisfied under US law to qualify for the fair use exception.

Swaraj then brought to attention the International Trademark Association’s upcoming conference on the topic ‘Hot Trademark Topics in the MEASA Region’. The conference is scheduled to be held from December 9-10, 2013 at Jumeirah Emirates Towers Hotel in Dubai, United Arab Emirates. The conference will include three sessions on Public-Private Partnerships (PPPs), which are a key method of protecting trademarks in the region.

FeaturedImageContinuing in that vein, Shouvik brought us news of a discussion forum on ‘Pharma Bio Patenting in Europe’ scheduled to be held on December 16, 2013 at Pravin Gandhi College of Law, Mumbai. The forum is jointly hosted by GNA Patent Gurukul and  Pravin Gandhi College of Law. Participation in the forum is through confirmed registration along with registration fee on “first come first reserved” basis. The participation fee is Rs. 1000/- per participant with a discounted rate of Rs. 500/- for Patent Gurukul Alumni and Rs. 250/- for students.

Madhulika then posted on the pre-grant opposition filed by non-profit group, I-MAK against Gilead’s anti-viral drug Sofosbuvir. The opposition was on the grounds of lack of novelty Section 25 (1)(b), obviousness Section 25(1)(e), Section 3(d) and failure to furnish Section 8 details which are analysed in this post. Madhulika also points out the disparity in prices between the production of Sofosbuvir and its retail costs.

Aparajitha brought to our notice a petition whereby Pitambar Publishers along with the  Indian Reprographic Rights Organization have challenged the constitutional validity of various rules of the Copyright Rules 2013 as well as Sections 11, 12 and 31(a) post the 2012 Amendment. The rules that relate to the tariff scheme have been challenged for going beyond the limitations prescribed in the Copyright Act, thereby making it arbitrary and violative of Art. 19 (1)(g) of the Constitution. The Rules relating to the management of copyright societies have been challenged for being discriminatory.Finally,S.31 of the Act which deals with compulsory licensing has been challenged for violating the petitioners’ right to be heard and for conferring excessive, unguided powers to the Board.

Anubha reported on the CCI’s order on the Micromax- Ericsson dispute whereby Micromax claimed that Ericsson demanded unfair, discriminatory and exorbitant royalty for its patents regarding GSM technology. Ericsson had initially claimed that Micromax had infringed on its patents. They then claimed that Micromax should secure licenses for these patents on Fair, Reasonable and Non-Discriminatory Terms (FRAND Terms). When Micromax sought to enter into a licensing agreement based on these terms, Ericsson sent an agreement imposing royalty rates which were dependent on the value of the phone in which the product was used and not on the cost of the product itself. Micromax contended that this was arbitrary as royalty was to be charged on basis of value of technology/chipset used in the phone. Further, Ericsson made licensees enter into non-disclosure agreements regarding royalty rates prescribed by it. This, Micromax argued was discriminatory. The CCI completely agreed with Micromax’s arguments and ordered an investigation into the matter. The report by the DG post-investigation will be the indicator of the “way India’s first FRAND litigation will ultimately sway.”

Another events notification was brought to the readers, this time by Swaraj. It is the IP Leadership Forum 2014 on the theme “IP Challenges in today’s Turbulent Environment” to be held from January 7- January 9, 2014 in New Delhi.

Mathews reported on an ex-parte temporary injunction granted in the case of Vringo Infrastructure v. Xu Dejun. The temporary injunction was granted in favour of the plaintiffs as the three conditions of prima facie case, irreparable injury and balance of convenience were satisfied.  The similarities of this order with the CCI’s order in the Micromax Ericsson dispute were discussed as well.

We then had a guest post by Nishidh Patel, a final year student at RGSOIPL, IIT Kharagpur, who provided a detailed infogram with the differences between the 1999, 2002 and 2005 amendments to the Indian Patents Act.

Our first application for the 2nd Fellowship Series, Radhika Agarwal’s post on the WIPO Green, a new initiative to facilitate exchange of environment-friendly technologies. (For more information on the 2nd Fellowship see here.  To hear from the existing fellows click here).

Madhulika posted about the backlog and shortage of staff in the IPO in the context of order in Nitto Denko Corporation v. Union of India. The Delhi High Court has issued an order directing the IPO to file an affidavit indicating the state of affairs in the patents office regarding issuance of first examination reports and to disclose the year wise pendency of patent matters. The Court has also asked for the appointment of a 3 member committee (secretary DIPP, Chaitanya Prasad and a third party nominated by both of them) to look into whether or not all FER backlogs could be cleared within 3 years.

This week’s posts ended with a very entertaining tidbit by Aparajitha about the Samajwadi Party buying the rights to Billy Joel’s “We Didn’t Start the Fire”. The song can be heard here.


We had Achille Forler bringing to our attention that the song had been licensed to Samajwadi Party with the permission of Billy Joel. He also noted that such licensing of songs was a regular practice.


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