SpicyIP Weekly Review (16-22 June, 2014)

spicyipREVThe SpicyIP Story of the Week is that Roche and Cipla have been ordered by the Delhi High Court to engage in mediation. It was noted by Madhulika in the post that with the ruling, while an opportunity to evolve patent jurisprudence on a vital matter has been lost, this case may also bring with it a high possibility of settlement as the Delhi High court ruling was 50-50- with validity upheld in favour of Roche and Cipla was acquitted of infringement charges.

This week also saw Part 1 and Part 2 of the Whirlpool-Videocon Designs Saga by Gopika, where an important decision of the Bombay High Court was elaborately covered. Whirlpool had filed a suit for infringement against Videocon. Both of them were registered proprietors with whirlpool being the prior registrant. An important question that the court considered was whether the suit was maintainable against a registered proprietor under S.22 of the Designs Act. Part 2 looked at the various defences claimed by Videocon and the claim of passing off by Whirlpool. The two posts clarify some important aspects such as the scope of “any person” under S.22, Designs Act as well as the legislative scheme under S.6, Designs Act, and matters regarding passing off.  Gopika argued that on matters which required application of facts such as in the reasoning under the defense of novelty or the issue of passing off, there was a lack of clarity of why the Court decided to go down the road it did.

Devika then posted an analytical piece on the rights of tattoo artists, where she concluded- “If we allow tattoo artists to claim copyright separately over depiction of body art in video games, tomorrow artists might also claim infringement of copyright where an athlete flaunts his tattoos in a commercial (a situation that has been contemplated before) or where a tattooed athlete is depicted in a comic; in my opinion, allowing such claims would be stretching it too far and would also be unjust.”

I then posted on India’s statement at the WTO Council where India said that the path to innovation is Open Models and not IP. This strongly worded statement  by India outlined how the “narrow lens of IP” can stifle innovation, and described that other approaches (primarily ‘openness’) has more potential to kindle innovation, especially for developing countries.

Aparajita then posted on Disney obtaining a host of injunctions and damages for trademark and copyright infringement.

We then had a guest post by Tarun Khurana which looked at the recent Oracle v. Google US Federal Court decision which said Oracle has a copyright in the Java API, in the context of ‘what is copyrightable’. Tarun said that the precedent set by the instant case is bound to send a strong message down to every developer who has ever taken advantage of Java or any other coding platform software interface APIs.

Following this was Shamnad Sir’s piece on the Enercon Dispute which looked at three issues which the decision has raised. One of which is what happens when patent infringement is contended as a counterclaim when a patent has already been challenged in front of the IPAB. Another is potentially conflicting rulings  on validity from the IPAB which decides an earlier revocation proceeding, and a HC judge who decides the validity challenge (posed as defences in the law suit) at a later date, and  finally what happens to the various IPAB proceedings initiated by Enercon India. He then posted his piece in the Financial Express which argues that this Supreme court ruling more than amply illustrates that Indian IP law is neither anti IP nor anti MNC. That is, if one were willing to look at the law with a dispassionate fact based lens and not a tainted one.

Devika then posted on Google’s reaction to Peng! Collective, a German activist group’s spoof of Google products whereby products that were purporting to be Google’s response to public debate surrounding privacy and government surveillance were released by the group. Google responded by sending a Cease and Desist Letter, which Devika argued was against Google’s motto of ‘Don’t Be Evil’, as the spoof was clearly Fair use.

We then had Thomas covering two cases (Jockey International Inc v. R. Chandra Mohan and Pepsico Inc v. PSI Ganesh Marketing respectively)where punitive damages were awarded ex-parte for trademark infringement. Although the facts in both were similar, the damages awarded were different, creating room for questioning the basis on which such damages are awarded.

International Developments:

1)      IPKat reports that Canadian Courts have also been taking cognizance of the “Right to be Forgotten” ruling of the ECJ, with a Court granting an interim injunction against Google ordering it to stop indexing or referencing certain websites in its search results.

2)      The US Supreme Court has finally given its much-awaited Alice decision where it was held that a computerized trading platform used for conducting financial transactions is an abstract idea and is therefore not patentable.

3)      Tesla Motors, in the spirit of the “open source movement”, has made a Patent Pledge, by announcing that it will not initiate patent lawsuits against anyone who, in good faith, wants to use Tesla’s technology.

4)      The US Patents and Trademarks Office has cancelled the trademark of the Washington Redskins, as the term is disparaging to native Americans.


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