Innovation Patent

Creative IP Lawyering and Justice?

creativity is contagious

In a piece posted yesterday, I reflect on the theme of “Jugaad Justice” and link to a Mint op-ed written to commemorate the World IP Day.

In the Mint piece, I refer to a string of IP cases (mainly from the Delhi High Court), where judges impose a sort of “community service” on defendants in lieu of computing complex damages (as pay out to plaintiffs). I’d noted as below:

“In another series of remarkable decisions, courts ordered that rather than pay damages to IP owners, defendants accused of infringing IP rights donate money or contribute to social causes. Illustratively, in a trademark infringement case involving the Baba Zarda mark, courts ordered the defendant, a tobacco-chewing manufacturer, to install 150 spittoons in various hospitals in Hyderabad.

This wisdom was, to some extent, predicated on the sheer difficulty of determining appropriate damages in IP rights cases. And the fact that the costs of such determination may far outweigh potential benefits, particularly when one considers the complexity of valuing an intangible, the tribulations of long trials, and the paying capacity of the defendant.”

Apart from the Baba Zarda case, other notable ones are highlighted below:

Luxottica Sunglasses – The defendant was caught selling counterfeit Ray-Ban sunglasses and taken to court. The parties arrived at a settlement, where in lieu of damages, the defendant was asked to donate Rs. 10,000/- to a charitable organization and 500 pairs of unbranded sunglasses to the Blind Relief Association. The Court observing this remarked, “In my view, such innovative alternatives go a long way in serving the cause of the civil society. In cases like the one at hand, the companies such as the plaintiffs are not looking for pecuniary damages as their claim in pecuniary terms is miniscule, compared to their world wide operation, and the scale of infractions. Their concern is really, to maintain the integrity of the intellectual property i.e., the asset in issue.”

Tata Cyberquatting – The defendant found guilty of squatting upon the domain name was directed to perform social service as a volunteer at an eye camp organised by Tata Sons instead of paying damages.

Polo Ralph Lauren T-shirts/Vaseline Petroleum Jelly – As a settlement offer, the defendant was directed to donate the infringing clothes to an orphanage instead of destroying them. Similarly, counterfeit Vaseline but genuine petroleum jelly was asked to be donated to a non-profit organization in Ahmadabad.

It bears noting that in crafting these unique remedies, the court picked up on suggestions from the counsel. So, kudos to Pravin Anand (of Anand and Anand) for pioneering this trend!

On this note, may I please request those of you in the know to share more instances of creative IP lawyering with us. Also, if you could point us to instances of creative orders from the bench, innovative procedures etc deployed by the court or any other creative acts (involving IP dispute resolution and justice), we’d be very grateful. And hope to feature more such instances soon on the blog.

Shamnad Basheer

Shamnad Basheer

Prof. (Dr.) Shamnad Basheer founded SpicyIP in 2005. He's 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 Prof. Basheer joined Anand 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. Later, he was the Honorary Research Chair of IP Law at Nirma University and also a visiting professor of law at the National Law School (NLS), Bangalore. Prof. Basheer has published widely and his articles have won awards, including those instituted by ATRIP, the Stanford Technology Law Review and CREATe. He was consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also served on several government committees.

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