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.

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