SpicyIP Weekly Review (26 July to 8 August)

unnamedOur SpicyIP Highlight of the (two) Weeks is Spadika’s fascinating two-part post on the Kuchipudi Copyright Conundrum, discussing a writ petition filed by a Kuchipudi dancer against the State of Kerala, with her first post covering the copyright issues and the second post covering performers’ rights issues. She discusses the copyright-ability of dance performances, specifically the issues with the use of ‘or otherwise’ in S. 2(h) of the Copyright Act, the infringement of the performers’ right to make visual recordings of their works under S. 38A, and the issues with the law thereof. She concludes by noting that the law, as it stands, appears to be against the favour of the applicants – the applicants being school children, who are not profiting from the performance, but simply want to control who watches and profits from it.

We started this fortnight with great news from Shamnad Sir – the Supreme Court had dismissed the government’s appeal in the IPAB SLP matter, thereby settling the matter finally. This was followed up by a guest post from Sejal Agarwal and Paazal Arora, students of the ILS Law College, Pune, wherein they discuss the increasingly common practice of not including a ‘Proof of Right’ in patent filing applications. They argue that the most common defence taken by institutional applicants, that the pre-existing Employment Contract sufficiently provide a Proof of Right, should not hold up because submission of Form 1/Assignment Deed is compulsory to safeguard the interests of inventors.

The next post was an absolutely fascinating two-part post by Ashwini Vaidialingam of NLSIU, Bangalore, on the issue of taxation of the transfer of the ‘right to use’ intangible goods. She places this discussion in the context of a recent decision by the Bombay HC in Tata Sons v. State of Maharashtra and the corresponding Trade Circular issued by the Commissioner of Sales Tax, Mumbai, declaring that VAT is applicable on transactions involving the transfer of right to use intangible goods, even if the rights are transferred to more than one person. She first talks about the immediate consequences of the circular, and then moves on to a discussion of the VAT and Service Tax regimes, arguing that the regime as per this case creates a double taxation issue and violates the VII Schedule. She highlights the fact that the ‘aspect theory’ of indirect tax does not apply to the issue at hand, and concludes by stating that the imposition of service tax on transfers of the ‘right to use’ in addition to the levy of VAT is unconstitutional.

This was followed by Gopika’s post on the revocation of the patent granted to Hoffman LaRoche on Valganciclovir, an anti-retroviral drug used for the treatment of active cytomegalovirus retinitis (CMV) infection. She points out that the Controller here held, in deciding the weightage to be accorded to them, that while expert evidence could be used for understanding prior art documents, it should not be relied on as prior art, and that expert evidence unlike research documents were not impartial documents. She then discusses the Controller’s decision that the patent in question was anticipatable by prior art, and was a ‘mere use of a known process’. She concludes, as the Order does, with a discussion of the Controller’s decision to hold NGOs to be ‘persons interested’ under S. 2(1) (t) of the Patents Act, thereby giving them the locus standi needed to file the application.

Gopika followed this up with her second post of the week on the Supreme Court’s discussion in the Jyoti Kapoor v. Kunal Kohli litigation, where the Court dealt with questions of copyright and breach of confidence. She highlights the importance of this judgement for writers, noting that this decision should boost the confidence of many writers in our country who are strapped for funds and wary of legal battles. Ms. Kapoor had here sent a registered script for a film titled ‘R.S.V.P.’ to Mr. Kohli, but after the failure of negotiations with him, had finally entered into an agreement with another production house. She then learned that Mr. Kohli was filming a movie titled ‘Phir Se’, which had striking similarities with her script, and sued him for plagiarism and infringement of copyright. After going through the whole gamut of courts and appeals, the Supreme Court here finally held Mr. Kohli to be infringing on Ms. Kapoor’s script, and ordered him to pay Rs. 25 lakhs as compensation and to credit Ms. Kapoor for the story.

This was followed by my post on the John Doe order granted by the Bombay HC to Phantom Films for the blocking of websites that may be pirating its film, ‘Masaan’. I comment on the minimal evidence and analysis that seems to have been utilised for the order, and the legal infirmities thereof. I conclude by noting that Indian courts seem to be making a trend of granting John Doe orders for such issues, even without meeting the basic standards for the same, which is likely to only lead to greater issues further down the line.

This was followed by Anubha’s post announcing the Call for Participation for the Global Congress on Intellectual Property and Public Interest, to be held on 15th to 17th December in New Delhi, being hosted by Centre for Internet and Society. The thematic tracks at the Congress this year are 1) Openness, 2) Access to Medicines, 3) User Rights, 4) IP and Development. Matthews’ followed this up with a tidbit about a conference organised by Anand and Anand and Ignition on legal and compliance challenges for companies held in Delhi on July 31st.

This was followed by Balaji’s excellent post on the twenty second session of WIPO’s Standing Committee on the Law of Patents, detailing the Indian delegation’s statements. He notes that this seems to have been a rather productive week for India at Geneva, concluding by discussing why exactly statements such as the ones made by the Indian delegation here are important.

This was followed by our last post for the fortnight, a short note on the debate regarding the State of Odisha’s rumoured GI plans for the ‘rasgulla’ co-authored by Latha R. Nair, a Partner at K&S Partners, and myself. We discuss the essential object and purpose of GI legislations, the legal requirements for GIs under the Geographical Indications of Goods (Registration and Protection) Act (‘Act’), 1999, testing Odisha’s claim against the same, and the current status of the ‘rasgulla’ as a dish with a pan-Indian flavour. We discuss the the consequences of an application for a GI for ‘rasgulla’ versus an application for the ‘Pahala rasgulla’, and more importantly, and how it will affect producers of the sweetmeat across the nation.

Finally, we must make mention of two posts by the IPKat blog, discussing the claims of the Council of Scientific and Industrial Research’s Traditional Knowledge Digital Library regarding the patent claims it had thwarted. After detailed research into the claims made by the CSIR-TKDL, the authors of the post conclude that a majority of them are falls, and are regarding cases where the role of the information provided by the TKDL was minimal, if not entirely irrelevant. In fact, on a further analysis of a total 23 such claims made by the TKDL, the authors found that 15 of the 23 were similarly false.

International Developments

  1. The second instalment of TPP leaks by KEI, from the negotiations in Hawaii.
  2. The International Federation of Phonographic Industry is looking into cutting down on safe harbour provisions.
  3. Michael Jordan loses fight over trademarks in China.

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