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Judging Judges: Reviewing Justice Singh’s IP Jurisprudence


justice 2In this guest post, Prashant Reddy reflects on the major decisions by Justice Manmohan Singh of the Delhi High Court in the field of intellectual property law and on the larger question of criteria for appointment of persons to the position of Chairperson of the Intellectual Property Appellate Board.

Warning: Very long post ahead.

Title: A review of Justice Manmohan Singh’s judgments

Author: Prashant Reddy

As reported by Shamnad recently, the grapevine has it that Justice Manmohan Singh of the Delhi High Court is the prime contender for the position of Chairperson of the Intellectual Property Appellate Board (IPAB). Before his appointment as a judge of the Delhi High Court on April 11, 2008 he was primarily an IP lawyer, as per his profile on the website of the Delhi High Court. Appointing IP lawyers to the bench can be a double edged sword. While there is no doubt that IP lawyers are likely to bring a certain degree of expertise to the bench, there is a perception in some circles that such appointees also tend to reflect a pro-plaintiff bias because the most successful IP lawyers are usually the plaintiff lawyers and it is these successful lawyers who make the transition to the bench.

Several years ago, a comment left on one of my posts critiquing a judgment by Justice Manmohan Singh, had claimed that “Justice Manmohan Singh is more or less a pro plaintiff”. I don’t believe such generalisations serve any purpose. A judge should be judged by the quality of his judgments. Over the years, I’ve covered several judgments by Justice Manmohan Singh on this blog, as have other SpicyIP bloggers and I would like to discuss and link back to a few of the most memorable, or should I say controversial, judgments that he has delivered on various issues of IP law.

Exhaustion of IP rights under the Copyright Act and Trade Marks Act

One of the most critical issues in IP law today is the question of exhaustion of IP rights. For example, once a copyrighted book or trademarked article is sold to a retail customer, the IP owner usually “exhausts” its right to control the further circulation of the good in the market. So the buyer in such a case can resell the article to whomsoever. The principle of exhaustion is the bedrock of the second hand economy. Over the last 6 years, Justice Manmohan Singh has the opportunity to decide two cases dealing with the principle of exhaustion– one on copyright law and the other on trademark law.

In a copyright case from 2010, the international publishing house, John Wiley, sued an Indian reseller who was exporting Wiley’s low-cost Indian editions to foreign countries like the US. The reseller argued that under the Copyright Act, Wiley had exhausted its right in the physical copy of the book once it was placed in the market for circulation – Section 14 of the Copyright Act is quite clear on this point. Despite the law being crystal clear on the point, Justice Manmohan Singh ruled in favour of the copyright owner and issued an interim injunction restraining the Indian reseller from exporting low cost Indian editions to foreign jurisdictions. In my opinion Justice Singh’s judgment was very, very poorly reasoned – I’ve explained the various problems with the judgment in this post over here written 6 years ago. My main grouse with the judgment is that it completely misunderstands simple legal principles of contract law like ‘privity of contract’ apart the doctrine of exhaustion. As a result, a completely legitimate business was shut down. As far as I’m aware, this judgment was never appealed and the trial dragged on for several years.

A couple of years later, Justice Manmohan Singh had an opportunity to consider exhaustion under the Trade Marks Act, 1999. Section 30(3) of this legislation makes it quite clear that the trademark owner exhausts the right to control the further sale of a trademarked article once it is placed in the market with the consent of the proprietor. Justice Manmohan Singh was faced with interpreting this provision when Samsung began to sue several Indian resellers who were purchasing genuine Samsung printers from countries where the printers were cheaper than in the Indian market and taking advantage of the price arbitrage to sell the imported printers at rates lower than Samsung was selling such printers in India. Justice Singh had to decide whether such parallel imports were legal and whether the trademark owner exhausted its rights once it placed the goods on the market in the foreign market.

Justice Manmohan Singh ruled in favour of trademark owners in a rather surprising judgment which had the effect of shutting down the business of resellers who were selling genuine Samsung goods! On appeal, the Division Bench comprehensively and conclusively over-ruled Justice Manmohan Singh. Sai Vinod’s post on the judgment can be accessed over here. The Customs Board simultaneously published a circular making it very clear that parallel imports were allowed under the Trade Marks Act – Justice Manmohan Singh subsequently passed strictures against one of the revenue officers for certain comments made in a file noting related to the circular and his previous judgment – I had written it about here.  (An appeal before the Supreme Court is still pending.)

Copyright and the internet

One of Justice Manmohan Singh’s big judgments on the issue of copyright infringement and liability of internet intermediaries was the MySpace judgment from 2011. This was the first case in India to deal with the thorny issue of intermediary liability in cases of copyright infringement. MySpace, which was a YouTube type platform, was sued by T-Series for copyright infringement. Justice Singh had to rule on two very important legal issues – the first was whether MySpace was liable for copyright infringement under the Copyright Act as the same does require an element of knowledge. The second issue was the interpretation of the ‘safe-harbour’ created by Section 79 of the Information Technology Act for internet intermediaries. Justice Singh ruled in favour of the copyright owner on both issues. Amlan has written two posts over here and here criticising the judgment. Ananth Padmanabhan had written a more detailed piece for IJLT also criticising the judgment – a lot of the criticism is warranted in my opinion. As far as I’m aware, this judgment was never appealed and the trial dragged on. Luckily for the internet industry, Justice Singh’s judgment in this case was neutralised by a new safe harbour provision in the Copyright (Amendment) Act, 2012. If his judgment hadn’t been effectively over-ruled by the Copyright (Amendment) Act, 2012, intermediaries like YouTube would have been under very high legal risk.

Another problematic judgment by Justice Manmohan Singh on the issue of copyright infringement on the internet is the case of Star India Pvt. Ltd. and Ors. v. Roy Ma and Ors. In this ex-parte judgment, he ordered the blocking of 150 websites which were allegedly streaming Star TV’s signals. At no point of time does he mention in the judgment that he has actually viewed all 150 websites – how can a judge take the Plaintiff’s word at face-value and block 150 websites without actually viewing the websites?

The LG Case and the IPR (Imported Goods) Enforcement Rules, 2007

This LG case involved an interpretation of the IPR (Imported Goods) Enforcement Rules, 2007. These rules allow Customs Officers to restrict the import of any goods into the country if such goods are found to infringe copyright, trademark or patent rights. In this case, the Customs Department had issued notice to LG because a patentee had claimed that LG’s imports were violating its IP rights. LG responded by filing a civil suit seeking declaratory relief before the High Court and the case was marked to Justice Manmohan Singh. In my opinion it was as clear as day that the suit should have been thrown out because such notices from the Customs Department can be challenged only before a writ court and not a civil court – there is a clear rule in the Customs Act against instituting civil actions against the customs department. I had blogged about it over here.

Far from dismissing the suit, Justice Manmohan Singh interpreted the IPR Import Rules, 2007 to hold that Customs Officers could not adjudicate whether a patent is infringed under the rules. This was a stunning misinterpretation to say the least because the rules clearly gave the Customs Department the right to adjudicate such disputes. On appeal, the Division Bench passed a short, concise order over-ruling Justice Manmohan Singh’s order and held that the Customs Department had every right to decide the issue of patent infringement under the rules unless it felt that the case was beyond its capabilities. Our post on the Division Bench’s judgment can be accessed here. The saga involving the LG case doesn’t end here – Justice Manmohan Singh later also issued a declaratory judgment ruling that LG did not infringe the patent in question – strangely he did not analyse whether the claims of the patent were infringed despite the suit being filed under the Patents Act. I had written about that judgment over here.

The pharma patent cases

Given that the Delhi High Court is the hotbed of pharma patent litigation, it should not surprise anybody that a fair number of these cases landed before Justice Manmohan Singh.

Let me begin with the famous Hoffman La Roche v. Cipla – the first pharmaceutical patent infringement case to be decided in India post-TRIPS after trial. Justice Manmohan Singh had delivered the final judgment in this case – he ruled that although the patent was valid, it was not infringed because Cipla was allegedly manufacturing a different polymorph version of the patented compound. Shamnad had written a long post outlining the many jurisprudential flaws with the judgment. On appeal the Division Bench conclusively over-ruled Justice Manmohan Singh’s judgment – especially on the point of Cipla’s polymorph defence. The SpicyIP post on the DB ruling can be accessed here. (An appeal before the Supreme Court is still pending.) Other judgments of the Delhi High Court in the Merck case have also conclusively overruled the polymorph defence put forth by generics companies.

While Roche v. Cipla was certainly one of the more widely publicised pharma judgments by Justice Manmohan Singh, it certainly isn’t the only such case where a judgement by him has come under criticism. In 2012, Justice Manmohan Singh passed an ex-parte interim injunction restraining Ind-Swift from infringing a patent belonging to Issar Pharmaceuticals. I had written a post outlining the many flaws with the patent, namely the fact that the patent had been granted for a pharma invention prior to 2005. A mere reading of the patent should have set off alarm bells. As documented in a post last year by Balaji, that ex-parte injunction hadn’t been vacated even 36 months later.

There is then also the Dastinib case, where Justice Manmohan Singh passed an interim injunction against two Indian pharma companies restraining them from infringing BMS’s patent over Dastinib. Spadika had written a post documenting the problematic issues with Justice Manmohan Singh’s judgment over here. Apart from the issues that she raised, I would like to point out that the High Court should have simply waited for the trial to be completed – why pass another interim order 6 years after the suit had been instituted?

There was also the Novartis v. Cipla patent infringement case over Onbrez where Justice Manmohan Singh restrained Cipla from infringing 5 patents belonging to Novartis. In my opinion, the judgment in this case was perfectly justified because Cipla’s legal strategy was quite silly and it had basically invited an injunction.

The controversial judgment on biosimilars

In my opinion this was one of the most controversial judgments of Justice Manmohan Singh. This judgment was promptly stayed by the Division Bench. Notwithstanding the stay, the judgment is shocking at so many levels.

The judgment was passed in a lawsuit filed by Genentech against the DCGI, Biocon and Mylan over the launch of a biosimilar of Herceptin. There are several issues with this judgment of Justice Manmohan Singh. Let me mention just two. The first is the judgment’s creation of a ‘data exclusivity’ regime out of thin air. I’ve written in favour of a data exclusivity regime over here (although not in the context of biosimilars) but I had supported such an argument by proposing an amendment to the law. A judge cannot create such a regime through an interpretation of the law.

Apart from creating a data exclusivity regime through very flimsy reasoning, there is also the larger question of how the lawsuit was even admitted. Regulatory decisions of the DCGI can be challenged only before a writ court – Genentech however had filed a suit for declaratory relief under the Specific Reliefs Act. We’ve seen LG adopt a similar modus operandi in the case discussed earlier in this post. Like in the LG case, Justice Manmohan Singh ruled that he had the jurisdiction to hear the case. Section 37 of the Drugs & Cosmetics Act clearly provides immunity to the DCGI from any liability in civil suits. This is a standard clause in all legislation – you cannot sue the Government of India or any of its officers in a civil court. Justice Singh however dismisses this point with just these three lines: “As far as bar of Section 37 of the Act is concerned, as argued by the defendants, there is no force as the suit has not been filed against any Government employee who may have involved in the process of approvals.” In plain English, he’s ruled that Section 37 protects against suing officers in their personal capacity and not as officers of the law. This is completely contrary to the wording of the provision which reads as follows:

“37. Protection of action taken in good faith. —No suit, prosecution or other legal proceeding shall lie against any person for anything which is in good faith done or intended to be done under this Act.”

Going by Justice Manmohan Singh’s interpretation we can now sue the Patent Office and the DCGI and the Customs in district courts across India for administrative decisions taken by these officers.

There are several other legal issues in this judgment that Rahul has highlighted in his post here. Hopefully the Division Bench will overrule this judgment by Justice Manmohan Singh.

The problematic damages jurisprudence – Interim damages and Punitive damages

Over the last couple of years, Ericsson has been filing multiple patent infringement lawsuits against Indian mobile phone companies. The Delhi High Court has passed several strange orders in this series of litigation. Last year, Justice Manmohan Singh passed a judgment basically ordering Intex to pay Ericsson ‘interim damages’ even before the trial had started – this was an incredible order because there is no such concept of ‘interim damages’ in India or under common law. I had written a lengthy guest post for SpicyIP on this issue over here. I have been informed the Division Bench has stayed the operation of this judgment on appeal but am unsure of the current status of the case.

The second problematic damages related judgment of Justice Manmohan Singh is the Sholay judgment. I’ve written about the judgment over here – in this case the judge awarded the plaintiff punitive damages of Rs. 10 lakhs. In my opinion, the entire conclusion regarding punitive damages was flawed – I explain in my post the reason why the judgment was jurisprudentially flawed. Most surprisingly however Justice Singh granted punitive damages, when the plaintiff apparently conceded that it was unable to prove actual damages – how then does a court calculate an amount that is punishing enough to be punitive?!

The Swatanter Kumar case

Apart from the several problematic IP judgments listed above, I would also like to take an opportunity to point out to a very problematic non-IP judgment by Justice Manmohan Singh. This judgment is the gag order passed by Justice Manmohan Singh in a defamation lawsuit filed by Justice Swatanter Kumar against a former law clerk of his who had accused him of sexual harassment and also some media outlets who had reported the story. Justice Kumar, a former Supreme Court judge was heading the National Green Tribunal at the time and the scandal caused significant embarrassment to him and the entire Supreme Court.

When the national media began reporting on this case 24/7, Justice Swatanter Kumar filed a defamation lawsuit seeking a gag order on the basis of the Supreme Court’s judgment in the now infamous Sahara case – the SC had basically legitimised gag orders in such a case on the ground that it was merely postponing reportage and not banning it. A battery of Senior Advocates appeared for Justice Swatanter Kumar before Justice Manmohan Singh who then passed a very vaguely worded injunction restraining the media from reporting on certain aspects of the case. Although a blanket ban wasn’t imposed the vaguely worded order was enough to chill the reportage because reporters weren’t quite certain of the boundaries.

I had written a piece for Legally India at the time pointing out the most obvious flaw in Justice Manmohan Singh’s judgment – the Supreme Court had located the power to pass a ‘gag order’ or ‘postponement power’ under the contempt powers of the High Courts – which means that a contempt petition had to be filed before the High Court and allocated to the roster judge who was authorised to hear such contempt petitions – a judge cannot pass such orders in a civil suit for defamation. Yet, that is exactly what happened when Justice Manmohan Singh issued the gag order while sitting as a judge on the original side of the High Court. Justice Kumar continues on the NGT and the former law clerk, as far as I’m aware, has received no justice from the Supreme Court.

Some closing thoughts

As is obvious from this post, I think there are serious legal issues with the many landmark IP judgments issued by Justice Manmohan Singh. Whether or not he is appointed as the Chairperson of the IPAB will now be decided by an appointments committee comprising a majority of members from the judiciary as mandated by the Madras High Court in the case of Shamnad Basheer v. Union of India. I have no clue of the criteria that will be used by this committee to decide the suitability of a particular candidate for the post of the Chairman of the IPAB.

 

14 comments.

  1. Anonymous

    Each of the cases highlighted in your article are on controversial topics where the decision could potentially have gone either way – that is why most of the decisions cited here went to the DB and/ or to the Supreme Court. A good Judge doesn’t necessarily have to be right all the time and can give judgments which are overturned in appeal. For instance, if the Supreme Court overturns the Samsung DB decision, would Justice MM Singh suddenly become an appropriate candidate for the IPAB?

    Justice MM Singh is by far the most prolific writer of IP decisions and most of his decisions on trademark law remain untouched. They are very sound decisions which are decided in a matter of minutes. Ask any IP lawyer practicing in the Delhi High Court – it is a pleasure appearing before him in an IP case – you just don’t have to deal with the basics. If he becomes the IPAB Chairman, it will probably be the best thing that will happen to that tribunal.

    It is quite clear that SpicyIP loves Justice GS Patel even though his decisions are also jurisprudentially flawed and are stayed/ overturned all the time. Flair with language is often confused with flair with law.

    Reply
  2. XYZ

    I think that J. Singh is possibly the most ‘over-ruled’ Judge. No doubt that some lawyers would be happy to appear in front of him since he loves giving ex-parte orders and orders without understanding the possible harm that defendants may suffer. In my view, he does not come out of his trademark jurisprudence mindset and always thinks that principles of TM and patent jurisprudence are exactly same.
    A trademark case or a copyright (piracy) case are very different for purposes of ex-parte orders when compared to pharmaceutical patent cases (where defendants are not some fly by night operators); so why this need for issuing ex-parte orders without issuance of papers to the pharmaceutical defendant?
    Most other high courts are very, very wary of issuing ex-parte injunction orders in patent cases but will issue ex-parte injunction orders for piracy cases?

    I also agree with Prashant here on the biosimilar case. His position of ‘creating’ a data exclusivity regime- when none exists both statutorily and judicially, is completely wrong.

    Additionally, what about the conflict of interest issue – when his family member is very closely aligned with one of the biggest IP Firms of the country?

    Cheers:
    XYZ

    Reply
  3. Anonymous

    Most of Justice Singh’s trademark decisions do not get overruled. As regards patent cases, most Judges are faltering when it comes to patent cases. I am yet to come across a patent law decision which is flawless. The jurisprudence is unsettled and some may agree and others may disagree. That clearly can’t be the basis of deciding whether a Judge should be considered for candidature to a specialist Tribunal.

    Almost every judge in the Delhi High Court acknowledges in open Court that Justice Singh is the only specialist IP Judge in the Delhi High Court. I am not sure if any of you have proposed any names from other Courts but I am not aware of any Judge who currently has better credentials (and is available) than Justice Singh to take up the post.

    As regards him being the most overruled Judge, I beg to differ. His trademark judgments are almost never overruled. Most other Judges in the High Court do not want to decide the controversial issues that arose in the Roche v Cipla and the Roche biosimilar case precisely because of this reason – they fear being overruled. The Roche v Cipla decision shuttled between 7-8 different Judges before it eventually landed up before Justice Singh who took the bull by the horns and heard the matter at length. Just because a Judge is willing to decide a controversial issue and is eventually overturned (sometimes), he cannot be burnt at the stake for it. This is the reason why most Judges do not want to touch cases like Roche v Cipla. Please name another Judge who has decided as many controversial IP issues as Justice Singh has done. This article itself is a testament to the number of difficult decisions in unchartered territory taken by him. I guess what you are suggesting is that you would rather see cases rot in Court for years (and patents expire) than have some application of judicial mind (which some may agree with and some may disagree with).

    As regards the issue of grant of ex – parte orders, his grant rate is certainly not more than other Judges. Further, the rate of his judgments being overruled is also not more than his brother Judges. I have seen him denying ex – parte injunctions in many cases – one only has to be in his Court long enough.

    As regards him being pro – Plaintiff, every important Judge is categorized in one category or the other based on a few decisions – Justice Bhat was classified as pro – generic (till he surprised everyone with the Merck decision), Justice Sridevan as being pro – generic and pro – Defendant, Justice Muralidhar as being pro – generic etc.. This classification is really meaningless.

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  4. XYZ

    I think that J. Singh ordering that a polymorph is not covered in the compound claim is sufficient for closing my statement on his thought process.

    I myself admitted that he comes with a Trademark mindset, so, I am NOT questioning his TM orders/ understanding at all.

    As for the Biosimilar case – it was NOT him taking the bull by the horn rather it was his obstinacy to take this case and keep it with him and then issue an order almost 2 years after the original injunction order had been issued by HIM. As I see it (you can check) it was he who gave the first ex-parte injunction in the biosimilar case in Feb 2014 and then kept on this matter – despite multiple roster changes (as part heard) for 2 years to ultimately issue a decision which he could have issued in July/ Aug 2014.

    I see that you have still not commented on how and why he came with the data exclusivity regime or why he thinks that writ is not the right remedy or (in the Cipla/ Erlotinib case) how a polymorph cannot be covered in the compound claim.

    His rate on granting ex-parte injunctions (in patent cases) is much higher – mind you, I have nothing against his other patent orders like how a IPAB filing becomes a basis for filing infringement suit etc. (though I may not agree with his rationale) but his keenness to issue ex-parte injunctions against named independent directors, officers of generic companies while not asking even once- why not make the generic company as first defendant OR (God forbid) ‘no ex-parte injunction, let defendant be present in 48 hours (something that HC of Bom does almost always in patent cases) is what I’m not comfortable with.

    For all his TM/ Copyright knowledge, he is / was free to issue any number of ex-parte orders IF he believed, based on the plaint, that the defendant is some small time/ no-name fly by night operator.

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  5. Abc

    “You cannot sue Govt in a Civil Suit “….. Pls read Section 9 CPC. No bar in suing Govt in Civil Suit. Also, y is Section 80 in CPC? And liability of Govt servant is diff from challenging decision of Govt servant in Civil court.

    Reply
  6. Prashant ReddyPrashant Reddy

    @ Anon – 1:15 PM.

    Let me begin by pointing out the factual inaccuracies in your comment.

    I’ve criticised Justice Patel’s judgments, even the well written ones. Take for example his judgment in the CTR v. Sergie case: https://spicyip.com/2015/11/ctr-v-sergi-interim-injunction-or-mini-trial.html

    So please do your research before making generalised comments.

    Regarding your assertion that several of the judgments discussed in the post could go either way – I would love to read your analysis. Why don’t you send SpicyIP a guest post on the issue, I’m sure they would love to carry it. The John Wiley case, the interim damages cases and the polymorph defences are simply indefensible. The judge has completely misunderstood basic legal principles in all these cases. As for his judgments on the biosimilars issues, I am going to be writing a few detailed posts on the judgment – the errors in law are simply jarring.

    As for your point on classifying judges as per their ideology – I agree its a useless exercise, which is why I made it a point to pick on the judgments which were horrendously wrong.

    Of course, it would be unfair to blame only a judge for the errors in his judgment – I think the lawyers arguing before him have to share a big portion of the blame. I think the quality of lawyers is perhaps one of the big reasons that the Bombay High Court does a much better job than the Delhi High Court when it comes to quality jurisprudence.

    Regards,
    Prashant

    Reply
  7. XYZ

    Another gem from the same Judge (in the recent Ericsson) order:
    “Further, it is a well settled principle of law that in order to confirm whether a device is infringing in nature in respect of essential patents, demonstrating / establishing compliance with the concerned standard by a device is sufficient,”

    I am not sure of which patent law principle is he talking where a note to Standard setting body complying with a technical standard is equivalent to show infringement – which in my limited reading- would require a claim chart for the claim granted in India and then comparing it to the allegedly infringing device.

    The declaration may not have any reference to the Indian claim – in that scene, how does this Judge look at infringement?

    Regards,
    XYZ

    Reply
  8. Anonymous

    These comments are misleading. Each judgments you are talking about are bedrock of IP jurisprudence. Mr. Singh has made all of our IP lawyers proud that not merely hes good IP judge but also outstanding Civil and Arbitration judge. Its a matter of shame that Mr. Reddy who proclaims himself to be ardent critics of him and his bunch of team as xyz and other anonymous people are making mockery of some who is demi god to the justice delivery system. Mr. Singh is known for his clear understanding of just and unjust. Who Mr. Reddy to lament or for that matter Mr. XYZ to lament. May I tell you that the entire High Court will lament and entire fraternity will suffer upon his retirement. These comments are misleading and at are hands of vested rights. Please open each of these judgments which have been commented upon and I can challenge noone can say that the decision making, reasonings and logic are wrong. Overuling? eh? what are you talking about… John willeys decision was decreed, John wileys decision was reported in Fleet Street Reports. My space decision lead to amendment in IT law and never been overruled. The Lgs case is the approach he took from the worldwide view that custom officials are not experts in judging the invention. I have point wise answers to Mr. Reddy, a so called self styled learned man whom i consider as a sheer corridor monger has to say about Mr. Singh.

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  9. Anonymous

    Mr. Singh is the ray of hope of every litigant for the justice. By calling him with these words done by Mr. Reddy is shameful. The acceptance of being IP judge is the benefit to the IP fraternity by his service and he is doing favour to us and not that IP community is doing any favour to Mr. Singh. But who can teach Mr. Reddy. He can answer everything with condemnation and in foul words by being disrespectful not merely to the person concerned but person writing too. Its like saying sachin does not know cricket. But on the contrary he loves cricket, lives for cricket and besides being a badsman which is IP. Hes an all rounder my friend Mr. Reddy. So your comments are too small before him and you are not actually reducing the sunlight of the sun but actually with your words condemning the sun who is source of energy for everyone and is worshipped like god.

    Reply
  10. Prashant ReddyPrashant Reddy

    Dear Anons (2:01 & 2:47),

    I don’t believe in hero worshipping judges – like all other public servants, they are accountable for their decisions.
    I am not sure why you have accused me of being a “corridor monger” – I hope its not a bad word.
    Last but not the least, the fact that you chose the cloak of anonymity even while praising a judge says a lot………

    Regards,
    Prashant

    Reply
  11. Deepveer Reginath

    I do not understand why all this is being taken so personally. Mr. Reddy’s criticism is sharply worded, but there’s nothing wrong with that in itself. His analysis is based on a close reading of the body of the Judge’s work ahead of his proposed or impending appointment to the IPAB. Mr. Reddy does not suggest that every judgment must be flawless (quite the reverse), but at the broadest level I believe he takes issue with a judge being jurisprudentially adventurous again and again, and he questions the basis for this approach. A response to this level of criticism is not best achieved by slagging Mr. Reddy or SpicyIP, or by accusing them of playing favourites.

    As to Justice Patel, it’s hardly a fair comparison, since he just doesn’t have the same body of work yet to make a meaningful comparison. He may be given to an attractive turn of phrase, but no one is suggesting that he is always right. Indeed, as Mr. Reddy says, this is not even expected. But it’s equally unfair to say that his judgments (presumably in IP law, since that’s what we’re discussing) are stayed/over turned “all the time”. Meaning every single one? Wrong. So which one exactly? If it’s the patent case, remember that Patel stayed his own judgment to begin with, acknowledging that it deserved testing in appeal. In other branches of law, some may have been stayed or reversed, but to which judge does that not happen? And what about the ones that were upheld?

    And that’s my real issue with this article. Mr Reddy points to some decisions by Justice Manmohan Singh and holds them up as examples of deeply flawed reasoning. But that’s surely not the entirety of the judge’s body of work (even Reddy does not suggest it is). What troubles me is this: is Mr. Reddy saying that the body of Justice Manmohan Singh’s decisions is entirely diminished because of these few examples of ‘wrongness’ he sets up? What of the decisions that were right and were upheld? It might require a separate post, but I don’t think it would be very difficult to track down all his reported decisions. I would be very surprised if his reversal rate is anywhere near 50%. It’s probably much, much lower, especially in Trade Mark and Copyright law.

    And here’s a fundamental flaw in the responses to Mr. Reddy: to assume that a decision of the Supreme Court or Appeal Court is always right. That is just untrue. There is no shortage of examples of thoroughly confused and even downright wrong decisions of appeal courts and yes, of the Supreme Court too.

    So when Mr. Reddy opens with this: “I would like to discuss and link back to a few of the most memorable, or should I say controversial, judgments that he has delivered on various issues of IP law,” I must ask why? Why not instead look at the body of work overall and assess that? If you accept that even the best Judge is likely to be reversed about 50% of the time, then why focus on only these?

    Reply
  12. Deepveer Reginath

    BTW, before anyone goes off on a rant, I am emphatically NO fan of Justice Patel. I do believe he gets much too carried away with his clever language and needs to dial it down — a lot. Sure, it has pizzas and oomph to some, but that’s not what lawyering or judging is about. Shot for shot, Justice Gupte’s IP judgments are far, far better and much more precise — in any branch of IP law. I have tons of issues with his CTR/Sergi patent approach (evidently his first and only) and even with some of his other decisions (I thought the Shallaki one was plain wrong).

    Reply
  13. Prashant ReddyPrashant Reddy

    Thank you for your detailed comment Mr. Reginath.

    The judgments covered in this post were mostly cases which I’ve been writing about for the last six years. On SpicyIP, the focus is on cases which are setting new law or pushing the boundaries of existing case-law. As you will agree, it can be quite boring to cover the run of the mill judgments that are delivered ex-parte. Cases which are contested are the most interesting, especially when the contest is on issues of law and not fact. I think these are the cases which really test the mettle of judges. These judgments which I have highlighted here are only a sub-set of bad orders – I could dig out more. I’ve highlighted these because they represent some of the most troubling judgements on the IP issue. Take for example, the issue of ‘privity of contracts’ in the John Wiley judgment or the manner in which the LG case was handled. All of these are very simple issues. Its distressing to see a High Court judge get them so completely wrong.

    If you or anybody else would like to cover the good judgments, I’m sure SpicyIP would be willing to carry such a post if you contact them. I look forward to reading such a post.

    Best Regards,
    Prashant

    Reply

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