SpicyIP Weekly Review (July 25-30)


The topical highlights of the week were Professor Basheer’s follow up piece on the John Doe order for ‘Dishoom’ and Rahul’s analysis of this order. As Professor Basheer had noted in his previous post, Eros was earlier denied a blanket John Doe order and was told that a better researched, duly verified and authenticated affidavit could be taken up for consideration. As a result of this censure, Eros came back with an affidavit, in line with the order and was granted a narrow John Doe order. The order categorically compels the ISPs to clearly mention on the blocked page/URL as to why the blocking is being effected and as also to list out all details of the order pursuant to which they are so blocking, notes Professor Basheer.

In Rahul’s post, summing up the path breaking order given by Justice Patel, he notes that the order could effectively transform the adjudication of John Doe orders in India from a plaintiff-driven process to an exercise in reconciling competing interests of the parties. Rahul goes on to explain why the order is so significant in the Indian IP jurisprudence. It not only lays down a 3-step verification process by requiring both the commissioned agency of the plaintiff and its lawyers to verify each of the links and present the same to the court by way of sworn affidavit but also bring in additional safeguards in the form of restricted blocking.

The thematic highlight of the week was no doubt Shan’s two part post (see here and here) on the hitherto little known interface between Olympic Games and IPRs. In the first part of the post, she discusses the implication of Rule 40 of the Olympic Charter, which was amended in 2015 and would be in effect from this Olympics. As per it, the earlier restrictions on the personal sponsors have been relaxed and they would now be able to associate with the athletes during the Games, including the blackout period. This though, is subject to fulfilling a number of conditions thereunder. She then goes on to examine if the Nike ad featuring the Indian Olympian Rani Rampal would fall foul of the rule. In the second part of the post, an insightful discussion on the rationale behind the adoption of the rule as well as the undue advantage that the rule metes out to high profile athletes are explained. After noting that the liability in case of a violation will be attached to the athlete, she goes on to detail the plight that the Indian Olympics contingent might find itself in the context of these rules.

The week started off with Rajiv reporting on the newly effected numbering system by the patent office for patent application. He notes that the new system is in line with the global best practices.

Next up, we had Inika bringing us the second part of her coverage of Uruguay’s victory over Philip Morris at ICSID over its plain packaging regulations. In this post, she breaks down the landmark ICSID award. The decision which upheld the Uruguayan plain packaging legislations, namely SPR and 80/ 80, made the determination by analysing two substantial questions- 1) whether the trademarks constituted PM’s assets/ property and 2) if so, whether there was a substantial deprivation of it. Although the court found that it was not necessary to reach a definitive conclusion on the ownership of PM’s trademarks, it went ahead with the assumption that they continued to enjoy protection under the Uruguayan law. As to the latter question, the Tribunal returned a finding that there was no substantial deprivation of property as a 20% limitation will not have a substantial effect on the Claimant’s business. She concludes by making a mention of the Tribunal’s observation that both the SPR and the 80/80 Regulation had been adopted in the bona fide fulfilment of Uruguay’s national and international legal obligations for the protection of public health, and hence did not constitute expropriation.

Vasundhara was next in line with her follow up post on the pre-release leak of Udta Punjab. In this post, she assesses the adequacy of the Cable Networks Act, 1995 to deal with illegal broadcasting of infringing copies over the cable channels. She points out that although the Act bars a cable operator from broadcasting an infringing copy, it falls short of penalising such a violation. She also makes the very interesting point that the Copyright Act itself only accounts for the infringement of a broadcasting right only after it comes into being, which takes place when the same is licensed to a broadcasting organisation. In the present matter, since there may not be any such license, she points out that there is no infringement of the broadcasting right as yet.

The week saw some more follow up posts with Pankhuri and I coming out with the second part on the Mc-Mac controversy. In this second part, we analyse some of the notable Indian decisions in this regard and found that McDonald’s has had a mixed run in the Indian courts. We wrap up by observing that it might be still premature to conclude whether or not Indian courts will toe the line of EU General Court as the courts here are yet to make a ruling, on the basis of factors which were weighed by the EU court.

We then had Inika reporting the announcement of a plan scheme to revamp the IPAB. The post notes that a fund of Rs.14.70 crores is being set aside for the scheme under the 12th Plan. Bringing cheer to the blog was the specific mention that the posts of the Vice-Chairman and the Technical Member for Trademarks will be filled in view of the Madras High Court’s decision in Shamnad Basheer v. Union of India.

The week came to a close with Shan updating us on the Microsoft- Girnar tussle at the Bombay High Court. The matter, which was supposed to be heard on August 1, 2016 to decide on the terms of withdrawal of the suit and consent terms, has now been stayed by the appeal bench as a result of Microsoft moving the appeal bench.

Also, on the events front, the week had an exciting development with Pankhuri announcing the Institute of Intellectual Property Research and Development’s (‘IIPRD’) International Patent Drafting Competition (IPDC) 2016, with a special discount for the SpicyIP readers. The invention disclosures, for which the participants will have to submit their patent applications/submissions, will be released tomorrow, August 1st.

International Developments

  1. Apple asks US Supreme Court to end its long-running patent dispute with Samsung
  2. Federal Circuit holds that PTAB cannot shift burden onto patent owner to prove non- obviousness
  3. Second Circuit revives fight over the ‘Iron Man’ theme
  4. Photographer sues Getty Images for $1 billion after she’s billed for her own photo
  5. Burberry sues rapper ‘Burberry Perry’ for trademark infringement
  6. USPTO rejects Whole Foods’ trademark claim as ‘World’s Healthiest Grocery Store’

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