SpicyIP Weekly Review (August 15-21)

spicyip-weekly-reviewOur thematic highlight of this week is a 2-part post by Balaji in which he analyzes the consequences of 3 TRIPS+ free trade agreements for India from the vantage point of IP and the digital economy: the Trans Pacific Partnership (TPP), the Trade in Services Agreement (TISA) and the Regional Comprehensive Economic Partnership (RCEP). In the first post Balaji tabulates the standards that these agreements mandate and examines whether or not Indian law is in consonance with these standards. Finally, he explains why the new obligations created by these agreements are relevant for India, even if India is not a party to them.

In the second post, he compares, with remarkable lucidity, the key principles embodied in these instruments and existing Indian law for the regulation of e-commerce and IP rights. In the area of e-commerce, his analysis extends to 5 main issues: customs duty on digital goods; non-discriminatory treatment of foreign digital goods; protection of personal information in cyberspace; cross-border flow of information and the need to localize computer facilities. Similarly, from the standpoint of IP, he compares the provisions dealing with a large array of interesting issues, most significantly the definition of patentable subject matter, rights of trademark owners against prior users, data exclusivity, duration of copyright protection and presumption of patent validity.

Our topical highlight this week was Shan’s post in which she discusses the main IP controversies in recent times involving the cow. She commences this rather interesting post by referring to an application made by a Brazilian team for exporting the germplasm of the ongole bull to Brazil and seamlessly switches gears, explaining the allegations involving the surreptitious stealing of the gene pool of the Vechur cow found in Kerala. Finally, she analyzes issues surrounding the patenting of cow urine and notes that recent developments indicate that the Indian Government may also be willing to get the same patented.

Our first post this week comes from Ritvik in which he critically evaluates the Delhi High Court’s judgment in Allied Blenders and Distilleries v. R. K. Distilleries. Ritvik analyzes the central holding of the decision viz. where the cause of action neither arises at the plaintiff’s principal place of business nor at the place where its subordinate office is located, the plaintiff is mandated to sue at the place where its principal place of business is located. Finally, Ritvik tests the correctness of the decision against the touchstone of controlling precedents on this issue and arrives at the conclusion that the court’s decision is absolutely correct.

Our second post this weeks comes from Balu, who provides a terrific analysis of the legal issues, relating to copyright law, that Pokemon Go is likely to run into. After providing a brief introduction of the freedom of panorama doctrine, Balu talks about the divergence in the legal formulation and application of the doctrine in various jurisdictions. Finally, he delves into an analysis of the 3 fair dealing exceptions in Section 52 of the Copyright Act, 1957, dealing with the freedom of panorama, and concludes by noting that the game is on a secure legal footing in India on account of these widely worded exceptions.

In this week’s third post, I analyzed the Delhi High Court’s decision in Music Broadcast Limited versus Axis Bank and Anr. Which addresses the issue of what constitutes the cause of action in a suit founded upon the illegal termination of copyright compulsory licenses. After setting forth the factual matrix of the case and the arguments of the parties, I analyzed the Court’s holding that the term ‘cause of action’ had to be construed widely, so as to include within its ambit the place at which the compulsory license was granted, not just the place at which it was terminated.

Next, Ritvik analyzed the Delhi High Court’s Division Bench (DB) decision in the case of RSPL v. Mukesh Sharma. Ritvik begins his analysis by delineating the ratio in Ultrahome Constructions v. Purushottam which makes it clear that a plaintiff is mandated to sue at the place where its subordinate office is located if the cause of action arises there and cannot sue at the place where its principal place of business is located. After explaining the single judge’s impugned decision, as per which the plaint was returned for lack of jurisdiction, Ritvik analyzes the DB’s dissatisfaction with the single judge’s attempt to covertly dissent from the ratio in Ultrahome Constructions by questioning the legal soundness of the said decision. He finally outlines the DB’s emphasis on the need to maintain judicial propriety and outlines the legitimate approaches for referring a DB’s decision for reconsideration.

Next, Inika analyzed a U.S. District Judge’s holding that the terms offered by Ericsson to TCL for the licensing of the former’s standard essential patents were fair, reasonable and non-discriminatory. After examining the judge’s treatment of the arguments advanced by both parties, she briefly refers to the other legal battles that the two parties are currently engaged in. Finally, she discusses the standards for the determination of unwilling licensees and takes note of Ericsson’s aggressive push to get most of its contractual partners declared as unwilling licensees.

Next, Pankhuri brought us an update from the ongoing litigation in the Bombay High Court as regards the issuance of a John Doe order for Dishoom. After outlining TCL’s efforts to wriggle out of its obligation to set forth the requisite information in the shape of the error page on blocked URLs, she discusses Justice Patel’s decision to grant TCL a form of temporary reprieve. More specifically, she evaluates the scope and purpose of the court’s decision to allow TCL to state the details of the nodal officer whom aggrieved parties can contact in case of blocking of URLs instead of stating the details of the order pursuant to which the blocking is conducted. Finally, she notes, with appreciation, Justice Patel’s explicit endorsement of the suggestion put forth by Prof. Basheer for the institutionalization of a neutral ombudsman to identify the veracity of plaintiffs’ claims about URLS containing infringing material. Kian Ganz’s excellent analysis of India’s John Doe jurisprudence, embodying Prof. Basheer’s suggestion which Justice Patel quotes with approval, can be found here.

This week’s next post comes from Krishnaraj Chinniah who analyzes the IPAB’s decision to revoke a pharmaceutical patent under Section 64 of the Patents Act, 1970. After noting the statutory scheme governing the surrender of patents engrafted in Section 63 of the Act, Krishnaraj explains that proceedings for the revocation of a patent and for its surrender are wholly distinct and separate. Thereafter, he criticizes the IPAB’s decision inasmuch as it takes into consideration the patentee’s desire to surrender its patent while adjudicating upon a claim for its revocation and concludes that this is likely to generate some avoidable confusion.

Next, Prateek examined the Superhero trademark, with specific reference to 3 aspects: its history, legal validity and DC and Marvel’s enforcement strategy for its protection. After sketching the series of events which finally culminated in DC and Marvel securing trademark rights over the word ‘Superhero’, he sets forth the reasons why there exist robust grounds to contend that the mark has become generic/descriptive. Finally, he concludes by noting that DC and Marvel have deployed their financial might in such a way as to thwart any legal proceedings that may call into question the validity of the trademark and emphasizes the need for greater scrutiny by registration offices to avoid such a phenomenon in the future.

Next, Kartik provided us a detailed analysis of the case between TataSky and Youtube, which is a first of its kind case in India, dealing with the circumvention of technological protection measures. After setting forth the complex factual history of the case, Kartik examines the interplay between Section 66 of the Information Technology Act, 2000 and the recently added Section 65A of the Copyright Act. Finally, he criticizes the court for failing to articulate, in a nuanced fashion, how the videos in question, hosted on YouTube’s platform, would attract the mischief of the provisions designed with the intention of preventing the direct circumvention of technological protection measures.

Next (yes, this was a busy week indeed), Pankhuri informed us that the Advanced Research Centre for Intellectual Assets and the Law in Asia (ARCIALA), School of Law, Singapore Management University has put out a call for papers for its conference for IP scholars to be held on 23rd-24th February, 2017. The Centre is also inviting applications for a post-doctoral fellowship.

Thereafter, Pankhuri apprised us of an opportunity to comment on an article published by the Economic Times on the licensing of GM technology.

In this week’s final post, Prateek evaluated a recent Bombay High Court judgment which turned on the determination of whether or not the plaintiff’s mark was inherently distinctive/had acquired distinctiveness. After narrating the arguments advanced by the plaintiff in his own inimitable style, Prateek proceeds to explain the court’s holding that the mark had not acquired distinctiveness and briefly deals with whether manufacturers can be barred from claiming ownership over a mark, if they have used the mark descriptively earlier.

International developments:

1. The attorneys responsible for extricating the song ‘Happy Birthday to you’ from the thickets of copyright law and ensuring that it remains part of the public domain have been awarded $4.6 million in attorneys’ fees.
2. The U.S. Patent and Trademark Office has publicly disclosed filings in a claim by Shuailiang Lin, a former employee of the Broad Institute, as per which the latter misled the USPTO in representing itself as the inventor of the CRISPR, a powerful way of altering the DNA inside living cells.
3. Apple has been granted 3 patents covering inventions relating to their 3D maps.
4. In an unusual development, The UK’s Intellectual Property Office has approved Specsavers’ application to trademark single words “should’ve” and “should’ve”.


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