SpicyIP Weekly Review (August 28 – September 3)

spicyip-weekly-reviewWe have two topical highlights this week: Inika’s report on Madras HC’s latest John Doe order and Pankhuri’s brilliant report on Cipla’s withdrawal of its revocation application for Novartis’ Onbrez.

In the first, Inika reported the Madras HC’s unfortunate order to block 830 websites under a ‘John Doe’ injunction for ‘A Flying Jatt’. She notes that the Court has also agreed to block offline mediums such as 5 cable TV operators and 8 unknown persons. This injunction order will be operating for four weeks until September 21, 2016. Inika argues that this period is arbitrary and that the Court has failed to even require proof of infringement from the Plaintiff. She also suggests that the fact that these parties chose to approach the Madras HC might hint at them choosing a forum more favorable to their claims; given that the Bombay HC has started narrowing the scope of JD orders.

In the second, Pankhuri informed us that Cipla has withdrawn its 2014 plea for revocation of Novartis’ patents in Onbrez. She notes that this fact was brought to light after the DIPP reported it in its reply to around 27 RTIs filed by Mr. Pradeep Kumar between October 2014 and June 2016. Pankhuri also elaborates that Cipla filed this revocation application on grounds of extreme emergency under Section 92 and public interest under Section 66. This is because Novartis hadn’t made available to the public, adequate quantities of the drug at reasonable prices in India for a disease [Chronic Obstructive Pulmonary Disease] which is prevalent in epidemic proportions. She then discusses the government’s stand and the final comment of the Ministry of Health that there exists no state of emergency to invoke Section 92. She states that the DIPP has failed to act on the DoP’s suggestion to ask Novartis to justify selling the drug at Rs. 2,000 a month when Cipla was selling it at Rs. 399. Lastly, she painstakingly prepares an entire trajectory of Cipla’s application and raises numerous questions based on the conduct various relevant authorities.

We also have two thematic highlights for this week:

The first thematic highlight is Balu’s analysis of the little known Section 52(w) fair use defense under copyright law. In this post Balu, covered a recent copyright infringement case where the Calcutta HC delved upon the fair-use provision under Section 52(w) in an interlocutory order. This provision carves out an exception to infringement in cases where one converts a two-dimensional artistic work into a three-dimensional object for industrial application of any purely functional part of a useful device. Balu then makes a succinct analysis of the Section 52(w) protection in cases where errant litigants seek to enforce their copyright in the artistic design of their machinery after having failed to secure patent and design protection.

The second thematic highlight is Kiran’s exhaustive two-part analysis on the copyrightability of tattoos. In this two-part post, Kiran investigates inter alia into the conflict between the rights of the artists under copyright law and the right of bodily autonomy in persons wearing such tattoos.

In the first part, Kiran starts with the process of making a tattoo, its classification as a copyrightable artistic work and then raises a question as to whether the human body can be considered a ‘medium of expression’ under copyright law. Here, she discusses Nimmer’s answer in the negative and analysis under US copyright law.

In the second part, she explores the presence of an ‘implied license’ in favor of tattoo-wearer since s/he commissions the tattoo-artist to create the work. She notes that it would be difficult for the tattoo-wearer to even remove a tattoo without the permission of its artist as this may violate the latter’s moral rights in the work. She then argues that mere incidental use should not constitute copyright infringement in India as the user would be protected under the fair-use provision under Section 52(1)(u) of the Copyright Act. Lastly, Kiran recommends that tattoo-artists be required to execute ‘work-for-hire agreements’ with the recipients of their work; so as to ensure that all the rights are signed over to the recipient, or including waiver clauses as a part of artist-recipient contracts that have the artists expressly waiving all rights associated with the tattoo.

Next, Aparajita brought us her take on the government’s price control order over licensing of BT cotton and the latest decision by Karnataka HC on a writ petition filed against this price order by the Association of Biotechnology Led Enterprises and Namdhari Seeds Pvt. Ltd (ABLENS). ABLENS argues inter alia that government has no power under the Essential Commodities Act to regulate the sub-components of an essential commodity and treat Bt. Cotton seeds as cotton seeds. While a Single Judge initially granted an interim order against operation of the price order, he vacated it soon thereafter. On appeal to the Division Bench, the Court upheld the impugned order as it was passed to make Bt. cotton seeds available at a fair price for which the license fees were also to be regulated.

Next, Kartik brought us an update on the Call for Papers for the 8th volume of NALSAR’s Indian Journal of Intellectual Property Law. This volume is slated to be published in April 2017 and the last day for making your submissions to [email protected] is October 15, 2016. The subject line must read ‘Submission for Vol.8’. Queries may be directed to the same ID, with ‘Query’ in the subject line.

Next, Vasundhara brought us a piece on a Report of the Parliamentary Committee on Government Assurances (PCGA) regarding the pending assurances to control the prices of patented drugs. Here, she has covered the PCGA’s merciless bashing of the Department of Pharmaceuticals (Ministry of Chemicals and Fertilizers) for ‘gross negligence’ and ‘lackadaisical attitude’ in having caused a delay of 5 years in submitting a report on a price regulatory mechanism for patented drugs. She goes on to note that India’s price caps on patented drugs have incurred the wrath of both pharmaceutical giants and NGOs.

In our brand-new column for weird patents, Shamnad Sir brought us a tidbit on this wacky 1965 US patent covering an ‘Apparatus for Facilitating the Birth of a Child by Centrifugal Force’.

Prashant then covered the IP strategy employed by the National Seed Association of India (NSAI) in relation to its dispute with Monsanto over its technology licensing agreements in genetically modified cotton. In this post, he scrutinizes NSAI’s strategy documents and patiently explains its overall argument. NSAI’s stand inter alia is that while GM traits are patentable, section 3(j) of the Patents Act, 1970 will render it unpatentable once they are introgressed into a cotton genome the resulting transgenic variety.

In her second post for the week, Pankhuri brought us a post covering what seems to be the end of the ‘Dishoom’ John Doe saga. Soon after we busted the ISPs’ baloney in issuing a misleading warning message, Justice Gautam Patel in his latest order directed these ISPs to amend the message to make it completely unambiguous in terms of its effect. Most importantly, Justice Patel refers in this latest order to the Neutral Ombudsman Model developed by Prof. Basheer and asks ISPs to pursue this idea seriously. Lastly, Pankhuri also notes Justice Patel’s patently witty style in observing that these orders seem to be sought only for forthcoming or anticipated box office flops.

Lastly, Kiran brought us an interesting piece on the fate several new cafes dedicated to the TV show ‘FRIENDS’. Here, she makes a brilliant and exhaustive legal analysis of the possible IP infringements arising from the café owners’ replication of several characters, props and interiors of a fictional café used in the legendary sitcom. She concludes that the two cafés in question, with one each at Kolkata and Delhi, are indeed an infringement of NBC’s IP and of the actors’ right to publicity.

International Developments:

  1. CARLTON Football Club is conducting an investigation into the theft of intellectual property regarding its women’s team recruiting.
  2. Benefit of ‘safe harbor’ provision can be granted only to divisional patent applications and not to ‘continuation in part’ applications.
  3. EU’s draft copyright law leaked; meets with heavy criticism.
  4. Jessi J successfully defends copyright infringement claim for ‘Domino’ in Will Loomis’ appeal before the 9th Circuit Court of Appeals.

Also, here’s an amazing piece by Vinod Dhall on how to strike the right balance when it comes to incentivizing IP creation.


Ritvik M Kulkarni

Ritvik Kulkarni is a final year student at ILS Law College, Pune. He is the Student Coordinator of the ILS Intellectual Property Rights Cell and Student Editor at the ILS Abhivyakti Law Journal since 2014-15. Ritvik first learnt of IP while preparing for his first moot; and has been regularly taking his weekly IP fix ever since. Additionally, he takes interest in learning the law and practice of domestic and international dispute settlement. Speaking of disputes, he's an ardent follower and jabra fan of Game of Thrones. You can get in touch with him at [email protected]; and dont worry he loves F.R.I.E.N.D.S too.

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