SpicyIP Fortnightly Review (September 25-October 8)

Our topical highlight of the fortnight doubtless has to be Prashant’s post, pertaining to the Delhi High Court’s recent verdict directing WhatsApp to delete users’ data in the manner outlined by the Court. He points out the inconsistency in the Court’s holding, inasmuch as, after unequivocally recognizing that it did not have the jurisdiction to adjudicate upon the PIL, the Court went on to issue 3 substantive directions to WhatsApp. Finally, he observes that the hype that this judgment has generated in the media is wholly unwarranted because the Court’s directions are unlikely to make any concrete difference and expatiates upon the deleterious ramifications flowing from this judgment.

The thematic highlight of the fortnight is Prof. Basheer’s post in which he argues that both the Patents Act and the Protection of Plant Varieties and Farmers’ Rights Act can simultaneously regulate the sale of Bt cotton. He commences his analysis by delineating the modus operandi for the creation of Bt cotton and goes on to note that both enactments operate in different spheres, insofar as the commercialization of Bt cotton is concerned. He then evaluates the legal tenability of efforts to revoke Monsanto’s patent over the Bollgard-II variety of BT cotton and finally highlights the flaws in the Government’s approach to make Bt cotton more affordable.

Our first post for the period under review comes from Balu, relating to our series on absurd patents. In a rather tasty post, Balu shares the story of an Australian named Mark Murray obtaining a design patent for hamdog, a combination of a hamburger and a hot dog. Finally, he discusses Apple’s attempts to patent a paper bag which, they claim, is made of recycled material and is, therefore, more resistant to disintegration by tearing than the ordinary paper bag.

Next, Inika examined the Delhi High Court’s decision to formalize an injunction granted to 3M by virtue of which the defendant, Venus, has been restrained from manufacturing surgical/medical masks that allegedly infringe 3M’s patent. After succinctly delineating the arguments advanced by 3M in support of the proposition that its invention was not envisaged by the prior art, she explains the rationale underpinning the Court’s conclusion that a person skilled in the art would not be able to arrive at the plaintiff’s invention on the basis of the prior art cited by the defendant without displaying the requisite ingenuity.

Next, Prashant critiqued the Delhi High Court’s approach of requiring deposits from defendants in disputes involving standard essential patents (SEPs) which Profs. Chien and Contreras had described as an innovative “middle-path” in a guest post
for our blog. After persuasively arguing that the concept of interim damages is alien to Indian law, Prashant outlines the flaws in requiring such payments even before the conclusion of trial and appreciation of evidence. Finally, describing such orders as “flawed” and “illegal”, Prashant contends that they call into question the desirability of institutionalizing a complex patent regime in India.

In the next post, Ryan Wilson, an IP litigator and one of this author’s ex co-interns, analyzes the Delhi High Court’s decision dealing with trade dress protection for the Rubik’s Cube. After providing some background information about the manner in which the plaintiff, Seven Towns Ltd., came to acquire IP rights over the Rubik’s Cube, he examines the Court’s response to the 3 questions that fell for its consideration. After taking note of the court’s holding that the points of similarity, and not dissimilarity, would be relevant in a trade dress infringement inquiry, he states that the court’s conclusion about the extent to which a newcomer has to distance itself from a prior user of a trade dress is consistent with well settled legal principles. Finally, he examines the court’s observations about the relevance of prior case law in a trade dress infringement inquiry when the products in questions pertain to different sectors and analyzes the wider ramifications of this decision from the standpoint of obtaining legal protection for colours forming part of the trade dress.

Next, we published a guest post by Prof. Srividhya Ragavan who explained the rationale underpinning her belief that stakeholders from the industry are unlikely to fund IP conferences unless they further the views espoused by the industry. After articulating what she views as the main goals driving industry participation in IP conferences, she supports the decision of Justice Bhandari to recuse himself from adjudicating upon the dispute concerning the patentability of Novartis’ anti-cancer drug, Glivec.

After this, Prof. Basheer brought us the news of publishers filing an appeal against Justice Endlaw’s judgment in the DU photocopying case that went against them. After laying bare the flaws in the 4 chief arguments advanced by the publishers in their appeal, Prof. Basheer expressed the hope that the Division Bench will recognize the centrality of the fair dealing exception, statutorily engrafted in Section 52(1)(i) of the Copyright Act, 1957, in promoting access to education.

Thereafter, Prateek apprised us of India’s statement at the 56th meeting of the Assembly of Member States of the WIPO. After setting forth the salient features of the Marrakesh Treaty, which came into force on the 30th of September, Prateek evaluates the notable features of the statement and directs readers to other resources to learn more about the issues outlined in the statement.

After this, Prof. Basheer informed us of the Delhi High Court’s Division Bench’s refusal to grant an injunction in favour of the publishers in their appeal in the DU photocopying case. He applauds the judges for not granting an injunction on the basis of a course pack presented for their consideration at the last minute during oral arguments. The matter is now listed for the 29th of November.

Thereafter, Pankhuri shared the news of India and Singapore signing a memorandum of understanding in the field of industrial property. She shares the press release put out by Singapore’s Intellectual Property Office which explains how the MoU is likely to deepen cooperation between the two countries in the exchange of information and best practices.

This was followed by my analysis of a recent Bombay High Court judgment which reaffirms the proposition that minor dissimilarities between the trademarks forming the subject matter of the dispute do not have a material bearing on the determination of trademark infringement. Subsequent to setting forth the factual matrix of the case and the arguments of the parties, I succinctly examined the Court’s decision to uphold the grant of an injunction in the plaintiff’s favour.

After this, Prashant reviewed
the book titled “The Law and Practice of Trademark Transactions: A Global & Local Outlook” jointly edited by Irene Calboli and Jacques De Werra. He discusses the structure and content of the book in brief and wishes the book had focused on discussing the differences in the legal architecture governing commercial transactions in common law and civil law jurisdictions and double taxation avoidance agreements.

Our final post for the period under review also comes from Prashant, in which he responds to Prof. Srividhya Ragavan’s views on industry-sponsored IP conferences. Citing instances of the industry-sponsored conferences that he has participated in at NLSIU and NLU Delhi in which the issues forming the subject matter of the conference were debated in a balanced fashion, he argues that his own experiences do not support Prof. Ragavan’s assertion. He disagrees with Prof. Ragavan’s point about the desirability of Justice Bhandari’s recusal, arguing that it has paved the way for wholly unjustified recusal demands. Finally, in light of the fact that even India’s premier legal institutions lack the requisite resources to fund conferences and research projects in a meaningful way, he contends that industry-sponsored conferences remain one of the few pathways for Indian academics to debate the hot button issues of the day.

International Developments

  1. Sony Music Entertainment and Razor Sharp Songs have settled their pending copyright dispute over the Iron Man theme song.
  2. The estate of late American artist, Dash Snow, has filed a lawsuit against McDonald’s, alleging that the latter is using the former’s artwork in its graffiti-themed restaurants.
  3. The U.S. Court of Appeals for the Federal Circuit has reinstated a $120 million jury award in favour of Apple against Samsung, holding that there was substantial evidence in support of the proposition that the latter infringed the former’s patents relating to autocorrect, slide-to-unlock and quick link features.
  4. In a 269-page report, the U.S. Federal Trade Commission has called for a number of substantive changes in the patent system to counter the menace of patent trolls.
  5. The U.S. Supreme Court has agreed to adjudicate upon an appeal that will require it to decide whether objectionable trademarks can be denied legal protection.

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