SpicyIP Weekly Review (April 09-15)

The topical highlight for the week was Pankhuri’s post alerting the readers about the stay granted by the Division Bench of the Delhi High Court on the earlier order passed by the Single Judge restoring the license contracts between Monsanto and the seed companies. Although the order does not decide on issues such as the validity of the termination of the contracts, it brings the parties back to status quo vis a vis the contracts and renders them inoperable.

The thematic highlight for the week was Rahul’s post on the injunction granted by Justice Patel of the Bombay High Court against the use of the trademark ‘Rubik’s cube’ as the title of a Marathi feature film and the related post by Bharat Ganesan opposing the view taken by Rahul . In Rahul’s post, he observes that Justice Patel treats the matter to be an open and shut case of passing-off, and rightly so, as the Defendant could have in no way substantiated the defence of normative fair use in the given circumstances. Rahul pre-empts the arguments that may be made by those who believe that such words are part of the popular culture and thereby beyond the scope of passing off, by noting that such an argument should be rejected unless the use of such words is indispensable to the enterprise run by the Defendants.

The anonymous guest post strongly refutes Rahul’s arguments, supporting the injunction order of Justice Patel, and exhorts the need to bring the Indian jurisprudence in line with the U.S. jurisprudence which accords priority to artistic freedom over trademark rights. The post puts across the point on the need for artistic freedom to triumph over IP rights by quoting the the Roger’s test, a broad based test, which treats an artistic work as infringing only if “(1) the use of the mark has no artistic relevance to the underlying work whatsoever, or (2) it has some artistic relevance, but explicitly misleads as to the source or the content of the work.” The guest post goes on to explain how Justice Patel should have ideally looked into whether the case was a fit one to be brought within the scope of trademark genericide.

The week started off with Prateek’s four-part post on the Income Tax Appellate Tribunal’s order on whether the royalty paid by an equipment manufacturer to Qualcomm for its incorporation of Qualcomm licensed chipsets into mobile handsets, was taxable in India.  In Part IA of the post, Prateek discusses the relevant provision of the Income Tax, S.9(1)(vi)(c), which shall apply in case of income arising out of payment of royalty by a non-resident and examines if it will apply to the facts at hand. In Part IB of the post, Prateek dwells into the tribunal’s analysis of whether the last prong of S.9(1)(vi)(c), shall be applicable in the matter at hand since only those patents which were being used by end consumers in India would be eligible for taxation as per the provision. In Part II of the post, he shifts his focus on to the portion of the order, which discusses whether the impugned transaction involving the equipment manufacturer and Qualcomm was a “sale” of a copyrighted article or “licensing of copyright”. In the fourth and final part of his post, he discusses the effect that the customisation of a technology to a specific jurisdiction may have on its taxability.

Next up, we had a hard hitting piece by Prashant in which he directs the attention of readers to the report carried by Reuters on an apparent collusion between Rashtriya Swayamsevak Sangh and Nuziveedu meant to pressurise the government to take a position favourable to Nuziveedu in its IP dispute with Monsanto. The post also reproduces the opinion piece on the Monsanto- Nuziveedu dispute that Prashant had prepared for Bloomberg Quint and had reference to the Reuters report. Prashant notes that his opinion piece was eventually rejected by Bloomberg Quint for alleged lack of substantiation on the issue of collusion and based on the rejection, he wonders if the Indian media is intentionally keeping a reticent stand on the issue.

The week also witnessed an entry by Mr. Jonathan Mentesana towards our discussion paper series. In the overview provided to his paper on the extremely relevant issue of the rising healthcare costs in the United States, Mr. Mentesana points out how even the government run Medicare and Medicaid programs were running into unaffordable levels and discusses the different models that can be adopted to salvage these programs.

In the last post for the preceding week, Pankhuri brought to our attention the launch of the inaugural issue of NLU Jodhpur’s Journal of Intellectual Property Studies.

International Developments

  1. ‘Charging Bull’ creator accuses ‘Fearless Girl’ of infringing on his artistic copyright.
  2. University of California appeals against the CRISPR decision.
  3. European Commission publishes its roadmap on SEPs.
  4. Qualcomm files suit against Apple for tortious interference in its licensing activities.
  5. Huawei wins patent infringement suit against Samsung.

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