Our topical highlight of the week doubtless has to be a 2-part post by our fellowship applicant, Sreyoshi Guha, on the Intex versus AZ Tech judgment.
In the first post, Sreyoshi begins by outlining the arguments of Intex and AZ Tech on the issue of relevance of goodwill in a case of passing off. She then discusses the court’s conclusion that the fundamental object of granting a remedy for passing off is to protect the plaintiff’s goodwill and that the use of a mark for a short period is not sufficient for establishing the same. Arguing that the court could not have used the jural distinction between goodwill and reputation as the basis for its conclusion that AZ Tech was not entitled to obtain an injunction, Sreyoshi opines that the distinction between these two concepts has steadily gotten obliterated over the last few years.
Citing the example of trans-border reputation, she argues that the court erred in concluding that the establishment of goodwill can only be ascertained on the basis of a party’s conduct within India. Therefore, she concludes by noting that the court’s conclusion rests on a faulty premise which resulted in the single judge’s grant of injunction being overturned.
In her second post, Sreyoshi deals with the 3 other prongs underpinning the court’s analysis and findings. Discussing the court’s conclusion that the addition of the word ‘Intex’ to ‘Aqua’ was sufficient to distinguish Intex’s phones from AZ Tech’s, she disputes the court’s conclusion that the added matter can dispel any likelihood of confusion. Thereafter, she grapples with the court’s finding that AZ Tech’s delay in instituting the suit for passing off disentitled it from claiming any reliefs and the fact that AZ Tech changed the shape and color of its mark during the pendency of the suit indicates that it did not come to the court with clean hands. Finally, she concludes by noting that, while she agrees with the court’s conclusion insofar as the clean hands doctrine is concerned, its findings as results the application of the added matter and balance of convenience doctrine appear questionable.
Coincidentally, our thematic highlight this week also happens to be Sreyoshi’s second submission for the SpicyIP Fellowship on the legal validity of the use of the ‘Stories’ feature by Facebook on Instagram and WhatsApp that is the brainchild of Snapchat. First, she analyzes this case from the standpoint of the idea-expression dichotomy and discusses the principles developed by American courts for applying this doctrine in the context of computer software. Noting that tests developed for dealing with claims of copyright infringement in video games can be pressed into service to understand how this case might play out, she specifically focuses on the application of the scenes a faire doctrine and the ‘originality’ doctrine. Finally, she discusses how an Indian court is likely to rule on this issue and adverts to a large number of precedents that may have a bearing on the outcome.
Our first post this week comes from Pankhuri who shares an article by two Nishith Desai Associate employees published in the Indian Business Law Journal on how the legal regime governing delegated legislation in India can be brought in consonance with constitutional and administrative law. The examples that the article cites of pieces of delegated legislation that are not in consonance with these public law stipulations include the DIPP’s notification to interpret Section 31D of the Copyright Act in such a way as to make the statutory licensing scheme applicable to internet broadcasting and the issuance of a draft notification by the Agriculture Ministry by virtue of which the compulsory licensing regime was made applicable to GM technology patents.
Pankhuri also shares notable snippets of the article; public law enthusiasts may want to check it out!
Next, I analyzed the Delhi High Court’s judgment on the jurisdiction of the Advertising Standards Council of India (ASCI) to rule upon claims of infringement and passing off. At the outset, I delineated the 3 arguments advanced by the plaintiff in support of the proposition that the ASCI lacks jurisdiction to adjudicate upon this matter. Thereafter, I articulated the reasons put forth by the court in support of its conclusion that Section 62 of the Copyright Act and Section 134 of the Trademark Act do not operate as an embargo upon the ASCI’s power to adjudicate upon complaints of infringement and passing off. Finally, I explained why I believe the judgment rests on a tenuous line of reasoning and ought to be reconsidered by a division bench.
Next, Prashant analyzed the Delhi High Court’s judgment refusing to grant Monsanto an interim injunction in its dispute with Nuziveedu. After briefly recapping the history of the dispute between Monsanto and Indian seed companies on Bt cotton, Prashant explains the ratio of the judgment viz. Monsanto’s termination of its contract with the Indian seed companies was illegal and the latter must continue paying the former trait fee as prescribed by relevant laws. He commends the court’s decision not to go into the validity of Monsanto’s patent at this stage and then briefly discusses the court’s treatment of the other arguments advanced by Nuziveedu. Thereafter, he delves into the court’s finding that Monsanto could not have refused to renegotiate the trait fee payable to it and explains why he believes this is a flawed conclusion. Finally, he shares his views about two other aspects of the judgment: (1) the creation of an elaborate mechanism by the court to govern the relationship between the parties; and (2) the simultaneous maintainability of a suit and an arbitration proceeding on the same matter.
Next, Pankhuri shared with us the details of a refresher course for law teachers on intellectual property laws that will be conducted from 16th to 23rd June by the Inter University Centre for Intellectual Property Rights Studies (IUCIPRS) along with DIPP Chair on IPR, CUSAT. Further details of the programme can be found here.
Next, we brought to you a post by our fellowship applicant, Aishwarya Ambardekar on the famous turmeric battle between the CSIR and American inventors who sought to patent the wound-healing properties of turmeric. After noting the factual matrix of the case, she discusses its effects and specifically talks about the Traditional Knowledge Digital Library at length. Finally, she discusses a private members’ bill that has been recently introduced in Parliament to regulate the use and commercialization of TK and highlights its salient features.
Finally, Pankhuri informed us that the WTO Secretariat is looking to fill a post of legal analyst within the TRIPS and Intellectual Property Group of the Intellectual Property, Government Procurement and Competition Division. The vacancy notice can be found here.
International Developments
1. The U.S. Congress is Considering a Bill that Would Give the Copyright Office Greater Autonomy and Transfer its Supervision from the Library of Congress to the American President
2 .The U.S. Supreme Court Has Refused to Hear the Vimeo Copyright Dispute
3. Big Bang Theory Has Won a Copyright Infringement Lawsuit Instituted Against it
4. A Beijing Court Has Reversed a Finding that Apple Infringed the Design Patents of a Chinese Company in the iPhone6 and 6+
5.This week, the U.S. Supreme Court Heard Arguments in a Case Concerning the Determination of the Jurisdiction Where Patent Infringement Claims may be Filed
