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SpicyIP Weekly Review (November 5-11)


The topical highlight of the week is Divij’s post breaking news on recent developments in the ongoing feud between artists and copyright societies. The Enforcement Directorate has raided five major music companies in connection with their alleged misappropriation of artists’ royalties. As Divij notes, this is possible the first time a criminal complaint has been registered (under the PMLA) against IPRS in this dispute. The accompanying penal consequences may be a turning point in this battle.

The thematic highlight of the week is a guest post by Swaroop, a Chennai-based advocate, about the claim for royalties that A.M. Rathnam, the producer of the movie India, is making for its proposed sequel, Indian 2. Swaroop argues that owners of copyright in cinematographic films have narrow rights: these will not extend to the story, the characters, or their arcs. In the absence of a ‘derivative work’ concept in Indian copyright law, and given characters and story arcs would be an ‘idea’ and not an ‘expression, he argues that Rathnam-esque claims to rights in sequels need to be rejected. An argument under the law of passing off would also, in his opinion, be untenable.

Earlier this week, I had blogged about recent proceedings initiated in the US, claiming copyright infringement by a re-tweeter of a tweet containing photos of pages of a book. I discuss two specific questions: one, whether tweets are capable of copyright protection generally, and two, whether re-tweeters can be held liable or not.

Other Developments

Indian

Judgments/Orders

Auroville Foundation v. Ramaniyam Real Estates Private Ltd. — Madras High Court [October 26, 2017] The appeal was filed by the plaintiff/appellant for damages in a suit for trademark infringement and passing off. The lower court denied damages on the ground that there was no material produced by the appellant to substantiate the same. The defendant/respondent suffixed the word AUROVILLE on of their projects, in conjunction with the other name, RAMANIYAM. No other material to substantiate the claim for damages was produced by the appellant. Hence, the High Court dismissed the appeal.

Vivek Kochher & Anr. v. M/S Kyk Corporation Ltd. & Anr. — Delhi High Court [November 3, 2017] The petitioners claimed to be carrying on business under the title ‘KYK INTERNATIONAL’, and had sought the rectification of an IPAB order granting trademark to the respondents, ‘KYK CORPORATION’.  The IPAB found that there was no evidence of the petitioners’ use of the impugned mark. The respondents, a company originating in the US, were able to show cross-border trade and sale of their products in India, while the petitioners were unable to demonstrate the longevity in their use of the mark KYK, prior to 2005. Hence, the petition was dismissed, and the Court found in favour of the respondents.

M/S. L’Oreal v. Shri Yogesh Jethi & Another — Delhi High Court [November 3, 2017] This suit was for permanent injunction and related reliefs against the infringement and passing off of the plaintiffs’ mark L’OREAL with deceptively similar products. The plaintiffs were able to prove their use of the trademark, and that it had become distinctive and had acquired secondary significance with the plaintiff’s goods and business. The Court found that the defendants were infringing the plaintiffs’ mark phonetically, visually, structurally, in its basic idea and in its essential features. Moreover, the evidence of the plaintiffs was not rebutted. The Court held in favour of the plaintiff, and awarded costs of Rs. 21,000.

Mr. Shoaib Haroon v. Mr. Mohammed Hassan — Karnataka High Court [November 3, 2017] The appellant was the proprietor of a closed down restaurant, THE ONLY PLACE, which has acquired substantial goodwill inherited from his father. The appellant got into a partnership agreement with his cousin/the respondent, and allowed the firm to use the name in exchange for royalty. Once the partnership dissolved, the respondent continued using the same. Hence the respondent filed a suit for passing off. The respondent/defendant filed a counter-claim for declaration and permanent and injunction. The lower court held in favour of the defendant/respondent, and hence this appeal was preferred. Based on the Islamic laws of inheritance, the court found that the plaintiff/appellant had not come to court with clean hands, and the appeal was dismissed.

Praveen Kumar Maakar v. Union Of India — Delhi High Court [November 6, 2017] The petitioner was aggrieved by the order of the TM Registry that stated that the petitioner had abandoned his application for the mark FRONTIER in the confectionery market, following an opposition raised by M/S Frontier Bakery Pvt. Ltd. The petitioner failed to file a counter statement to the opposition within the stipulated 2 months, alleging that no notice was served. The impugned order was nevertheless passed. The petitioner sought its reversal. The facts showed that the notice had in fact not been served upon him, due to a clerical error. Hence, the Court allowed the petition and cancelled the impugned order.

Mankind Pharma Limited vs Sham Lal & Ors — Delhi High Court [November 7, 2017] This order dealt with an application under Order 8 Rule 10 r/w S.151 of the CPC (for striking off defence) in a suit for permanent injunction against the infringement and passing off of the mark MANKIND. Summons were served by means of newspaper publication, however, an ex parte ad interim injunction was granted to the plaintiff. However, the defendants still did not appear, or file a written statement. Relying on the Samsung Electronics Company Limited & Anr. v. Mohammed Zaheeer Trading As M/s. Gujarat Mobiles & Ors, the court allowed the defence to be struck out, and decreed the suit by granting all the prayers sought.

News

  1. India’s second tech support centre for IPRs set up in Chennai
  2. Honda obtains patent for its combined brake system for two-wheelers
  3. Apollo Tyres and RRI patent special grade ENR
  4. Guntur producers get GI tag for Andhra’s Durgi stone carvings 

International 

  1. US FDA taking action on drug pricing
  2. Apple wins case against Samsung over the ‘slide-to-unlock’ patent
  3. Activision sued for reaping billions on ‘Call of Duty’ without a license for Humvee’s trademark
  4. WIPO holds discussions on access to vaccines

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