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SpicyIP Weekly Review (October 8-14)


Thematic Highlight 

Rishabh wrote a post on Twitter’s Terms of Service. In his post, he states that agreeing to the licensing clause in the Terms gives Twitter the license to use the uploaded copyrightable content in any manner they deem fit. He finds that certain portions of the clause would be found unenforceable under the law of assignment in India. He also points to the possibility of infringement of users’ moral rights since, under the Terms, Twitter is given the right to adapt and modify the uploaded content as it sees fit. He concludes by warning users to read such terms carefully and artists to reconsider usage of social media to promote their works.

Topical Highlight

Prashant wrote a post on a recent Delhi HC judgment wherein Justice Endlaw held that employers couldn’t restrain former employees from using customer lists after leaving employment. Prashant describes three issues on which the case was decided. Firstly, it was found that no case of copyright infringement in customer lists was established. Secondly, Justice Endlaw concluded that it was not possible to claim confidentiality in such lists. Lastly, the non-compete clause in the employment contract was found to be void under Section 27 of the Contracts Act.

Other Posts

I had written a post on the latest development in the famous Skidmore-Led Zeppelin litigation dispute, where the US Ninth Circuit Court of Appeals remanded for a new trial on the ground that a jury instruction on the Inverse Ratio Rule should have been given in the previous trial, amongst other grounds. In my post, I describe how this Rule is logically incoherent and is based on vague standards and hence, must be done away with. I also draw a parallel to the inconsistent application of the proof of access test by Indian Courts which thereby necessitates clarification by the apex Court.

Prashant provided us an update on the J&J ASR Hip Implant scandal. The issue revolves around the withdrawal of the hip implants from the market due to quality issues and the compensation to be provided to affected patients. He states that contrary to news updates which portray that Ministry of Health has conducted negotiations with J&J regarding this issue, a response to an RTI filed by him shows that no such negotiations took place.

SpicyIP Events

Pankhuri announced that The Advanced Research Centre for Intellectual Assets and the Law in Asia (ARCIALA), School of Law, Singapore Management University will be holding the 4th edition of its Annual IP Scholars Asia Works-in-Progress Conference on January 30-31, 2019.

Other Developments

Indian

Judgments

Kalanjiyam Cut Piece vs Kalanjiyam Dresses – Madras High Court [October 1, 2018]

The court granted an ex-parte permanent injunction restraining the Defendant from infringing the Plaintiff’s trademark ‘KALANJIYAM’. It also restrained them from infringing the copyright in its artistic work and passing off the infringing goods as those of the Plaintiff by carrying on their business under the name ‘KALANJIYAM CUT PIECE’. The court further granted compensatory costs of Rs. 2 lakhs  for Defendant’s lack of response to notices and the costs incurred by the Plaintiff.

M/s Vans Inc. USA v. Ex Parte Judgment – Delhi District Court [October 06, 2018]

Plaintiff is in the business of manufacturing footwear and is the registered owner of trademark/label “VANS”. This label is also protected under the Copyright Act. Further, the label forms an essential and material part of the Plaintiff’s domain name and email id. Defendants are users of the name “VANS OFF THE WAIL AND VANS” for their footwear and sporting goods. Court observed that while the customer base for the Plaintiff and Defendant need not be the same, the Plaintiffs are entitled to protect their proprietary rights vested in the trademark, and the Defendants’ usage of a deceptively similar name causes wrongful loss to the Plaintiff, grave prejudice and harm to the public. As proceedings are ex-parte, the Court ordered the Defendant to bear litigation costs in addition to payment of punitive and compensatory damages.

M/s Greenply Industries v. M/s Gupta Timber Bhandar – Delhi District Court [October 08, 2018]

Plaintiffs are owners of principal trademark/ house mark “GREEN” and is used in a variety of plywood products, block boards, laminated sheets and decorative laminates such as GREEN, GREENPLY, GREENCLUB etc. The Defendant has registered GREEN VATIKA for the manufacture of plywood, blockboard, doors and other wood products. Plaintiffs filed for a permanent injunction restraining the Defendant from using their registered trademark and passing off the Defendant’s goods as those of the Plaintiffs. The Court dismissed the suit as the Plaintiffs failed to adduce any evidence to discharge their onus of proof.

M/S.Kaleesuwari Refinery Pvt. v. M/S.S.N.R.Dhall Mill – Madras High Court [October 08, 2018]

Plaintiff-Respondent sought a permanent injunction restraining the Defendant-Appellants from infringing the trademark ‘GOLD WINNER’ for dhall and flour preparations. The Defendant-Appellants have used ‘GOLD WINNER’ to sell ghee and vanaspati products, and have used ‘SREE GOLD’ to sell dhall products. The Single Judge observed that the Plaintiff-Respondent was the prior user of dhall while the Defendant-Appellants were prior users of oil and vanaspati products (both falling under different classes) and granted an ad-interim injunction in favour of the Plaintiff-Respondent for a period of one year. Evidence indicates that the Defendant-Appellants were marketing dhall products in 1 kilo packages by using the mark SREE GOLD on the front side of the packet and they put the word GOLD WINNER on the rear side in small font. After some time, they started marketing range of dhalls in packages titled as GOLD WINNER and omitted the word SREE GOLD. The Court however found that a valid case for an ad-interim injunction was not made out, since a claim for infringement does not rest on mere registration of a mark. The Court finally set aside the ad-interim injunction to the extent of infringement of the registered trademark, but restrained the Appellant-Defendants from passing off dhall varieties as that belonging to the Plaintiff-Respondent for a period of one year.

Junglee Pictures v. Joy Thomas Proprietor of M/S Jubilee Pictures – Delhi High Court [October 9 2018]

The Plaintiff, the producer of upcoming Hindi film ‘Badhai Ho’, filed a suit under Section 60 of the Copyright Act seeking an injunction restraining the Defendant from giving groundless threats of legal proceedings in respect of alleged infringement of copyright in defendant’s script and movie ‘Pavithram’. The court  disposed of the suit noting, that as per the proviso to Section 60, the Section does not apply to the present case as the defendant had already filed a suit for infringement in the Kottayam District Court.

Vennilla Clothing Company v. M/S ARRS Silks – Madras High Court [October 11 2018]

The court modified the interim injunctions that restrained the Respondents from selling dhoties and shirts under its Trademark, “RAVIRAM’s” and partially allowed the vacate injunction applications by holding that the Respondents may use the changed trade dresses for a period of 11 months. The court examined the trade dresses of the Plaintiff and the Respondent and arrived at a preliminary finding that the Respondent’s trade dress is not deceptively similar to the Plaintiff’s trade dress.

La Opala R.G Ltd v. Cello Plast – Calcutta High Court [October 11, 2018]

The court confirmed the earlier interim injunction order partly and did not confirm the injunction for the mark of ‘Mystrio Black’ of the Petitioner. The court held that protection should be granted to three marks of the Petitioner and further arrived at a preliminary finding that the mark of the Respondent, ‘Ornate Black’ did not look deceptively similar to the mark of the Petitioner, ‘Mystrio Black’.

Rajesh Kumar Agarwal vs Shiv Kumar Agarwal – Calcutta High Court [October 11, 2018]

The court granted an interim injunction restraining the Defendant from using the mark ‘Ganapati’ and infringing the registered trademark of Petitioners in any form. The court held that the adoption of the said mark by the Defendant did not seem bona-fide considering the goodwill and reputation the Plaintiff’s mark carried in the market.

Indian Performing Right Society v. Vodafone Idea Ltd – Calcutta High Court [October 12 2018]

The court passed interlocutory orders directing the Respondent to deposit a sum of Rs 2.5 crores within three weeks and to use value-added services which included songs and music of certain members of IPRS till the final adjudication. The Petitioner claimed royalty for the use of songs of its members like Sony and Tips, in the value-added services offered by the Respondent. The court held that the Society is not entitled to receive royalties if Sony and Tips had the right to allow the Respondent to use such music in its value-added services. It allowed the filing of affidavits and counter-affidavits regarding the same.

News

International

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