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SpicyIP Weekly Review (September 2-8)


This week, Divij Joshi wrote on the TikTok and ShareChat dispute, where TikTok served the latter with takedown notices, claiming it had ‘exclusivity’ over the content. Subsequently, ShareChat wrote to the Government, asking it to clarify whether TikTok is an intermediary, under Section 79 of the IT Act. To this effect, Divij asks a pertinent question—‘whether TikTok’s claims of ownership or ‘exclusivity’ over certain content on its platform change its status as an intermediary qualified for the exemptions under Section 79?’ He answers in the negative, by emphasizing the language of Section 79, which limits the functional qualification of intermediaries to a particular electronic record or to a specific transmission. He concludes that ‘intermediary’ under law should not be understood as a general broad category applicable across all of its functions, but a legal category applicable when an entity is dealing with a particular ‘electronic record’ in a particular manner. This would mean that TikTok might be liable for a particular ‘electronic record’ over which it exercises control but not for all content on its platform. Divij argues that the obscurity in law points to a need to reframe and broaden the discussion around intermediary liability to make platforms more accountable to both users and the state. He suggests that there should be creation of a sector regulator who is able to audit the platform’s adherence to its codes of conduct and due processes when dealing with illegal content.

In my first post as a fellow, I argued for the application of right of publicity claim to terms of service of Facebook, FaceApp and facial recognition applications. These terms of service allow the transfer of the user’s name, image or likeness, as a condition to use the services. I argue that the transferability of right of publicity is untenable under the law. To this effect, I argue that in India, in ICC Development, the right of publicity is recognized as a personal non-transferable, inherent in privacy. Further, subsequent decisions neither challenge this jurisprudence nor create a common law right of publicity. Rather, they create a property interest in publicity without ground. Lastly, the co-existence of right of publicity as privacy and property is troubling since in India, privacy is recognized as a non-transferable personal right, rooted in diginitarian foundation. I also argue that this distinction creates a class of publicity holders distinct from identity holders, which defeats the purpose of publicity right. Thus, if the right of publicity were treated as an inalienable right, which I argue that it ought to be under Indian law, then the terms of service, which treat it as otherwise, are against the law. I conclude by stating that this conception of right of publicity might be successful in protecting our data.

Aparajita Lath informed us of the recent launch of Singapore’s trademark application, which makes it the first trademark mobile application in the world. The application allows both Singaporean citizens/permanent residents and foreign registered users to file trademark applications. The process is extremely user friendly and the feature for search of similar marks is integrated with AI to provide accurate and reliable results, reducing the possibility of infringement! In comparison, Aparajita points to the lethargic Indian system, where trademark applications cannot be filed online without a certified digital certificate on an e-filing system that does not support specific operating systems. Further, the feature for search of similar marks is complicated and ineffective, which means most of the work is manual. Lastly, the form is simple but cumbersome, as it requires prior knowledge to fill in. Overall, the website suffers due to poor technology. In the end, she concludes with a brief comparison of the use of AI in WIPO, China, Norway, Chile and Japan and comments on the need for adoption of better technology to streamline administrative and other repetitive processes in India.

Prashant Reddy wrote a follow-up to his piece on the JNU Data Depot prepared by Mr. Carl Malamud. In this post, he discusses the response of Mr. Malamud, a self-proclaimed Gandhian. He states that Mr. Malamud’s response was abusive and dishonest, which is quite contrary to Gandhian ideals. Further, he comments on the source of the Data Depot, which was built from a source of pirated content, such as SciHub. He explains how this database is secondarily liable for copyright infringement, as SciHub has been declared a pirated database by multiple courts in the West. He concludes that this academic dishonesty is incompatible with Gandhian ideals for truth and honesty, and risks the cash starved JNU to lawsuits by publishers. Thus, he concludes that even if Mr. Malamud’s intention were to provide academic works to Indian scientists, he should not have aired his actions.

Devika Agarwal wrote a post on the recent notification by the Indian Copyright Office, clarifying that licenses are not required for utilization of sound recordings in the case of marriage related functions. The clarification pertains to Section 52(1)(za) of the Copyright Act, which creates an exception for religious functions and marriages. Despite the straightforward nature of the exception, Devika details that the clarification was necessary, as in the real world; it is not treated as such. She points out that in some cases, wedding venues and event management companies insist on fees for paying for copyright licences for music, since it is a common practice for a venue hosting an event (involving use of copyrighted music) to require proof of license to use the music from the event organizer. This is because of Section 51 of the Act, which makes a person who permits for profit the use of any place used to communicate copyright infringing music liable under the law.

Further, she points out that the exception is still not without grey areas. For instance, it is unclear whether sangeet would be covered within the exception. She maintains that since sangeet is an “other social festivity related to marriage”, it should be covered within the exception. Lastly, she points to judicial interpretation of Section 52(1)(za) in Phonographic Performance Ltd. v. State of Punjab where the P&H High Court held that the PPL should be paid royalties by the DJ Association, as the sound reproduction took place in a marriage hall, in an event connected to marriage and not in the conduct of marriage. Devika argues that this interpretation is too narrow and excludes even baaraat and sangeet.

SpicyIP Announcements

This week, Pankhuri Agarwal gave us exciting news about the call for paper proposals at the 5th edition of the annual ‘Asian IP Works-in-Progress Conference’, which will be co-organized by the Applied Research Centre for Intellectual Assets and the Law in Asia (ARCIALA), School of Law, Singapore Management University and School of Law, City University of Hong Kong on January 9-10, 2020. The Conference is an opportunity for IP Scholars across Asian economies, to present their research before their Asian peers. A total of 60 slots are available for presentations on various themes which will be chaired by leading IP scholars from Asian and non-Asian jurisdictions. Moreover, for 25-28 scholars, ARCIALA would provide their travel and accommodation requirements. Interested candidates need to submit an abstract of not more than 800 words before 15th October 2019.

Other Developments

Indian

Judgments

Facebook Incorporation and Another v. Surinder Malik and Others – Delhi High Court [August 28, 2019]

The dispute between the Parties arose on account of the Appellants’ alleged infringement of the Respondents’ mark “DA MILANO” by advertising and offering to sell products under an identical mark of the Respondents. The Court observed that Appellants did not play an active role as intermediaries and merely had the duty to take down posts which were brought to their notice by the Respondents. Accordingly, the Court directed the Appellants to take down unauthorized posts which infringe the Respondents’ mark on express notification by the Respondents. The Court also directed the Appellants to intimate the Respondents of doubtfully offending posts on their platforms to enable the Respondents to pursue action in relation to them.

M/s. Ever Bake v. M/s. Everbake Bakers Private Limited – Delhi High Court [August 30, 2019]

The dispute between the Parties arose on account of the Petitioner’s alleged infringement of the Respondent’s mark “EVER BAKE” by using an identical mark in respect of running a restaurant. The Petitioner had filed an application for the rejection of the Respondent’s suit on the ground of lack of territorial jurisdiction. The Court rejected this application and observed that the Trade Marks Act conferred additional jurisdiction on a plaintiff to institute a suit in a place where it had its registered office. Relying on the same, the Court noted that the Respondent had its place of business in Delhi, thereby enabling it to institute proceedings there.

Theobroma Foods Private Limited v. Fresh Baked Goodness and Others – Bombay High Court [September 3, 2019]

The Court vacated the previous interim orders granted in favour of the Plaintiff restraining the Defendants from using the Plaintiff’s mark “THEOBROMA” in respect of bakery products. At the hearing, the Defendants stated that there was no entity by the name of “Fresh Baked Goodness” which was included as Defendant No. 1. Accordingly, the Court allowed the Plaintiff to strike off Defendant No. 1. With respect to the other Defendants, Defendant No. 3 filed an affidavit claiming that they never infringed the Plaintiff’s mark and would not do so in the future as well. The Defendant also agreed to remove any reference to the Plaintiff’s mark on its website.

Xotik Frujus Private Limited v. R.R.E. Foods and Soft Drinks Private Limited – Bombay High Court [September 3, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “JEERU” by adoption of a deceptively similar mark in respect of beverages. In arriving at this decision, the Court gave effect to the terms mentioned in the affidavit filed by the Defendant. Moreover, the Defendant also tendered a cheque of Rupees 2.5 lakhs in favour of the Plaintiff as full and final settlement.

News

  • After Delhi HC restrained it from manufacturing or marketing Novartis’ diabetes drug, Vildagliptin until its secondary patent’s expiry in December, Natco files a suit in Hyderabad court claiming its right to manufacture the drug on the basis of the expired patent covering it.
  • GI Registry defers the hearing on revocation of GI tag granted to ‘Banglar Rasogolla’ to 21st October after West Bengal Government seeks more time to submit its arguments.

Opinions

  • Dr. Kalyan Kankanala, Managing Partner of BIP Counsels, argues in favour of statutory licensing of music for interning broadcasting.
  • A piece in The Hindu argues that a GI tag for a product makes little impact on its prospects in the market due to lack of awareness, enforcement of protection and adequate support structures.

International

  • Uber denies request for the disclosure of its driver’s list, as it cites it as a ‘trade secret’.
  • CJEU rules that EU trade mark infringement suits can be filed in the member state where the alleged infringer’s consumers are based.
  • An Australian Senate Committee recommends abolition of innovation patent system.

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