(This post has been authored by our intern, Bhavik Shukla, a 5th year student at NLIU, Bhopal)
Topical Highlight
Reverse Engineering and Aarogya Setu App: Contracting Out of Fair Dealing?
One of our former bloggers, Aparajita wrote a guest post examining the legal enforceability of the prohibition on reverse engineering imposed by the terms of service of the Govt’s COVID-19 tracking mobile app Aarogya Setu, in light of the fair use rights of users under Section 52 of the Copyright Act. She begins with noting that the application prohibits ‘reverse engineering’, and that the term itself has not been defined anywhere. She further mentions that sections 52(1)(ab) and 52(1)(ac) of the Copyright Act permit reverse engineering as a fair dealing right. She notes that the prohibition on reverse engineering is equivalent to parties being made to contract out of their fair dealing rights, while simultaneously observing that the application is imposed as mandatory and users are left with no real choice. In that backdrop, she argues that the application’s terms of service which prohibit reverse engineering are unenforceable, as they defeat the purpose of the Copyright Act and being rights meant to serve a public purpose, cannot be waived by a private agreement.
Thematic Highlight
Govt’s Draft Model Guidelines on Implementation of IPR Policy for Academic Institutions: A Critique
In his first submission for the SpicyIP Fellowship, Shivam Kaushik critiqued the Draft Model Guidelines on Implementation of IPR Policy for Academic Institutions that was released by the Government in September last year. Shivam notes that the Model Guidelines have borrowed from the Bayh-Dole Act, 1980, as they seek to promote transfer of technology and knowledge from academia to the industry, by incentivising research led education. He points out various flaws with them: first, he observes that the Model Guidelines are not backed by any data or study, and merely aim to extrapolate a foreign policy to India. Second, he states that the circumstances prevalent in present day India may prevent the desired emulation of the American model. Third, he notes that the implementation of the Model Guidelines may result in the imposition of a camouflaged IP tax. Fourth, he states that the absence of march-in rights for IP generated out of public funding in the Model Guidelines is a retrogressive step.
Other Posts
Same Old Disparagement Story: Delhi HC Grants Interim Injunction against Lifebuoy Ad
Namratha wrote about the Delhi HC’s decision in Reckitt Benckiser v. Hindustan Unilever Limited, wherein the Court granted an interim injunction restraining the defendant from airing its commercial. She notes that the plaintiff argued that its antiseptic liquid was being unfairly compared with the defendant’s bath soap. Highlighting the three-step test employed in examination of disparagement claims, she observes that the defendant’s advertisement was held to be ‘detrimental to the distinctive character’ of the plaintiff’s mark. Subsequently, she points out the long history of disparagement cases between the parties involved in the case, while also alluding to the HC’s statement on the parties indulging in the ‘game of litigation’. She observes that the guidelines mentioned in the Advertising Standards Council of India’s Code prevent advertisements which mislead customers or attack competing products, and stresses upon the need to reconsider strict guidelines or adopt measures beyond self-regulation to prevent the occurrence of disparaging claims in the future.
Debate on Parallel Import of Books: Still Relevant in the Post-Amazon Age?
In another guest post, our fellowship applicant Anupriya discussed the relevance of the debate on the legality of parallel importation of books in India in the age of Kindle and e-books. She notes that the Copyright Act prohibits parallel import into India, which leads to absurd circumstances for second-hand book stores and e-books. With reference to e-books, she notes that Amazon sells books on its platform without a requirement for prior proof of being sourced from authorised distribution channels. She also states that Amazon’s ‘Buy Box’ policy acts to the disadvantage of publishers, by pushing books sold by them below its cheaper substitutes. She notes that Amazon’s policies are in contravention of the existing laws, as first, it fails to exercise due diligence in offering third party books and second, it does not limit orders for books as per the proviso to section 51 of the Copyright Act. She further observes that the introduction of e-books has made the parallel imports debate redundant, as e-books are not sold but merely licensed to readers.
Trademarking of Blockchain Technology and Virtual Currencies: An Unsolvable Conundrum?
In a follow-up post to Arun’s post, I discussed the various aspects of trademark registration for blockchain-related technologies. First, I note that the concept of public blockchain cannot be reconciled with traditional trademark law to afford it a collective mark protection. Second, I state that divulging details for registration of a trademark shall defeat the technologies’ requirement of maintenance of anonymity. Third, I argue that doing away with the ‘paradox of de-centralized control’ shall result in a fundamental infrastructural change in the technologies. Subsequently, I note that the grant of trademark protection to such technologies shall make no difference as, first, it is improbable that every participant may relinquish his anonymity to merely ‘use’ the trademark. Second, I argue that a participant does not require an authorization from an organization to use a blockhain/ cryptocurrency’s name. Third, I observe that a significant hurdle to the trademarking of such technologies is its illegal classification in some countries.
Announcing the 1st Shamnad Basheer Essay Competition on Intellectual Property Law
On the occasion of our Founder Prof. (Dr.) Shamnad Basheer’s 44th birth anniversary, we announced the first edition of the Shamnad Basheer Essay Competition on Intellectual Property Law. The competition is open to all students enrolled in any LL.B. program (or its equivalent) and the deadline for submissions is June 30, 2020. For further details on the prize money, the stellar panel of judges and the selection of topics etc., please view the post here.
We’ve also put together a collection of Prof. Basheer’s publications and public interest interventions here (also accessible from our Resources page). Please do let us know if you’re aware of or come across any that we may have missed.
Other Developments
Decisions from Indian Courts
Delhi HC restrains a New York-based corporation from using the domain name ‘www.hindustan.com’ and also grants an anti-suit injunction against it [April 28, 2020]
In HT Media Ltd. & Anr. v. Brainlink International, Inc. & Anr., the Delhi HC granted an interim injunction restraining the Defendants from using its domain name ‘www.hindustan.com’, and also an anti-suit injunction against the proceedings filed in New York. The dispute between the Parties arose over the Defendants’ alleged infringement and passing off of the Plaintiffs’ mark ‘HINDUSTAN’ and its domain names ‘www.livehindustan.com’ and ‘www.hindustantimes.com’ by using a deceptively similar domain name ‘www.hindustan.com’. The Court observed that in the internet age, a domain name serves as a trademark and adoption of similar domain names may result in diversion of users. It was further noted in respect of the anti-suit injunction prayed by the Plaintiffs, that the Defendants had not used their domain name since 2000, and had merely registered it to profit from it. The Court also noted that the Defendant’s intention of profiteering was solidified when they increased their offer price of the domain name to USD 3 million from USD 1 million on being approached by the Plaintiffs. The Court noted that there were sufficient points of contact for vesting the jurisdiction in it, and accordingly it had formed the prima facie opinion that it had personal jurisdiction over the Defendants.
Delhi HC suspends operation of the public notice on extension of deadlines issued by the IP Office on May 4 [May 11, 2020]
In Intellectual Property Attorneys Association v. The Controller General of Patents, Designs & Trade Marks & Anr., the Delhi HC ordered for the suspension of operation of the public notice dated May 4. The dispute between the Parties concerned the public notice published by the Respondents dated May 4 through which litigants and their advocates were extended time till May 18 to complete certain acts and filings in IP matters. The Court observed that no tribunal or authority could act contrary to the order of the SC and that all such tribunals and authorities were to act in aid of the SC. The Court agreed with the Petitioners that the protection against limitation should have been triggered from March 15 and not March 25. Moreover, the Court stated that the time period granted for filings is very narrow, and that there was no merit in the same.
Delhi HC extends the application of interim orders in all cases to June 15 [May 15, 2020]
In Court on its Own Motion v. State & Ors., the Delhi HC observed that the restrictions imposed by the Government of India were still in operation and hence, all interim orders in matters pending before it and the courts subordinate to it were to be extended till June 15. This extension was granted in all cases except where a contrary order was passed by the Supreme Court.
Other News from around the Country
- IPAB issues a public notice informing that cases will be heard through video conferencing until further orders. It also issued a subsequent notice delineating the procedure for e-filing of cases.
- Delhi HC extends suspension of functioning of itself as well as its subordinate courts till May 23.
- IP Office and DPIIT urged to release Annual Reports for last two years, 2018-19 and 2019-20.
- Gilead Sciences enters into non-exclusive licensing agreements with five Indian and Pakistan based generic pharma companies (Jubilant Life Sciences, Cipla Ltd., Hetero Labs Ltd., Mylan and Ferozsons Laboratories) to manufacture a generic version of Remdesivir for distribution in 127 countries, excludes Brazil.
- Kerala announces its support for the Open COVID movement and intends to become a part of international collaborations for research and development.
- Four professors of Nagpur University patent two disinfection devices for sanitizing of COVID-19 contaminated surfaces.
- Panjab University’s professor files for a patent for a cost-effective disinfectant which uses a photodynamic therapy to kill microbes.
- The Defence Ministry of India patents affordable personal protective equipment developed by the Indian Navy.
- Thanjavur Netti works and Arumbavur wood carvings of Tamil Nadu have been granted a GI tag. The Sohrai-Khovar paintings of Jharkhand have also been granted a GI tag along with Puttapaka Telia Rumal of Nalgonda.
- A piece in the Economic Times contemplates if voluntary licensing of patents will become the norm in light of the COVID-19 pandemic.
News from around the World
- WIPO launches a COVID-19 IP Policy Tracker to provide information on the measures adopted by IP offices in light of the COVID-19 pandemic.
- WHO urges countries to make COVID-19 vaccines universally available in order to ensure access to everyone.
- Various world leaders sign an open letter urging all vaccines, tests and treatments to be made patent-free and distributed fairly.
- Israeli researchers file a patent application for 8 antibodies believed to be effective against the coronavirus.
- The US is likely to issue a warning to China to allegedly restrain Chinese hackers from stealing data on vaccines and treatments for the coronavirus.
- A piece in Wion argues that American pharmaceutical companies may not put human lives above their own profits in the grim times of the coronavirus.
- A piece in C&En covers the relaxations of patent rights by various companies in different parts of the world in the times of COVID-19.
- A piece in JDSupra argues that Amazon’s Utility Patent Neutral Evaluation Program provides for an effective and affordable online patent enforcement strategy during the coronavirus pandemic.
- A piece in Trade Experettes argues that the COVID-19 vaccine, when developed should be compulsorily licensed with the aid of the Doha Declaration.
For regular updates on IP news and opinions related to COVID-19, please visit our COVID-19 & IP Updates page here (also accessible from our Resources page).
