SpicyIP Weekly Review (August 31- September 6)

Topical Highlight

T-Series’ Copyright Infringement Claim against Roposo: Intermediary Liability, Safe Harbour and Fair Dealing

In this post, I analysed T-Series’ copyright infringement claim against Roposo. I first flagged two relevant features of the application- a music library and an option to ‘collaborate’. I explore whether Roposo can be considered an intermediary and argue that such holding is possible only for the ‘collaborate’ option, leading to personal liability for the music library. Subsequently, for the ‘collaborate’ option for which it acts as an intermediary, I argue that it can claim safe harbour protection. Additionally, I analyse whether a fair dealing exception is available to Roposo, concluding that it is possibly available only for the ‘collaborate’ feature and not for the music library. In conclusion I note that Roposo might ink a licensing deal with T-Series, similar to Sharechat. Finally, I touch upon the adverse impact of onerous licensing requirements on the user generated content potential in India and how it might engender the same remuneration disparities that TikTok was plagued with.

Thematic Highlight

Should Illegal Works Receive Copyright Protection?

In this guest post, Aniruddha analyses whether illegal works should receive protection. He notes that prima facie requirements concerning the content of a work (apart from originality) are not imposed by the Copyright Act in contrast with prohibitions based on obscenity and morality under patent and trademark law. While he sees strength in the statement that courts should enforce claims based on immoral or illegal acts, he believes the same is confined only to certain bright lined scenarios. However, in light of largely vague prohibitions such as those based on hate speech, he raises three concerns against complete prohibition of copyright. First, it will act as double disincentive due to chilling effect on free speech. Second, the absence of expression denial of copyright protection is a proof of legislative intent to this end. Third, it will allow third parties to modify the illegal parts and misappropriate the remaining work in their name. He, thus, suggests only a limited post-facto denial should be used with the author retaining rights such as moral rights, the right to modify the work, as well as the right to seek injunctions.

Other posts

Interim Injunctions: What’s the Damage? – A Summary

In this post, Swaraj and Praharsh summarise India’s tryst with interim injunctions in patent disputes. In the post they highlight the anomaly between courts granting interim injunction at a higher percentage, normatively and the delayed judgments by the courts in patent disputes, as observed, which essentially results in a scenario where ‘interim’ injunctions have lasted for years. They mention that despite a consensus on the four factor test to assess an application for interim injunction, there are inconsistencies as to what shall fall under these heads, which coupled with other highlighted problems arguably make a case for extremely cautious approach towards assessing these applications. They note that assumption of patent validity should not be strict when there is considerable opposing evidence, especially since the IPO has high error rates. In the final part they highlight the conundrum associated with ex partes wherein on one hand there is a risk of courts extending such ex parte interim injunctions to abnormally long durations and on the other hand, the risk of granting an unfair / inequitable injunction.

Fluid Trademarks: A Prologue to Trademark Law Going Awry?

In this guest post, Anshuman discusses a worrisome trend of trademark expansionism with specific focus on fluid marks. Anshuman first highlights how full price of a product comprises of actual price and the search cost borne by consumers. A key purpose of trademark law, then, is to minimise this search cost. Accordingly, in a cost-benefit set up, trademark monopoly can be seen as the cost and the search cost reduction as the benefit, creating a delicate balance. Anshuman highlights how this balance is affected by fluid marks that shift it in favour of the brands without much benefit, or even a loss due to greater confusion, to the consumers. Finally, Anshuman adds a caveat that fluid marks are merely one example of a general trend towards trademark expansionism with brands being synonymised with trademarks.

NLUJ’s Centre for IP Studies Essay Competition [Submit by September 27]

Recently, we informed our readers that the Centre for Intellectual Property Studies, NLU Jodhpur is organising an essay writing competition for law students from Indian universities on the theme ‘Copyright Societies and Performers’ Rights Societies in India’. The deadline for registration is September 20, 2020 and that for submission of essays is September 27, 2020. Further information on the submission guidelines is mentioned in the post.

CII & TAMU Executive Education Program on Health, Pharmaceuticals and IPR [Over 4 Weekends in Sept]

We also informed our readers that the Confederation of Indian Industry (CII) in partnership with Texas A&M University School of Law (TAMU), will be conducting an online certificate course on health, pharma and IP spread over four weekends in September 2020, starting 5th-6th September. We’re happy to note that SpicyIP readers are eligible for a discounted price for the course. More details regarding the course are mentioned in the post.

Decisions from Indian Courts

• Delhi High Court in Jindal Industries Pvt. Ltd. v. Panther Pipes Pvt. Ltd., passed an interim order restraining the defendants from using the ‘JINDAL POWER’ mark or any other marks deceptively similar to the plaintiff’s registered ‘JINDAL’ mark. [September 2, 2020]
• Delhi High Court in FMC Corporation & Anr. v. Modern Insecticides Limited, granted ex-parte ad-interim injunction in favour of the plaintiff in suit filed by it for infringement of its patent rights in Insecticide Chlorantraniliprole. [September 2, 2020]

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  Delhi High Court in Sporta Technologies Pvt Ltd v. Dream11 Team, granted an interim relief in favour of the plaintiff restricting the defendant from using plaintiff’s registered ‘Dream11’ mark or any other deceptively similar mark, asked the domain registrar to suspend defendant’s ‘Dream11team’ domain name, and asked the defendant to remove infringing content. [September 2, 2020]

• A Hyderabad civil court imposed an interim stay on the release of the Netflix series ‘Bad Boy Billionaires-India’ based on a petition by B Ramalinga Raju, accused in the Satyam fraud, considering sub judice proceedings and the loss to plaintiff’s reputation. [September 1, 2020]
• Delhi High Court in Delhi Public School Society v. Manish Tripathi, absolved the defendant of liability in a trademark infringement claim by designing a mask with the plaintiff’s logo since such act was based on a misrepresentation by a third party. [September 1, 2020]
• Delhi High Court in Flipkart Internet Pvt. Ltd. v. State of NCT Delhi & Anr, heard a petition from Flipkart to quash an FIR registered under Section 63 of the Copyright Act, 1957 and Sections 103/104 of the Trade Marks Act, 1999, owing to sale of allegedly fake products on its online marketplace. The Court allowed the State to review its position and listed the matter on a later date. [September 1, 2020]
• Madhya Pradesh High Court in Mold-Tek Packaging Ltd. v. S.D. Containers, held that under Section 22(4) of the Designs Act, despite the use of the term ‘High Court’, a commercial dispute will be transferred to a Commercial Court in a state where the High Court has no ordinary original civil jurisdiction. It also reaffirmed that an application for cancellation of registration of design would lie to the Controller exclusively, with High Court only having appellate jurisdiction. [September 1, 2020]
• Bangalore District Court in Nandhini Deluxe v. Nandhini Mushroom Family Restaurant, granted a permanent injunction restraining the defendant from using its ‘NANDHINI MUSHROOM FAMILY RESTAURANT’ mark for infringing and passing off the plaintiff’s registered ‘NANDHINI’ and ‘NANDHINI DELUXE’ marks. [August 31, 2020]
• Delhi High Court passed an order in Super Cassettes Industries Ltd. v. Relevant E Solutions Ltd. & Ors., wherein it noted Roposo’s affidavit stating that it has addressed most of the concerns raised by T-Series in its copyright infringement claim. The Court, however, refused to grant ad-interim injunction of a sweeping nature as demanded by T-Series without hearing the parties. [August 31, 2020]
• Bangalore District Court in Mysore Saree Udyog LLP v. Chickpet Saree Udyog, granted a permanent injunction restraining the defendant from using its ‘CHICKPET SAREE UDYOG’ mark for infringing and passing off the plaintiff’s registered ‘MYSORE SAREE UDYOG’ mark. [August 31, 2020]

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  Delhi High Court in Gujarat Cooperative Milk Marketing Federation Ltd. v. Amul Franchise.in, grant an ex-parte ad-interim injunction against the defendants running websites with similar domain names as ‘AMUL’ and duping individuals through the same. Moreover, it ordered the domain registrar to suspend/ delete the impugned domain names, and restrained them from selling those domain names containing the expression ‘AMUL’. [August 28, 2020]

Other News from around the Country

• The Geographical Indications of Goods (Registration and Protection) (Amendment) Rules, 2020 have come into force on August 26, 2020.
• The Ministry of Consumer Affairs, Food and Public Distribution, has released a draft of the Central Consumer Protection Authority (Prevention of Misleading Advertisements and Necessary Due Diligence for Endorsement of Advertisements) Guidelines, 2020, dealing, inter alia, with comparative advertising and puffery.
• The Trademarks Registry through a public notice informed that it has decided to conduct Show-Cause Hearings through Video Conferencing provided that the applicant or authorised agent give consent for the same before September 5, 2020.

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  T-Series has served a legal notice for copyright infringement against social networking application, Triller, for using its copyrighted music content.

• A post in Financial Express examined the practice of not crediting the lyricists for their songs on online streaming platforms and its impact on the lyricists.
• Sikkim’s famous Dalle Khursani, one of the world’s spiciest chillies, has received a GI tag.
• As per 2020 edition of the “Global Innovation Index” (GII) report, India has ranked 48^th out of 131 economies. Bangalore has emerged as the top science and technology (S&T) cluster in the country by applying for 3200 scientific patents to the International Patent Cooperation Treaty, thereby moving up five ranks to secure 60th spot among the top 100 S&T cluster rankings compiled by WIPO.
• Manipur is expecting to receive a GI tag for its Tamenglong orange (Citrus reticulata).
• PixaHive has created a database of images available under a public domain license.
• A CUSAT faculty has received a patent for an in-vessel composting technology that can easily be installed in backyards to process biodegradable waste to compost in a short time.
• Biocon Biologics India Ltd. along with its partner Mylan N.V. launched the cheapest insulin glargine injection in the US market, after an earlier favourable ruling in a patent challenge made by Sanofi.

News from around the World

• A Vietnamese technology firm, VNG, has sued TikTok for copyright infringement by using their songs without adequate licenses.

  

• In a major update, Google Images now provides a “Licensable” badge making it easier for consumers to understand which image is available for free use and for the rights holders to clearly specify licensing terms for the pictures.
• A patent infringement suit has been filed by Coretek Services against HCL America for its software product HCL Sametime, a collaboration application.
• Songwriter Eddy Grant who wrote the song ‘Electric Avenue’ has sued US President Donald Trump for copyright infringement by using this song in a Twitter video to support his re-election campaign.
• A copyright infringement case has been filed by music producer Terrance Hayes against Kendrick Lamar for violation of his rights in the song ‘Loyalty’.
• In light of the pandemic, fast food giant KFC has dropped its famous ‘Finger Lickin’ Good’ slogan stating that it ‘doesn’t quite fit in the current environment’, but will return when the ‘time is right’.