SpicyIP Weekly Review (September 7 – 13)

Topical Highlight

When Covid-19 Shuttered Cinema Halls!: Should Producers Share Royalties from OTT Release of Films?

In a guest post, Tanvi Sehgal weighs in on the impact of the COVID-19 induced shift from theatrical release of films to OTT release on the producers’ share of earnings. She explains how the pandemic shutting down movie theatres for such a long duration has forced producers to release their movies on OTT platforms such as Netflix, Amazon Prime and Hotstar. According to her, movies intended for a theatrical release tend to involve significantly larger investments than those meant for OTT platforms or television as the former brings in huge profits. She elaborates how the 2012 amendment has made equal sharing of royalties between producers and the authors of underlying works mandatory except in case of cinema hall showings of the film. In these unprecedented times, this provision is harming the producers as they are not making enough profits and are being compelled to share royalties. Tanvi suggests tackling this by amending the law to exempt royalty sharing for the first medium of release, whichever it may be. To prevent inequities in cases where the first and any subsequent medium remains the same, the legislature may fix an outer time-limit during which the royalties would be exclusive for the producer.

Thematic Highlight

Interim Injunctions: What’s The Damage? – Part II

This post is a follow-on to Swaraj and Praharsh’s previous post, where they summarized some of the issues with interim injunctions in high-tech patent matters. They discussed a number of cases to emphasize that the granting of an interim injunction necessarily requires a discussion of the factors i.e. prima facie case, balance of convenience and irreparable hardship (and public interest when necessary), and that the same must not be granted as a matter of routine.  When courts must provide interim injunctions, they suggest two safety measures to counter-balance the limitations of interim injunctions. Firstly, a security bond obligating the plaintiff to deposit an amount upfront for the potential loss to the defendant’s business, and, potential damages to public interest, may be maintained to provide remedy to the defendant in case of wrongful interim injunction. It would also deter the plaintiff from approaching the court with demands of interim injunctions except in apt situations. Secondly, on institution of a counter suit for recovery of damage by the defendant after final determination of the previous suit, the party may be awarded compensation where a temporary injunction has been granted on insufficient grounds. They conclude by revisiting practices in other jurisdictions and suggesting four possible measures that could support these two discussed safeguards.

Other Posts

Store Layouts: The New Trademark on the Block

In this post, I analysed store layout trademarks. I begin by explaining what these trademarks protect and how they are treated by different trademark regimes including the US, EU and finally India. Using U & Us Home Studio’s ‘Discussion Area Zone’ as an example of a layout situated inside a showroom, I point out how consumers would not have access to such a zone until they actually enter the outlet, emphasizing that  layout trademarks need to perform the basic source-indication function. I then explain how these marks would meet the graphical representation requirement if pictorial representations depicting accurate proportions are submitted during filing. Lastly, I discuss functionality doctrine as a challenge to layout trademarks, as the articles combined together to obtain the unique arrangement might be those that are necessary to obtain specific technical functions. While a combination of functional and non-functional elements can still be distinctive, it is necessary to prove that the manner in which the features are combined amounts to more than simply the ‘sum of its parts.’ I conclude that the unique nature of layout trademarks doesn’t present any obstacles that cannot be overcome by use of safeguards present in Indian trademark law.

NUALS’ 6th CIPR National Essay Writing Competition [Submit by Oct 4]

We informed our readers that the Centre for Intellectual Property Rights, National University of Advanced Legal Studies, Kochi is organizing the 6th edition of their National Essay Writing Competition for law students on the theme ‘Innovate for a Green Future: Role of IP Rights in Encouraging Innovation and Creativity’. The deadline for submission of essays is October 4, 2020.

Yves Choueifaty v. Attorney General of Canada: An Interesting Development from Canada on Claim Construction and Patent Office Manuals

Adarsh analysed the Federal Court of Canada’s judgment in Yves Choueifaty v. Attorney General of Canada, concerning the patentability of computer-related inventions (CRI). He explains how the Court concluded that the Canadian Patent Office’s “purposive manner” of construing the claims as prescribed in the Manual was erroneous, explicitly holding that the principles of claim construction were identical, whether the matter was being decided by a Court or by the Patent Office. The Federal Court expressly differentiated between the “substance of the invention” approach and the “purposive” construction approach. It held that the latter required the claim be construed based on its “essential” features for which both the inventor’s intention and the perspective of the PSITA were relevant. Adarsh emphasizes that claim construction principles cannot vary between the Patent Office and courts, although practice in the US allows for this. He goes through the Indian Patent Office’s CRI guidelines and Roche v. Cipla and questions whether “purposive” construction as expressed by the court is the same as looking at the “essential” features of the claim? He concludes that the claim construction principle of splitting between essential and non-essential elements, does not apply in India, instead the specific tests that apply under this concept vary across courts.

Lizzo’s Copyright Victory in Truth Hurts: Joint Authorship and Follow-on Works in the Music Industry in India

Anupriya discussed Lizzo’s victory against three songwriters who had claimed that her super-hit song ‘Truth Hurts’ was derived from ‘Healthy’, which they wrote with Lizzo, making them co-owners of ‘Truth Hurts’ too. Analysing Section 2(z) of the Copyright Act, Anupriya explains that in India, while ownership does not extend to the derivative of a jointly authored work when the co-author had no contribution in creating the derivative, the very creation of derivatives would still require the permission of all joint authors. In the film industry, the assignment of rights to the producer and eventually the label could mean that copyright claims are likely to be interpreted in their favour. In contrast, creators of independent music are becoming increasingly inclined to demarcate their rights on paper. She then argues that requiring permission from all joint authors before an existing work can be built upon, impedes creative engagement as many artists consider their works to be a ‘conversation’ and achieve a sense of fulfillment and belonging through community engagement in these works. Finally, she suggests that statutory fair dealing for the purpose of ‘criticism’ must import ideas from musical practices that conceptually favour a wider understanding of permissible appropriation than the narrower terrains signified by ‘criticism and review’.

Online Roundtable on ‘The Global Implications Unwired Planet v. Huawei: Lessons for India’s Evolving SEP Jurisprudence’ [September 11]

We also informed our readers about the online roundtable conducted by DPIIT IPR Chair, NLU Delhi on 11th September on the global implications of the UK Supreme Court’s decision in Unwired Planet v. Huawei and the Lessons for India’s evolving SEP jurisprudence that was conducted on.  Our earlier posts on UK Court of Appeals’ decisions in this case can be viewed here and here.

Much Ado about ‘Use’: UK Decision Rekindles Debate under Indian Trade Mark Law

In a guest post, Yash More and Hitoishi Sarkar discussed the Indian courts’ interpretation of what constitutes ‘use’ while adjudicating upon disputes concerning prior use of trademarks in light of the recent UK HC decision in MERCK KGaA v. MERCK Sharp. They explain that the UK HC held that to constitute ‘prior use’, actual sales in the market are not required. It rejected the argument that a business that has not launched its products under the trademarks is not entitled to disturb a registered trademark. They contrast this with Delhi HC’s recent decision in Peps Industries v. Kurlon, which held ‘sales’ to be an essential criterion to claim the defence of ‘prior use’ under Section 34 of Trade Marks Act. They discuss several judgments delivered by the Delhi, Calcutta and Bombay HCs on the interpretation of ‘prior use’, as well as the Supreme Court’s decision in Hardie Trading and Ors. v. Addisons Paint and Chemicals. They suggest that the jurisprudence is fairly consistent in not requiring proof of sales to confirm prior use, with the only exception of Delhi HC which has created confusion in this regard.

Other Developments

Decisions from Indian Courts

• Delhi High Court, in Mittal Electronics v. Sujata Home Appliances, applied the Supreme Court’s ratio in Nandhini Deluxe v. Karnataka Co-operative Milk Producers Federation and modified its ad-interim injunction noting that even though plaintiff is the prior user of the mark ‘SUJATA’, for the goods mixer, grinders, blenders, however, for the goods water filters, water purifiers and RO System, the licensor and director of defendant No.1 is the prior registered owner of the mark ‘SUJATA’. [September 9, 2020]
• Delhi High Court, in Inter Ikea Systems Bv v. Viki Furniture, awarded a temporary injunction restraining the defendant from infringing the copyright of the plaintiff as also passing off their goods as that of the plaintiff through their website www.vikifurniture.com and products listings in www.flipkart.com and other e-commerce portals. [September 9, 2020]
• Delhi High Court, in Designarch Consultants v. Jumeirah Beach Resort LLC, a case concerning infringement of BURJ AL ARAB by plaintiff’s BURJNOIDA trademark, directed the till the defendant to give atleast seven days’ prior notice to the plaintiff before initiating any proceedings including legal proceedings in any court claiming infringement and/or for passing off the defendant’s mark, logo or the shape by the plaintiff. Defendant was also restrained from extending any threat to the plaintiff. [September 10, 2020]

Other News from around the Country

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  T-Series has issued copyright infringement notices to many social video platforms including Bolo Indya, Mitron, MX Player’s Takatak, Triller and Josh for using its copyrighted songs and videos on their platforms, asking each of them to pay around Rs 3.5 crore in damages. Nikhil’s post on T-Series’ recently filed suit against short-video app Roposo can be viewed here.

• The Department of Science and Technology’s latest Science & Technology Indicators (STI 2019-20) have revealed that 76% of patents filed in India in the last 13 years were by foreign companies.
• A piece in IPRMENTLAW discussed the DPIIT’s recent call for a stakeholders consultation meeting to discuss the various aspects pertaining to registration of multiple copyright societies as opposed to single copyright society in a single class of work.
• Music Composers Association of India has confirmed issuing an opinion in favour of composer Pranav Ajayrao Malpe, whose’ song Aayenge Hum Vapas, the anthem of the upcoming season of IPL 2020, has been accused by rapper Krishna Kaul to be a copyright violation and plagiarism of the latter’s song Dekh Kaun Aaya Vapas. Kaul has responded by stating that MCAI has no legal authority under Copyright Act.
• The Tea Board of India has warned of legal action against those gardens in the Darjeeling hills which process and sell tea leaves from outside and label them as the GI-tagged Darjeeling Tea.
• A piece in The Better India discusses cases of traditional Indian healthcare remedies and attempts to patent them.

News from around the World

• State Attorney Generals in the USA have urged the federal government to exercise its march-in rights under the Bayh-Dole Act (similar to compulsory licensing in India) against Gilead to ensure that Americans can access sufficient supplies of Remdesivir during this pandemic and at affordable prices.

  

• A court in Texas, USA has ruled that Apple must pay more than $500 million in damages and interest for 4G patent infringements held by intellectual property company PanOptis.
• The US International Trade Commission has launched a Section 337 investigation into whether certain Apple’s mobile devices and laptop computers infringed patents held by Japan’s Maxell Holdings.
• UKIPO has denied registration to trade mark featuring the words ‘THE ROYAL BUTLER’, sought by Prince Charles’ former butler on grounds of possibility of confusion as to Royal patronage.
• The Advocate General of the European Court has submitted an opinion in case C‑637/19 BY v. CX that electronic transmission by a party to proceedings of copyrighted material as evidence to a court does not constitute a “communication to the public” or a “distribution to the public” in accordance with Article 3(1) and Article 4(1) of Directive 2001/29/EC.
• Members of Europe’s creative industry have criticised the European Commission’s consultation on new Article 17 of the Copyright Directive for departing from the original objective of providing a high level of protection for rights holders and creators and to create a level playing field in the online Digital Single Market.

  

• Nine people in Shanghai were sentenced up to six years in prison on Wednesday for infringing on the copyright of Danish toy maker LEGO. The toys the group designed, produced and sold were under the brand name LEPIN, whose packaging, design and color were all similar to that used by LEGO.
• Japan’s Sharp Corp said that it has won a patent infringement lawsuit relating to mobile communications technology against Daimler in Germany.
• Myanmar’s Ministry of Commerce has urged business owners to register trademarks in accordance with the new Trademark Law to streamline the process of shifting from first-to-use to first-to-file system.