SpicyIP Weekly Review (September 28- October 4)

Topical Highlight

National Digital Library of India’s (NDLI) Copyright Guide (Feedback) – Part I

In this post, Anupriya reviews the copyright guide brought out by the National Digital Library of India (‘NDLI’) for Indian libraries for which comments were sought till September 30, 2020. At the outset she notes that the introduction to the guide should contain greater reference to user rights and the important role of libraries in furthering access. She then notes the unclear position of the Copyright Act on the aspect of ‘non-commercial libraries’. She points out that the possibly self-provided definition to the term in the guide is not very clear regarding both its sources and content, and would help with providing certain explanatory illustrations. She then notes that while the templates provided for record-keeping were easily understandable, they approach a narrow interpretation of the law and could be rights restricting. Additionally, on the point of digital indexing, she highlights that meta-data is often proprietary and might lead to costs for the library. Finally, on the explanation of Section 65A concerning technological protection measures (TPMs), she highlights that the guide fails to mention that such measures are punishable only if done with an intention to infringe, thereby exempting fair dealing.

National Digital Library of India’s (NDLI) Copyright Guide (Feedback) – Part II

In this post, Anupriya continues her analysis of NDLI’s copyright guide dealing particularly with fair dealing and user rights. She highlights the decision in the DU Photocopy case that shows that the importance of copyright stem from its ability to benefit the public. She notes that user rights as available under Section 52(1)(a) serve an important social purposes. She then highlights how the guide makes the users’ intentions irrelevant and the problems attached with the restrictive approach taken by the guide by way of an example of use of extracts. Subsequently, she discusses the challenge posed by a narrow understanding of ‘private use’ by the guide as its template seeks to prevent distribution of a copy of any work. In doing so, it fails to address the collaborative elements of research that have been acknowledged by the Canadian courts. Finally, she concludes by noting that the declarations required as per the guide might lead to a clearance and permissions culture owing to risk aversions and a contractual waiver of some user rights. This could not only be opposed to public policy, but also result in negative externalities, chilling free speech and fair dealing.

Thematic Highlight

The Public Interest Defence, and the Public Interest Offence – What Is The Way Forward In This Pandemic?

In this post, Swaraj and Varsha analyse the ‘public interest’ aspect in patent litigation. They discuss a recent Delhi High Court order where the court refused to allow a ‘public interest’ argument for selling of a drug related to Covid-19 treatment due to absence of any evidence indicating its shortage in the market and unaffordability. They particularly note two takeaways from the order: first, that a patent injunction can be vacated if the order granting it is shown as prima facie unsustainable on merits; and second, ‘reasonable affordability’ and ‘availability’ can be some of the factors that can ‘cumulatively’ shown to prove an ‘overwhelming’ public interest. They then note the invocation of ‘public interest’ in the cases of Bayer v. Union of India, and Novartis v. Cipla. They then posit the discussion in the particular context of Covid-related medicines and how other countries have resorted to compulsory licensing. They note the various tools available with the Indian government to ensure affordability and accessibility of medicines under Sections 92, 100, 102, and 66 of the Patents Act. They note that compulsory licensing in Section 92 would be preferable to revocation of patent under Section 66. Finally, they highlight if generic manufacturers do not step up for compulsory licensing, the government can invoke Section 47(4) to import medicines for distribution.

Other posts

Chinese Court Issues Anti-Suit Injunction Re Pending Delhi HC Case by InterDigital against Xiaomi

In a guest post, Rajiv looks at an anti-suit injunction granted by a Chinese court in favour of Xiaomi and against InterDigital. The concerned injunction order also imposes a fine of up to one million yuan per day on InterDigital in case of any violation. This decision impacts infringement claims filed by InterDigital against Xiaomi in July before the Delhi High Court for infringement of its 3G and/or 4G/LTE and H.265/HEVC standards. Rajiv argues that the decision of the Chinese court was correct as Xiaomi had first approached Chinese courts for determination of FRAND terms for InterDigital’s 3G and 4G SEPs. Furthermore, he argues that the petitions in India were a deliberate attempt to severely dilute the proceedings in the Chinese courts. Moreover, he notes that since InterDigital is purely a R&D company, public interest is also in favour of the injunction. Finally, he takes note of an anti-anti-suit injunction filed by InterDigital with the Delhi High Court which he believes could be looked at unfavorably by the Chinese Courts.

Copyright Doctrine of Conceptual Separability: Separating the Artistic from the Utilitarian

In this guest post, Varsha discusses the conceptual separability doctrine allowing copyright protection for artistic features of a useful article if separable from the utilitarian aspects. She points out that in the US there earlier existed at least ten different tests while dealing with the separability question including the Mazer test, the primary-subsidiary distinction approach, and the Denicola test. A certainty to this dilemma caused by the presence of myriad tests in the country was sought to be achieved by the SCOTUS in the Star Athletica decision. It created a two-prong test for determining copyright protection of aesthetic features embedded in a useful article. Varsha highlights that subsequent decisions in the US have continued to follow different tests, thereby Star Athletica not setting an effective standard. She then discusses the Indian position under Section 52(1)(w) of the Copyright Act and the Gujarat HC decision in IPEG Inc. v. Kay Bee Engineers holding that purely functional technical drawings would not have copyright protection. She concludes by noting the impact of such a view on several industries, in particular the fashion industry.

Sisvel v Haier: SEP Case Law from Germany

In this post, Mathews highlights key aspects of the first judgment of the Federal Court of Justice of Germany interpreting the Huawei v. ZTE framework established by the CJEU for SEP negotiation. The court held that patents will not ipso facto create a dominant position. The conduct of the infringer should reflect genuineness and seriousness towards FRAND licensing. The infringer is to be provided with sufficient information to allow it to assess infringement. The patent holder has to provide information on royalty only upon willingness of infringer and the royalty can be a range, and need not be an objective number. Portfolio licensing does not by itself indicate abuse of dominant position. Finally, while computing damages, FRAND royalty can be the basis only when the infringer was a willing licensee.

Free Online Course on Intellectual Property (Register by October 14)

Recently, we informed our readers that a free online course on intellectual property is being offered for students on the e-learning platform SWAYAM by YogeshPai, Assistant Professor of Law, Coordinator of IPR Chair and Co-Director of the Centre for Innovation, Intellectual Property and Competition (CIIPC) at National Law University, Delhi.More details regarding the course are mentioned in the post.

CUSAT’s Webinar on ‘Patented Medicines and Price Control – Impact on Access to Medicine’ [October 6]

We also informed our readers about a webinar on ‘Patented Medicines and Price Control – Impact on Access to Medicines’ being organized by the Inter-University Centre for IPR Studies (IUCIPRS), Cochin University of Science and Technology (CUSAT), Cochin, tomorrow(6th October, 2020). The webinar will take place from 4.00 pm to 5:30 pm. Further information on the webinar is mentioned in the post.

Decisions from Indian Courts

• Bangalore District Court in Nandhini Deluxe v. Cafe Nandini, dismissed a trademark infringement suit filed by the plaintiff regarding its marks ‘NANDHINI’ and ‘NANDHINI DELUXE’. [October 3, 2020]
• Delhi High Court in Astrazeneca Ab v. Emcure Pharmaceuticals Limited, in an infringement suit concerning plaintiff’s patented compound Dapagliflozin held that a decision on the grant of injunction could not be made before hearing the matter and hence did not grant interim relief. [October 1, 2020]

  

• Delhi High Court in Exxon Mobil Corporation v. Xcel Automatives Pvt. Ltd., granted an ad-interim injunction in favour of the plaintiff in suit filed by it for infringement of its registered device mark Pegasus. [September 30, 2020]
• Delhi Tis Hazari Court in Zino Davidoff SA v. Charanjeet Singh, granted a permanent injunction in favour of the plaintiff, restraining the defendant from using plaintiff’s registered ‘DAVIDOFF’ and ‘DAVIDOFF COOL WATER’ marks. The court also awarded exemplary damages amounting to Rs.5,00,000.00. [September 30, 2020]
• Delhi High Court in Worknest Business Centre LLP v. M/S Worknests, declined to grant an ad interim injunction in a petition filed by the plaintiff for infringement of its registered ‘WORKNEST’ mark by the defendants that use the ‘WORKNESTS’ mark concurrently in the same business, that of providing co-working spaces. [September 30, 2020]
• IPAB in Pharmacyclics, LLC v. Controller General of Patents, Designs, Trademarks, and Geographical Indications, and others, allowed the appeal and set aside the order of the controller that had revoked the plaintiff’s patent covering, inter alia, IBRUTINIB. [September 29, 2020]
• Delhi High Court in Bharat Bhushan Gupta v. Nitin Mittal, granted ex-parte ad-interim injunction in favour of the plaintiff in suit filed by it for infringement of its registered mark ‘OZOMAX’ under class 10 for body massagers. [September 29, 2020]
• IPAB in Novertis AG v. Controller General of Patents, Designs, and Trademarks, and others, allowed the appeal and set aside the order of the Controller that invalidated the plaintiff’s patent for its anti-cancer drug Cetrinib. [September 9, 2020]
• Delhi Tis Hazari Court in State v. Kamal Kishore, acquitted the accused in a case involving charges under Sections 103 and 104 of the Trade Marks Act for possession of infringing/ spurious articles, as the prosecution miserably failed to prove its case beyond reasonable doubt. [September 29, 2020]
• IPAB in Raghvendranath A. Raju v. Assistant Controller of Patents, allowed an appeal against the Controller’s order refusing patents on account of non-appearance of the applicant, and remanded the matter back to the Controller for hearing on merits. [September 22, 2020]
• Delhi High Court in Vinod Kumar Proprietor of Kunal Trading Corporation v. State (NCT of Delhi), dismissed a petition to quash an FIR lodged under Sections 103 and 104 of the Trade Marks Act by Respondent No. 4. It, however, left it open to the Petitioner to raise an argument as per Section 113(2) claiming that a rectification petition had been raised prior to the institution of the FIR, before the appropriate court. [September 22, 2020]

  

• IPAB in Eveready Industries India Limited v. Kamlesh Chadha, allowed the rectification petitions filed by Eveready and ordered the Respondent’s ‘Eveready’ mark to be removed from the Register of Trademarks. [September 22, 2020]
• IPAB in Pamesa Ceramica SL v. Grescasa Ceramics Limited, allowed the prayer of rectification from the plaintiff and ordered the removal of the ‘PAMESA’ mark from the Register of Trade Marks as had been registered by the defendant. [September 17, 2020]

Other News from around the Country

• In a joint communication, India and South Africa have asked the WTO to waive requirements under TRIPS Agreement for a limited period to ensure adequate production, availability, and distribution of crucial medicines and vaccines globally.
• The Indian restaurant-chain, Honest Restaurants, has sued Acme Jelly Products for trademark infringement and unfair competition for the use of the mark ‘Honest Jellies’.
• Five varieties of Indian coffee beans, three from Karnataka and one each from Andhra Pradesh and Kerala, have received GI tags.

  

• The Telangana High Court has reserved its orders in a civil appeal filed by Super Cassettes Industries against an injunction granted by the district court for Amitabh Bachchan-starrer ‘Jhund’.
• All About Ads has sued DivyaBhaskar of the DainikBhaskar group for copyright infringement and plagiarism of their work in the ‘DeshKe Hero’ campaign with the Government of India.
• An article in Bar and Bench examines the constitution of confidential clubs for dealing with sensitive information particularly trade secrets and IPR that their respective owners seek to keep confidential, and how there remains considerable uncertainty in the functioning of this model.
• A 14-year-old boy from Pune has obtained a patent for a sanitiser kit for sterilizing groceries.
• The Kotaiah family plans to apply for Geographical Indications Registry’s tag for ‘Kakinda Raja’, a unique Andhra Pradesh sweet.

News from around the World

• Google will pay over $1 Billion to publishers for news content in its product ‘Google News Showcase’.
• Artist Catherine Alexander has sued WWE and 2K for the depiction of Randy Orton’s tattoo that she designed in a game.

  

• France has said that the EU Commission’s approach to copyright rules, particularly Article 17, would reduce its effectiveness by allowing infringing content to stay online through broad exceptions.
• Several production houses and streaming companies including Netflix, Disney, Amazon, and Universal have come together to sue TTKM Enterprises that run a website named Crystal Clear Media that offers its viewers access to several movies and TV series, the rights of which are actually owned by the plaintiffs, on payment of a fee.