SpicyIP Weekly Review (November 23- 29)

Topical Highlight

A Copyright Reform Agenda from a Group of Like-Minded IP Teachers

In this guest post, Prof. (Dr.) N.S. Gopalakrishnan provides us an overview of the recommendations focussing on desirable public interest oriented amendments to the Copyright Act prepared by a group of ‘like minded IP teachers’. He particularly summarises four broad themes of amendments. The first set of proposed changes deal with Section 52. These include an open-ended fair dealing clause under Section 52(1)(a), expanding educational use exception to cater to the needs of online learning, a specific exception for text and data mining, broader exceptions for libraries, etc., and broader exceptions to ensure access to the disabled. The next set of changes concern the definitions under Section 2. These include amendments to the definitions of ‘broadcast’ to clearly differentiate the rights of broadcasting organisations from that of the authors, ‘communication to the public’ to include live streaming, and ‘computer programs’ to exclude functional elements such as APIs. The third proposal is to exclude government works from copyright protection, and the final amendment proposed is to recognise international exhaustion in the area of copyright including digital exhaustion.

Thematic Highlight

Officer’s Choice v. Chetak Whisky: An Incorrect Choice of Jurisdiction?

In this post, I analyse the issue of territorial jurisdiction that was dealt with by the Delhi High Court in a copyright and trademark infringement suit filed by Allied Blenders and Distillers Pvt Ltd for their ‘Officer’s Choice’ products. The court granted an ad interim relief holding that the objection of lack of territorial jurisdiction was not satisfied at this stage. I argue that the court reached at this conclusion by its failure to acknowledge the defendant’s arguments based on a seemingly incorrect interpretation, and relying solely on the averments in the plaint. I then discuss the two provisions based on which jurisdiction was claimed by the plaintiff. In the context of Section 20, CPC, I argue that the defendant could not be said to be carrying on business in Delhi as “the essential part” of the business did not take place there. Similarly, since there was no “imminent” or “real” threat of infringement in Delhi, cause of action could not have been said to arise there. Finally, the long-arm jurisdiction under the Trademarks Act or the Copyrights Act could not be invoked since the plaintiff had its subordinate office in Rajasthan where the cause of action arose.

Other Post

Section 46(2): ‘One Patent Per Invention’ or ‘One Invention Per Patent’?

In this guest post, Mr. Amit Tailor analyses whether rejection of claim(s) of a later patent application having ‘similar’ or ‘overlapping’ scope with that of an ‘earlier’ patent application is appropriate under Section 46(2) of the Patents Act which provides that a patent can be granted for one invention only. He highlights that Section 46(2) is directed towards the concept of ‘unity of invention’ with discretion available to the Controller to grant a single patent for multiple inventions. He argues that instead the correct provision under which this challenge could have been brought is Section 13(1)(b) that deals with anticipation of the claim in a prior claim.

Decisions from Indian Courts

• The Delhi High Court in Rb Health (Us) Llc v. Dabur India Limited, refused to grant an interim injunction in favour of the plaintiff in a design infringement and passing off case in relation to the defendant’s soap bars. [November 27, 2020]
• The Delhi High Court in Koninklijke Philips N.V v. Xiaomi Inc, in an application seeking interim injunction restraining the defendant from using UMTS enhancement (HSPA, HSPA+) or LTE technologies due to patent infringement allegations, asked the defendant to maintain an amount of Rs.1000 crores in their bank accounts operated in India till the next hearing. [November 27, 2020]
• The Delhi High Court in Whitehat Education Technology Pvt. Ltd. v. Anirrudha Malpani, in a suit filed on grounds of defamation, infringement of trademark, dilution and tarnishing of trademarks, disparagement, damages, and unfair competition, granted an ad interim injunction restraining the defendant from posting derogatory content against the plaintiff, and directed him to take down certain identified tweets. [November 24, 2020]
• The IPAB in Rajasthan Patrika Private Limited v. Phonographic Performance Limited India, in an intervention application by IPRS seeking fixing of royalties for sound recordings with respect to FM Radio Stations, ordered that IPRS is a necessary party to be heard and final orders will be passed after hearing all parties on merit. [November 23, 2020]
• The Delhi High Court in Karan Bajaj v. Pradeep Poonia, granted an ad interim injunction restraining the defendant from, inter alia, using the name ‘Whitehat Sr’ for his YouTube Channel, and directed him to take down certain identified tweets and YouTube videos. [November 23, 2020]
• The Bombay High Court in Lasa Supergenerics Limited v. Shreegen Pharma Limited, granted an interim injunction restraining the defendants from using the applicant’s patented process under Patent No.326628 or from manufacturing the compound Albendazole by using the process. [November 23, 2020]
• The Delhi High Court in Ufo Contemporary, Inc. v. Creative Kids Wear (India) Pvt. Ltd., granted an interim injunction restraining the defendants from using an identical or deceptively similar mark to the plaintiff’s registered UFO mark for garments. [November 23, 2020]
• The Madras High Court in D. Padmasingh Isaac v. Aachi’s Village Restaurant, granted a permanent injunction restraining the defendant from using marks similar to the plaintiff’s registered marks ‘Aachi’, ‘Aachi Kitchen’, and ‘Aachi Chettinad Restaurant’. [November 23, 2020]
• The Bombay High Court in Franco Indian Pharmaceuticals Pvt. Ltd. v. Faizan Javedbhai Bodla, granted an interim injunction restraining the defendants from using any mark deceptively similar to the plaintiff’s registered marks ‘DIAVIT/DIAVIT PLUS’ for medicinal and pharmaceutical preparations. [November 23, 2020]
• The Kerala High Court in Sirajudheen v. The State of Kerala, while denying a plea by the petitioner to quash a suit instituted against him under Section 51 r/w 63 of the Copyright Act held that the registration of the original work, and arraignment of the Registrar of Copyrights and the owner of the work as witnesses, does not constitute a valid reason to quash the proceedings. [November 19, 2020]
• The Delhi High Court in Astrazeneca Ab v. Micro Labs Limited, declined the plaintiff’s plea of an interim injunction restraining the defendants from manufacturing the compound Dapagliflozin, claiming patent rights over it. [November 18, 2020]
• The Delhi High Court in Allen Career Institute v. Telegram Fz-Llc & Others, restrained the defendants from uploading Plaintiff’s copyrighted study material/lectures, and directed Telegram to take down certain identified channels/ accounts. [November 18, 2020]
• The Meghalaya High Court in Shri Teilang Nongrum v. State of Meghalaya, quashed criminal proceedings commenced under Section 63 of the Copyright Act after the infringer and the copyright owner came to an amicable settlement. [November 16, 2020]

Other News from Around the Country

• The Screenwriters Rights Association of India (SRAI) has applied for registration as a copyright society under Section 33 of the Copyright Act, in literary and dramatic works. (Edit: This is the second time SRAI has applied for registration as a copyright society. Divij’s post on the application made in 2017 can be viewed here.) The Copyright Office has invited objections/ comments regarding this application which are to be submitted within 30 days of the publication of this notice.
• The Copyright Office introduced a Non-Tax Receipt Portal in its e-filing portal which is to be used for making online payments.
• In the first half of 2020, Facebook took down 37,16,817 pieces of content based on 6,59,444 copyright reports; 4,04,078 pieces of content based on 1,66,310 trademark reports; and 13,08,834 pieces of content based on 97,186 counterfeit reports.
• In a piece for Newslaundry, Prashant argues for the inclusion of the concerns of news houses and the challenges faced by them from the online media in the discussions concerning amendments to the Copyright Act.
• In an interview with Scroll, KM Gopakumar highlights the importance of treating Covid-19 vaccines as a public good instead of being hoarded by rich countries.
• The Central Government is set to introduce a bill for amending the Competition Act in the upcoming Winter Session with the key changes being vesting the power of appointment of the DG in the Commission itself, and “settlement” and “commitment” procedures for quick case disposal.
• A Bilateral Patent Prosecution Highway (PPH) pilot program has started between the Indian Patent Office (IPO) and the Japan Patent Office, and the IPO will commence Form 5-1 under Chapter 5 of the PPH Guidelines from 7th December 2020.
• A MS University faculty has secured two copyrights from the Copyright Office, for developing a script for the Gujarati folk drama Bhavai, and for a residential layout of a house.
• A team led by the dean of College of Animal Biotechnology, GADVASU, Ludhiana, at the Indian Council of Agricultural Research (ICAR)-Indian Veterinary Research Institute (IVRI) has been granted a patent for a bovine rotavirus diagnosis.

News from Around the World

• The European Union is mulling to take measures to ensure adequate access to drugs including deploying fast track procedures for issuing a compulsory license in case of emergencies and incentivising drug production in the EU.
• Russian drugmaker Pharmasyntez has approached the Russian government to issue a compulsory licence for manufacturing generic versions of Gilead’s drug Remdesivir after its voluntary licensing request was not responded to.
• In an interview with the Business Standard, Carlos Correa discussed the India-South Africa WTO proposal for waiving certain TRIPS provisions to fight the pandemic.
• A piece in The Wire discusses the need to reorient the global pharmaceutical system to make public health a priority over corporate profits.
• The UNESCO and the EU are supporting the Ministry of Culture, Museums and Natural Heritage in South Sudan through a peer-to-peer learning exchange with experts from Tanzania Copyright Office to support the cultural and creative industries sector to develop its own national copyright policy.
• YouTuber PewDiePie lost all revenue from an over 30-minutes long video based on a ContentID claim for an unrecognizable Celine Dion cover.

For regular updates on IP news and opinions related to COVID-19, please visit our COVID-19 & IP Updates page (also accessible from the Resources section on our website).