Dancing to the Tune of Garba and Dandiya: Gujarat High Court says "No Fair"?

A recent decision of the Gujarat High Court has caught the attention of the SpicyIP team, which appears to be capable of sparking off a rather lively debate. The decision is the one that has been reached in the case of Devendrakumar Ramchandra Dwivedi v State of Gujarat and Others (Special Civil Application No. 9979 of 2009). This was an example of a unsuccessful public interest litigation that the Petitioner had filed, apprehending disruption of Navaratri Garba and Dandiya Mahotsav by law enforcement authorities after one of the Respondents, viz. the Indian Performing Rights Society Ltd. (IPRS) had complained of the proceedings of the said festivals being violative of the provisions of the Copyright Act, 1957. A society established under Section 33(3) of the said Act, IPRS has been established to monitor, protect and enforce the rights, interest and privileges of its members, viz. the authors, composers and music publishers, who in turn have assigned to IPRS the ownership or administrative authority of copyrights in a vast repertoire of literary and musical works created by them. Amongst the various rights possessed by the owners of copyright of a literary/musical work as per Section 14(a) of the Copyright Act, the right to perform the work in public or communicate the same to the public is the one under contention in this case. As per the claim put forth by IPRS, exploitation of any of the aforesaid work within IPRS’s repertoire without having obtained license from IPRS amounts to infringement of copyright as per the statutory provisions of Section 51 of the 1957 Act, read with Section 14(a)(iii) thereof. According to IPRS, playing of music in course of the aforesaid festivals consist of such infringement as well.

The Petitioner, who is a resident of Ahmedabad and is engaged in the business of serving Sharbat and drinking water in course of festivals, had denied of any personal interest associated with any organizer of Garba or Dandiya festivals. He claimed to be acting out of general public interest only. While referring to the article dated September 12, 2009, published in a local daily newspaper named ‘Sandesh’, which had reported IPRS having sent notices to hotels, clubs and restaurants emphasizing upon the necessity to obtain license from IPRS at the tariff rates applicable to the Public Performance of Music by way of Live Performance, DJ Music and Live with the DJ (Recorded Music), the Petitioner took on the stance that there could not be any necessity of obtaining such license for conducting performance and religious ceremony of Garba/Dandiya, festivals which have been an integral part of the Gujarati culture since long before the Copyright Act had been enacted and hence belongs solely to the public domain. He also contended that many folk dance, musical work and other dramatic work or action intended to be sung, spoken or performed with music work were gradually forming part of the cultural heritage of the state, which was an art also adopted in several movies. From that perspective, IPRS’s action had been challenged to be contrary to the public interest and capable of creating serious law and order problems since these festivals are celebrated all over the state with religious fervor and any disruption in the same can cause wide-scale unrest.

IPRS, however, contended that the Petitioner had failed to provide any evidence suggesting that the organizers of such performances and festivals belong to the category of religious organization or amateur club. Again, while it is true that Section 52(za) of the Copyright Act exempts “bona fide religious ceremonies” from copyright infringements, IPRS sought to indicate that the events under consideration were ones where music was played and entry fee was charged and hence could by no stretch of imagination whatsoever be construed to fall within the purview of what the legislature had intended to be “bona fide religious ceremonies”. IPRS also contended that it had till date never charged license fees for folk music or music which is in public domain, only for exploitation of those works which fall within its repertoire. In fact, mention had also been made of past instances, wherein several organizers of Garba/Dandiya festivals had played such music in the form of public performance and also obtained prior licenses for the same from IPRS. The Petitioner’s locus standi had also been challenged by IPRS, who argued that its actions to safeguard the interests of its members did not infringe any of the Petitioner’s statutory or fundamental rights, nor had general public interest been adversely affected as a result. Another technical contention raised by IPRS was that any grievance of the Petitioner ought to have been expressed by way of a civil suit under Section 60 of the Copyright Act, instead of filing a writ petition against a private body like IPRS!

The petitioner had sought reliefs against IPRS’s publication requiring licenses to be sought for public performance of any of the musical works within its repertoire during the Garba/Dandiya festivals. The judiciary, however, comprising of the Hon’ble Chief Justice of Gujarat High Court, Mr. K.S. Radhakrishnan, C. J. and Anant S. Dave, J., opined that the Petitioner had in this case been driven solely by a motive to obtain publicity instead of any genuine concern for public interest. The Court also recognized the legitimacy of IPRS’s concern about safeguarding the interests of its members by preventing the aforementioned copyright infringement as well as the fact that any unauthorized exploitation of the musical works within IPRS’s repertoire by way of public performance would amount to such infringement.

One of the grievances voiced by the Petitioner had been that the notice issued by IPRS had been in contravention of the Sections 52(1)(za), 52(1)(k) and 52(1)(l), read with Section 2(p) of the 1957 Act. Following is the text of the relevant provisions:

Section 52. Certain acts not to be infringement of copyright. -(1) The following acts shall not constitute an infringement of copyright, namely:

(k) the causing of a recording to be heard in public by utilising it,-

(i) in an enclosed room or hall meant for the common use of residents in any residential premises (not being a hotel or similar commercial establishment) as part of the amenities provided exclusively or mainly for residents therein; or

(ii) as part of the activities of a club or similar organisation which is not established or conducted for profit; or

(iii) as part of the activities of a club, society or other organisation which is not established or conducted for profit;

(l) the performance of a literary, dramatic or musical work by an amateur club or society, if the performance is given to a non-paying audience, or for the benefit of a religious institution;

(za) the performance of a literary, dramatic or musical work or the communication to the public of such work or of a sound recording in the course of any bona fide religious ceremony or an official ceremony held by the Central Government or the State Government or any local authority.

Explanation.- For the purpose of this clause, religious ceremony including a marriage procession and other social festivities associated with a marriage.

The judiciary went on to say that the Petitioner had failed to produce any evidence whatsoever of IPRS or law enforcement machineries having taken any action against activities falling within the purview of the aforesaid provisions or of Section 52 (2) of the Act, which states that “The provisions of sub-section (1) shall apply to the doing of any act in relation to the translation of a literary, dramatic or musical work or the adaptation of a literary, dramatic, musical or artistic work as they apply in relation to the work itself.”. The Court further held that the basic thrust of the aforementioned sub-clauses of Section 52(1) is to exempt live performances of such works when there is no commercial purpose or admission charge involved, nor any private financial gain and/or when the admission proceeds are exclusively used for educational, religious or charitable purposes. Thus music recording to be heard in public or Garba/Dandiya dance performance in an enclosed room or hall for the common use of the residents in any residential premise as part of the amenities provided exclusively or mainly for the residents therein would not consist of infringement, nor would the activities of a club/organisation not established for profit. Among the other activities that the judiciary indicated to be beyond the purview of copyright infringement, the following deserve mention, viz.

(a) the performance of a literary, dramatic or musical work by an amateur club or society if the performance is given for a non-paying audience or for the benefit of a religious institution;

(b) in the case of Folk music or public domain music; and

(c) the performance of a literary, dramatic or musical work arranged by the government or by any local authority or also in connection with a bona fide religious ceremony or social festivities associated with marriage.

The judiciary then proceeded to trace the origin and evolution of the Fair/Honest Use Doctrine, citing cases such as Folsom v. Marsh [9 F. Cas. 342 (1841)] [wherein the Doctrine was first articulated], Sony corporation of America v. Universal City Studios [464 U.S. 417 (1984)] [wherein the Court had sustained a claim of fair use for home videotaping of copyrighted television programme, despite the said use being clearly beyond the enumerated categories] and Harper and Row Publishers v. Nation Enterprises [471 U.S. 539 (1985)] [wherein the Court had rejected the claim of fair use regarding a news magazine’s quotation from the soon-to-be published memories of President Ford regarding his pardoning of President Nixon, despite the use falling clearly within the enumerated categories]. The last two decisions indicate the degree of judicial activism bordering on judicial legislation that has time and again been involved in deciding the limits of this Doctrine that constitutes the most significant restriction on the exclusive rights granted to a copyright owner. The present judgement under consideration also emphasized that the Doctrine comes into play when a too literal enforcement of the copyright owner’s rights would operate to the detriment of the public interest in access to and dissemination of knowledge and unauthorized copying can be tolerated without the owner suffering from significant economic injury. Involving a mixed question of law and fact, the Doctrine seeks to presume unauthorized commercial use as unfair and having an adverse impact on the market of the copyright owner, with the burden lying upon the alleged ‘infringer’ to prove otherwise.

Although the judiciary in the present case dismissed the petition on the ground that none of the Petitioner’s statutory or fundamental rights appeared to have been violated, they significantly refrained from commenting on whether the performance during Garba/Dandiya festivals that was under popular scrutiny in this matter, constituted infringement of IPRS’s copyrights. Instead, a rather general comment illustrated the ending lines of the judgement, to the effect that whether a use is ‘fair’ or not has to be decided based on the facts and circumstances of each and every case.

Before concluding this post, perhaps mention ought to be made of a rather interesting development that had taken place some time back in a related context. On May 14-15, 2009, the Cochin University for Science and Technology (CUSAT) had organized a national conference on Exceptions and Limitations to the Copyright Act, 1957, wherein G.R. Raghavender, the Registrar of Copyrights, had presented his views on The Use of Works for Social and Cultural Purposes in the Copyright Act, 1957. Therein, he appeared to have favoured a much wider interpretation of the term “bona fide religious ceremonies” as it has been used in Section 52 of the Act. He carefully considered whether the exceptions provided under the said provision is in accordance with the standards prescribed by Article 9(2) of the Berne Convention of 1886 and the three-step test envisioned therein. For a detailed version of his analysis, see here. Among the socio-cultural exceptions envisioned under the Brussels Revision Conference of 1948, mention had been made of “limited exceptions…allowed for religious ceremonies, divine worship and military bands, charitable performances, public concerts organized on the occasion of particular festivals or holidays.”

A comparative perusal of such exceptions allowed by the copyright law regimes under different jurisdictions will reveal that social exceptions include basically playing of musical works or sound recordings for benefit of club, society or other charitable organisation or these works played by an amateur club or orchestra or a music group performing popular music at social gatherings for non-commercial or non-profit purposes. While USA and Canada have provided exceptions for agricultural, horticultural and industrial fairs, Hungary for example, allows exceptions for use of works by shops for entertaining customers and for increasing income.

A divergence in the different approaches can be perceived as far as religious exceptions are concerned. In Austria and Iceland, for example, the author is entitled for remuneration when his works are used for religious purposes such as official church functions. On the other hand, countries like India have provided exceptions for the use of works for religious assembly and for divine worship, provided such performance is only for non-profit or non-commercial purposes. According to Mr. Raghavender, exceptions for use of works for social and cultural purposes owe their origin to the diverse social or cultural background, local customs and traditions and circumstances which are unique to each country of their origin. He went on to say that as far as the Indian legislative provisions are concerned, to qualify as an exception u/s 52, the concerned clubs, societies or other organizations had to be not established or conducted for profit and the main objectives of the performance have to be charitable & concerned with the advancement of religion, education and social welfare. However, sound recording may not be played by anyone with a view to gain, e.g. disc jockeys and performers are not paid any remuneration for such performance. Moreover, no profit must be made from any events where such sound recordings are played, any proceeds from charges for admission have to be ploughed back into the organization which solely for the benefit of the organization and any proceeds made from any goods or services sold at events where sound recordings are played have to be similarly used. Mr. Raghavender also raised a few incisive questions as to whether the different marriage ceremonies under the Hindu, Muslim and Christian laws can be considered to be a “bonafide religious ceremony”, especially in a country like India, where culture and marriage traditions are intertwined and music adds to that culture, thereby qualifying as an avenue for personal and group expression and associated with ceremony and ritual. He continued to apply the Berne Convention’s three-step test to such ceremonies and concluded that they pass the same in most cases. [Step 1: ‘certain special cases’, Step 2: “does not conflict with a normal exploitation of the work”, Step 3: “does not unreasonably prejudice to the legitimate interests of the right holder”]. While dubbing Section 52(1)(za) similar to the doctrine of ‘minor exceptions’ or de minimis exceptions, he concluded that “there is a need for making a distinction between normal music performance during wedding reception and performance by disc jockeys or VJs or film actors and popular singers engaged through event managers after paying substantial amount of remuneration as the latter is in conflict with normal exploitation of the work by the author or right holder.” The perspective offered by him thus indicates a much broader interpretation of “religious ceremonies” than the one that the Gujarat High Court had indirectly favoured in this case.

Call for Papers: The Indian Journal of Law and Technology (IJLT)

The Indian Journal of Law and Technology (IJLT) is an annual law journal published by the Law and Technology Committee of the Student Bar Association, at the National Law School of India University, Bangalore, India. IJLT is the first and only law journal in India specifically devoted to the field of technology law. The previous issues of IJLT have featured articles by distinguished authors such as Yochai Benkler, Donald S. Chisum, Raymond T. Nimmer, John Frow, Jonathan Zittrain, Lawrence Liang and Shamnad Basheer.

The submissions to the Journal are selected for publication on the basis of a peer-review mechanism conducted through an external Article Review Board consisting of academicians and experts in the field of technology law. The Journal is edited by an Editorial Board consisting of students from the National Law School of India University selected on an annual basis through a selection process that tests them on their editing skills and knowledge in the concerned areas of law.

The Journal accepts academic submissions in the form of articles, notes, comments or book reviews on a host of legal issues regarding the interface between law and technology, including e-commerce, cyber crime, biotechnology, bioethics, competition law, outsourcing, intellectual property, related public policy, and law and society issues posed by new technology. The Journal is also oriented towards publishing academic work that considers the aforementioned is sues from a comparative perspective and/or the perspective of the developing world.

The Editorial Board invites submissions for Volume No. 6 of 2010. The Journal follows a rolling submissions policy and the deadline for the forthcoming volume is 15 December 2009.

For more information please visit the website of the journal.

Video Pirates, Preventive Detention and the Constitution of India

SpicyIP's good friend K.V. Dhananjay, a practising Advocate, at the Supreme Court of India recently brought to our attention the news that the State of Karnataka was planning to enact a legislation to allow for the preventive detention of 'Video Pirates' i.e. people who have been charged with copyright infringement under the Copyright Act, 1957 atleast once. The trend of putting away 'video pirates' under preventive detention statutes has picked up with atleast three states already having enacted such legislations or contemplating such legislations – Maharashtra, Tamil Nadu and Karnataka.

Some of our readers may remember that a few months ago I had carried a post on a similar such legislation that was passed in Maharashtra. The entire post was based on a ToI newsreport. According to that ToI report the Mahrashtra legislation would make it an offence to even buy a pirated DVD. I was doubtful of the veracity of the report at that time and it was only recently that I managed to access an online version of the said legislation. As was obvious from a reading of the legislation buying a pirated DVD is not an offence. Only the persons distributing and preparing the pirated DVDs can be charged under this proposed legislation

The Ordinance can be accessed here.

As it turns out the 'legislation' was not a legislation but an ordinance promulgated by the Governor since the Maharashtra legislature was not in session. This Ordinance was promulgated on July 14th, 2009 which means that it should lapse in 6 months time i.e. by January 14th, 2010 unless it is extended or the legislature passes it through a majority. This Ordinance re-names the the title of the previous legislation to read – Maharashtra Prevention of Dangerous Activities of Slumlords, Bootleggers, Drug-Offenders, Dangerous Persons and Video Pirates Act. The ordinance defines 'Video Pirates' as a “person against whom at least one chargesheet has already been filed under the Copyrights Act, 1957 for infringement of copyrights relating to cinematograph film or sound recording and the Court has taken cognizance of such offence; and who commits or attempts to commit or abets the commission of offence of infringement of copyrights in relation to cinematograph film or sound recording or any part of sound track associated with the film or sound recording, punishable under the said Act.”

Once a person is charged (not convicted!) as a 'video pirate' under the Act the State Government may pass an order of detention against the 'video pirate'. The detention order can place the pirate in detention for a period of 3 months which can be extended for a maximum of 12 months. Once the video pirate is placed under detention his case has to be referred to an Advisory Board consisting of either sitting or retired High Court judges. The legislation specifically states that the video pirate shall not have a right to legal representation before the Advisory Board i.e. no lawyers. If the Advisory Board is satisfied that there is reasonable cause for the Government to hold the person in detention then in that case the detention order is valid. The detainee has no right to approach a local court for bail. At the most the detainee or his representative may challenge, through a habeas corpus petition in the High Court, the manner in which the detention order has been passed. High Courts are usually located only in the capitals of the State and are not as accesible as the local district courts which are present in each and every district of the country. While there are only 21 High Courts in the country, there are over 400 district courts in the Country. The first effect of such preventive detention courts is that it makes it more difficult for those in tier II cities to access justice.

However the most ridiculous feature of these prevention detention legislations is that these detention orders are passed after the mere charging of a person with a crime and not after the trial and conviction of the person! The State Government has lost all sense of proportionality when it come to video piracy.

In the Statement of Objects and Reasons released by the Governor along with the Ordinance the Government of Maharashtra has stated that the reason for introducing such an Ordinance was the fact that the piracy was causing a public order problem and also that the film industry was in 'severe crisis' because of the large volumes of 'video piracy'. More interestingly the Statement reveals that this Ordinance was inspired by a similar legislation passed by the State of Tamil Nadu in 2005.

The inspiring Tamil Nadu legislation goes by the name of 'The Tamil Nadu Prevention of Dangerous Activities of Bootleggers, Drug-Offenders, Forest Offenders, Goondas, Immoral Traffic Offenders, Slum Grabbers & Video Pirates Act'.

This legislation was amended in the year 2004 to include the term 'video pirate' and operates on almost the same lines as the proposed Maharashtra legislation. The detention orders of several video pirates have been upheld by the Madras High Court, which has reportedly shared the government's concern that video piracy posed a public order problem.

ARE THE 'VIDEO PIRATE' LEGISLATIONS CONSTITUTIONAL?

In an earlier post we had questioned whether State Governments had the power to pass a legislation pertaining to copyright law. We had noted that “India has a federal setup with the Central and State Government sharing powers. The scheme for sharing of powers between the State and Union government is laid down in the Seventh Schedule to the Constitution of India read along with Article 245 and 246 of the Constitution. This Schedule has 3 lists: The Union List which lays out the subjects on which only the Parliament can legislate, The State List with respect to which only the State Government can legislate and the Concurrent List with respect to which both the State and Central Government can legislate. However if in case there is already a Central Legislation in place then in that case the State Government can still legislate on the subject provided that it receives Presidential assent for the same.”

The problem over here is that the law related to copyright and other intellectual property is a subject of the Union List which means that only Parliament is competent to pass such a legislation in regards video piracy.

In fact the Governor of Karnataka has refused to assent to a similar 'video pirate' legislation in Karnataka on these very grounds i.e. 'video piracy' related to infringement of copyright which fell within the purview of only the Union Government and not the State Government.

The inclusion of the term 'video pirate' in the Tamil Nadu legislation had been unsucessfully challenged once in the Madras High Court. In the case of J. Ameergani, W/O. Jaheer Hussai vs State Of Tamil Nadu And Anr. the 'video pirate' detained under this legislation challenged the inclusion on the gounds that the State of Tamil Nadu lacked the legislative competence to pass such a law.

When it comes to determining legislative competence most Indian Courts follows the test of pith and substance i.e. if the true nature and character of the legislation falls within the field of powers of the legislature in question then in that case an incidental encroachment onto the field of another legislature will not matter and the presumption shall be in favour of the constitutionality of the statute.

In this case the Madras High Court was of the opinion that the pith and substance of the impugned legislation was with respect to preventive detention and the fact that it related to copyright infringement was merely incidental. The Court concluded by holding that since preventive detention was a subject on the concurrent list the State Government was well within its rights to pass such a legislation.

The decision of the Madras High Court can be accessed here.

The question that remains is whether or not this decision will be of persuasive value in other High Courts?

I doubt whether the decision of the Madras HC will be followed by other High Courts. While assessing the true nature and character of the impuged legislation it is necessary to look at the entire legislation, its object and to the scope and effects of its provisions. In the case of atleast the Maharasthra Ordinance the statement and object of the Ordinance clearly states that the amendment is required to combat piracy and copyright infringement. Moreover the Ordinance draw a direct link to the Copyright Act, 1957 and defines a 'video pirate' in terms of a person who has been charged atleast once under the Copyright Act, 1957. The true nature and character of the Ordinance therefore is related to the law of copyright, which squarely falls within the domain of the Union Government. In regards the Tamil Nadu legislation I am yet to find a copy of the legislation online and will therefore not be able to comment on it until I am able to read the text.

Call for Papers: Indian Journal of Intellectual Property Law 2010

The Indian Journal of Intellectual Property Law, a NALSAR University of Law publication, is calling for final contributions for the third issue of its journal. The Journal has an erudite Board of Advisors, and two successful editions already out.


Completely organised by a board of Student Editors under the patronage of the Vice Chancellor and Hon'ble Justice UC Banerjee (Retd.), the IJIPL is now looking for articles by students, practitioners and academicians for its next issue to be released in July 2010.


The call for papers, submission guidelines as well as previous editions of the Journal can be found on the IJIPL website.

INTA Roundtable on Trademark Issues for Inbound Investors into the U.S. and E.U.

In a move that appears to provide a promising opportunity for a lively and informed discussion on a subject that has been oft-neglected in the Indian IP scenario, the International Trademark Association (INTA) has decided to organize a roundtable conference titled ‘Trademark Issues for Inbound Investors into the U.S. and E.U. - A Comparative Perspective with India’ on October 20-22, 2009. The roundtable is certainly an attractive enabling vehicle for the participants to network and trade thoughts with their peers, compare and learn new strategies and address common issues and challenges facing the trademark and IP community, such as how to avoid the usual mistakes under the U.S. and E.U. trademark jurisdictions, what can be the valuable strategies to protect and enforce one’s trademarks and what can one expect in case a dispute results into a litigation. A tentative discussion agenda is as follows:

10:30 am – 11:00 am: Registration + Tea

11:00 am – 1:00 pm: Discussion

I. Introduction

Overview of systems (first-to-file v. first to use)

II. Registration of Marks

Why register and where? US—state v. federal; Europe—national v. CTM filings

Why search? US: what type of searches?, EU: tips on searching throughout Europe.

Registration of words in Hindi/regional languages

Registration of Indian surnames

Treatment of marks that may be well-known in India

What to expect at USPTO, OHIM and national offices in Europe?

III. Administrative Proceedings

Any advantages vis-à-vis litigation ?

Types

Brief overview of a proceeding, including evidentiary requirements.

Strategic considerations for Indian investors (costs, settlement, effective policing)

IV. Litigation and Alternative Dispute Resolution

Rights of local businesses

Venue issues

Brief overview of a trademark infringement lawsuit

Strategic considerations for Indian investors (costs, settlement, duration, etc.)

Any significant cases? (Bukhara, Grupo Gigante in the US)

Brief overview of ADR

V. Anti-Counterfeiting Issues

Brief overview of law

Strategies in anti-counterfeiting cases (bank accounts freezing, etc)

Customs recordation and effectiveness

1:00 pm – 2:00 pm: Lunch

The roundtable will be hosted by INTA in the 3 cities of New Delhi (on October 20, 2009), Bangalore (on October 21, 2009) and Mumbai (on October 22, 2009). Following are the links for the details of the programme schedule with respect to these 3 days:

October 20
here

October 21
here

October 22
here

Information relating to the speakers in the roundtable, of course, information varies in accordance with the location. For online brochures, one can see for New Delhi here , Bangalore here and Mumbai here for specific speaker information.

Reservations are to be accepted on a first-come, first-served basis, with 30 registrants being the standard limit for the session. The registration fee is US $40 per person and includes tea and a buffet luncheon. The fee is non-refundable upon confirmation of this registration by INTA. If a registrant is unable to attend, a substitute may be sent in his stead. Online credit card payment is the only acceptable method of payment.

Register for New Delhi on October 20 here
Register for Bangalore on October 21 here
Register for Mumbai on October 22 here

Questions or comments regarding the Roundtable may be addressed to INTA's India Representative, Simran Daryanani at sdaryanani@inta.org.

India's Bayh Dole: A Blind Legal Transplant?

The hard hitting editorial from the Mint, that was referred to in an earlier post. For the earlier article in this regard by CH Unnikrishnan, on which this editorial was built, see here.

An idea that’s a patent misfit

India’s intellectual property rights regime can barely be improved by blindly transplanting a three-decade-old US law. But that’s what the government is trying to do.

It’s an old trend. Indian policymaker meets foreign idea; policymaker falls in love with the idea and brings it to India, only to find that all matches aren’t made in heaven. Debates over capital account liberalization in a country that can’t contain its fiscal deficit or talk of applying human development indicators in a land where poverty screams for high growth sometimes suggest this trend. Now, so does patent law.

India’s intellectual property rights (IPR) regime can barely be improved by blindly transplanting a three-decade-old US law. But as Mint reported on Monday, that’s the case with an IPR Bill the government introduced in the Rajya Sabha in January, and that it will attempt to pass in the December session.

The Bill, dubbed India’s Bayh-Dole Act after the US law it closely resembles, allows research institutes to protect their work. Bayh-Dole’s 1980 passage in the US proved a landmark for commercializing IPR. China passed its version in 2007. Not to be left behind, the government hurried this Bill, under the impression that universities could then sell their research and become financially self-reliant.

The Bill provides a scientist or institute default ownership over government-funded research. Yet, India’s 1970 Patents Act, unlike US law before 1980, already provides for it. The problem in India isn’t that there aren’t sufficient rights for researchers; rather, researchers don’t appear to capitalize on them. The Council of Scientific and Indian Research (CISR), the largest research body, has around 4,700 patents to its name, only 10% of which have been transferred into commercial licences.

First, India lacks the mechanisms that enable commercial usage of patents. For instance, there are few technology transfer organizations—official bodies within universities that can bridge academia and business.

Second, India’s environment hasn’t matured. Even before Bayh-Dole was enacted, there existed a nexus between companies and universities in the US— the law just filled in the gaps. In India, the nexus is nascent: Domestic industries can’t always absorb academic work and researchers can’t always commercialize patents.

Third, research in India—75% government-funded—suffers from bad direction. If CISR’s track record is a guide, funds flow into projects that yield useless patents. The Bill doesn’t address this; if anything, it forces researchers to declare useless patents, too, by threat of penalty.

Without the prerequisite environment, no amount of legislation, inspired from whichever part of the world, can help. A foreign idea can’t always solve a uniquely Indian problem.

The "Spuriousness" of Indian Law: Delinking IP from Drug Regulation

The Indian Express published an editorial of mine, where I argue that India needs to urgently amend the definition of "spurious" drugs and delink drug regulation from IP.

Saying No to the Wrong Drugs

The Drugs and Cosmetics Act (DCA) was recently amended to mandate significantly enhanced penalties for those trafficking in “spurious” drugs. While this attempt to counter the menace of harmful drugs is laudable, the term “spurious” itself is loosely worded and could be interpreted to include even legitimately authorised generics. Given recent attempts by multinational pharmaceutical companies to use the ruse of intellectual property enforcement to create additional trade barriers for Indian generic companies, the government needs to be extra vigilant. Particularly so, since such barriers are also likely to impact the availability of affordable medicines to ailing patient populations.

Section 17 (b) (b) of the Drug and Cosmetics Act defines spurious drugs thus: “a drug shall be deemed to be spurious if it is an intimation of, or is a substitute for, another drug or resembles another drug in a manner likely to deceive or bear upon it or upon its label or container the name of another drug unless it is plainly and conspicuously marked so as to reveal its true character and its lack of identity with such other drug.”

Based on the above definition, Bayer, a German multinational patentee, dragged Cipla and the Drug Controller General of India (DCGI) to court, arguing that Cipla’s generic version of Bayer’s patented anti-cancer drug was likely to qualify as “spurious” and therefore ought not be granted drug regulatory approval.

Bayer’s preposterous legal attack drew some sustenance from section 17B of the DCA which begins by stating that “a drug shall be deemed to be spurious if it is an intimation of, or is a substitute for, another drug”. Most generics are indeed imitations or substitutes of the original drug! But imitation by itself is not a problem, unless the law states so. And given India’s unique tryst with a patent regime that actively encouraged such copying from the 1970’s and led to the growth of a world-class generic industry that now provides affordable access to a large part of the world, the government, far from enjoining such imitation, must actively promote it.

Justice Ravindra Bhat of the Delhi High Court rightly noted that under Bayer’s reading of section 17B, all generics would qualify as “spurious” and could never merit drug regulatory approval! Clearly this could not have been the intention of our law makers. The judge however found a way out and held that since Cipla’s drug would be branded and packaged differently, it was “likely to be conspicuously marked so as to reveal its true character and its lack of identity with” Bayer’s original .

While this judicial pronouncement may have been helpful in this one case where Bayer’s attempt at delaying Cipla’s generic entry was effectively thwarted, one is not sure if the same result will prevail in other cases, where a generic manufacturer uses a name that is similar to the one adopted by the originator company. Consider Cipla’s drug “Valcept”, which is a generic version of Roche’s patented anti-infective “Valcyte”. Would Valcept qualify as “spurious”, since a consumer confuses the two names and assumes that Valcept also comes from Roche? It goes without stating that even despite the confusion, the consumer is not necessarily harmed in a physical sense, since both the drugs work in the same way. And yet our newly amended Drugs and Cosmetics Act (DCA) can potentially brand Valcept a “spurious” drug, with heavy criminal penalty.

This stems from a problematic linkage created between what is essentially an intellectual property enforcement issue with the drug regulatory regime. Since these regimes are distinct in aim and scope, they ought to be kept separate and the twain should never be made to meet.

Consumer confusion is a widely accepted rationale underlying most trademark regimes today. The Indian IP regime is no different, with the Indian Trademarks Act providing for robust protection in favour of a brand owner, who may protect his/her brand by requesting a court of law to restrain a competitor who uses a similar sounding name for their drug. However, a drug regulatory authority tasked with the mandate to ensure that all drugs being introduced into the market are safe and effective, cannot be expected to police trademark issues in the same sense that a court of law does. For one, it does not have the institutional competence to do so. Secondly, the key task of a drug regulator is only to assess whether or not a drug is safe and effective, a task that will no doubt require considerable time and resources. The fact that a drug from a generic manufacturer violates the IPR of an innovative drug company does not necessarily mean that it will be of bad quality. And such a determination ought not to be the job of the drug regulator.

The last few years have witnessed a proliferation of international efforts that create additional trade barriers for Indian generics. The seizure of drug consignments in transit from India to South America at various European ports on the pretext of patent infringement is a glaring example. The Indian government has been fighting these underhand efforts, and recently it thwarted an attempt by a WHO-led anti-counterfeiting task force (IMPACT) to expand the meaning of “counterfeit” to even catch legitimate generics. Unfortunately, India’s very own definition of spurious drugs remains problematic.

The government must therefore immediately amend the Drugs and Cosmetics Act to ensure that the term “spurious” is stripped of its problematic “IP” linkage. In other words, the term must be defined only with reference to “substandard” drugs, for that is what the drug regulator is empowered to examine. Once a satisfactory definition emerges, the Indian government should fight for its international adoption to ensure that legitimate generics are spared at the borders.

This is a solution that will not only enable our grown generic companies to retain their competitiveness, but also prove a sweet pill for many patients who depend on affordable generic medications.

SpicyIP Gets New Leader

My sincere thanks to all of you who have written such wonderfully supportive messages, upon hearing of my decision to take a small break from SpicyIP.

I am now thrilled to announce that after much persuasion, Sumathi Chandrasekharan has agreed to lead the blog in my absence.

I’m very positive that this change will be for the better. For one, my style was a little too confrontational and I’ve ruffled a number of proud feathers. Hopefully, under Sumathi’s leadership, SpicyIP will be able to garner more goodwill and well wishers.

I do hope that you can all lend Sumathi the same kind of support that you were kind enough to lend me. If you have any suggestions for improving the blog, please let Sumathi know.

We're planning on increasing our trademark focus on the blog. So if any of you trademark specialists out there are interested in joining the blog, would you please let me or Sumathi know? We're also planning on running a "Romanticising Innovation" Series. Sumathi will bring you more details on this soon.

Notwithstanding the sabbatical, I will continue to remain involved with SpicyIP in an advisory/mentor capacity.

I will also try and focus on increasing the number of offerings under our "IP Resources" section on the SpicyIP website. I'm happy to announce in this regard that we've uploaded all the presentations made during the recently concluded conference on the Indian "Bayh Dole" conference at NUJS. For those interested in the photos during this event (the lighting played spoil sport), see here. CH Unni, a leading IP reporter with the Mint, carried a great article encapsulating the views of many of our conference speakers. This was followed up soon thereafter by a hard hitting editorial in the Mint.

I'm also happy to announce that the Ayyangar report is finally downloadable--though it will call for considerable patience from your end. As you can appreciate, unless we have more IP information in the public domain, our debates will continue to suffer.

Lastly, I will continue to post on issues that I care about, though the postings will not be as frequent as my frenzied postings of yesteryears.

Re-clarifying the aims and conclusions of the Mashelkar Committee Report

The Economic Times recently carried an op-ed by a 'Delhi-based lawyer and a member of the National Working Group on Patent Law (NWGPL)' on the Report of the Technical Expert Group on Patent Laws (TEG) also known as the Mashelkar Committee Report which was recently accepted by the government.

The basic aim of this Op-Ed is to discuss how the Mashelkar Committee Report had allegedly created a controversy by allegedly mis-quoting a report by Professor Carlos Correa.
SpicyIP had extensively commented on this entire Correa controversy earlier over here.

What I find surprising with this report is that the Economic Times has published an article based on a report by the Business Standard which in itself was based on an email sent to it by Professor Carlos Correa from Argentina complaining that the Mashelkar Committee Report had mis-interpreted his report that was submitted to South-Centre. Sounds a little incredible?

So lets get down to the main issues with this op-ed.

1. How is the author so confident as to what exactly Prof Correa actually dis-agreed with the TEG Report? It is possible that the BS Report may have, by mistake, selectively quoted the email sent by Prof. Correa? Journalists often make such mistakes. Did the author of the op-ed have access to the email sent by Prof. Correa? Did he interview Prof. Correa or did he prefer to base his entire op-ed on hearsay evidence?

2. I completely fail to understand the subtle distinction that the op-ed tries to create between 'exclusion' and 'limiting'. The op-ed claims that the issues before the Prof. Correa report and the TEG were different. It claims that while the issue before the former was whether it was possible to exclude essential medicines from patent protection, the issue before the latter was whether it was possible to place 'limits' on pharmaceutical patents? I completely and totally dis-agree with this interpretation.

   I reproduce the first terms of reference before the TEG below:

   (i) Whether it would be TRIPS compatible to limit the grant of patent for pharmaceutical substance to new chemical entity or to new medical entity involving one or more inventive steps?

   As is obvious from above the TEG was asked to examine whether or not India could limit the grant of pharmaceutical patents to only new chemical entities and new medical entities by excluding patent protection to any kind of incremental innovation. How exactly does anybody answer the above TOR without deciding whether or not it is possible to exclude all kinds of incremental innovations by limiting patent protection to only NCEs and NMEs?

   As stated by the op-ed itself “The TEG was never asked to examine whether the exclusion of pharmaceutical inventions from patent protection would be compatible with TRIPS.” Instead the TEG was tasked with determining whether or not it was TRIPs compatible to exclude a certain class of pharmaceutical patents rather than all pharamceutical patents.

   As already discussed more than once on this blog, by excluding all kinds of incremental innovations, even those which fulfilled the Art. 27 criteria, any country would automatically exclude an entire class of technology and inventions and this would be in violation of TRIPS. This is what the TEG concluded.

The question of 'limits' on pharmaceutical patents have already been dealt with adequately by Section 3(d). This provision basically decides what kind of limits may be placed on incremental innovations.Why would anybody want to try and create an issue about TRIPS compability over here when there is no issue?

3. The assertion of the op-ed that it was possible to interpret Article 27 to allow for a diffrentiation of patentability standard for certain technologies but not discrimination against classes of technologies, is compltely true. There is no disagreement with this assertion – as noted by the op-ed Section 3(d) already does this. However what the op-ed fails to explain is that the basic test, the core thesis of Article 27 cannot be subverted through diffrentiation i.e. if an invention is novel, it contains an inventive step and is capable of industrial application then in that case it will have to be granted a patent. At the most one may diffrentiate the standard of patentability through the creations of certain steps statutory safeguards as has been done in the case of Section 3(d).

4. As for the last recommendation of the op-ed, that the TEG should have explored the options under the Doha Declaration is reptitive since the TEG already went through the Doha Declaration to determine or not the declaration over-rode Article 27. The TEG concluded in the negative. What the op-ed fails in explaining is how it would interpret the Doha declaration to limit the grant of patents to only NCEs and NMEs?

As is obvious from above the ET op-ed had nothing substantial to add to the endless stream of publications already criticizing the TEG Report. To an extent I am reminded of Orwell's Animal Farm where the continuous bleating of the sheep drowns out any voice of reason. As Orwell's lead character Napolean points out - 'repetition of an idea installs in the minds so deeply, that at last it is considered to be the proved truth'.

SpicyIP Tidbits: Bharat Matrimony Sues Google for Trademark Infringement

According to news reports, Consim India Pvt. Ltd, a Chennai-based entity which owns bharatmatrimony.com has sued Google.com for infringement of its trademark by showing search results of its competitors through the search provided on bharatmatrimony.com. According to Consim, the search using Google on the site throws up results of its competitors such as shaadi.com or simplemarry.com, which is an infringement of its trademark.

Another news report states that as part of the search results, sponsored competitive advertisements appear, which Consim India has issues with. According to Consim, a Google search from its site (bharatmatrimony) must show results exclusively that of bharatmatrimony. A few are of the opinion that unless an exclusivity clause is part of the agreement between Google and Consim, the former cannot be sued for infringement. Google is yet to comment on this officially.

This is an interesting issue, watch out this space for more news on this dispute.

SpicyIP Tidbits: GI Events in Delhi and Goa

There are two sets of events for GI enthusiasts in India, both of which promise to offer exciting discussions on the dramatic changes that are happening right under our noses in the IP community here. We hope you will be able to attend some of them.

1. National Seminar on Geographical Indications: "Where do Indian interests lie?"

The Centre for WTO Studies at the Indian Institute of Foreign Trade is organising a two-day programme at Hotel Samrat, Chanakyapuri, New Delhi on September 24 and 25, 2009. The Seminar, which brings together distinguished experts on GIs, seeks to bring together representatives from governments, academics, industry, civil society, as well as other stakeholders on the same platform to deliberate on a range of issues pertaining to GIs. The specific objectives of the event are as follows:

• To initiate an academic debate on all aspects of GIs including the desirable Indian negotiating position in the Doha Round regarding the relevant TRIPS provisions
• To generate awareness about the key issues pertaining to GIs;
• To analyze the opportunities and challenges confronting GIs in the country;
• To understand from the stakeholders the ground realities of the pre- and post- registration scenarios on GIs;
• To brainstorm on the ways forward on GIs in India.

For more information, do visit the website of the Centre for WTO Studies, where you can find the Concept Note, the Programme, as well as the Registration Form. Do note that the Registration Form needs to be completed and submitted via email before 23 September 2009.

2. Geographical Indications and Localisation: A study of Feni - Launch of Report

This event marks the outcome of a project funded by the Economic and Social Research Council carried out by Dr Dwijen Rangnekar of the Centre for the Study of Globalisation and Regionalisation, University of Warwick. The research adopts a theoretical mix of socio-legal analysis and economic geography to conduct a case study of the intellectual property protection of Feni through GIs, as described by the project website here www.warwick.ac.uk/go/feni. The Report will be distributed at these meetings, and will subsequently be available at the project website. Discussants at the meeting include eminent policymakers and academics specialising in GIs. Kruttika had run a note on the Feni project early last year.

The report will be launched in India in two locations -

• in Goa on September 24, 2009, at Hotel Fidalgo: for details, please contact Naina D’Souza on +91-9922950027; email: reservationsATblueoceanholidays.com
• in Delhi on September 30, 2009, at the India International Centre: for details, please contact Rebecca John on +91-9899402654; email: johnrebeccaATgmail.com
  

The Indian ‘Bayh Dole’ Bill keeps stirring a hornet’s nest

Recent times have seen a lot of discussion on the Protection and Utilisation of Public Funded Intellectual Property Bill that is at present making rounds in the Indian Parliament. The Bill, which contains provisions similar to the U.S. Bayh-Dole Act, has attracted its own share of praises and criticisms till date. The SpicyIP Team has striven in the past to bring forth the relevant aspects of the aforesaid Act, the proposed features of the said Bill as well as the other jurisdiction wherein similar legislations are in vogue (see here, here, here and here). Any lack of healthy discussions among the various stakeholders on the questionable aspects of the Bill and suggestions regarding improvement thereof that might have been plaguing the national IP scenario has been recently sought to be filled by Professor Shamnad Basheer, who had organized a Conference titled “Publicly Funded Patents & Technology Transfer: A Review of the Indian ‘Bayh Dole’ Bill” at the National University of Juridical Sciences, Kolkata on September 12, 2009. The Conference was a great success, boasting of participation by stakeholders from different segments of the industry, who put forth their individual perceptions of the features of the Bill and the resultant impact it could have in the Indian and international context. The various presentations that consisted of the highlighting feature of the Conference will be put up soon by the SpicyIP team, while Professor Basheer is going to make known his perception of the Bill itself and recommendations relating thereto in the coming days in a paper authored by him. Meanwhile, Mr. C.H. Unnikrishnan, one of the enthusiastic participants in the Conference, has recently come up with a highly entertaining and informative article regarding the Bill itself and the different views that had been voiced in relation thereto in course of the Conference. The article, titled ‘Proposed Patent Bill is flawed, say Experts’ has been published in Livemint on Spetember 21, 2009 and the text of the same is as follows:

“A patent and intellectual property rights Bill modelled on a 1980 Act of the US Congress and due to be tabled in the Parliament’s December session is drawing criticism from researchers and academics for not addressing key issues and jeopardizing public interest.

The proposed Protection and Utilisation of Public Funded Intellectual Property (IP) Bill—sometimes referred to by its detractors as India’s Bayh-Dole Act, which was co-sponsored by then US senators Birch Bayh and Bob Dole—will allow government laboratories and universities to protect and own inventions and discoveries, in anticipation that this will boost commercial applications of their research. It also provides for sharing revenue on such inventions with the scientists involved.

“The Bill really does not cater appropriately to public interest concerns in a meaningful way. It ought to have normative statements favouring the creation of innovations that serve the public good,” says Shamnad Basheer, a patent law expert and the human resource development ministry-appointed new IP faculty at the National University of Juridical Sciences, Kolkata.

The Bill was presented by the ministry of science and technology in the Rajya Sabha in January, before a draft was made available for public scrutiny.

The Bayh-Dole Act in the US also allowed federally funded scientific institutions and universities ownership rights to the intellectual property on their inventions and transfer those rights to industries. Until then, such rights rested with the federal government, making technology transfer to industry difficult.

The Indian Bill is currently with a parliamentary committee, and is expected to go through with a few changes, said a senior official at the ministry of science and technology. Such committees are constituted to study Bills that have already been cleared by the cabinet.

In its current form, the draft Bill does not address why such legislation is required, nor does it address the actual issues that Indian scientific institutions face, such as a lack of focused research, the absence of effective technology transfer programmes, and the bureaucracy involved in taking inventions forward, its detractors say. Safeguarding the public interest is meant to be the aim of government-funded research in India, they say.

The Bill also lacks safeguards to ensure that exclusive licensing of publicly funded technologies does not create a market monopoly for private players.

According to the National Knowledge Commission, which originally recommended such a law, the Bill will help unlock the value of the country’s publicly funded research outputs. About 75% of Indian research and development activities are funded by the state, according to data from the ministry of science and technology.

Critics say the revenue model is already being followed by almost all government institutions and universities, including the Council of Scientific and Industrial Research (CSIR), the largest research organization in the country.

Another major sticking point with the legislation in its current form is its relevance to India. Critics point out that the Bayh-Dole Act was passed when publicly funded scientific institutions in the US had no intellectual property rights over their discoveries.

Basheer said India does not have that problem as scientists and institutions automatically get such rights.

Under the “Indian Patents Act, IP rights are with the scientists automatically, unless the institution signs an employment agreement stating that rights vest with the organization,” he said. Almost all government labs and scientific institutions have mandatory employment agreements. Still, the Indian Bill is “a laudable initiative to regulate and support commercialization of publicly funded research for the first time,” Basheer said.

Joshua D. Sarnoff of the Washington College of Law said he’s not sure whether a Bayh-Dole-type law would help India as the current situation does not demand such a legislation.

“The context of the Bill in the US in 1980 was different as the ownership of all IP rights that came out of publicly funded research were owned by the government,” he said. “These organizations and the industry found it a stumbling block for technology licensing.”

In India, he said, it will be important for the government to specify clear guidelines on issues and conditions in which the state should retain rights, what is expected of private ownership and the situation in which the government may intervene to correct licensing and monopoly practices.

M.K. Bhan, secretary, department of biotechnology, and one of the key proponents of the Bill, said the new law would be of tremendous benefit to the country as it will help the flow of technologies discovered under publicly funded schemes to the industry for development and commercialization.

“We have to look at the whole scenario of publicly funded scientific bodies, including small, medium and large institutions and universities, which do not exactly protect their inventions, and face difficulties in transferring them to industry for commercial use,” he said.

A senior scientist at the Institute of Genomics and Integrative Biology, one of the laboratories under CSIR, says the Bill in its current form does not address the actual issues that block technology transfer, such as the lack of applicability of research at the industrial level, absence of an active technology transfer mechanism within the organization, lack of funds for taking forward primary inventions to a transferable level, and institutional attitudes that limit research to just publishing in journals.

“CSIR has been following the same system even without legislation of this kind. However, it has so far licensed only a very small number of technologies compared with its 4,700 patents,” she pointed out. She declined to be identified.

Bhan conceded that the Bill does not address these issues but added that it will hopefully evolve to cover this later. “But it will definitely speed up the process, which otherwise takes years together,” he said.

Several multinational and domestic firms, especially in chemicals, pharmaceuticals, and information technology, have been looking at India as an emerging research hub, with its scientific pool and low cost.

Overseas firms such as Microsoft Corp., General Electric Co., Procter and Gamble Plc, GlaxoSmithKline Plc, Sanofi Aventis SA, Merck KgaA, Pfizer Inc., and domestic ones such as Reliance Industries Ltd, Hindustan Unilever Ltd, Tata Motors Ltd, Larsen and Toubro Ltd, Cipla Ltd, Dr Reddy’s Laboratories Ltd, and Ranbaxy Laboratories Ltd, among others, have had research collaborations with universities and labs and are exploring technology licensing opportunities at leading government institutions and universities.

Tapan Ray, director general, Organisation of Pharmaceutical Producers of India, an industry body that represents foreign drug firms operating in India, said, “The core concept of the Bill encourages innovation and ensures protection of patents and other forms of IP rights of the government-funded R&D outcomes, where the owner of the intellectual property will be the government grant recipient or the government.”

“Public-funded research in India has not been effectively translated into applications by industry and hence, there is a need to think about streamlining IPR for public-funded research,” said Amit Shovon Ray, professor of economics at the Centre for International Trade and Development, School of International Studies, at the Jawaharlal Nehru University (JNU), New Delhi.

“However, Bayh-Dole is perhaps not the appropriate example to emulate in India because ownership and protection of R&D is definitely not the real remedy to make government labs and universities self-sustainable. Rather, the spurt in university patenting may cost the technology transfer organizations more than they earn from them,” said Ray of JNU.

Also, unlike the US government’s restrictions on exclusive licensing, research institutions in India do not have overriding restrictions on licensing terms at this point, said Premnath Venugopalan, a senior scientist at the National Chemical Laboratory, Pune. “Furthermore, while the US had a well-established culture of IP creation and exploitation by the 1970s, we are still at an early stage, with a relatively small number of inventions reported every year,” he said.

Shashwat Purohit, an IP expert and consultant to the United Nations’ World Intellectual Property Organization, said technology offices in most US universities (with a few exceptions) are more of a liability rather than a source of revenue. “As a matter of fact, AUTM (Association of University Technology Managers) in the US takes a position that its objective is to provide taxpayers access to the technology that is being developed in the university or laboratory which is public-funded and not to bring in profit or become self-sustainable,” he said. ”

For a complete version of the article, see here.