SpicyIP Tidbit: 'Victory' against Biopiracy in the Pelargonium Patent case

Our older readers will remember Aysha having blogged about the Pelargonium patent case in 2008. Almost two years later, in what is being hailed as a victory against bio-piracy, the patent granted to German based Schwabe Pharmaceuticals for the anti-bronchitis drug after a ruling by the European Patent Office has been withdrawn on the grounds that the same did not amount to a "discovery" since the uses of the plant were known sufficiently in advance (having been used extensively by communities in Lesotho and the Easter Cape of South Africa, amongst other regions). Opposed by NGOs and other pharmaceutical manufacturers, Schwabe has announced its intention to appeal against this decision.

This case typically pits David v. Goliath where pharma companies have been accused of being ruthless in the manner they exploit traditional knowledge of communities that have used their home remedies and resources for centuries without any intention of marketing the same.

The undertones of rhetoric however, also highlight a more important question of the effectiveness of the Convention on the Protection of Biodiversity and other national legislations (that we have blogged about here), and the balance that needs to be found between the use of traditional knowledge and the patenting of the same by companies.

Madras High Court mulls the not so glittery tale of "Thangam"

The High Court of Madras has in this judgment (the cause title of which I absolutely cannot locate!), decided the application for interim injunction seeking restrain against an alleged case of copyright infringement with a focus on the evidence of proof of infringement vis-a-vis ingredients mentioned in Order 39 of the CPC.

Briefly put, in this case, the Plaintiff had alleged that on 26th June 2008, it had been assigned the rights by one of the Defendants to produce a "mega serial" based on a story idea. Prior to this, the said Defendant had already attempted to launch this storyline into a mega serial, and had discussed the same with another party (also a Defendant in this suit). Thereafter, it was alleged that, colluding and entering into talks with other Defendants, the 30 paragraph storyline was launched as the popular Tamil serial "Thangam" (meaning 'gold' in Tamil) despite the assignment deed in favour of the Plaintiff.

Summarizing the findings first, called upon to decide the question of an interim injunction in this case, the Court correctly (in my opinion) used the facts as presented before it to state that since all the various issues involved, were contentious, the same would require to be proved by way of evidence tendered or evidence placed before the Court. Therefore, not judging the issues, even if the Plaintiff's assigned copyright here was being infringed, the damage of the same in the interim would not be greater than stopping the production of the mega serial, before the matter was finally disposed of on evidence.

While the case can pretty much be summarized in a four line paragraph, the more interesting issues in specific to watch out in the case are:

- Section 19(4) of the Copyright Act : Can third parties (not being the assignor) invoke Section 19 (4) against an assignee where the assignment of copyright is called into question?

In this blogger's opinion, the statute does not provide a clear answer to this. However, a reading of Sections 18(2) clearly states that for the purposes of assignment an assignee would (for rights as specified), and an assignor would (for other rights relating to the same) be considered the owner of the copyright.

Keeping in mind that position, the invocation of Section 19(4) would clearly be for the ownership of the said rights- which then can only be called into question by the person i.e. the assignor who assigned such rights following principles of privity of contract.

(Readers comments are welcomed on this point, since this is just a theory- and I am not sure if this is the correct position in law).

- Idea-Expression Dichotomy: Here, a copy of the 30 paragraph plot that was initially given to one of the Defendants by the original author, and then later to the Plaintiff. When the other Defendants alleged used this concept as a base to create a "mega serial", the same was contended to violate the copyright vested in that literary work. Interestingly here, the Court took a two pronged approach-
(a) RG Anand v. Delux Films, which expounded the idea expression dichotomy in India, and held that a copyright is infringed only where the viewer/reader has the "unmistakable impression" that such allegedly infringing work is a copy of the original.
(b) Even if the work here i.e. the plot of the serial "Thangam", was in fact used as the base plot/skeleton, the amount of work put into converting the same into a mega serial was to be taken into account.

All that glitters may not infringe Thangam

In terms of the judgment itself and the facts that they emanate from, the Judge in my opinion correctly holds that these are questions for trial and require evidence to be proved for an injunction to be granted. However, a comment in passing made in the judgment suggests that the Learned Judge believes that in cases of such nature (para 18), it is not possible to grant an interim injunction. As a generalization, this may be problematic.

Clear cut cases of copyright infringement are difficult to find at an interim stage. They only happen when there is an act of blatant reproduction of a certain plot. While the idea-expression dichotomy is a necessary facet of copyright law that cannot be done away with, perhaps a lower standard than that set in the RG Anand case and followed thereafter must be set, for copyright owners to be granted a relief in the interim.

Ingredients for a temporary injunction
Another portion of the judgment I found particularly problematic, is the growing trend amongst judges to examine only the prima facie case for a temporary injunction. In this particular case, the Judge went a step further to examine the balance of convenience, only because a prima facie case had not been made out!

A particularly persistent Professor in college, spent many hours trying to find the right method to educate a fairly disinterested batch of students as to the various provisions of the CPC; which in all fairness, is a difficult task considering how wildly exciting the statute is! However, from a practitioners' point of view, it is continually reminded to us that the CPC is in fact almost a self sufficient code on procedure, with rules set for almost all eventualities. In such a scenario, maybe it is necessary to take one step back now and concentrate on the mandate of the statute and make it a point to prove it all, before a temporary injunction is granted.

With those thoughts on the CPC, the idea-expression dichotomy and an attempt made to interpret Section 19(4), our readers are invited to give us their feedback.

Others can do the following:
a. Take a peek at the serial in question at these times
b. Inform this blogger as to the cause title in the case :-)
c. In line with the current name of the serial, keep a watch on the ever rising gold prices

Time to Act on ACTA

The shroud of secrecy around the Anti-Counterfeiting Trade Agreement (ACTA) has arguably become a little more transparent during the past 2 years of negotiation, albeit due more to leaks more than positive acts towards transparency. (Readers may recall our previous posts on ACTA) Civil societies, nonprofits and blogs have also played an important part in this by constantly questioning the suspicious nature of its negotiations, not to mention the (leaked) provisions themselves. The agreement, which is supposed to be completed this year, just had its 7th round of negotiations in Mexico this week. The huge furor caused by all their secrecy over it, finally led to the inclusion of transparency as one of the four items on the agenda. However, as can be seen there, of the 4 days of negotiation, only 1 hour on the last day was put aside for addressing this, and this 1 hour also included any left over discussions from the previous days. The joint statement at the end of their meeting yesterday, didn't really reveal much new information - merely confirming that they had discussed the 4 issues on the agenda and that they wanted to complete the agreement by the end of 2010.

So, what are the problems with the ACTA? James Love from KEI puts it succinctly when he says, "ACTA is a beefed up version of the WTO TRIPS enforcement sections, without the balance and safeguards of the agreement as whole."

I'll try to briefly put together the main aspects that have surfaced so far. It seems to suffer from both procedural as well as substantive defects.

Firstly, who are the members of the Agreement?
It is currently being negotiated in secret meetings between the governments of Australia, Canada, the European Union (represented by the European Commission, and the European Union President), Japan, Jordan, the Republic of Korea, Mexico, Morocco, New Zealand, Singapore, Switzerland, the United Arab Emirates, and the United States. However, due to globalization and trade across borders, there will be a push towards harmonization of copyright laws across all countries, effectively meaning that in this internet age, this Agreement is relevant for everyone.

Why is there so much hue and fuss about transparency concerns?
The lack of transparency also includes the lack of public consultation. Due to its nature, the ACTA, if signed and ratified, would lead to the necessity of harmonizing domestic and international laws to comply with the agreement. Thus, laws reached at by an un-democratic process will be governing signatory countries and will cause even non-signatory countries to take it into consideration at least, if not comply with it altogether. Adding fuel to the fire, is the behaviour of the negotiating states bent on keeping it non-transparent. They have gone out of their way to ensure that it remains a secret through means of secret meetings, Non-Disclosure Agreements and Obama even stating that the copyright treaty was a matter of national security and hence couldn't be disclosed to the public. Public discussion is actively being denied while at the same time, several large industry members are being invited to participate in its discussion.

Why do we need the ACTA?
This can be broken into 2 subquestions:

- Do we need another Agreement at all?
Simply speaking, we don't. The assumption here is that 'we' does not solely refer to large corporates, since it would make sense for them to make an alternative treaty to which the consumers interest was not allowed to be taken into consideration via public discussion or any other method. There already exists a framework for international intellectual property law in the form of the TRIPS Agreement. This appears to be a blatant circumvention of the existing framework of law.

- Are stronger copyright laws necessarily the way forward?
This is a topic that has given rise to much debate, usually between corporate lobbyists, a strong consolidated party & some lawyers and academicians on one hand versus a more diluted number of academicians, organisations, nonprofits and individuals on the other hand - and therefore one that requires much more literature that I can provide here. However the fact that it is such a debatable question does mean that it requires equal input from all sides before any policy decision is made on it.

What does it deal with?
Even the title of the Agreement seems to be misleading. 'Counterfeits' are only part of the larger enforcement and protection of copyright treaty that it seems to be. While there isn't even a global definition of 'counterfeiting' (which is generally confused with all forms of infringement-which the treaty deals with), it generally refers to the imitation and passing off of a good as a genuine one. So why use 'counterfeit' when they actually mean 'copyrights'? One view that is going around, which I'd be likely to agree with is that it is merely a sly use of semantics. A policy maker automatically needs to explain in more stringent detail why she is against an Anti-Counterfeit Treaty (a phrase heavy with implication) as opposed to saying she is against a Copyright Treaty (much more neutral term).

Essentially it appears to be changing the line from balancing interests of copyright holders and users, to one that is more in favour of copyright holders. So far it is understood that the discussions have mainly rallied around Civil Enforcement (damages and injunctions), Border Measures (ex-officio suspension rights and powers), Criminal Enforcement and IPRs in the Digital Environment.

Of the leaked documents, one pertains to the internet chapter of the ACTA. Much criticism has arisen over the provisions which have shifted the burden of enforcing the copyrights off the holders and onto third parties - this includes having ISPs enforce the much debated '3 strikes and you're off the internet' rule, Technological Protection Methods (TPM) and Digital Rights Management rules.

Due to the haze of vague information being officially given out, it is difficult to say what exactly it contains. The official statements that have been released on it, are sometimes contradictory not only with the leaked papers, but also with the statement itself! For eg., Australia's Department of Foreign Affairs and Trade Summary of Key Elements under Discussion state that the ACTA will be consistent with the TRIPS agreement, and then in the very next paragraph state that it aims to build on existing framework such as TRIPS - disregarding that Article 1 of the TRIPS says that member states shall not be obliged to use protection more extensive than that in the TRIPS Agreement.


As mentioned, a lot of pressure has been growing on the negotiators to reveal the undergoing process. In order to facilitate and promote more analytical inputs on the text and working of the ACTA, the Program on Information Justice and Intellectual Property (PIJIP) at WCL, has done a commendable job by putting together a research resource site where researchers can find what is out there already (leaked texts, links to blogs and NGO sites, etc.) on the ACTA. The first draft of this website is up here.

We certainly hope that these kinds of initiatives as well as those that they encourage go a long way into ensuring more transparency as well as inclusive and effective discussions into these policy questions.

Okay Jurassic Jelly's design trophy in Delhi HC

Design matters don't come up frequently enough, but when they do, they offer immense entertainment, like the case I report on today.

"No application of mind" by Design Registry

In his December 2009 order, Justice S N Dhingra was made to ponder upon the novelty in the design of a cup for jelly, which the plaintiffs argued was proprietary. While it was primarily a trademark infringement matter, the judge also had time to reprimand the Registrar of Designs for showing "no application of mind" in registering the design of the plaintiffs.

Best Name Award to Okay Jurassic Jelly

I shall not dwell upon the trademark part of the case, since i found that fairly inconsequential. Instead, I draw your attention to the arguments of the plaintiff, one M/s. S.K. Industries Ltd. who contended that they had a registered design for a cup in which jelly was packed and sold. The cup was semi-cylindrical in shape, and had a spherical bottom; and was allegedly being infringed by the defendants in their marketing the Okay Jurassic Fruit Flavoured Cup Jelly (sic) (which today gets the SpicyIP prize for best product name in the artificial foods category). (Jurassic jelly-fish from here )


Common Cup Award to All Jelly Manufacturers

The court, on cursorily reviewing the cups in use by different jelly manufacturers, found this particular cup design to be very common.

Citing the Delhi HC 2008 order in Dabur India Ltd. v. Rajesh Kumar, the court reiterated the basic principles of design registration which need to be carefully noted while granting interim injunctions, and also highlighted the novelty requirements of any design application:

"No specific novelty has been mentioned by the plaintiff in the design of the bottle, neither any specific novelty has been mentioned in the registration certificate... There is no specific dimensional ratio of the bottle given in the design as bottles are manufactured by most of the manufacturers for containing specific quantity of liquid by measurement... Unless, plaintiff had any claim over specific ratios of the dimensions which were not pre- existing, there can be no novelty in the bottle."

In the Okay Jurassic Jelly case too, the court said the design in question was a common cup. Notably, the court, holding that the defendant was entitled to use its cup, observed that "[t]he registration of the design of the cup by the Registrar does not show any application of mind nor does it show any novelty of design. The shape is a well known geometrical shape. There is no originality either in the shape or in the dimensions."

Introducing dimensions in statement of novelty?

Under Rule 12 of the Design Rules, 2001, "The applicant may, and shall, if required by the Controller in any case to do so, endorse on the application and each of the representation a brief statement of the novelty he claims for the design." While the Design Office, in its "Ten steps to design application" and the Design Information Booklet, recommends that a statement of novelty should accompany any application, nowhere does it specify that the dimensions of the design need to be stated as well.

Do these decisions prompt a revisiting of the substantive structure of the statements of novelty? At present, sample statements are mostly innocuous phrases such as "The novelty resides in the shape and configuration of the article as illustrated"; or "The novelty resides in the floral ornamentation of the carpet as illustrated".

Having said that, I have a key concern on introducing dimensions into the statement of novelty in design cases, which I contend may be limiting in terms of what it protects. Also, will this also not have implications on changes in scale?, i.e., will introducing dimensions protect a magnified version of the same design as well as a reduced version?

I ask because "dimension", in its interpretation in connection with "shape" and "configuration" (both key features of a design) has spatial attributes, and a reference to planar coordinates. Coordinates in turn are unique, as for instance (2,3,4) on (x,y,z) cannot be equated with (4,6,8). I have my own defence for this, in that the resulting design (whether scaled up or scaled down) will be similar, if not identical. But what if only one of the coordinates is changed in a subsequent design, i.e., the length is reduced, or the breadth is increased? Is it still a similar design? Will the stated dimensions, then, prove to be a disadvantage to the registrant?

I've thought myself into a tizzy. Dimensions, anyone?

The Indian Bayh Dole Bill: A Critique and Some Suggestions

In my last post, I lamented the pitiable state of affairs that informed and continues to inform the passage of India's notorious "Bayh Dole" bill. In particular, I referred to a TOI piece, which documents the "secrecy" with which a Parliamentary select committee is now hearing this matter.

I also referred to a draft article of mine (along with Shouvik Guha) which highlights some of the major flaws in this badly conceptualised and drafted Bill. For those interested, you may download the paper here (if the page opens in an inconvenient to read format, do right click on your mouse and hit the button titled "save linked file as" and then download the document).

Today's edition of the Mint carries an editorial of mine reflecting on the above theme and providing a brief critique of the Bill. I reproduce it below:

"The 2008 Protection and Utilization of Public Funded Intellectual Property Bill—popularly called the Indian “Bayh-Dole” Bill since it draws inspiration from the US Bayh-Dole Act of 1980—is currently undergoing scrutiny by a parliamentary select committee. It will be placed before Parliament next month.

Despite this Bill’s ability to affect many of India’s leading public research and development (R&D) institutions, its journey to become law has been accompanied by a worrying lack of transparency and, worse, the lack of input from important quarters. The Indian Institute of Science, India’s leading research institute, was not even asked for its views by the committee. Little wonder, then, that the Bill suffers from a number of critical drawbacks.

To begin with, the Bill’s very raison d’être is flawed; it ignores an important historical fact. For a long time in the US, it was thought that publicly funded research couldn’t be go from academia to business because these researchers often lacked the right to patent their own inventions. To remedy this and increase the prospects of commercializing research, the US enacted the Bayh-Dole Act.

India does not have a similar problem. It is rare that any of our universities or institutes receiving public funds is denied the right to patent. Even assuming that our institutions have somehow been lax in exercising their freedom to patent, the solution is not to force them to patent any and all inventions, without regard to the actual worth of the invention or the cost of patenting. Yet this is exactly what the Bill does, under threat of severe sanction for those institutions that dare disobey the law.

In this regard, the Bill ignores the wisdom of many scholars who point to the fact that patenting is not always the best way to capture and commercialize publicly funded research. Indeed, the Council of Scientific and Industrial Research (CSIR), India’s biggest patentee and largest recipient of public R&D funds, is now attempting to get at a potential tuberculosis drug through an open source approach. Under the Bill, CSIR scientists would now have to discard this approach.

While hoping to make our institutions financially self-sufficient, the Bill fails to appreciate that even in the US, not many institutions make money from their patents. Closer home, the figures are even more startling: While CSIR generated Rs4 crore in 2005 in licensing revenue, it spent Rs10 crore on patent-related costs.

Given the above problems, what might the solutions be?

First, prior to arriving at any policy framework to regulate something as serious as publicly funded research, the government must undertake a comprehensive study. This should aim at rigorously and empirically examining the contours of such research.

The justice Rajagopala Ayyangar committee report, submitted in 1959, is an excellent example in this regard. This council undertook a careful study of the Indian patent system for two years before making a slew of recommendations that went on to form the basis for the 1970 Patents Act. It contributed in no small measure to the success of the Indian pharmaceutical industry.

Second, it might be more optimal if India regulates the patenting of publicly funded research through a “policy” and not a “law” that would create binding rights and obligations. When compared with a flexible policy, an enacted statute will be far more difficult to change as science and technology progress.

Third, given that publicly funded inventions are generated using taxpayer money, the Bill ought to provide for greater “public interest” safeguards, such as the “affordable” pricing of any goods that come out of publicly funded research."

SpicyIP Tidbit: The Woes of the Grassroot Innovator in the Agricultural Sector

The Indian public discourse over innovation and intellectual property laws has often ignored the issues arising in the agricultural sector – a sector which affects more than 50% of the Indian population. Luckily for us Hindu's award winning correspondent – M.J.Prabhu carries a weekly column – Farmer's Notebook – which does cover grassroot level innovation affecting farmers. In fact his coverage has been so good that he's been given an award for it by the National Innovation Foundation.

Picture from here.

In his last column Prabhu has touched on a very interesting topic – the indifference of Indian scientists and academia towards the innovations made by Jai Prakash Singh in the field of agriculture. Jai Prakash Singh who started off by focussing on developing higher yielding varities of wheat and paddy has developed an expertise in being able to identify those strains which are not only high-yielding but are also pest-resistant. He has since developed other strains of several other plants.

The column quotes Singh as saying “Our innovations could help inform scientific research, if only scientists take time to invest proper resources into exploring them. But sadly, neither the scientists nor the Government respond as enthusiastically as they should, because they are often sceptical about the value of traditional knowledge,”

The reason for this lack of research on TK, as explained by the column, is “because peer pressure often forces scientists to focus on high-impact research with wide visibility, and even students shy away from work that does not guarantee them a successful career.” The challenge therefore is to incentivize the process for scientists and students at agricultural universities.

In an earlier column of his Prabhu documents the story of Dadaji Ramaji Khobragade who developed some highly successful strains of paddy. Unfortunately for this innovator several local companies commercialized his innovations without sharing the benfits with him. The column quotes the innovator as stating that“The benefits of my research were usurped by private seed companies who made money allegedly with the help of some scientists working in an agricultural university,”

Theoretically speaking India has all the laws in place to protect such innovations, especially the Plant Varieties Protection Act. In reality however it is a moot question as to whether small farmers will have access to the infrastructure required to protect their innovations.

It is rather ironic that there is such scant attention paid towards Traditional Knowledge in a country which is whipped into a murderous patriotic fervour everytime basmati or neem or turmeric are in the danger of being patented in the E.U. or the U.S..

Law Making, Bayh Dole and the Indian (Re)Public

Today, we celebrate the 60th anniversary of India's coming into existence as a "Republic", a date that many consider to be as important as the 15th of August 1947, when India finally shook off the last vestiges of foreign domination and went on to fulfill its tryst with destiny.

As a friend of mine, Gopal Sankaranarayanan writes in the Hindu:

"In many ways, August 15 would have little meaning if not for January 26. For, although independent, the vast land that formed colonial India was peopled by a multitude, divided by language, religion and ethnicity, and still treated as a Dominion of Britain, with George VI continuing as the Head of State.

Scarred by partition and rendered rudderless with the passing of its foremost leader, they sought a rallying point — one that would bring them together, not merely symbolically, but as a living truth.

That succour was the Constitution of India, signed in after two years of debate among the most outstanding minds of the time. The adoption of the Constitution on that momentous day marked the actual setting of the sun on the British Empire in India."

The birth of the world's longest constitution sixty years ago, when "we the people of India solemnly resolved to constitute India into a sovereign, socialist, secular, democratic republic" requires celebration. But more importantly, it requires reflection. For it is more than a mere parchment stamped with the erudite words of a diverse set of visionaries.

It lives, it breathes..and most importantly, it has a soul. That elusive thing, the quest for which burnt up entire (and perhaps multiple) life-spans of some of our ancestors. Little wonder then that our dear country has turned out to be one of the cheapest shrinks the world over...a country that offers spiritual solace to many that coming knocking on its doors.

Anyway, given the paucity of time and attention span in this day and age, let me not meander through spiritual meadows. Rather, let me try and focus on the word "republic", a word that derives its origin from the Latin phrase "res publica", which roughly translates as "a public affair".

Though there is considerable disagreement on the import of the term "republic" and some have even gone to the extent of labeling it a redundancy in a modern day constitutional democracy, many are likely to converge around the notion that it is a form of government that places more emphasis on a polity governed in accordance with the wishes of the public, as opposed to an arbitrary and perhaps hereditary monarch.

Given that the term "republic" places some emphasis on "public", it is a shame that our law making continues to pace ahead with scant public input. The Indian "Bayh Dole" bill is an excellent case in point, where a bill was drafted in complete secrecy and then made its through various government agencies, law firms and private industry in secrecy. We documented this shameful state of affairs several times on this blog.

It now turns out that the Parliamentary select committee chosen for the arduous task of collecting inputs from various stakeholders and presenting a well rounded picture to our Parliamentarians also chose to respect this tradition of secrecy. None of their hearings were made public. In fact, barring a select few that were invited to present their views before this Committee, no member of the public even knew that this Committee was considering a grave issue likely to impact the very future of science and research in this country.

What is most lamentable is that the Indian Institute of Science (IISc), perhaps India's leading institution of learning and research, was not so much as invited to present their views. See this Times of India piece which states:

"...scientists seem far from thrilled. In fact, they are rather uncomplimentary in describing the bill — ‘‘useless, poorly drafted, burdensome, potentially coercible, most abusable piece of legislation’’. And, public interest seems heavily compromised in the bill. The bill is before a standing committee of Parliament after being introduced in the Rajya Sabha. The standing committee has been hearing various stakeholders and has to submit a report to Parliament by March this year...

Interestingly, a premier institution like the IISc was not specifically asked to make a presentation before the standing committee of Parliament looking into the bill. When, upon learning of the hearings from an NGO, the institute requested permission to make an oral presentation, permission was refused as the request was late and, instead, a written submission was asked for."

(For those interested, I have a draft paper (along with Shouvik Guha) on some of the critical drawbacks in this badly conceptualised and drafted Bill. We also suggest some tentative solutions that might help frame better policy in this regard.)

On the 60th anniversary of a day when some of our finest minds put their heads and hearts together to craft a commendable document that has time and again protected the public from the tyrannies of government power, we have much to be proud of. Unfortunately, in so far as law making is concerned, I chose to hang my head in shame.

I do hope however that the next decade sees a government that takes law making more seriously and pays more than lip service to the "public" within this republic. And on that optimistic note, let me wish you all a wonderful republic day.

ps: For those hoping to take a musical break from this rather heavy and depressing post, see this years' rendition of "Mile Sur Mera Tumhara", where our solemnly conceived republic is worryingly represented by an over abundance of Bollywood.

pps: For excellent pieces commemorating the 60th anniversary, see Vikram Raghavan's piece and this LAOT post documenting other pieces.

ppps: image from here.

SpicyIP Tidbit: WHO is looking after flu scares?

An Inter-Governmental meeting this week of the Executive Board Members of the WHO, saw concerns on several different issues being discussed. Regarding a way towards an influenza framework, it was agreed that they would try to complete a framework for dealing with influenza in time for the World Health Assembly in May later this year. One of the main issues discussed was that of development and distribution of vaccines. The usual developed - developing line roughly divided the groups, with certain developing countries claiming that shared details about a pandemic virus did not always translate to any/proportional benefits.

As per IP-Watch, concerns were also voiced over inequitable access of vaccines produced, with different views as to whether any agreement on this should be based on voluntary contributions (Japan), the proposal that any such agreement should binding and enforceable due to the right of a country to benefit sharing (Brazil) as well as that benefit sharing should be based on ability of a country (China), while India was wary of the balance between virus and benefit sharing being disturbed by terms and conditions that might be set down as precedent without sufficient foresight.

Readers may have seen media reports on the alleged financial corruption scam within the WHO which is said to be behind the methodology of distribution of vaccines for the 'alleged' pandemic H1N1. Besides questions of conflict of interest due to WHO advisors being on the payroll for Big Pharma, there was also the hullabaloo of the Austrian journalist Jane Burgermeister's criminal charges against Baxter, WHO and others for conspiring to produce and release live bird flu viruses in 2009. With regard to these media reports, India has asked WHO to clear the air of these allegations, as they were adversely affecting public health measures being taken. Sujatha Rao, Union Health Secretary, also asked that greater transparency be given to the terms and conditions regarding how vaccines were supplied to various countries. Sujatha Rao, while promoting access to medicine for all also pointed out that the IP issue of 'counterfeiting' should not get mistaken up with issues such as sub-standard quality.

India also emphasized on the importance of transfer and dissemination of technology with which to address such health issues. IP issues generally added to the high cost barriers of accessing medicines and India suggested that WHO should take a more hands-on approach in tackling this, especially helping developing countries make use of the flexibilities in the TRIPS Agreement. Another issue noted was that of the lack of incentives in the current incentive structure for R&D for problems of diseases in developing countries.

TWN and IP-Watch have a more detailed news report on this meet here and here respectively.

SpicyIP Tidbit: The Science and Engineering Research Board Act, 2008

In 2008 the then Minister for Science and Technology, Mr. Kapil Sibal had introduced in Parliament the Science and Engineering Research Board Bill, 2008. The Bill as passed by both Houses of Parliament in December, 2008 aimed at constituting an autonomous body, the Science and Engineering Research Board (SERB).
Photo Credit: Bill Strong, Image can be accessed here.
The 'Statement of Objects and Reasons' appended to the Bill introduces the Bill as an attempt “to create an autonomous Board with necessary administrative and financial powers and operational flexibility for promoting basic research in science and engineering in order to achieve higher levels of excellence in internationally-competitive basic research. The functions hitherto handled by the Department of Science and Technology under the advice of a Science and Engineering Research Council are proposed to be transferred to this new entity.” The driving policy consideration behind the creation of such a Board, as identified by the 'Statement of Objects and Reasons', is the fact that India's furture as a global research and development hub is contingent on its investment in promoting basic research in science and engineering. Previously this task used to be carried out by the Science and Engineering Council (SERC) which was an administrative body established by the Central Government in the year 1974 to promote R&D programs in science and engineering.

Although the financial memorandum appended to the Bill provides for a sum of Rs. 200 crores towards the establishment and functioning of the Board in the year 2008-2009 and we're currently in the year 2010 I cannot find a single trace of the existence of a Scientific and Engineering Research Board. Normally when Parliament passes an Act the Central Government must 'notify' the Act so as to enable the Act to be translated into law. It is often the case, as happened in the case of Competition Act, that an Act may not be notified by the Ministry-in-charge for several years after Parliament has passed it. This may happen for a variety of reasons, the saddest of them being bureucratic lethargy. Fortunately or unfortunately, the year 2009 witnessed the transfer of the dynamic Minister Mr. Sibal away from the Department of Science and Technology to the Ministry of Human Resources and Development. With his transfer even the updates to the website of the Department of Science and Technology (DST) have seemed to cease. The last press release on the website of the DST in Decemberm 2008 was the fact that the Parliament has passed the SERB Bill. There has been no press release on the DST website for entire of 2009!

The passing of the SERB Bill represents a significant attempt in attempting to build up a stronger institutional mechanism that will play a significant role in implementing India's Science and Technology Policy. A statutory body such as the Science and Engineering Research Board (SERB) will be more stable and accountable than the Science and Engineering Research Council which was an administrative body setup by the Government and not Parliament.

A previous effort at institutionalizing such a body was when Parliament passed the Technology Development Board Act, 1995 (TDB). Other bodies such as the National Science and Technology Enterpreneurship Board (NSTEB) are creations of the Government and not Parliament. It remains to be seen when the SERB Act is notified by the Central Government.

IP Jobs in Mumbai

Reposting an earlier announcement of an excellent opportunity for those seeking a challenging IP opportunity in Mumbai.

Two job openings for IP Professionals in Mumbai, as described below.

If interested, please write with a copy of your CV to spicyipjob[at]gmail.com

(I) POSITION: Senior Manager Legal - IP Enforcement

Required Qualification: 5-8 years of IP infringement experience in a reputable law firm and/or multi-national corporation, including substantial work in copyright and/or trademark law

Salary: Commensurate with the best in the industry

Roles and Responsibilities:

i) Involves working closely with outside counsels, law enforcement agencies including customs and police, as well as corporate client representatives and trade associations

ii) Manage IP enforcement programs to ensure an integrated approach to worldwide issues while serving local needs and accommodating local conditions

iii) Supervise investigations, preparation and oversight of copyright and trademark infringement actions, in cooperation with colleagues in the U.S., China, and UK

(II) POSITION: Senior Manager Legal - IP (Advisory and Transactional)

Required Qualification: 5-10 years of IP advisory and transactional experience in a reputable law firm and/or media & entertainment company.

Salary: Commensurate with the best in the industry

Roles and Responsibilities:

i) Required for the company's film & television production, marketing, distribution and allied businesses

ii) Work closely with the business teams in the Indian office, understand their legal needs and manage the same

iii) Deal negotiations, contract drafting, advice on intellectual property laws, contract law and other areas of law, rights management

iv) Supervise investigations, preparation and oversight of copyright and trademark infringement actions, in cooperation with colleagues in the U.S., China, and UK

NUJS I(P)DEATE EVENT REMINDER

A reminder that Graham Dutfield is speaking at NUJS this afternoon on "traditional medicines" and patents:

Venue: Room 006, NUJS, Kolkata
Date: Jan 22, 2010 (Friday)
Time: 3 pm to 5 pm (including QandA)
Registration: If you're interested in attending, please send an email with your name, designation and institution to shayonee[at]gmail.com. Attendance is free.

From Traditional Medicines to Modern Drugs: Do Patents Protect Inventions and Promote Piracy?

For as long as there has been a pharmaceutical industry, traditional knowledge has provided innumerable successful leads in the discovery of drugs that have generated enormous profits. Because the pharmaceutical industry’s emergence in the late 19th century, and its further evolution since then, seem like such a radical break from the past, it is all too easy to overlook this fact. In consequence, the role of traditional knowledge (TK) is under-appreciated. This has in turn resulted in TK holders and their communities deriving virtually no benefits from the commercial use of their knowledge by drug firms.

The pharmaceutical industry is science based. Arguably, it not only ‘invented’ in-house corporate research and development, but also modern intellectual property management strategy including the aggressive assertion of patents and other intellectual property rights, especially trade marks. But patents appear to do more than just protect the expensive inventions and R&D investments of corporations. They seem also to enable them to secure legal monopolies over the knowledge, innovations and practices of members of traditional communities.

Numerous cases of such “biopiracy” are cited, and not just in health. These include patents relating to neem, turmeric, hoodia and other products and associated knowledge that are common in India or in other parts of the world including Latin America and Africa. If novelty and inventive step are essential requirements for the grant of a patent, how can traditional knowledge be misappropriated? This seminar will seek answers.

Essay Competition: Competition by Max Planck on Innovation

SpicyIP is pleased to announce the first international essay competition conducted by the prestigious International Max Planck Research School for Competition and Innovation. The topic for the competition is “Designing an Inclusive National Innovation Policy for Sustainable Development: Legal, Economic, and Social Perspectives”.

The text of the essay should be no longer than 8,000 words, including footnotes. It should be presented in a way that ensures the author's anonymity when it is circulated to the members of the evaluation committee. The author of the essay should be no older than 35 years of age
as of December 31, 2009.

Joint submissions are permitted, however the travel and accommodation expenses of only the first author will be reimbursed. Co-authors must bear their own expenses, however they are entitled to an exemption from payment of the delegate fee.

All entries must be in English and must reach the evaluation committee c/o Ms. Karin Haase (Karin.Haase@ip.mpg.de) by May 1, 2010. Any questions or clarifications regarding the Conference or the rules of the essay competition must be addressed to Mrinalini Kochupillai (mrinalini.kochupillai@imprs-ci.ip.mpg.de). Winners will be notified by July 1, 2010.

The subject of the email with the essay manuscripts must be “Innovation Conference 2010 Essay Competition”.

The author of the best essay will be invited to present his/her paper at the IMPRS-CI's 1st International Conference on “Legal, Economic, and Social Perspectives on National Innovation Systems: Established and New Practices” to be held in Munich from September 22-23, 2010. Expenses for travel to and local hospitality during the conference shall be borne by the IMPRS-CI.

The top three best entries shall also be considered for inclusion in the conference proceedings.

For more information on the conference, please visit here.

SpicyIP thanks Mrinalini Kochupillai for sharing the information with us!

Call for Papers: Conference on Emerging Issues of Law and Justice

SpicyIP is pleased to announce a Call for Papers on behalf of the organisers at Campus Law Centre, Faculty of Law, University of Delhi, of an upcoming conference on "Emerging Issues of Law and Justice in the Coming Decade" to be held on March 26-27, 2010 in Delhi.

Concept Note

India has experienced major changes in its economic, social and political life during last two decades. Record economic growth has been accompanied by rapid urbanisation, rise in informal forms of employment, emerging crisis in agriculture, concerns over the sustainability of the environment and rise in unconventional crimes. There has been an increase in inequality raising concerns over the human rights of large sections of the population. The demand of the citizens to obtain information, transparency and accountability from the state institutions, the rising aspirations of the people who ask for equitable outcomes of development are visible in several parts of India today. The ability of the state to deliver equity and justice is at the core of these developments.

There is need for the legal and judicial systems to respond to these challenges. The legal system through its laws, courts and other institutions is often seen as the ‘last resort’ and expectations from these institutions are exceedingly high. There has been broad participation in debates across the country over the direction of law and policy reform. The credibility of the legal system is challenged over whether the rule of law applies equally to all citizens, big or small. All these developments indicate that the legal and judicial process is under scrutiny as never before. This conference aims to discuss these challenges across four main themes indicated below and generate useful insights for further study and possible reform.

Conference Themes

There are four broad themes at the conference, listed below. Although the conference is not exactly IP-related, we find that Theme 2 on Technology, Sustainable Development and the Law is wide-ranging enough for those interested in IP to discuss emerging issues and "generate useful insights for further study and possible reform".

Theme 1: Criminal Justice System, Human Rights and Rule of Law

• Narco-Analysis and rights of accused
• Extraordinary laws and human rights
• Prison Reform
• Hate speech and communal violence
• Trans-national crimes

Theme 2: Technology, Sustainable Development and the Law

• New technologies and privacy
• Global warming
• Natural resources and rights of communities
• Policies, technology and court administration

Theme 3: Towards Social Inclusion

• Equal Opportunity Commission Bill
• Changing contours of reservation policies
• Caste atrocities and the State
• Linguistic rights under the Constitution

Theme 4: Legal Education in a Global Context

• Legal Education in an increasingly unequal world
• Regulatory role of lawyers and judges in legal education
• Legal education and access to justice

Submission Guidelines

Papers are invited on four broad themes from academics, lawyers, law researchers and other interested persons. Completed papers (4000 words) are to be submitted to the Conference Secretariat not later than Monday, February 1, 2010 both electronically to clc.conference2010@gmail.com and with a hard copy addressed to: Dr. Kamala Sankaran Conference Coordinator, CLC Conference 2010, Campus Law Centre, Faculty of Law, University of Delhi. Or to Prof. S.C. Raina, Prof.-In-Charge, Campus Law Centre, email add: scrainaclc@gmail.com . Those whose papers are selected will be notified by February 22, 2010.

Conference participants will be provided boarding & lodging from March 25-27th, 2010. The Campus Law Centre will not be in a position to reimburse local or outstation travel costs to participants due to limited funds. It is requested that respective institutions be requested to reimburse the same.

IP Ownership in an Employment Context: Patents vs Copyrights

Divya Subramanian, a bright young IP attorney with Lex Orbis, one of India's leading IP law firms, wrote and asked me a very pertinent query pertaining to the ownership of IP created by an employee during the course of employment.

While the copyright act (section 17) states that absent a contract to the contrary, any work created in the course of employment belongs to the employer, the patents act does not carry a similar stipulation. Therefore it would appear that absent an express contract, wherein all IP created by the employee belongs to the employer, patent rights ordinarily vest with the employee. Is there any reason for this differential treatment in the two regimes?

I personally think this is more of an oversight than anything else. If brought to the attention of our lawmakers, my guess is that an amendment to the patents act to bring it on parity with the copyright act would pass through without much of a problem. But perhaps there is a deeper reason underlying this difference that I have missed. And some of you could point us to it.

As an aside, this difference between the patents and the copyrights act appears to have played a prominent part in the Upaid vs Satyam dispute, which Sumathi tracked extensively on this blog. The Indian experts hired by both parties in this dispute (Himanshu Kane vs S Majumdar) testified on this difference, albeit reasoning differently to reach different conclusions.

Anyway, below is the text of Divya's note and query to me:

"The aim of each of the IP regimes is undoubtedly to grant protection against misappropriation and monopoly on the fruits of labour invested on one’s Intellectual capital. In this endeavour, ownership of the IP and transfer of rights therein is crucial and pertinent.

One of the primary differences between Patents and Copyright (CR) is the manner in which a claim on them exists- A patent right not being acquired until a patent is granted by the IP Office , while a CR comes into existence the moment the creative piece of work comes into existence. Further, looking at an employer-employee scenario, a formal declaration as to one being the true and first inventor and an assignment is required to acquire a patent on an invention/process.

While, in a case where the course of employment involves creation of something that qualifies CR registration, the CR automatically vests in the employer. However, when the employer applies for CR registration (since CR automatically exists upon the work coming into existence, and the right as the first author of the work still rest with the employee), the employee is required to give a certificate of no objection to allow the employer to apply for CR. If this certificate is not filed, the application is considered incomplete. I wonder if the no objection certificate has the same force of law or effect as a deed of assignment in view of the fact that the author still has a right as a first author in the CRed work, but an inventor shall have no such right upon assignment of his invention to his employer for application for a patent.

While comparison across jurisdictions of a regime is pertinent, is it pertinent to compare and generalize/bring parity between practices across different types of IP? I am wondering ... if we should bring parity in practices in the different regimes, or leave these independent, owing to an obvious difference in the subject matter covered under each IP. Further, particularly on the aspect of employer-employee relations vis-a-vis IP is there need to bring in uniformity? Or, is there something that this limitedly-enlightened mind misses? Would like to have some of your perspectives."

ITC loses TM dilution case against Philip Morris

We have an anonymous commentator to thank for pointing out in a recent post a Delhi High Court decision where ITC lost its dilution case against Philip Morris over a stylized logo of the popular Marlboro trademark. (Image from here)

Readers will recall a post in October last year, around Diwali, when we had posted on the early days of the dispute here. I had received at the time a bunch of replies to that post, including one reader, Anshuman Sakle, who stumbled across the disputed logo and was kind enough to scan and send a copy for a future post (which I reproduce here).

Justice S Raveendra Bhat's decision, which can be downloaded from the HC website here, contains an excellent discussion on trademark dilution in the case of logos. (For those who can't access it from here, visit the Judgement Information System of the Delhi High Court, under 7 Jan 2010.) case law in India has dealt mostly with the comparison between competing word marks. This decision gives an opportunity to understand the law in the context of visual marks as well.

Four essential elements to be established for dilution

ITC essentially alleged that the festive pack Marlboro logo (belonging to Philip Morris) resembled and diluted the 'Namaste', or 'folded hands' trademark, made popular by its hospitality brand, WelcomGroup.

The court emphasised that the following four essential elements need to be established in order for a dilution case to succeed, viz.,:
1. The diluting (impugned) mark is identical or similar to the injured (senior) mark;
2. The injured mark has a reputation in India;
3. The use of the impugned mark is without due cause;
4. The use of the impugned mark (amounts to) taking unfair advantage of, or is detrimental to, the distinctive character or reputation of the registered trade mark.

And because there is no presumption of infringement in cases of dilution (i.e., where a mark is infringed by use in connection with dissimilar goods or services), each of these elements needs to be established in order to pull off an allegation successfully. [NB: unlike in cases of infringement in relation to similar goods/services, where there is a presumption of infringement].

Test for similarity in cases of dilution
Discussing the test for similarity of marks laid down by the Supreme Court in Amritdhara Pharmacy v SD Gupta (1963) [-- see p. 37 of the judgement for a verbatim reference], Justice Bhat highlighted that the test for dilution was higher than in simple infringement matters. This was because of the design of Section 29(4) of the Trade Marks Act, where it was clear by the use of the conjunction "and" that all four elements (listed above) had to be established. Crucially, it noted that "[i]n the case of logos and other marks, the application of the “identity” or “similarity” test has to result in a conclusion that the rival marks bear a very close resemblance, seen from an overall perspective."

ITC's major contention had been the similarity betweem the W-Namaste mark of the Welcomgroup and the "M" on the Marlboro pack which it alleged deceptively appeared like a "W". However, the court observed that "a “global” look, rather than a focus only on the common elements of the mark, is to be taken, while considering if the impugned or junior mark infringes, by dilution, an existing registered mark."

In this case,

"the plaintiffs‟ mark is not a “stand alone” mark; it is used with the words WELCOMGROUP, or the name of the resort or service. Moreover, the plaintiffs‟ mark is part of the overall marks and devices which are used in relation to each hotel, restaurant, resort or service it offers, to the consumer... This conclusion is further fortified for the reason that the plaintiff‟s mark, in relation to hospitality industry, is a stylized logo, which has to be juxtaposed with another mark, which, the materials on record prima facie suggest, has its own distinctive market."

ITC had also put forward the contention of copyright infringement of the artistic elements of the W-Namaste mark. The court on its part was fairly quick to shoot this down, pointing out that both marks were prima facie neither identical nor similar, and the Marlboro festive pack logo had its own artistic elements.

Mark's reputation in India
It had been argued that the WelcomGroup logo was associated with the ITC group for 30 years, and Philip Morris's use of the mark in question could mislead customers, and whittle down the distinctiveness and exclusivity associated with the former. The court did make note of the overlapping business interests (in tobacco) of the two parent companies It acknowledged that ITC's "reputation in its mark contains an aura of luxury could possibly transcend the hospitality business, and may well evoke a broad association with luxury goods."

However, the court held there was nothing to imply that such association also extended to mid to high priced cigarettes. On the contrary, it said there were significant and fundamental differences between ITC's hospitality business (which alone apparently use the W-NAMASTE) and Philip Morris' Marlboro cigarettes.

Specifically, ITC had failed to show that it used the W-Namaste logo for cigarettes. T complimenting the discerning consumer, the court held that there was no possibility of the two goods/services (ITC's hospitality and Marlboro cigs) being deceptively associated.

So there's an end to that. This decision was unfortunately overshadowed by the Delhi High Court's RTI decision of around the same time (recommended read, btw, if you haven't already). There's another dilution judgement which will see the light of day soon on this blog. More on that later. (And yes, Topkapi is on my list of to-visit places. Which reminds me, must pick up Ambler again. No question of dilution there...)

Latha Nair on 3 Idiots and Contractual Fairness

Latha Nair, who has already graced our blog several times in the past, now writes on the "3 Idiots" controversy, which has been debated extensively on this blog here, here and here. In particularly, she focuses on the "contractual" issues arising out of this highly sensational case.

I found her reference to Salman Rushdie particularly interesting, since newspapers are abuzz with Rushdie's recent visit to India to oversee the adaptation of his magnum opus, "Midnight's Children" by the legendary film maker, Deepa Mehta. I for one, would love to see the kind of contractual benefits that someone like Rushdie was able to negotiate.

She also discusses our poll (on the SpicyIP blog home page) which comes out heavily in favour of Bhagat. 74% of our viewers find that the movie 3 idiots copies substantially from Bhagat's book "Five Point Someone".

Here is her complete post:

3 Idiots: Not yet the last word….

[By Latha R Nair, Partner, K&S Partners Gurgaon]

Being an ardent fan of Chetan Bhagat, I have been following the blogs on SpicyIP on the controversy surrounding ‘3 Idiots’ and have been eager to blog on the same but for my preoccupation with certain personal and professional commitments.

Having settled down a bit and watched the movie (and of course, read the book ‘Five Point Someone’), the first thing that came to my mind was a comment made by Charles Dickens regarding certain law suits he had to pursue in asserting his rights as an author of his own works.

I quote him as follows: “My feeling is the feeling common, I suppose to three-fourths of the reflecting part of the community in our happiest of all possible countries, and that is, that it is better to suffer a great wrong than to have recourse to the much greater wrong of the law. I shall not easily forget the expense and anxiety, and horrible injustice of the Carol case, wherein, in asserting the plainest right on earth, I was really treated as if I were the robber, instead of the robbed”.

But for Bhagat’s story, characters and the theme revolving around today’s education and grading systems beautifully depicted in the book, ‘Five Point Someone’, the movie, ‘3 Idiots’, would not have been a roaring success as it has been today. Yet, Bhagat was accused of hankering after cheap publicity when he asserted his rights for credits and was treated by the producers as if he were “the robber instead of the robbed”.

Well, shall we then say that he is in the company of great people like Charles Dickens in more than one way!

Bhagat may have put the controversy behind him and may have moved on. However, one important aspect that authors like Bhagat and producers like Rajkumar Hirani may examine to steer clear of controversies such as this one is the manner in which copyright agreements are concluded in Bollywood. I am compelled to say that these agreements, besides often stepping beyond the four corners of the Copyright Act, 1957, also lack a basic fairness that they ought to reflect in favour of the owner/ author of the copyright.

No assignment or license could be concluded wherein rights beyond what is available to the owner of a copyrighted work under Section 14 of the Act can be assigned or licensed by an owner to an assignee. I had a difficult time relating Clause 2 of the agreement Bhagat signed with Vinod Chopra Films Limited (VCFL) to Section 14 (a) of the Act that deals with the rights of copyright owners in respect of literary works. To begin with, the agreement seems to grant everything under the sun when it says that “the rights shall mean and include to read, refer, interpret, adapt, title, create and produce the novel in any way or manner whatsoever….”.

Could Bhagat really have granted to VCFL more rights than what he had under Section 14(a) of the Act in respect of Five Point Someone? The rights granted under Section 14(a) to a copyright owner in respect of a literary work are as follows:
(i) to reproduce the work in any material form including storing of it in any medium by electronic means;
(ii) to issue copies of the work to the public not being copies already in circulation;
(iii) to perform the work in public or communicate it to the public;
(iv) to make any cinematograph film or sound recording in respect of the work;
(v) to make any translation of the work;
(vi) to make any adaptation of the work;
(vii) to do in relation to a translation or an adaptation of the work, any of the above acts specified in relation to the work.

Under Section 19 of the Act, the assignment of copyright in any work shall identify the work and shall specify the rights assigned. If Bhagat had assigned only the rights to make an adaptation of the book in the form of a script or screen play and to make a cinematograph film based on the book to VCFL, the language of clause 2 does not seem to have captured it well except for the word ‘adapt’. Ideally, the rights should have been specified as per the language under Section 14(a). To add to the confusion, clause 5 of the agreement unqualifiedly states that Bhagat shall continue to be the sole exclusive and perpetual owner and holder of any or all copyrights, intellectual property rights and ownership rights in the novel!

It is also debatable whether VCFL could really have enforced those rights granted under clause (2) of the Agreement (namely, read, refer, interpret, title, create and produce the novel) which find no mention under Section 14(a). I am compelled to conclude that Bhagat unsuspectingly and without adequate legal advice walked into this deal and put himself in a vulnerable position much to the advantage of VCFL.

As for the consideration paid to Bhagat under clause 3, I only wonder if it was adequate?! If Salman Rushdie or Vikram Seth were to sign a similar agreement with VCFL, would VCFL have dared to offer them the same amount as was offered to Bhagat? VCFL chose to make a movie out of Five Point Someone because they believed that it would sell. In my opinion, VCFL could have been a little more of generous to Bhagat.

Moving on to clause 4 of the Agreement which deals with the credits, there is nothing in there that binds VCFL to grant credits to Bhagat in the title sequence. If I were to draft that clause, I would use the following language:

“In accordance with Section 57 of the Copyright Act, the Assignor shall have the right of integrity and the right to claim paternity of the work being assigned. The Assignee, therefore, undertakes to give appropriate credit to the Assignor on the screen through appropriate display of the words ‘Based on the Novel “FIVE POINT SOMEONE” By Chetan Bhagat’. Such display on the screen shall be on a single card in the main title sequence of the film and the font and style of such display shall be no less favorable than the display used for other information on the main title sequence.”

I would draft it so irrespective of whether I am representing the assignor or the assignee as I would not want the assignor to later raise a controversy on the credits to the detriment of the assignee nor would I want the assignor to be deprived of his moral rights which the assignee is obliged to respect under the Act.

Also, as the author of the work, in my opinion, Bhagat had right to see the final script / screenplay to ensure that his right of integrity in the work (a right against mutilation of the work) granted under Section 57 of the Act was not violated. Having not ensured that such a clause was inserted in the contract, it is futile to lament now that he was never shown the final script.

Also, I am baffled as to how Bhagat agreed to a general warranty like the one under Clause 10(d)? It does not even refer to the work in question. Even assuming that the clause was referring to the novel, could anyone give a general warranty in an agreement that he would not be sued by third parties in future? How could such a clause be enforced in the event of a breach caused by an unanticipated law suit filed by an unknown entity against Bhagat? By clause 10(e) of the agreement, VCFL binds Bhagat not to alter or change the novel without informing VCFL. Leaving aside the absurdity of that clause (that Bhagat might alter or change an already published book), why did Bhagat not insist on a reciprocal clause vis-à-vis the script/ screenplay that any deviation from the book in the script would be made only after informing him?

After watching the movie, I could sympathise with Bhagat because I did get the ‘unmistakable impression’ that the movie was indeed a copy of the book! The concluded poll on Spicy IP is also a testimony to this. While the sub-plots by way of the speech and other bits were thrown in by the script writer, it is nothing but a white lie to say that the movie only has 2-3% of the book.

Was there any need for clause 10(e) if the producer meant to take only 2-3% of the book? Bhagat should have also negotiated a clause to include him in the publicity and promotion of the film which could have ensured that he was not kept out of the picture by the producers. After all, the movie is based on his work! The rest of the clauses also seem to be pro-producer and have not been of much help to Bhagat.

I also feel that the agreement could have been more explicit about the provisions of Section 19 of the Act regarding the term of the assignment and the territory of the assignment, which, incidentally is missing and has to be, therefore, presumed to extend only to the whole of India! Even from a producer’s angle, it pays to look more closely at the legal issues involved in assignment of copyright in the underlying works used in films while entering into such contracts because there is a recent trend to file law suits against producers on the eve of the release of a movie.

Very often huge sums are paid to compromise these controversies to ensure that the movie gets released on time. To avoid such last minute controversies, it would be helpful to scrutinize and make sure that the contractual clauses concerning the assignment of the underlying works are unambiguous and in conformity with the Copyright Act, 1957.

I don’t believe that this is the last word on the controversy. But I do hope that Mr. Bhagat would not be as innocent as he has been while parting with the rights in respect of his prized creations in the future.

SpicyIP Tidbit: Patent Office to make updated patent specifications available under Rule 27

The Controller General of Patents – P.H.Kurian – has issued an Office Circular today stating that the latest updated patent specifications will be available, under Rule 27 of the Patent Rules, for inspection and that copies of the same will be provided to the public.

Rule 27 of the Patent Rules which provides for the 'Inspection of published applications' states the following: “After the date of publication of the application under Section 11A, the application together with the complete specification and provisional specification, if any, drawing, if any, and the abstract filed in respect of the application may be inspected at the appropriate office by making a written request to the Controller on payment of fees specified in the First Schedule in that behalf”.

The usual practice of the patent office, under Rule 27, was to provide the public with only a copy of the patent specification, as filed, even if the patent specification had been changed consequently. The latest Office Circular clarifies that the right procedure under Rule 27 is to provide the specification as on the date of a Rule 27 application and not the specification as filed along with the original patent application.

This latest Office Circular will have the effect of greatly increasing transparency at the patent office at the pre-grant stage.