Special IP Courts in the offing?

On World IP day this year (which we had blogged about here), several new initiatives, prgrammes, agenda were announced. Similarly, the Asian Patent Attorneys Association (Indian Group) and the Delhi High Court Bar Association hosted a short seminar in the premises of the Delhi High Court. The programme included lectures/talks delivered by some of the finest Judges in the country, and more than 250 lawyers, controllers, examiners etc., members of the Judiciary including several Judges were in attendance.

As our readers probably know, the Delhi High Court probably sees 30-35 IP cases or more each day, and is known to be extremely IP savvy. At the programme, apart from Justice Ravindra Bhat's speech (which from all accounts was extremely engrossing), the acting Chief Justice of the Delhi High Court, Justice Madan Lokur while appreciating the informed community of lawyers, indicated the need for judges who specialized in this "relatively new domain" of law.

This need is apparently one that the IP Bar at the Delhi High Court has been pushing for, and may reach fruition soon.

According to this report in the Mint, the Government plans to set up new Courts special IP Courts and even train judges for this purpose. While the information available at the moment is all hearsay, and unconfirmed, the Mint reports that these measures will be a part of "ongoing IPR reforms, on which the government is spending nearly Rs500 crore, according to the Department of Industrial Policy and Promotion (DIPP), which allocates the budget for IPR-related projects."

'IPR related projects' in the past have included digitization of databases, creation of modern infrastructure etc., with the focus now shifting to the expeditious disposal of Intellectual Property law cases (in this relation, do have a look at Justice Katju's decision in the TVS Bajaj matter. This case has been followed as a precedent in several matters thereafter).

In light of our previous posts that highlight the need for aspects such as 'claim construction' in patent matters and other such nuances of aspects of Intellectual Property Law, especially patents, this news will be welcomed by all concerned.

However, the setting up of these Courts will have to be well thought out. At the moment, several questions remain unanswered/ inadequately answered with only sketchy details available.

For instance, will the judges be- as they are currently- persons not specializing in Intellectual Property but only trained for this specific purpose, or will they be technical members?

Also, will the Special IP Courts be at the level of a Court of original jurisdiction, or will they be placed a notch below-with judgments being appealable to the High Court?

Will it be a Special Bench in the Courts of Original Jurisdiction or will there be new Court set up? And if the answer lies in the latter, will these be in 4 different locations- like the Patent Office or Trademark Registry?

In all of these situations, the pros and cons can be weighed.

This blogger (for one) cannot wait to keep track of the developments on this story, and will bring our readers more as information is made available. Here's to the growing interest and awareness in Intellectual Property Law!

Guest Post: R for Ranking

(Image from here)

Suchita Saigal, a name familiar to the Spicy IP readers, brings yet another bit of 'spicy' IP news tid-bit to the fore for us, that has been presented as follows:

A recent interesting entry on the PatentlyO blog deals with ranking patent law programs in the US. As is evident from the title, "Ranking of Patent Law Programs for 2011: Perhaps Six Junk-Science Ratings Are Better Than One", the post adopts the process of aggregation to give the reader an idea of the best patent law programs. To elaborate, six set of rankings given by various sources, including the US News & World Report and IP Law Journal, are used to give any prospective applicant a holistic overview of patent law programs. More importantly, the post deals with the methodology used in each of the rankings, related shortcomings and other such issues allowing one to make an informed choice.

Given the increased focus in Intellectual property law issues in India and the increase in general academic interest in the area, we think that this rankings post is extremely relevant to Indian students interested in IP, especially because the US is the leading light in IP law developments.

If nothing else, read it for the comments, some of which are reproduced below:

"Blah, blah, blah, blah...Typical American insubstantial credentialist-driven hierarchical sort.

THIS TYPE OF THING IS THE PROBLEM.

HOW ABOUT SOME SUBSTANTIVE CRITERIA?

NO, THAT WOULD RUIN EVERYTHING!

Posted by: An Outsider's View | Apr 15, 2010 at 08:50 AM"

Seriously!?...is there a single practicing attorney that cares about this nonsense?

Posted by: Jason | Apr 15, 2010 at 09:02 AM

And the prize goes to:
USA, USA, USA leads the World in patent-law higher educational facilities – Way to Go USA.

THIS is the real wealth of our nation!

Posted by: Just an ordinary inventor(TM) | Apr 15, 2010 at 01:00 PM

USA, USA, USA leads the USA in patent-law higher educational facilities – Way to Go USA.

Fixed that for you. It's a list of American schools. What country did you expect would come out on top?

Posted by: IANAE | Apr 15, 2010 at 01:34 PM

No stay on classic song in Housefull: Calcutta HC

SpicyIP has breaking news that the Calcutta High Court today refused to grant an interim injunction to Anandji, one half of the famed Bollywood music director duo Kalyanji-Anandji, to stay the use of their song from Laawaris (1981) in Housefull (2010), which releases tomorrow.

The petitioners, along with the heirs of the producer of the 1981 film, claim that the rights to the song rest with the original production house, Prakash Mehra productions. The filmmakers of Housefull, on the other hand, claim to have bought the rights to use the song from the music label that released the Laawaris soundtrack.

The original song "Apni Toh Jaise Taise" from the Amitabh Bachhan-starrer Laawaris was sung by Kishore Kumar, composed by Kalyanji-Anandji, and written by Prakash Mehra, who also produced and directed the blockbuster film. (image from here) The Housefull piece is a version of the same song, sung by Mika Singh, with practically the film's whole cast on show. (Image from here)

We haven't managed to lay our hands on a copy of the order as yet, but it is likely that Anandji may appeal against the decision. We shall keep track of this story, and report on any interesting developments, if any. I am curious to know why the court refused to grant the injunction.

Meanwhile, the court is simultaneously hearing another application in connection with the same song, filed by Puneet Mehra, qua son, and representative of the legal heirs, of Prakash Mehra, the lyricist of the original song. This application comes up for hearing tomorrow, i.e., 30 April. In both cases, though, viz., the likely appeal by Anandji, and the hearing tomorrow, the film will have already hit the theatres with the song in it.

A brief case-history, culled from this news report in The Telegraph, is that Sajid Nadiadwala, the maker of Housefull, claims to have entered into a contract with the music label Saregama for the rights of the original song. Saregama is the music label on which the Laawaris soundtrack was released. Anandji and Mehra's heirs claim that the copyright in the song rests with Prakash Mehra productions and no such license/agreement was entered into by them.

The Telegraph story also tells us that Saregama was anticipating a suit on the song:

"Earlier, on April 16, Saregama had in fact moved a case before Justice Patherya and claimed that the company possessed the copyright of the Apni toh jaise taise song. Saregama had prayed for an advance injunction on any suit claiming the copyright of the said song and Justice Patherya had granted it. On Wednesday, Anandji and Mehra claimed that the court should vacate the interim order and issue a fresh order."

There's more to this than meets the eye. If the petitioners are to be believed, there appears to have been no agreement between Prakash Mehra productions and Saregama over the use of the Laawaris soundtrack. On what basis did Saregama enter into contract with the makers of Housefull? And so on. We hope today's order, as well as what emerges from subsequent hearings, will shed more light on the claims.

Meanwhile, those of you who've heard both versions of the song will know that the lilt in Kishore-da's voice is unmatched. No one, and definitely not Mika urf Amrik Singh, can compare.

Separately, and unrelated to the present case, but relevant to the industry, you will know, is how the proposed amendments to Indian copyright law will change the game for the film industry (see here and here, for example). This part of the story is just about warming up.

Guest Post - ACTA Text Released: Impact On India and Other Developing Countries

We present to you yet another guest post by Amlan Mohanty,a second year student at NLS Bangalore.  His earlier contributions to the blog include very well written  posts on  ACTA and  the proposed amendments to the Copyright Act.

The metaphorical 'season-finale' of the ACTA negotiations, after relentless calls for transparency and public consultation, revealed the much awaited official draft text of the agreement, generating significant issues for not only participating nations but also developing countries that have been curiously overlooked during the discussions. In this post, I intend to bring out the political and diplomatic factors for such exclusion, and the impact of the substantive provisions contained in the draft text on developing countries, including India.

I. THE POLITICAL ANGLE – WHY WERE DEVELOPING COUNTRIES EXCLUDED?

1. THE QUESTION OF 'WHY'

The most obvious fact is that ACTA is a deliberate strategy by the United States to exclude developing countries from all negotiations, bypass the WIPO (I find it amusing that circumvention of the WIPO is acceptable, but 'anti-circumvention' is a favourite American slogan) and introduce DMCA-styled provisions into domestic legislations of several countries.

(i) Why ACTA when there exists a multilateral TRIPS Agreements?

Swaraj's earlier post questioning the need for ACTA, is a good starting point to analyse the 'why', and drawing from his post, a few additional factors for such a move may be discussed. The increasing participation of developing countries and their demand for a 'Development Agenda' (see the recent declaration at the 4th IBSA Summit on April 15th, 2010) with initiatives such as an Access to Knowledge Treaty, has seemingly struck a nerve with the United States, causing a confrontation of sorts at the WIPO.  In such an environment, reaching a consensus on intellectual property matters seems unlikely, given the opposing views and interests of the First and Third Worlds. Civil society organisations also seem to be backing the developing nations, siding with innovation, creativity and development instead of rigid enforcement and restrictive trade barriers.

2. THE QUESTION OF 'HOW'

The motives for the secret treaty becoming fairly clear, the expected methods of propagation and how they plan to introduce substantive element of ACTA into domestic legislations of developing countries is interesting to examine.

(i) How will the ACTA be used internationally?

While participating nations have implicitly accepted the Agreement, albeit with reservations, as evidenced by the increasing number of square brackets (indicating qualifications/opposition/scepticism) in the draft text, the countries that have been left out of the negotiations will be the focus of the United States' effort to spread ACTA as far wide as possible, including developing nations who are seeking advise and guidance from the developed world, on intellectual property matters. The scheme is rudimentary to say the least. By involving as few participants as possible in the negotiation stage and eliminating the scope for resistance, the US believes it can prepare a pre-negotiated, packaged agreement that it can ship off to developing countries, like relief food packets, to be devoured by their governments, unchanged, and in a form comfortable to the developed world. These nations will have absolutely no say in the scope, terms and language contained in the Agreement, once it has been decided upon by the participating nations (read – the developed world).

(ii) But is there anything concrete to suggest that the ACTA will be extended to developing countries?

As Michael Geist notes, the Agreement proposes technical assistance and capacity building measures in favour of developing countries (See Article 3.3 of the chapter on International Cooperation) which is a sure sign that  they will be pressured into acceding to ACTA. Further, the Special 301 Report states that 'ACTA is envisioned as a leadership effort among countries that will raise the international standard for IPR enforcement' and the leaked discussion paper of the ACTA also suggests that there will be 'special measures  for developing  countries  in  the initial  phase' . This leaves no doubt in my mind that the US plans to use pressure tactics against developing countries, coaxing them to sign on to the Agreement and introduce standards of enforcement and legal protection of intellectual property that best serves its own interests.

3. GOOD OR BAD MOVE?

(i) Underestimating the influence of developing countries

Deliberate strategy or otherwise, the larger question is whether the US is right in sidelining developing countries from such an important trade agreement. Personally, I am of the opinion that the United States has made a critical mistake in undervaluing the influence of developing nations in trade and intellectual property related agreements. They seem to have miscalculated the increasing importance of  developing nations, especially the BRIC countries, within international organisations. The declining strength of the US and Europe in global institutions such as the WIPO is all to clear, and with countries such as Argentina, Brazil, China and India mustering strength at international fora and realising the need for liberal IP regimes, there appears to me to be a serious impediment in the plans of the United States to simply dole out membership invitations to ACTA and expect passive acceptance.

(ii) Ineffective arm-twisting political tool

It is contended that the ACTA will serve as an effective political tool at the hands of the United States to arm-twist developing nations and gain agreeable political positions from them in non-intellectual property agreements as well, if they refuse to sign on to the Agreement. My response again is that these nations are rapidly garnering economic and political clout and the US stands to lose just as much by engaging in such diplomatic strategies as the developing nations themselves. Can the US really threaten Brazil diplomatically if it refuses to accept the ACTA when there is an important ethanol trade relationship currently in existence? Can diplomatic ties between India and the US hinge on the ACTA alone when there are political issues like civil nuclear cooperation, where both are in equitable positions, with neither being able to call the shots on its own?

(iii) Least Developed Countries in various stages of TRIPS implementation

Continuing with the cynicism that pervades any comment on ACTA, I further bring into question the desirability of the ACTA since there are LDC's that are currently still in the process of implementing TRIPS provisions. When these nations are still finding their feet and taking baby steps towards implementing flexible models of intellectual property management that best suits their domestic conditions, what is the need to thrust an overly-enthusiastic and frankly, superfluous IP enforcement mechanism on them?

II. THE SUBSTANTIVE ANGLE - PROVISIONS AND ITS POTENTIAL EFFECTS

Most importantly perhaps, the official draft text does not show any real substantive departure from the leaked version and throws up all the same issues and concerns that were previously expressed. Though there is still time to bring about changes in the text, with the agreement slated for conclusion only later this year, the lack of transparency, preventing public consultation and discussion until this point, is quite unfortunate. Although the substantive provisions have been discussed extensively, here, here and here, I will briefly go over the key provisions and changes made, to get a sense of what the ACTA actually contains.

(i) Three Strikes & Notice and Take-down

Of key importance is the provision relating to 'Three Strikes', a feature existing in American law, and brought to the forefront recently in relation to the Digital Economy Bill, which was passed by the British Parliament a few weeks ago. While the official text is unclear on whether it is a 'requirement' or a 'recommendation', the impact on developing countries is significant. If the final text positions the Three Strikes law as a requirement, developing countries signing-on to the treaty may be forced to implement a policy of disconnecting internet connections for repeated copyright violations, a seemingly draconian rule, and one that has not found much favour with governments of developed nations as well, other than France and now, Britain. Similarly, one must keep an eye on the provision relating to the notice-and-takedown procedure for copyright infringements, contained in the Agreement.

The importance of these provisions is magnified in light of the recent changes to the Information Technology Act in India, in relation to ISP liability, discussed in a guest post here. ACTA may require developing countries to overhaul their domestic legislations and introduce protective measures to keep up with 'international standards', which to me is a waste, not only of legislative time and energy spent in drafting the amendments, but also organisations and individuals who have worked tirelessly in these nations to keep out such provisions from domestic legislations.

(ii) Border Control Measures

The negotiators seem to have succeeded in limiting the potential harm that ACTA may have caused by allowing  countries to exclude 'small quantities of goods of a non-commercial nature contained in travelers' personal luggage' from ACTA enforcement. While that does deprive me of an opportunity to vent about how ridiculous it is that ACTA initially supported the right of custom officials to check iPods for infringing songs, it is indeed a laudable effort on the part of the negotiators. I can scarcely imagine China accepting such a provision. On a related note, Dr. Henning Große Ruse–Khan in a guest post, extensively discussed the impact of ACTA in creating trade barriers and is a must-read on this subject.

(iii) Anti-circumvention

I had discussed the threat of DMCA-styled anti-circumvention provisions earlier and there does not seem to be any change in the text. This is important for the developing world and particularly in the Indian context since the Copyright Bill in my view, proposes a surprisingly flexible anti-circumvention model, with fair dealing rights secured, making liability dependent on intention to infringe and excluding distribution or manufacture of circumvention devices from its purview. This is at odds with the ACTA anti-circumvention section which has provisions against  devices that can be used to circumvent, and also includes protection for access controls.

Thus, it is clear that the Anti-Counterfeiting Trade Agreement has the potential to impact developing countries in several ways and while changes to our domestic copyright law deserve our immediate attention, it would be useful to keep an eye on international developments relating to ACTA as well.

SpicyIP Tidbit: World Trademark Review launches blog

Spicy IP is pleased to inform readers of the latest entrants on the IP blogroll -- the World Trademark Review (WTR) blog, started by our friends at the WTR which includes ace reporter Adam Smith. Adam is a regular commentator on SpicyIP, and has frequently brought interesting news and stories to our attention, for which we're always grateful!

The WTR team tells us more about why the WTR blog is significant for the IP world, including fellow-bloggers like us:

"For eight years WTR has covered the most important trademark stories of the day, and has broken some of the most significant trademark stories of recent times, from exclusive analysis of the ECJ's recent decision in the Google keywords case to news of how the top 100 globally protected trademark list has resurfaced on the domain name agenda.

WTR has the independence and objectivity to supply readers with information they cannot find anywhere else: we can interview the parties involved in a dispute, press trademark offices for their positions and statistics, and gather insightful opinions through speaking with leading brand owners. Assimilating this means that our specialist trademark journalists can strike at the commercial heart of every development in trademarks. WTR's blog will therefore complement lawyers' blogs and present new dimensions to industry debates, as well as highlighting and linking to other industry content."

The blog is free and requires only a sign-up here. WTR also welcomes comments to blog posts and invites readers to email us with their thoughts.

As a special note for Indian readers, the WTR team invites people to write to them with news and trends on the Indian trademark scene, to which they want to give more in-depth coverage.

The SpicyIP team congratulates WTR on the new blog, and wishes them the best for everything ahead. And of course, we look forward to seeing India-related news over there more often!

Guest Post: Tales from Decrypt Dept.

SpicyIP is happy to bring our readers yet another great guest post by Nikhil Krishnamurthy, this time on Section 65A of the Copyright Amendment Bill. (For some of his other great guest posts on Spicy IP, check here)

Tales from Decrypt Dept. (“But Officer, I was told it was “fine” to circumvent !”)

I have written extensively about some of the author-centric amendments sought to be introduced by The Copyright (Amendment) Bill, 2010 here. I would like to now share some thoughts on the proposed Section 65A which seeks to impose criminal penalties for the act of circumventing effective technological measures.

The said Section 65A reads as follows: -

“65A. Protection of Technological Measures

(1) Any person who circumvents an effective technological measure applied for the purpose of protecting any of the rights conferred by this Act, with the intention of infringing such rights, shall be punishable with imprisonment which may extend to two years and shall also be liable to fine.

(2) Nothing in sub-section (1) shall prevent any person from,---

(a) doing anything referred to therein for a purpose not expressly prohibited by this Act:

Provided that any person facilitating circumvention by another person of a technological measure for such a purpose shall maintain a complete record of such other person including his name, address and all relevant particulars necessary to identify him and the purpose for which he has been facilitated; or

(b) doing anything necessary to conduct encryption research using a lawfully obtained

encrypted copy; or

(c) conducting any lawful investigation; or

(d) doing anything necessary for the purpose of testing the security of a computer system or a computer network with the authorisation of its owner; or

(e) operator; or [This appears to be a continuation of (d) above and could have been combined with (d).]

(f) doing anything necessary to circumvent technological measures intended for identification or surveillance of a user; or

(g) taking measures necessary in the interest of national security.

As our readers will know, a famous example of a technological measure is the Content Scramble System, or CSS, through which films sold on DVD are encrypted to prevent copying. It is a matter of irony that CSS did not meet the standard of an “effective technological measure” and was compromised quite easily. As Sherlock Holmes remarked to Dr. Watson in The Adventure of the Dancing Men while deciphering a code, “What one man can invent, another man can discover.”. [Another well-known, albeit controversial, technological measure was the SONY rootkit, which caused a scandal and for which SONY was sued.]

According to the Statements of Objects and Reasons of the new Bill, the amendments seek to make the provisions of the Act in conformity with WIPO’s WCT and WPPT while acknowledging that “India has not yet signed the abovementioned two treaties”.

Readers will be familiar with Article 11 of the WCT which states “Contracting Parties shall provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors in connection with the exercise of their rights under this Treaty or the Berne Convention and that restrict acts, in respect of their works, which are not authorized by the authors concerned or permitted by law.”

What many readers may not be familiar with however, are the findings of a recent study by an the Consumers International organization which reviewed the copyright laws of 16 countries and rated India at the Number 1 position. In comparison, the USA was ranked Number 4 and the UK at Number 16 (last) in the study.

Interestingly, the Conclusion of the India-related section of the study, which can be found here, states

“India's Copyright Act is a relatively balanced instrument that recognises the interests of consumers through its broad private use exception, and by facilitating the compulsory licensing of works that would otherwise be unavailable.  Neither has India rushed to accede to WIPO Copyright Treaty, which would expose India's consumers to the same problems experienced in other jurisdictions which have prohibited the use of circumvention devices to gain access to legally-acquired copyright material.”.

I could be wrong, but being rated at the Number 1 spot for its copyright legislation does not seem to be a bad thing for India and its image. The absence of anti-circumvention provisions appears to have been a factor which determined India’s ranking. So why the rush to jump on the anti-circumvention bandwagon, particularly when India has no corresponding treaty obligation?

What is actually more worrisome is that the amendment seeks to impose criminal penalties of imprisonment up to two years and fine. The quantum of fine is not specified, but whatever it is, it is presumably payable to the State. If we have to incorporate such provisions, there is no reason why some other reasonable form of civil penalty is imposed. This could take the form of, for example, statutory damages that are payable to the copyright owner. Even the WCT only requires “adequate legal protection” and “effective legal remedies”. It does not mandate criminal sanctions.

In my view, a copyright owner is fully within its rights to implement whatever technological measures it may deem fit to protect its works from unlawful copying, provided that such measures are within legal bounds (unlike the SONY rootkit referred to earlier). What is being questioned here is the necessity in India for having anti-circumvention provisions when there is no corresponding treaty obligation, and imposing criminal sanctions for acts of circumvention where the possibility of misuse of criminal provisions is ever-present.

We have already seen use of criminal remedies against cases of alleged copyright infringement in the past. Even copyright societies have reportedly initiated criminal proceedings for alleged violations. Whether, as a matter of principle, criminal remedies should be available to collecting societies (and when their authority over certain copyright works, vague, as previous posts here have highlighted), when provisions for compulsory licensing exist, is a thorny issue. Experience suggests that many establishments comply out of fear of the threat of criminal proceedings which hangs like the proverbial Sword of Damocles, without fully understanding their rights in the matter.

Having said this, Section 65A is not all bad. It envisages exceptions to protect privacy, and allow research and testing in certain circumstances. Such provisions may encourage the organization of events like the fascinating PWN2OWN, in India.

Happily, it also recognizes that the provision does not prevent a person from circumventing for a purpose not expressly prohibited by the Act. This would, for example, include acts of fair dealing, and research, provisions of which are now sought to be clarified so as to cover all works. To elaborate, as Section 52 (1) (a) (i) stands today, only literary, dramatic, musical and artistic works may be dealt with fairly for private use, research etc., and since sound recordings and cinematograph films are not covered (this appears to be a drafting error since under the 1911 Act, fair dealing covered any work), it is currently arguable that the act of space-shifting/ format-shifting of sound recordings and films (for example importing music or films to a portable music player or home media center) amount to infringement under the existing law. For more on private use aspects, please see my country update prepared for the International Association of Entertainment Lawyers (IAEL) here.

It does appear from a reading of Section 65A (2) (a) read with Section 52 (1) (a) (i) that if one does circumvent an effective technological measure such person would not be prohibited from publishing the method by which the circumvention took place for the purposes of research.

In conclusion, if Section 65A must be retained, it is recommended that the criminal penalties be removed and civil remedies in the form of statutory damages be substituted instead – perhaps something akin to Section 22 (2) of the Designs Act 2000. The same recommendation is made with respect to Section 65B pertaining to the act of tampering with Rights Management Information. And while we are on the subject, suitable amendments must be introduced to prohibit the exercise of criminal remedies by collecting societies, as adequate and effective civil remedies already exist by way of injunction, damages and accounts, and such remedies have been exercised to good effect over the years.

I leave you with one thought – What if an effective technological protection measure is circumvented? Wouldn’t that mean it was not “effective” in the first place, and therefore out of the scope of the protection of Section 65A? Therein lies the paradox.

SpicyIP Tidbit: No arguments in Roche-Natco

The Roche-Natco matter which came up for arguments before the Delhi High Court has been posted to May 10, 2010. No arguments were heard today.

This is by way of a quick update on the more detailed backstory we had reported yesterday.

In the interim, for those of you who are wondering whatever happened to that compulsory license application filed by Natco for Roche's Tarceva, here's what was reported on SpicyIP in September 2008: Natco appears to have withdrawn their application from the Patent Office for what would have otherwise been India's first Doha-style compulsory license, apparently from a fear that it would lose on merits.

T-Series and MySpace: Copyright Infringement and ISP Liability to be argued before the Delhi HC

Nikhil Pahwa of Medianama reports a dispute between T-Series and MySpace which was argued before the Delhi High Court last Friday and is listed for arguments again this Thursday. T-Series has alleged infringement of its copyright by MySpace on whose site music content of the former is being uploaded.

While MySpace has apparently taken a defence under Section 79 of the amended IT Act, T-Series seems to have taken the stance that the proviso to Section 81 negates any safe harbour from liability for copyright infringement, which an intermediary may otherwise be entitled to under Section 79. The counsel for T-Series further argued that the IT Act does not prevent Courts from preventing or terminating copyright infringement.

The combined interpretation of Sections 79 and 81 of the amended IT Act has been discussed on SpicyIP in quite a few posts with the comments equally providing a lot of food for thought. Some of us argue that the proviso to Section 81 has the effect of depriving an ISP of the exemption to liability available under Section 79 and a few others are of the opinion that the proviso only clarifies that rights available to any party under the Copyright Act will not be nullified by any provision of the IT Act. It will be interesting to watch how the Court interprets these provisions.

We will keep the readers posted on the developments in this case.

Roche and Tarceva in Delhi HC again, this time vs. Natco

F Hoffman La Roche, the Swiss-based drugs multinational, has re-entered the Delhi High Court in an infringement matter over the Tarceva patent. This time, Roche has sued Natco Pharma, and specifically, their anti-cancer drug sold "Erlonat", which it is alleged infringes Roche's patent rights over their anti-cancer drug, Tarceva.

Readers will recall instantly that Tarceva is the same drug over which Roche has fought Cipla before various benches of the Delhi High Court and the Supreme Court, all of which we have covered extensively here.

The matter was posted for arguments on the interim injunction before Justice V K Shali of the Delhi High Court yesterday, i.e., 26 April, where Roche was represented by Anand and Anand and led by Senior Counsel C S Vaidyanathan, and Natco was being briefed by Gaurav Barathi and led by Senior Counsel Arvind Nigam.

The arguments are still at a preliminary stage, with parties having had just about time to introduce the case briefly. Roche took the stage first, and spent some time discussing how the present case was different from that of Roche vs Cipla, and how the judgement in CIPLA was not binding on Roche. Specifically, Roche drew the attention of the court to two issues, i.e., that Natco had filed a pre-grant opposition against the Tarceva application, as also a compulsory licensing application for the same drug. Roche argues that Natco had, in the compulsory licensing application, acknowledged that they could not manufacture their anti-cancer drug without infringing Roche's drug.

Natco, on its part, got relatively less time to address the court, compared with Roche. In a nutshell, they argued that there was no reason for Justice Shali to not follow the court's previous judgement in the Cipla matter, since the patent that was alleged to have been infringed was the same.

By way of a quick background, I quote from Shamnad's post on this, which also brings you up to speed with the status of the Roche-Cipla matter.--

"Roche dragged Cipla to the Delhi High court, alleging that Cipla infringed their patent rights over Tarceva, an anti cancer drug (sold as "Tarceva"). The trial judge, Justice Ravindra Bhat, refused to grant an interim injunction on the ground that since Cipla was selling the drug at 1/3rd of the price of Roche, an injunction would have meant lack of affordable access for a large number of cancer patients in India. Therefore, "public interest" demanded that no injunction (restraining order) be granted.

Roche then appealed to the Division Bench, whose order proved much more detrimental for Roche. Not only did the appellate bench uphold the key findings of the trial judge, it went on to impose costs on Roche for suppression of material "patent" information. It also went on to find that Roche had not established a prima facie case of infringement, since the patent in question did not seem to be implicated by Cipla's generic product. And in any case, the court suggested that Roche's patent was susceptible to a serious validity attack. As we noted earlier on the blog, this order was very poorly reasoned and demonstrated the relative lack of sophistication of Indian judges with complex patent disputes."

The matter comes up for arguments again on April 28, and we shall try our best to get you an update on things.

Meanwhile, there are a few notes worth making on this matter that has just begun:

1. This suit against Natco was filed by Roche in December 2009. There are two other suits alleging infringement of the same patent, against Glenmark and Dr Reddy's. Both these suits are also in the Delhi High Court, and are scheduled to come up for hearing on 14 July 2010. There will be more action to watch out for.

2. Natco's usual litigation attorneys, the tier 1 law firm K&S Partners, appear to be absent in the present litigation. Instead, Natco is being represented by a relatively low-profile attorney, Gaurav Barathi, and we look forward to seeing how things proceed with the new counsel.

3. The most key question of all -- why is Roche repeatedly returning to the court over the same patent, despite the general opinion that Roche may be wasting its time? It's approached the Delhi High Court twice, and both times had its application for interim injunction refused for the same patent. The Supreme Court too dismissed Roche's Special Leave Petition challenging the Delhi High Court division bench order. Each time the courts raised issues which suggested that Roche had no prima facie case in connection with the Tarceva patent, including that "public interest" demands no injunction be granted. Public interest, in the words of the court, refers to cheaper drugs made available by manufacturers in India in comparison with proprietary drugs manufactured at higher costs -- in that case, it was Cipla. Here, the argument could well be extended to Natco, since the prices of "Erlonat" are equally low.

More on this as and when.

Indian Copyright Amendments: Making Bollywood Fairer?

The copyright amendment bill is certain to prove the most significant IP development for India this year. We are therefore inviting guest posts from those of you who might be interested in blogging of specific aspects of this bill. Please write and let us know if you are interested and we promise to publish those pieces that are conceptually clear, advance logically coherent arguments and read well overall.

Apart from the PRS website, Prashant informs me that a current version of the bill is up on the Parliament website as well. But the most useful version of the bill is one that was created by Pranesh Prakash of CIS...this combines the parent copyright text with the latest amendments. And Pranesh kindly agreed to share this with all of this: so a round of applause is due.

The Ugly "Disabilities" Provision

The bill is a mixed bag and comes with its cliched set of the good, bad and ugly. If you've been following our blog closely, you'd have immediately spotted the "ugly" as the deplorable copyright exception in favour of the disabled. And the sheer lack of transparency and public consultation post 2006.

The "Bad" Extensions and TPM

As for the bad, one would immediately point to copyright term extensions provided for in the bill.

Why on earth do we provide these extensions at the behest of industrial lobbies without any independent economic studies that suggest that unless we grant these, we're going to see a drying up of our society's creative juices ! In fact in an earlier post, I'd pointed to Lessig's classic admonishment that term extensions in many cases were a simple no brainer: they would simply detract from the public domain without adding much!

The "bad" would also include the introduction of technology protection measures (TPM) for the first time into Indian copyright law. Do we have convincing case for introduction of this added layer of protection? The government suggests that it is doing so for helping India comply with the WCT (Wipo Copyright Treaty) and WPPT (WIPO Phonograms and Performances Treaty)--treaties that India is not a signatory to! When there are plenty of treaties that we routinely flout, despite having signed up to them, why are we going out of our way to comply with a treaty that haven't signed up to?

The Good: Parallel Imports and Bollywood Artists

As for the good, there are plenty.

The parallel import provision (bringing in international exhaustion principles to India by a simple and elegant amendment to the definition of an "infringing copy" in section 2) has been articulated in a very clear manner and needs to be lauded.

The provisions in favour of authors/composers are aimed at injecting some "fairness" into an industry characterised by exploitation of artists and is therefore commendable. The devil will however lie in the details and the modalities of implementation, which are not clear in the bill.

Firstly a simple amendment to section 17 seeks to clarify that lyricists. music composers and script writers will continue to have separate copyrights in their underlying works, despite it being incorporated into a movie. This proviso appears to address the rather uncertain legal position prevailing after a 1977 Supreme Court judgment, which has been interpreted to suggest that underlying rights do not separately exist in favour of works that have been incorporated into a movie.

However, the major changes however to Bollywood sharp practices are sought to be brought in through an amendment to section 18 which reads as under:

“Provided further that no such assignment shall be applied to any medium or mode of exploitation of the work which did not exist or was not in commercial use at the time when the assignment was made, unless the assignment specifically referred to such medium or mode of exploitation of the work.

Provided also that the author of the literary or musical work included in a cinematograph film or sound recording shall not assign the right to receive royalties from the utilisation of such work in any form other than as part of the cinematograph film or sound recording except to the legal heirs or to a copyright society for collection and distribution and any agreement to the contrary shall be void.”

1. The first proviso above appears to be aimed at preventing catch all clauses that 'assignee" lawyers routinely insert into their contracts: "you hereby agree to assign your rights over this work for exploitation in any medium, whether now known or hereafter invented". The amended clause now suggests that unless a new medium is specifically envisaged and provided for, no assignment will have effect qua a new medium that comes into being. In other words, unless the assignee knows of the new medium while contracting, how can he/she agree to contract away rights qua that medium? This provision in also in consonance with a 1998 Madras High Court judgment in Raj Video Vision.

It is to be noted that this proviso which effectively prevents the copyright owner from appropriating all windfalls qua new media covers all "copyrighted works" and is not limited to films.

2. The second proviso is the one that applies primarily to Bollywood and has been blogged about earlier here and here. Although this socially progressive amendment is aimed at helping artists, I personally think it should have gone further. For one, there should be a continuing right to royalties in all cases AND NOT MERELY in cases where the lyrics/music are not exploited as part of the complete film/sound recording.

Secondly, I fail to understand the import of the provision when it tries to "save" any assignments in favour of collecting societies. Pray, why should there be an assignment at all in favour of collecting societies? These societies are mere agents for administering rights and collecting royalties and should therefore be treated as mere "licensees". If at all anything, there needs to be a bar on any assignments to collecting societies. We've blogged several times earlier on the sheer high handedness of these societies and their non transparent mode of functioning. The present set of amendments do make some changes in relation to the regulation of these societies and we will bring you a separate post on this.

Thirdly, for this socially progressive provision guaranteeing a right to royalties (notwithstanding an assignment) to work well, one needs to be clear on the modalities. How will "fair" and "appropriate" royalties be worked out? Through the present copyright board that has, thus far, not impressed with its competence in conducting the current compulsory licensing dispute involving radio stations and sound recording giants? As the bill generates more debate and the standing committee (headed by Oscar Fernandez) to which this is most certain to go, examines evidence and submissions from stakeholders, we hope to see some more thinking on this. For it is imperative that well intentioned provisions translate well in practice! The devil truly will be in the details.

Spicy IP Tidbit: WIPO celebrates World IP Day by unveiling New Logo

On April 26, 2010, a day that marked the 10^th anniversary of the World IP day as well as the 40^th anniversary of the day the WIPO Convention had been entered into force, WIPO has chosen to come up with its new logo. This may be considered to be an effort on WIPO’s part to provide a new visual identity for the Organization, in conjunction with the new steps being taken to keep up with the manner in which IP is evolving rapidly in the 21st century. The new logo is fashioned out of a graphic representation of the building in which WIPO has its headquarters, an iconic structure that all WIPO member states and stakeholders can recognize at a glance. The blue colour of the logo emphasizes the connection of WIPO with the United Nations, whereas the seven curved lines represent the following seven IP elements of IP, as per the WIPO Convention, viz.

Ø literary, artistic and scientific works,

Ø performances of performing artists, phonograms, and broadcasts,

Ø inventions in all fields of human endeavour,

Ø scientific discoveries,

Ø industrial designs,

Ø trademarks, service marks, and commercial names and designations, and

Ø protection against unfair competition, and all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields.

The broad sweep of the curves of the logo seeks to highlight an inclusive nature- it emphasizes the fact that WIPO is above all an open forum that greets all stakeholders and their individual perspectives. The upward pitch of the curves, on the other hand, represents new ideas, dynamism and the progress resulting from innovation and creativity. Finally, the logo’s clean modern lines draw attention to the trust, reliability and efficiency that form the hallmark of WIPO’s corporate image.

A full press release of the event is available here.

(Image taken from here)

SpicyIP Interview: KritiKal and innovative solutions for India

SpicyIP hopes its readers have had an interesting World IP Day so far, and have some innovative celebrations for the times ahead!

Following up on Shamnad's succinct and timely editorial on India's engagement with the world of IP, I pick on one of the issues he raised for this post -- innovation in India, and the need to create incentives for the abundant and sometimes latent creativity that lies within the Indian people. Appropriately enough, WIPO (which has a new logo incidentally) has as its theme for this year's celebrations, "Innovation - Linking the World".

Towards this, we bring you a very special interview -- I recently had the chance to catch up via email with two young and enthusiastic entrepreneurs from the Indian Institute of Technology Delhi (IIT-D), who've been early beneficiaries of the incubator project at the institute, and over the past eight years, have created a miracle of sorts, and promise great and wonderful things ahead for innovation in India. (We've reported on the IITs and innovation earlier, but this is the first interview we have with a product of that system)

Dipinder Sekhon and Nishant Sharma are two of the twelve co-founders of KritiKal Solutions, the first student-faculty led initiative to emerge from the Foundation for Innovation and Technology Transfer at IIT-D, and work presently as the Director of Planning and Strategy and the Chief Technology Officer, respectively. I asked them about their history, achievements and how the "culture of innovation" works at the university level in India.

A bit about the interviewees (from here) --

Dipinder drives future growth strategy and business planning in the company, after having led KritiKal for the first five years as the founding CEO. He holds Masters and Bachelors in Computer Science and Engineering from IIT Delhi, with specialisation in computer vision. Dipinder also devotes considerable time and effort towards Political and Governance reforms in India, and other developmental issues. He is a member of the Freedom Team of India, and other NGOs/efforts. He holds a Masters in Public Administration (MPA - Public and Economic Policy) from the London School of Economics (LSE) and Sciences-Po, Paris.

Nishant is primarily responsible for giving technology leadership to KritiKal Solutions. He holds Masters and Bachelors in Computer Science & Engineering from Indian Institute of Technology, Delhi. With his focus on the long term vision and strong background in technology fundamentals, Nishant has driven KritiKal Solutions into a team with right balance of depth and breadth. He has been the key driver for building technical delivery processes within the organization.

On to the interview, then:

Q. What is KritiKal?

A. The word KritiKal is made up of two hindi words – Kriti and Kal meaning Creations for Tomorrow. We are a technology design house.

We provide services and products in two technology areas: embedded electronics and computer imaging. Over the last seven years we have served clients in varied domains including telecom, banking, security and surveillance, defense, traffic and transport, virtual reality and entertainment etc., mainly in India and US.

The solutions we have delivered include a mobile network based device to prevent vehicle thefts, a network router, a very high speed encryption device, camera/video-projections based virtual reality environment for Gandhi Smriti in Delhi, a disaster prevention device to monitor crane loads and tilts, camera based solutions for currency counting, traffic monitoring and analysis, sophisticated access control for containers entering/exiting ports etc.

KritiKal Zenscan – our vehicle underside scanning solution – has more than 30 installations in India and neighboring countries(1). Trazer – our traffic analysis solution - is being used by the top traffic research agencies in India. We have recently launched camera based license plate readers (for Indian conditions!) and hope to have several deployments soon.

Q. How did KritiKal come into being? Was there one single product idea that started it all? How did the idea come into being? Was it part of your academic pursuits? Or was it the product of peripheral research?

A. KritiKal was founded in August 2002 by twelve of us – seven graduating students and five professors from the Dept. of Computer Science and Engg., IIT Delhi. One of the triggers for KritiKal was a talk introducing the business incubation program at IIT-D by Dr Sengupta, who was the MD of the Foundation for Innovation and Technology Transfer (FITT, IITD) at that time. Prof Balakrishanan, the Head of our department and other professors encouraged us students to consider setting up a business enterprise making use of the incubation centre.

We did have some initial product ideas in our minds. They were generally around the thesis projects we were doing. However, these were not the core drivers for which we wanted to do KritiKal. Creating a hi-tech company in India (2), doing technology work of our choice with people we admired the most and ofcourse .. the possibility of making millions in future was what drove us to come together and form KritiKal.

Q. Would you say there's a "culture of innovation" in your institution?

A. Yes and No. Yes, in terms of world class research. No, in terms of commercialization of this research and active transfer to Industry, market. However, there is a positive trend. KritiKal was the first student-faculty led company to be incubated within IITD. We have been followed by 20 odd other companies in different technology disciplines.

Q. Did the in-house incubation cell help you research on your idea? In what way? What kind of assistance did you receive - financial, infrastructural, advisory, creating a vision document, roadmap, etc.?

A. We came into existence because of the incubator. It was critical in terms of expanding our option space after graduation – we could think of setting up our own business enterprise, instead of pursuing doctoral studies or taking up a job in a firm. It helped likeminded entrepreneurial folks come together and discuss business ideas.

The incubator initially was not much more than the physical space and work stations. However, we did receive crucial advisory help in terms of business planning, venture funding, incorporating the company and understanding it as a legal entity etc. We could speak to experienced Alumni who were into business or venture capital, and clear our doubts/hesitations.

Q. Were there similar projects among your classmates and colleagues? How have those projects evolved?

A. There have been many enterprises founded by our classmates and colleagues, including ex-employees. Many of them first gained work experience before starting their ventures, and in such cases the companies started outside the incubator. The projects – both outside and inside the incubator – have followed different trajectories. Some could not survive beyond a few months, some were successful and are growing fast, others are surviving and growing at slow pace. But we are yet to see a truly global success. The seeds have been sown though and it is a matter of time!

Q. Did you/do you receive IPR-related advice on your work/products? In fact, I am curious to know if any form of IPR-training was part of your regular academic curriculum.

A. A little bit, off and on. For example, there were/are seminars which are advertised and one could go to them if interested.

There was no IPR training in the formal curriculum, atleast for our course (BTech, MTech in Computer Science & Engg.). I know that the Department of Management Studies at IIT offers courses/modules on IPR, entrepreneurship. I am not sure whether this is optional or a core module for the MBA program. I will doubt whether something like this is part of a core module for the technology degrees.

Q. It's been quite some time since you started the company. What is your present professional relationship with your parent institution? Do you still receive some form of support from them?

A. In terms of formal relationship, IIT (and FITT) still hold some shares in KritiKal which we are gradually buying back. As five professors are founding members, and continue to be active promoters, members of the board and shareholders, we continue to have interaction with students, alumni, and relevant research projects at IIT. In addition, we continue to gain from the IIT ecosystem, including the alumni network. It’s a win-win relationship.

Q. How key is building your IP portfolio to your business development? What does that look like now?

A. The strongest trigger comes from potential investors when one is looking to raise funds. Formal patents, and other intellectual property rights , helps in such cases. Investors, and even we ourselves, would want to be reasonably sure that we will not land up into difficulties in terms of IP – before we go ahead and invest in a major product development.

In general, we are always conscious of the IP we are developing. The extent to which it is packaged and legally formalized and protected depends on the business potential we see out of the exercise. However, it is one of the things for which it is difficult to estimate returns, especially in the short term.

Q. How do you see Kritikal evolving in the times to come?

A. We feel that we have lot of intellectual property and tapped potential which we want to leverage now for strong growth. We envision KritiKal to be a leading global technology products and services provider. At the moment, we believe we have several IP components which can be packaged and formalized. We may try filing patents etc around them in future, once there is clarity on commercialization plans.

1 Zenscan is being commercialized by KritiKal Securescan Pvt Ltd.
2 Infosys and Narayan Murti were our idols. But we wanted to raise the bar in terms of the level of original technology which was being delivered by Indian IT enterprises.

Surely, this is one team that personifies the innovation that we hear about ever so often. SpicyIP wishes KritiKal all the best for the future, and the global successes that it looks to acheive. On our part, we continue to look for many more such success stories, of which we are sure there are many. Drop a line or two about them our way, and we shall be glad to share them with the rest of our readers.