Policy on open standards for e-governance released

India's Department of IT (DIT) recently finalized its policy on open standards for e-Governance. A write-up about a draft version of the policy and related discussion can be read here.  The final version of the policy adopts a single and Royalty-Free (RF) Open Standard.  The standard can be retrieved from: http://egovstandards.gov.in/ 

In our discussion of the draft policy, we had focussed on two key provisions of the draft policy as being of interest to patent practitioners-(i) whether the standard would be made available on a royalty free basis or whether or a RF-RAND basis and (ii) whether the standard would recursively open.  We had also remarked about the fact that the draft policy did not refer clearly to the necessary claims and the corresponding ambiguity in the disclosure requirements.  


The finalized version of the policy now includes the statement about necessary claims, and further clarifies the term recusively open.  Therefore part of the ambiguity in the draft version is removed.  The corresponding clause now states, "The Patent claims necessary to implement the Identified Standard shall be made available on a Royalty-Free basis for the life time of the Standard."  Additionally, the phrase "Identified Standard shall be recursively open as far as possible" has also been included as a mandatory characteristics of the policy.  
The policy now defines 'Recursively open' as: "The mandatory characteristics are applicable recursively to the normative references of the Identified Standard i.e. standards which are essential for the implementation of the Standard of a particular version of the Standard."
This policy represents a historical milestone for India- for example, it is under this policy that the Indian government is seeking to spend more than 10 billion dollars on e-governance. For example, the world largest unique-identification program is in India.  Hopefully, the standard would be widely adopted and become a model for other countries e-governance programs.


Image taken from: http://www.opensource.org/

To amend Your Copyright Claim, Better hurry lest You miss the Game: Delhi High Court rejects Application for Amendment of Plaint

Among the followers of Spicy IP, those who are musically inclined must be familiar with the name of Shubha Mudgal, a renowned artist by any standard in the world of music and theatre. The present matter deals with an ongoing dispute between her (hereinafter “Defendant”) and an institution named Shriram Bharatiya Kala Kendra (hereinafter “Plaintiff”), concerning an alleged violation of S. 14 of the Copyright Act, 1957 (hereinafter “the Act”). While the matter is still sub judice, the Plaintiff had applied for an amendment in the plaint, which the Delhi High Court refused on November 23, 2010.

The Plaintiff claimed that it had commissioned the Defendant in 1995 to compose musical pieces for a dance drama to be produced by the Plaintiff, for which she had been duly remunerated. Following the composition, the Plaintiff made sound recordings with the combination of music, lyrics, choreography and the artists and as per Section 2(uu) of the Act, that made the Plaintiff the owner of those sound recordings.

However, subsequently the Plaintiff had come across audio-cassettes being sold under the title "Shubha Mudgal Ali More Angna", wherein the Defendant had sung the same composition that she had prepared for the Plaintiff. Moreover, the Plaintiff also claimed that the Defendant had in a letter been known to have stated the Plaintiff as the owner of the said musical composition. It was the Plaintiff’s contention that as the owner of the copyright in the sound recordings comprising that musical composition, it had the exclusive right under S. 14 of the Act to make any other sound recording embodying the composition and/or to sell or give on hire, or offer for sale or hire, any copy of the recording as well as to communicate the recording to the public and therefore, there exists a lawful obligation to seek a license from the Plaintiff for reproduction of any part of the composition, along with payment of necessary royalties, which had obviously not been done in this case.

The original prayer of the Plaintiff included inter alia, an injunction restraining the Defendant from reproducing the Plaintiff's sound recording of the said dance drama or any other sound recording which the Defendant might have undertaken for the Plaintiff, against the provisions of S. 14(e) of the Act, as well as an injunction restraining the Defendant and the person actually selling those cassettes (Defendant No. 2) from claiming to be duly authorized by the Plaintiff to reproduce, market and sell the impugned audio cassettes and from passing off the musical composition as that of the Plaintiff.

In the application for amendment by the Plaintiff, which brought forth the current judgment under consideration, the latter wished to claim joint authorship rights even over the music composition itself, along with the copyright over the sound recording, on the ground that the said composition had been created by the Defendant at the behest of the Plaintiff, for which the Defendant had been paid due remuneration. In the original plaint, the Plaintiff had only claimed copyright over the recordings and the omission of claiming any right over the composition was further evident in the Plaintiff’s allegation of the Defendant passing off the composition as that of Plaintiff’s. The rights regarding a sound recording fall within S. 14(e), while S. 14(a) cover the domain of musical work. The very fact that the Plaintiff originally claimed a violation of the former provision and not the latter, in the eyes of the judiciary, went a long way to show that the Plaintiff never intended to originally claim for any right over the musical composition itself.

The Defendant’s argument was that at that point of time, the Plaintiff was otherwise barred by limitation to claim for copyright regarding the musical work. Had the Plaintiff tried to file a fresh suit regarding such copyright, it would have been prevented by Order II, Rule 2 of the C.P.C., which requires a plaintiff to include the entire claim he is entitled to regarding a particular cause of action in a suit. Hence allowing the Plaintiff to amend his plaint to such effect would simply mean depriving the Defendant of the right she had acquired through passage of time owing to limitation.

The Court sought to examine the situation under which amendment of plaint can be allowed and accepted it as a settled proposition of law that an amendment should generally be allowed, unless it is shown that permitting the amendment would be unjust and would result in prejudice to the opposite party which cannot be compensated by cost, or would deprive him of a right that has accrued to him with the lapse of time. Justice V. K. Jain went on to say, “Errors or mistakes, if not fraudulent, should not be made a ground for rejecting the application for amendment of plaint or Written Statement. If there is no undue delay, no inconsistent cause of action is introduced and no vested interest or accrued legal right is affected and the application for amendment is not mala fide or will not prejudice the opposite party, the amendment should ordinarily be allowed.”

Justice Jain then referred to several judicial precedents wherein certain principles had been laid down, which ought to be taken into consideration while allowing or rejecting the application for amendment, such as Ravajeetu Builders and Developers vs. Narayanaswamy and Sons and Ors. [(2009) 10 SCC 84], Shiv Gopal Sah alias Shiv Gopal Sahu vs. Sita Ram Saraugi and Ors. [(2007) 14 SCC 120] etc. As a general rule, the Court should decline amendments if a fresh suit on the amended claims would be barred by limitation on the date of application, unless the Plaintiff can establish a reasonable rationale for delay as well as his own bona fides. In the present case, the proposed amendment, if allowed would take away a vested right, which had accrued to the Defendant on account of limitation. Nor did the Plaintiff present any explanation whatsoever for seeking the proposed amendment after 14 years of the filing of the suit, which in turn indicated lack of bona fides on the Plaintiff’s part.

In support of its reasoning, the court also referred to Order VI, Rule 17 of the CPC, which provides that no application for amendment shall be allowed after the trial has commenced, unless the Court comes to the conclusion that in spite of due diligence, the party could not have raised the matter before the commencement of trial. The same mode of reasoning had been followed in Vidyabai vs. Padmalatha [2009 (2) SCC 409], wherein the Supreme Court had observed that the proviso added to aforesaid Rule 17 vide Civil Procedure Code (Amendment) Act, 2002 is couched in a mandatory form and hence such proviso takes away in effect the jurisdiction of the Court to allow an application for amendment, unless the conditions precedent therefor are satisfied. This means that unless the court concludes that despite having exercised due diligence the parties could not have raised the matter before the commencement of the trial, the court cannot allow an amendment of the plaint to take place. Also in Rajkumar Gurawara (Dead) through LRs. Vs. S.K. Sarwagi and Co. Pvt. Ltd. and Anr. [AIR 2008 SCC 2303], this reasoning had been accepted by the Supreme Court.

Thus in the absence of any explanation provided by the Plaintiff in the matter under consideration, regarding why the amendments proposed by way of the present application could not be incorporated either when the suit was filed or when the plaint was first amended, the Court opined amendment could not be allowed after the trial had begun and issues had been framed, since such an action would be in violation of the proviso to Rule 17. Hence the application for amendment was dismissed.

However, what appears to be particularly interesting in this matter was that although the Plaintiff’s claim of joint authorship over the musical composition was barred owing to a procedural lache, viz. limitation, it would have been of considerable significance from a substantive point of law, had the claim been allowed to proceed. Especially in case of sound recordings and the musical works they comprise of, a matter such as this has sufficient potential to delineate the respective rights of producers and artists, given the present discussions regarding amendments in the Copyright Act and increasing rights to artists that are making rounds. Once the original matter is finally decided, the Spicy IP team hopes to bring it forth for another discussion for the benefit of the faithful readers.

Super Casette Industries vs Board of Film Certification: Certifications Galore

The court has clubbed thirty six writ petitions together and the petitioners are mostly producers, manufacturers, sellers, and also replicators for music companies holding copyrights in audio-visual materials recorded on VCDs and DVDs (discs). The Respondents are the Central Board of Film Certification (CBFC), Union of India through the Ministry of Information and Broadcasting and the Commissioner of Police, New Delhi. The petitions were filed, after the police conducted raids on shops and seized discs for violation of Section 52A(2)(a) of the Copyright Act, 1957 (Copyright Act). The discs that were seized from the shops were similar to the ones that were manufactured by the Petitioners.

Section 52A(2)(a) of the Copyright Act requires that cinematograph films which are required to be certified under the Cinematograph Act, 1952 (Cinematograph Act) for exhibition display the certification on the video cassette. Section 4(1) of the Cinematograph Act requires certification of any film that is sought to be publicly exhibited. The audio visuals in the discs in question were not certified by the CBFC. They were however marked with a label that said that the discs were only meant for private viewing.

The main issue that arises is whether the discs (made or produced by the Petitioners) sold with label that they are meant for “private viewing” require certification under the Cinematograph Act? In other words, does the publication of audio visuals on the discs for sale (and meant for private viewing) amount to “exhibition” under the Cinematograph Act?

Contentions of the Petitioners:
1. Section 52A(2)(a) of the Copyright Act requires certification under the Cinematograph Act only for public exhibition of the video film and does not apply to films meant for private viewing only. Exhibition of a film in public would not include sale, display or distribution of such discs. If the discs contain objectionable material, they will fall under the purview of Section 292 of the IPC. Section 52A was not intended for the prosecution of copyright holders.
2. Section 14 of the Cinematograph Act penalizes the exhibition of a film in a place not licensed for public exhibition. If the display of discs for sale constitutes public exhibition, it would mean that all shops selling discs require to be licensed leading to absurd results.
3. Censorship of films meant for private viewing is not envisaged by the Copyright Act or the Cinematograph Act. Such censorship would amount to violation of the constitutional right of Freedom of Speech and Expression of the producers and viewers of such films.

Submissions of the Respondents:
1. As soon as a film is made and offered for sale to the public, irrespective of its length or content, it will amount to public exhibition.
2. The expression “public exhibition” should be purposively constructed; keeping in mind the changing context where the public can view content of the discs, without it being exhibited in a cinema hall.
3. Exemption from certification of these discs will lead to films bypassing the certification requirement under the Cinematograph Act and result in the dissemination of objectionable material.
4. The fact that a certified film cannot be shown in an unlicensed place of exhibition does not imply that a film need not be certified if it is not intended for exhibition in a licensed place.

Judgment:
After a thorough examination of the objects of the Cinematograph Act, Cinematograph Rules and the Copyright Act and various judgments, the court concluded thus;
1. Once a film is made available or distributed or offered to sale to the public on discs, it will amount to publication under the Section 52A(2)(a) of the Copyright Act.
2. Where a member of the public who obtains the film, views it (even if it is in the confines and privacy of her own home) certification under Section 5A of the Cinematograph Act becomes necessary for the purposes of Section 52A(2) of the Copyright Act as the film is exhibited at that point.
3. The maker or the distributor of the film is required to anticipate the subsequent exhibition of the flim and is thus required to obtain certification for the same.
4. The exhibition of the films for domestic purposes does not require licensing under Section 10 of the Cinematogrpah Act as per the Delhi Rules, 1986.

Conclusion:
The judgment noted that this interpretation will increase the workload of the CBFC and did not examine the constitutional validity of the provisions of the Cinematograph Act or the Copyright Act. The court said that either the CBFC should deal with the increased number of applications for certification or the legislature could pass orders under the Cinematograph Act excluding certain categories of audio visuals, reducing the workload of the CBFC.

There is however a need for more clarity in the objects of the legislations. The sole object of the Copyright Act should be the protection of copyright. The Cinematograph Act however is the legislation enacted “with particular regard to the safety of those attending them and to prevent the presentation to the public of improper and objectionable films”. The confusion could have been avoided if the statutory requirement of certification under Section 5A of the Cinematograph Act was not linked to Section 52A of the Copyright Act. Going by the purposive interpretation of the term “public exhibition”, it becomes abundantly clear that certification would be required solely under the provisions of Sections 4 and 5 of the Cinematograph Act itself. Purposive interpretation would be necessary as the Cinematograph Act was enacted in 1952 where the only means of public exhibition envisaged by the legislature was through cinema halls and television. This would call for an amendment to Cinematograph Act and not an attempt to fulfill the objectives of one legislation through another.

Picture from here.

A "Special" Copyright Victory for the Disabled

Prashant recently highlighted the key findings of a Parliamentary standing committee constituted to study the copyright amendment bill. In particular, the report comes as a huge victory to two sets of stakeholders, namely film/music artists on the one hand (music composers and lyricists who can now claim a good 50% royalty on all exploitations of their work, notwithstanding any assignments) and the disabled or differently-abled communities on the other.

Let me focus on the disability sector in this note. I'll leave recommendations pertaining to music composers/lyricists (an aspect on which we'd written several times in the past) to a later post.

Our previous posts highlighted the gross inadequacy of the "disability" exception sought to be carved out in the copyright bill. Particularly the fact that the proposed exception was limited to conversions of copyrighted works to only "special" formats.

For those interested, we made written submissions to the Standing Committee on this count. A number of us (led by Sam Taraporewala of the Xavier's Resource Centre for the Visually Challenged and Rahul Cherian of Inclusive Planet) also appeared in Parliament to depose on this count.

While we appreciated the effort taken by the government in carving out a copyright exception (under section 52) to enable the conversion of copyrighted works to accessible formats by the disabled, we also decried the problematic wording of the proposed exception. As noted in our submission to the Committee:

"The "disability" provisions proposed by the Copyright Bill can be summarised as below:

1. Only formats that are specially created to cater to the needs of the disabled (such as Braille) will fall within the section 52 exception.

2. For any other format, one requires a compulsory licence. However, such a licence cannot be applied for by the intended beneficiary, but only by a narrow group of organisations that comply with stringent criteria.

The problems with the above framework may be obvious to anyone sensitive to the present societal structure that disadvantages the disabled at every turn. For one, "special formats" such as Braille cater to a minuscule portion of the total community of those that we chose to label as the "disabled" or the "differently-abled". Even amongst the visually impaired, not every one is familiar with Braille.

Given that we now live in the so called "digital" era, what works best for most of the visually impaired are electronic versions of text that can be read out using a screen reader software (such as Jaws or Orca). Unfortunately, "electronic" versions that are created by scanning printed text will not necessarily qualify as "special formats"..for such electronic versions can be accessed by one and all. Indeed, that precisely is why offerings such as Kindle and Google books are a big commercial hit...for their major market comprises the not so differently-abled.

Article 14 (and 21) of the Indian Constitution and Discrimination:

There must be a meaningful copyright exception in favour of the "disabled", a category not necessarily limited to those that are visually impaired, but includes any person unable to enjoy copyrighted works in their "normal" format. Illustratively, legendary scientist Stephen Hawking who suffers from ALP (Amyotrophic Lateral Sclerosis) is unable to read a printed book, but has to have this book digitized and then filtered through special software which reads it out to him.

An exception in favour of "special formats" will not help him or those that are similarly situated to him in India. Article 14 of our Constitution mandates that the State shall not "discriminate". Isn't this discrimination of the highest order?"

The Standing Committee agreed broadly with our contentions and opined as below in its report:

1. It begins by noting that:

"The Committee takes note of the following shortcomings as pointed by the representatives of two organizations working for the disabled:

i) compulsory licensing system as envisaged in section 31 B would prevent educational institutions, Self Help Groups, other NGOs and reading disabled individuals from undertaking conversion and distribution.

ii) time-consuming and cumbersome procedure for obtaining permissions from Copyright Board.

iii) time involved in subsequent conversions will result in further delays causing hardships for students.

iv) it would discriminate between blind persons knowing Braille and those not knowing.

v) exception as envisaged in Section 52(1) (zb) in favour of only 'specially designed' format does not benefit persons affected by cerebral palsy, dyslexia and low vision."

2. It then takes strong issue with the “special formats” limitation and categorically states that conversions to any accessible format must fall within the scope of the exception. In its words:

“After analysing the proposed amendments as envisaged in section 31B and 52 (1) (zb) in the backdrop of interactions held with various stakeholders and the Department, the Committee strongly feels that concerns raised by the organizations working for the disabled are indeed very genuine. The Committee would like to point out that the real objective behind these two provisions is to facilitate the cause of the disabled. Every attempt needs to be made to remove all the drawbacks highlighted in the proposed amendments.

The Committee is of the firm opinion that all physically challenged need to be benefitted by the proposed amendments. It would be very discriminating if envisaged benefit remains restricted to only visually impaired, leaving out persons affected by cerebral palsy, dyslexia and low vision. The Committee takes note of fact that even regular Braille users complement Braille with other accessible formats like audio, reading material with large fonts and electronic texts. The Committee also observes that the modern day Braille production is dependent on the material being first converted into mainstream electronic formats such as MS Word because Braille translation software requires inputs in such formats.

The Committee hopes that the request of organisations for extending access of works to all accessible formats instead of special formats presently under consideration of the Department will result in a positive outcome.”

3. The Committee states that the compulsory Iicensing provisions should be improved to make it better suit the needs of disabled sections:

“The other request for widening the scope of compulsory licence to allow other entities working for disabled in case it is not possible to withdraw section 31 B also merits a sympathetic consideration by the Department.”

3. The committee was not favourable to the provision for any kind of “fees” to be paid for conversions during the compulsory licensing process:

“Committee's attention was drawn to another negative aspect arising out of fees (royalty) likely to be charged for copies going beyond the number of free copies to be specified by the Copyright Board. Committee is well aware of the fact that as only 'not for profit' organizations are involved in this area, the issue of potential fees may prove to be a very discouraging factor. Department's response to this apprehension that an organization registered under section 12A of the Income-Tax Act, 1961 and working primarily for disabled and recognised under the Persons with Disabilities (Equal Opportunities, Protection of Rights and Full Participation) Act, 1958 need not pay fee and may get compulsory licence free of charge does not seem to be very convincing. Such a provision needs to be specifically provided in the Act itself. “

It must be noted here that in view of the strong suggestion by the Committee to delete the “special formats” limitation, one does not need a compulsory licensing (CL) provision anymore. The CL provision had been inserted by the government in the Bill only to cover "non special" formats. If the section 52 defence in favour of the disabled is now extended to all accessible formats (including special and not so special formats), the CL provision effectively becomes redundant.

All this has come about owing to sustained advocacy by disability groups and their representatives since the late 1990's. Of course, it remains to be seen whether the government translates the standing committee recommendations into law. For a standing committee report is not really binding on the government i.e. the government can chose to ignore it completely and bring forward the very same Copyright Bill that it had introduced the last time around. But given the political fall out of any move that ignores the interests of the disabled sections and goes against the findings of a Parliamentary committee on this count (expressly supporting the interests of the disabled), it is highly unlikely that the government would incur such a risk.

As we await further government action on this count, let me leave you with a beautiful sentiment expressed by the inimitable Stevie Wonder, in his address to WIPO delegates:

"Your love is the key to unlock the blinders that block access to materials ...for those with print disabilities."

Let's hope that the government shows some love and implements the recommendations of the Standing Committee in a meaningful manner...and that India takes a historic step towards ending a book famine that has plagued the differently-abled for many centuries now.

ps: image from here

Parliamentary Standing Committee tables report on 'Copyright Amendment Bill 2010': Lyricists and Composers win the battle!

The Parliamentary Standing Committee, headed by Shri. Oscar Fernandes, examining the ‘Copyright Amendment Bill, 2010’, has finally tabled its report before Parliament. The report is available over here on the website of the Rajya Sabha.

This much awaited report runs into 118 pages and is one of the most comprehensive reports to have ever been authored by a Parliamentary Standing Committee. The report is a stunning victory for lyricists and composers. Book publishers, film and music producers are the big losers from this report and they would do well to urgently hire the services of Ms. Nira Radia, who is well placed to lobby their interests. It should however be pointed out that these recommendations are not binding on either Parliament or the Government.

The main recommendations of the Report have been highlighted below. A detailed analysis of the same will follow later on the blog:

(i) Principal Director: The Committee rejected the Government’s suggestion to allow the principal director to be the joint author of a film along with the producer.

(ii) Commercial Rent: The Committee found the proposed definition to too ‘wide and open-ended’. The committee also noted that there was no clarity on the implications for non-profit organizations and public libraries. The Committee therefore sought revision of the definition in such a manner that it clarifies the ambiguities pertaining to libraries/educational institutions.

(iii) Communications to the Public: The Committee accepted the amendment which amongst others changes was expanded to cover even ‘performances’.

(iv) ‘Infringing Copy’: The Committee accepted the amendment which was expanded to cover even ‘parallel imports’. The Committee pointed out that the amendment was in the best interests of the students who would benefit from low-priced text-books.

(v) Rights Management Information: The Committee accepted the proposed definition.

(vi) Clause 6 – Section 18 – Assignment of Copyright: The Committee has accepted both amendments to this clause. This was one of the most contentious amendments in the Bill and can be seen as a clear victory for lyricists and composers. The Committee has taken note of the Supreme Court decision in the IPRS case in 1977 and has stated that the proposed amendments are merely a reiteration of Section 13(4) of the Copyright Act. This amendment would therefore allow composers and lyricists to retain their rights over the work which may have been incorporated into a cinematograph work. Thus although the producer of the movie is the first owner with respect to the music when it is used as part of the cinematograph work, the lyricist or the composer will be considered first owner for all other purposes.

Most interestingly the Committee also recommended the addition of the following proviso to Section 18: Provided also that the author of the literary or musical work included in a cinematograph film shall not assign or waive the right to receive royalties to be shared on an equal basis with the assignee of copyright for the utilisation of such work in any form other than for the communication to the public of the work along with the cinematograph film in a cinema hall, except to the author's legal heirs or to a copyright society for collection and distribution and any agreement to contrary shall be void".

This would mean that even if an author were to licence his rights he would have to receive a minimum 50% of the royalties in all cases where the work is exploited except when it is exploited as a part of a cinematograph film in a cinema hall. The provision also makes it clear that any contract attempting to waive these rights is void in law.

Another similar proviso has been added to cater to the interests of lyricists and composers in the case of sound recordings. The same is reproduced below:

Provided also that the author of the literary or musical work included in the sound recording but not forming part of any cinematograph film shall not assign the right to receive royalties to be shared on an equal basis with the assignee of copyright for any utilisation of such work except to the author's legal heirs or to a collecting society for collection and distribution and any assignment to the contrary shall be void.

(vii) Section 19(9): The Committee has also proposed the following proviso to Section 19: No assignment of copyright in any work to make a cinematograph film shall affect the right of the author of the work to claim an equal share of royalties and consideration payable in case of utilisation of the work in any form other than for the communication to the public of the work, along with the cinematograph film in a cinema hall.

This provision basically allows the author to demand 50% of royalties and consideration that maybe collected as a result of the utilization of the work in a cinematograph work which is communication to the public in any form including the screening of a cinematograph film in a cinema hall. This would mean that a composer or lyricist would receive 50% of all royalties from the exploitation of the work as a part of the cinematograph work itself. It is not clear how this will be calculated.

A similar proviso is added with respect to ‘sound recordings’: "No assignment of the copyright in any work to make a sound recording which does not form part of any cinematograph film shall affect the right of the author of the work to claim an equal share of royalties and consideration payable for any utilization of such work in any form".

(viii) Section 19A: The Committee has accepted the amendment to allow the Copyright Board to pass interim orders in disputes pertaining to assignments and licensing subject to there being a time limit for the Copyright Board to dispose all such disputes.

(ix) Section 31A: The Committee has expressed an apprehension on expanding the scope of compulsory licences and has asked for the Government to ensure that the same did not conflict with the Berne Convention.

(x) The Disability Provisions: The Committee has accepted all the objections of disability activists and has recommended that the Government look into all recommendations made by them. The disability activists have requested the widening of the proposed Section 52(1)(zb) to include all special formats and not just Braille formats. They had also requested that compulsory licences be made available to even those organizations working on behalf of the disabled.

(xi) ‘Cover Versions’: The Committee accepted the recommendations to shift the infamous Section 52(1)(j) out of Section 52 and into Section 31C of the Copyright Act.

(xii) Copyright Societies: The Committee while criticising the present management of the copyright societies has also made it a point to note that it may not be viable to accept the amendment that proposes shifting the entire management of these Societies to Authors. In fact the Committee went onto say that the proposed amendment was worse than the malaise that it sought to cure. The Committee therefore recommended that the proposed amendments be rejected. The Committee has instead drawn the Government’s attention to Section 33(4) of the Copyright Act and has recommended that the provision be used to cancel the registration of errant Copyright Societies such as IPRS. With respect to the proposed Section 33A, that requires copyright societies to publish their tariff rates etc, the Committee has noted that such a provision is required since the Copyright Societies are acting in a most arbitrary, non-transparent manner.

Under the heading of ‘general observations’ the Committee has passed scathing comments against the workings of the Copyright Societies and has also pulled up the Copyright Office for not using its powers to regulate these Copyright Societies. In particular the Committee noted that Rule 14P requiring the publication of all tariff rates etc. of Copyright Societies was not being published. In this backdrop it is interesting to note that we had actually filed RTI applications requesting for all information pertaining to Rule 14P. The Copyright Office has unfortunately been playing footsie with us.

(xiii) Technology Protection Measures: The Committee has accepted the proposed Section 65A and has recommended that it be maintained in its broad terms.

(xiv) Copyright Board: The Committee has recommended in no uncertain terms that the Copyright Board has to be a full time board consisting of experts in areas related to Copyright Law. As of now the Copyright Board is primarily staffed with babus from the Indian Legal Services.

SpicyIP Tidbit: NGOs set up blog for FTA's effects on Access to Medicine

Several NGOs have been protesting the free-trade agreements that are being negotiated due to the detrimental effect that these multilateral and bilateral agreements would have on access to medicines. We too have covered the developments on the India - EU FTA in several posts here. 

Recently, DNP+ and MSF Access Campaign India have set up a blog for more active discussion on these issues. "The blog was established to gather information like documents, drafts of agreement's, news, pictures, videos, press releases and articles and to build up a forum where issues can be raised and discussed". The blog, entitled 'Don't Trade Away our Lives' is available here, and hopefully while providing a platform for more discourse and will also prove to be a great resource! 

SpicyIP Tidbit: Estee Lauder loses trademark case against Gufic Biosciences in the Supreme Court

The Supreme Court on Friday rejected Estee Lauder’s appeal and upheld the judgment of the Delhi High Court allowing to Gufic to continue using the word ‘cliniq’ in its product. The Bench was headed by Justice B Suderhsan Reddy.

Global cosmetics manufacturer Estee Lauder had filed a filed a trademark infringement case against Gujarat based Gufic Biosciences in the Delhi High Court. Estee Lauder alleged that the use of the word ‘Cliniq’ in Gufic’s product ‘Skincliniq Stretch Nil’ was identical to Estee Lauder’s Clinique brand. A Division Bench of the Delhi high Court consisting of Justices Badar Durrez Ahmed and Veena Birbal rejected Estee Lauder’s case and held that ‘Skincliniq Stretch Nil’ is not identical to the Clinique brand or deceptive. The High Court also noted the huge price difference between the two products. Estee Lauder subsequently appealed to the Supreme Court against the judgment of the Delhi Court.

Click here and here for the newspaper reports.

SpicyIP Tidbit: 10 Million Euro claim by Lambretta against Scooters India

Lambretta Consortium (Italian two wheeler manufacturer) has stated that it will claim over 10 million Euros from Scooters India in relation to the unlawful licensing of Lambretta trademark in the EU. Scooters India Limited is an Indian automobile manufacturer in which the government has a 95% stake. Lambretta has said that the European Union Office of Harmonisation (Trademarks and Designs Department) has ruled that Lambretta holds the rights to use the Lambretta trademark in the automotive sector in the EU. Lambretta has claimed that Scooters India had unlawfully licensed the Lambretta trademark to a third party in Europe.

Click here and here for the newspaper reports.

Picture from here.

TRAVEL.INDIATIMES v. INDIATIMESTRAVEL – CLASSIC INSTANCE OF CYBER SQUATTING

Cybersquatting (also known as domain squatting) is the act of mala fide registering, trafficking in, or using a domain name with the intent to profit from the goodwill of a trademark belonging to someone else. The term is derived from "squatting," which is the act of occupying an abandoned or unoccupied space or building that the squatter does not own, rent or otherwise have permission to use.

The fact situation in the recent Delhi High Court judgment in Times Internet v. M/s Belize Domian Whois Service Ltd & Others is a classic instance of cyber squatting. The judgment reaffirms the domain name-trademark / passing off principle. Contrary to oktatabyebye.com dispute where WIPO ruled in favour of Tata sons requiring Gurgaon-based travel portal MakeMyTrip to transfer the domain oktatabyebye.com to Tata, passing off in the instant case is evident.

Facts:

Indiatimes.com is an e-commerce portal owned by the plaintiff company, Times Internet. Since 2000, the website offers a wide range of services including travel services through travel.indiatimes.com.  The defendant, M/s Belize Domain Whois Service Ltd & Others, registered Indiatimestravel.com in 2005. It carries some sponsored links.

Arguing that “indiatimestravel.com” is deceptively similar to that of platintiff's registered domain name "travel.indiatimes.com", plaintiff submitted that the defendant was trying to take advantage of its brand name. The plaintiff, citing revenue figures, submitted that its website enjoys reputation and signifies the services and products marketed through the website. The plaintiff sought for an injunction restraining the defendants from cyber squatting, using any other identical or deceptively similar name and transferring the domain name “indiatimestravel.com” to the plaintiff.

Judgment

The Court referred to the Supreme Court judgment in Satyam Infoway Ltd. vs. Sifynet Solutions Pvt. Ltd. 2004 (28) PTC 566 (SC) which had a similar fact situation. In the instant case, Supreme Court observed that “a domain name .......is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the Internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding online Internet location. Consequently a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical.” Comparing both the domain name and the trademark, Supreme Court held that a domain name can have all the characteristics of a trademark. Accordingly, domain names can be protected under Trademarks Act, 1999.

In the instant case, the High Court observed that the plaintiff owned the mark “indiatimes.com” way before the defendant created the mark “indiatimestravel.com”. Further, “indiatimes” which was the essential component of the domain name, was used by the defendant without any explanation. This can confuse an ordinary netizen and can result in associating defendant's portal with that of the plaintiff company. The use of impugned web portal by the defendant may also jeopardise the reputation of the plaintiff if the products and services which are advertised through the website lack quality. Further, as the defendant did not appear before the Court and contest the claims of the plaintiff, defendant's conduct was held to be in mala fide. Considering the above mentioned aspects, the instant dispute was held to be a clear case of “passing off”. As the plaintiff was held to have the sole right to use the words “indiatimes”, defendant was directed to transfer “indiatimestravel.com” to plaintiff.

Combating Online Infringement and Counterfeits Act: A Lesson in the Legislative Process

I've picked up on this piece to illustrate and support the common notion that public discussion and transparency do in fact help to bring about sensible legislative and policy decisions, and there really shouldn't be a doubt that important legislative changes must go through a consultation process, with as much public participation as possible before it is concluded.

The post deals with the recent controversy surrounding the Combating Online Infringement and Counterfeits Act (COICA) which is a proposed bill in the US and was passed by the Senate Judiciary Committee this week.

What is the Combating Online Infringement and Counterfeits Act?
It is a bill which essentially creates an Internet blacklist for sites that are deemed to be 'dedicated to infringing activities'. If passed, the Attorney General will have the power to bring court action against such websites with the result that the registrar of the domain name would be court mandated to suspend access to and lock the domain name. The thrust of the legislation is ostensibly copyright enforcement, but in truth could operates as a government-run censorship tool.



How does the COICA blacklist websites?
There appears to be a three-fold approach to 'combating' such websites:

1. When a website facilitating copyright infringement is identified, the operator of the Domain Name System server is expected to take reasonable steps to prevent the domain name from resolving to that domain name's Internet Protocol address (IP address) Essentially, the government can blacklist a website from the Domain Name System (DNS).

All of this appears terribly technical, so I will briefly try to explain what this. When you type in www.google.com in your address bar, the Domain Name System essentially 'translates' the letters into a string of numbers like 72.168.100.4 which is its IP address, so that the Google homepage is served to you. Obviously, it is impossible to remember the IP addresses of each and every website so this process of converting a URL to IP address is essential to viewing a website. To put it simply, once a website is blacklisted by means of this Bill, this translation is prevented and access is denied, which is exactly what the US government hopes to achieve.

[As a side-note, for anyone interested in understanding the fundamentals of Internet technology, explained simply and beautifully by the folks over at Google, I recommend a reading of 20 Things I Learned About the Browser and the Web, which explains the intricacies of web technology in comic-book form and provides a run-down on several concepts that I personally found very informative and useful in understanding the interface between the internet and copyright issues.]

1. The Bill will also strike at the root of the operation of such websites by blocking credit card transactions on these websites.

1. Continuing with the effort to strike at such websites financially, the Bill proposes to prevent advertisements from being displayed on blacklisted websites. This is a clear message to services like Google AdWords that the onus is on them to prevent contextual advertisement from being displayed on such sites.
   

What are the problems with the COICA?
While several of our readers have often voiced their concerns that online piracy and copyright infringement is an issue that need immediate attention, and rightly so, I point out a few reasons, which several consumer groups and activists have also noted, for why the COICA requires a rethink and it not the way to go about solving the problem of copyright violations on the internet

• The COICA severely restricts innovation and technological creativity by providing a legal foundation to completely blacklist and block access to a website for allegedly containing infringing content. We need to develop technological models that accommodate the changing trends in digital distribution of content, not a legislation that hinders its very development.
• In the US context, this is a clear constitutional violation of the First Amendment and in general, any legislation that provides the government with the absolute right to just shut down access to websites will not pass the stage of judicial review and will be see as clear violations of the freedom of speech and expression.
• The DMCA already provides for legal remedies for instance of copyright violations, so what is the need for another anti-piracy legislation? I find it amusing that right after the ACTA debacle, where the US paraded a Big Brother legislation as a counterfeiting treaty, they would attempt to disguise a censorship legislation as an anti-piracy one.

How has public scrutiny helped block passage of the Bill?
With news of the COICA trickling in, internet forums, blogs and mainstream news services, reported the disastrous effects of such a legislation. A list of Senators that supported the legislation was published, which indicated the nexus between commercial interests and the government and that set the ball in motion. Almost immediately, one Senator, Ron Wyden declared that he was going to “take the necessary steps to stop [COICA] from passing the United States Senate”. This is clearly not an empty promise and we are all fully aware of a Senator's ability to block the passage of a Bill in the Senate. In this case at least, the intention is honest.

What are the lessons for the Indian legislative process?
The first thing that comes to my mind is that the Indian legislative process, especially on highly technical matters, requires greater public consultation and conference with civil society organisations, consumer groups and technical experts and most importantly, an alert and aware public.

For example, the Information Technology (Amendment) Act, 2008, not least for its similarity with the COICA, immediately comes to mind. It is amply clear that greater discussions on S.79 and S.81 were required, since they continue to be a source of deep confusion. Further, I find it very discomforting to recollect how easily the IT Amendment Act was passed without any legislative debate whatsoever in Parliament. There was very little public discussion about the nuances involved in fixing liability for internet intermediaries for copyright infringement and that might explain the prevailing confusion on that aspect.

More importantly however, the very process of legislative change in India on internet and intellectual property related issues makes me question whether mainstream news services would carry a piece, if a COICA-like legislation was to be introduced in India.

Would an Indian version of an internet-blacklist, censorship-allowing legislation if introduced, face the same amount of public scrutiny and backlash as was witnessed in the US or would it just slip under the radar and be criticised only after its passage? Perhaps I am being unfair to the countless organisations and groups that work tirelessly on such issues. But I still can't be a hundred percent sure.

B.Braun and Patent Irregularity: What Lies Beneath?

The ET reported on the suspension of a patent official for alleged "irregularities", in the context of a now famous B.Braun patent litigation case. I excerpt the critical portions below:

"The government has suspended a senior Chennai patent official and initiated inquiry against another who retired earlier this year, for granting patent in a ‘highly irregular and improper’ way to German medical device maker B Braun.

The move follows an investigation by the country’s Controller General of Patents, PH Kurian, who found the ‘irregularity’ related to patent granted to B Braun for its popular intravenous device Safety Intravenous Cannula. In his report submitted to the commerce ministry, Mr Kurian held assistant controller CN Shashidhara and former deputy controller KM Vishwanathan responsible for the irregularities. “Government may take appropriate action against them,” he wrote.

Unfortunately, I was misquoted in the article as below.

"The development will strengthen the case of Indian drug-makers and health activists who allege that some patents are being given in the country under influence of innovator companies. “This highlights the case of many potential influences by companies across Indian patent offices,” Shamnad Basheer, a Kolkata-based patent expert said.

He said the particular case of B Braun is a procedural error and it cannot be completely established whether it was done under any influence. A report last year by Austria’s public sector entity to promote innovative firms and new technologies, Wirtschaftsservice (AWS) had alleged unhealthy nexus between Indian patent officials and legal representatives or patent agents of healthcare companies, Mr Basheer said.

Since the reporter engaged me in a brief telephonic conversation just before the story, he may have got my version wrong.

I was asked two pointed questions:

1. Question: Are there allegations of an unhealthy nexus between patent agents and the patent office?
Answer: Yes, and the AWS report is good testimony to this.

2. Question: Does this particular report by CG Kurian highlight such an instance of an unhealthy nexus?
Answer: No, this report only establishes irregularity by patent officials. It does not establish any wrong doing by the patentee or their patent agent.

Needless to state, the basic thrust of my message to the reporter, namely that Mr Kurian's report does not establish any wrong doing on the part of the attorney, was not communicated through the article. In fact, I also clearly mentioned to the reporter that the Controller General, PH Kurian clearly found that the amendment was a permissible one, since it was within the scope of the earlier description filed.

It was only the procedure that was flawed. The CG found that since the amendments were effectuated after the date of grant of the patent, the amendments ought to have been advertised (since they were effectively "post grant" amendments). The irregularity lay in the fact that the amendments were treated as pre-grant amendments and not published. Consequently, the defendant in the B-Braun case (Polymed) instituted a complaint before the Ministry of Commerce forcing the CG to institute the enquiry.

All of this raises a very pertinent issue: what exactly is the date of grant of a patent? This was debated on this blog in the context of the Snehalata Case, where Justice Muralidhar appears to have settled the law on the point (to some extent) by holding that the date of grant is the date on which the Controller decides to grant the patent and not the date on which the granted patent is published. Given that this question of law was a tricky one and remained relatively unresolved until Snehalatha's case, is it far to impute wrong doing on the part of any party who had been working in a climate of legal uncertainty?

It must also be noted that one of the patent controllers who was a member of the enquiry committee submitted a report to the CG Kurian stating that one particular claim amendment by B.Braun was beyond the scope of the description. Surprisingly however, the officer was quite vague in his findings. He began by stating that the amendment was not strictly part of the description as filed. And yet, later, in the very same breadth, he went on to state that this claim amendment was inherent in the filed description. Surely this official appears to have mastered the art of intentional ambiguity!

As we speak, B.Braun is engaged in a hotly contested litigation with Polymed. For those interested in the first instance order (by Justice Badar Durez Ahmed), see here. The matter was appealed and decided by a bench comprising of Justice Mukul Mudgal. Unfortunately, we do not have a copy of this order. We'd be grateful to any reader for sharing this order, if they have it.

Delhi HC rules against Gatorade and Saffola descriptive tag-words

The Delhi High Court has in two recent cases over the past fortnight refused to grant injunctions on substantially descriptive marks, using the decisions as an opportunity to censure such "bad" trademark registrations, and discuss the Indian position on descriptive marks in general.

DECISION I: Losorb vs Low Absorb

The first of these cases was a refusal to grant an injunction on the use of “Low Absorb” as passing off or infringing the registered trademarks “Losorb” or “Lo-Sorb” in a case between two FMCG giants Marico and Agrotech Foods. In a 50-page decision, which you can access here, the court discusses at length about descriptive marks, and acquired distinctiveness. (Image from here).

SpicyIP guest poster Suchita Saigal had referred to the Single Judge Bench’s decision in this case in passing in her post on the Manjal TM issue. The original order held no case for infringement had been made out. This Division Bench order comes on an appeal against the original decision, and can also be accessed at the Indian Kanoon website here.

Quick Facts

Marico is the registered trademark owner of Losorb and Lo-sorb since 2001 in connection with edible oil. The oil sold also used the trademarks "Sweekar" and "Saffola" along with "LOSORB" and LO-SORB". Agritech Foods sells its edible oil under the trademark "Sundrop", whose packaging also contains the expression "WITH LOW ABSORB TECHNOLOGY". This formed the cause of action for a passing off and infringement case here.

1. Descriptive marks

Here, the court drew parallels with another Division Bench decision of the Delhi HC, Cadila Healthcare Vs. Gujarat Co-operative Milk Marketing Federation. There, “Sugar Free" was not accepted as a coined expression, and instead was held to be descriptive and generic. Here too, "LOW ABSORB" only described the characteristic of the edible oil and was ordinarily/ normally incapable of being distinctive.

In an acerbic comment on the tendency of claiming trademark monopoly over descriptive words, the court here said:

“It is high time that those persons who are first of the blocks in using a trade mark which is … purely descriptive [of the] product ought to be discouraged from appropriating [such] a descriptive expression … for claiming the same to be an exclusive trademark and which descriptive word mark bears an indication to the products kind, quality, use or characteristic etc.”

The court also took up the matter of minor word-play with descriptive expressions, as Marico appears to have done with “Losorb” and the phrase “Low Absorb”. Claiming partly-tweaked descriptive words as being coined words, the court said, would lead to an absurd situation, because a descriptive word AS-IS would in fact be deceptively similar to the tweaked word which has been registered. “Such a position … must be struck down with a heavy hand.”

Sundrop/Agritech’s distinctive packaging made it more difficult for Marico to make out its case, with the court noting that there could be no possibility of confusion, because there were more than enough differentiating features on the packaging to avoid any issue of passing off.

2. Acquired distinctiveness of a descriptive mark

This defence also fell through on Marico’s end.

“Courts should ordinarily lean against holding distinctiveness of a descriptive trademark unless the user of such trademark is over such a long period of time of many many years that even a descriptive word mark is unmistakably and only and only relatable to one and only source i.e. the same has acquired a secondary meaning.”

To make things clearer, the court accepted that an undisturbed use of 60 years, as in the 2007 Supreme Court case involving Glucon-D, would qualify as acquired distinctiveness. Marico’s use was only for about seven years, which wasn’t enough to make the cut.

The court also held that a court should consider user evidence to determine distinctiveness only upto the date of registration; and not anything after registration -- at least while passing interim orders. In cancellation proceedings, though, post-registration use could be considered as well to assess distinctiveness.

3. Descriptive TMs, if registered, are prima facie invalid

According to the court, both the trademarks "LOSORB" and "LO-SORB" were a minor variation on the descriptive phrase "LOW ABSORB". The phrase itself was not an unusual juxtaposition of English words. The fact that Marico had filed for registering the marks as “proposed to be used” meant that the Registrar of TMs had no evidence of distinctiveness. Being prima facie invalid registrations, no infringement action could be raised.

In this regard, the court held that a trademark that otherwise came under Section 9(1) (a) to (c) of the Trade Marks Act could not be registered on a “proposed to be used” basis. Such marks had to submit evidence of user as on the application date, or at least, by the date of registration.

DECISION II: Gatorade's punchline loses out too!

Just about a week after the Losorb/Low Absorb decision, the DB adjudicated on a similar matter in the case involving another pair of FMCG majors, Stokely van Camp (SVC)and Heinz India. The registered mark was the phrase “Rehydrates, Replenishes, Recharges” used by SVC on its isotonic drink brand Gatorade. Heinz India allegedly launched its own “Glucon D Isotonik” using the expression “Rehydrates Fluids; Replenishes Vital Salts; and Recharge Glucose”. Image from here.

The original interim injunction decision, which can be accessed here, was discussed by Suchita's post on the Manjal trademark here.

Relying heavily upon, and quoting extensively from, its decision in the Marico case, the court ruled against the grant of an injunction. It also made similar observations, i.e., that the registered expression was clearly descriptive, and such marks should be discouraged. This mark, too, having been registered on a "proposed to be used" basis was held to be wrongly registered. Further, trademark registration was only prima facie proof of validity and could be rebutted. The court ought not to consider post-registration use to assess distinctiveness of a mark.

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Minor afterthought -- These two decisions make the position on descriptive trademarks abundantly clear, but it remains to be seen if trademark owners are deterred from registering or attempting to register such marks.

SpicyIP Jobs: Lead IPR Counsel for tech MNC

A leading technology MNC seeks to bring in an IPR Specialist with 12-15 years experience as Lead IPR Counsel for the organisation. The role will involve managing and securing the organizations worldwide IP assets.

A prospective candidate must possess an academic background in engineering and law as well as deep IP industry experience.

The profile involves;

• Providing legal advice and strategic support to the global IPR management system.
• Extensive knowledge and experience in domestic and international laws relating to Intellectual Property Rights
• Experience in filing and pursuing, defending IPR registrations and handling litigations.

More specifically,

• Experience in Patent specific drafting, filing and strategic advisory
• US and Indian patent filing and prosecution
• Creation and management of IP assets

Qualifications and Experience:

1. Minimum: Bachelor’s degree in Law and an engineering degree.
2. Additional (desirable) qualifications: degree or diploma in any outside jurisdiction (UK, USA, APAC or Europe).
3. Minimum of 12 years of legal experience with at least 7 years of experience in the IPR space with a focus on patents.
4. Outstanding communication and collaboration skills required

If you wish to know more about this job opportunity or would like to discuss this on a confidential basis, do reach out to Emerald Amara (emerald@rainmaker.co.in).

If and when you contact Emerald, please don’t forget to mention you came via SpicyIP!

Event: Workshop on Commercialisation Aspects of IPR

We have an interesting event update for the entrepreneurs among you who are in Delhi this month -- The folks at the Indian Angel Network Incubator inform us that they are hosting a workshop on the Commercialisation Aspects of IPR in New Delhi on November 27, 2010, details of which are below.

I have also uploaded details on the SpicyIP events calendar which you can access here.

And of course, if you head over to the event, do mention you read this first on SpicyIP. For those of you who wonder why we keep asking you to do that, we are keen to understand how many of our readers are interested in attending such events, and whether you benefit from such attendance.

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IAN Incubator has initiated a series of workshops for entrepreneurs across different cities to educate aspiring entrepreneurs and start-ups on challenges faced by them and help them in tackling these challenges better. “Commercialization Aspects of IPR” is the next workshop in the series. This workshop will educate students, start-ups, entrepreneurs & aspiring entrepreneurs on the Relevance of IPRs such as Patents, copyrights, trademarks etc and emphasize on it’s significance for growth of high-potential next-gen start-ups especially in the knowledge economy.

IAN Incubator is established by Indian Angel Network (IAN), India’s largest group of angel investors with the support of the Department of Science and Technology to help innovators and start-up technopreneurs convert their innovative technology/business ideas into investible ventures. The IAN Incubator is uniquely positioned to provide investor and industry connects, business mentoring, technical assistance, investment and IP advisories embedding a rich training and development program.

IAN Incubator differentiates in its offering from other players in terms of Quality of Mentoring, Deep understanding of start-ups business lifecycle, Improve the ability of start-ups to attract funds and a very effective core team with track record of start-ups development. The incubator focuses on a range of areas including are Software and Hardware, Patentable Products, Gaming & Animation, Internet/Web technologies, Telecom, Mobile/VAS, Cloud Computing, Cleantech, Healthcare, Retail and Education technologies.

Speaker
Sameer Rastogi, Partner, India Juris : Mr. Rastogi has more than 14 years of experience on advising and representing clients from almost all the major countries in various business sectors. His membership includes International Bar Association-UK, World Jurist Association-USA, European Association of Lawyers (AEA) - France, Indian Council of Arbitration and Indian Venture Capital Association. He is also president of Society for Technology & Intellectual Property (STIP). He is practicing Advocate and also a registered Patent & Trade Mark Attorney. India Juris is a full service International Law Firm having expertise in Business, Corporate, Litigation, Arbitration and Intellectual Property Laws. India Juris has won ‘Firm of the Year’ award in Labor and Employment category in IFRL Asia Law India Awards 2010.

Date : 27th Nov,2010
Place : Delhi

Registration fees : Rs. 250 per delegate

To register for the workshop, send an email to workshops@indianangelnetwork.com or call at +91-11-40755717. We have limited seats and are purely on a first come first serve basis.
You can also read more about the event at the IAN Incubator's LinkedIn page here:
http://events.linkedin.com/Commercialization-Aspects-IPR/pub/475705

Right to begin: Madras HC on Bajaj-TVS case

Over at the Bajaj-TVS trial, which, yes, is still happening in the city formerly known as Madras, a Division Bench of the High Court has reversed the trial court decision, observing that asking Bajaj to lead evidence first to defend its infringement action against TVS. would be "prejudicial".

In a well-reasoned order discussing the "Right to Begin", the order, which you can read here, offers a refresher course in principles of civil jurisprudence and evidence law, in context of the multiple suits pending between the two parties.

Short Backstory:
Several among you will recall the series of posts on the case on the blog here, a brief read of which will update you on the background of the case. I restrict this post to updating you on this latest development. However, this will require an outline of the facts, which I pare to the bare minimum here:

TVS filed a suit against Bajaj under the Patents Act (sections 105 and 106) seeking a declaration of non-infringement, groundless threats, and compensation. Soon after, Bajaj filed an infringement suit against TVS.

After pleadings in both suits finished, and issues were framed, the first and most critical issue came up in trial: "Who should let in evidence first"?

The Single Judge trying the suits concluded that "infringement being the central theme in both the suits and even though the first suit proceeds on the validity of patent, to arrive at a proper decision, defendant [Bajaj] has to start with letting in of the evidence." Aggrieved by this, Bajaj filed appeals in connection with which the order I discuss today was passed.

Burden vs Onus

This order hinges on the fundamentals of civil procedure. Is the "right to begin" (Rule 1 & 2, Order XVIII, Civil Procedure Code) really a right or a legal obligation of the plaintiff to produce evidence first? For those of you, who like myself, have had some years pass since law school, I summarise from the order the classic difference between burden of proof and onus of proof:

• Burden of proof lies upon the person who has to prove a fact and it never shifts, but the onus of proof shifts.
• Burden of proof would be on a party whose suit would fail if no evidence was let in.
• Burden of proof on the pleadings of a party never shifts to the other party.
• Onus of proof by a party would cease the moment opposite party admits the transaction.
• When he produces evidence in support of his statement, onus would shift on the opposite party to adduce rebutting evidence to meet the case made out by the other party.
• In civil cases, onus of proof is never fixed permanently, but it would fluctuate very frequently.
  

Right to Begin in patent law and trials

In context of this case, the court made key observations, which are in brief below:

1. Nothing in the Patents Act indicates that in case a suit for declaration of non-infringement was filed, the burden is on the defendant to lead evidence to show that there was infringement. Thus, it is the plaintiff's responsibility to produce evidence in support of his case.

2. TVS had first filed a suit against Bajaj in the Bombay High Court, and then followed with a suit in the Madras High Court. Bajaj contended that the causes of action in the two suits were the same, and this - the Madras suit - being filed later in time, could not hold. Here, too, the court held that since TVS had admitted to filing the earlier Bombay suit, it was their duty to establish that the cause of action in Madras was different, and the suit was good in law. Asking Bajaj to let in evidence first was prejudicial, and needed to be remedied.

3. When there are two suits with inextricably inter-linked claims, a joint trial is justified. If a joint trial were ordered, the trial court has the discretion to order which suit evidence should be led first. The normal practice is to open the case by the plaintiff.

4. As it turns out, the original order of the trial court did not suggest that the two suits be joined, or that the infringement suit be taken up before the declaration of non-infringement suit. On the contrary, the trial judge appears to have observed that in normal procedure, the plaintiff should begin first, and that the first suit should be taken up first. However, "[a]fter saying so, there was no further indication in the order about the special circumstances found in the subject case to justify the departure from the normal rule so as to direct [Bajaj] to begin the case."

The upshot was the Division Bench setting aside the trial court order, and directing TVS - the plaintiff in the original suit for declaration of non-infringement - to "begin", i.e., produce evidence first. Next steps shall be watched closely, and duly reported here!

SpicyIP Tidbit: ACTA Final Text released

Thanks to Michael Geist's tweets and IPKat's quick follow up, we have news that the final text of the controversial ACTA has just been released, though it's stated as 'Subject to Legal Review'.
The Department of Foreign Affairs and Trade of Australia has helpfully posted a copy of the text here.

This post is just to announce it's release so that our readers too can go over it, before we go over it in more detail.

Event Reminder : Workshop on Innovation,Creativity and IP Policy at NUJS in association with Max Planck Institute

Since our last announcement about the NUJS Max Planck IP Workshop, we have added a number of new speakers and moderators which promises to make this dialogue a fabulous one! Please find the new schedule annexed below.

 So hurry and shoot an email to me at shayonee@gmail.com to register. Just 3 more days left!

And just in case the registration fee seems to be a problem, do drop in  a line- we will consider waiver in appropriate cases.

         INNOVATION, CREATIVITY AND IP POLICY: AN INDO-EUROPEAN DIALOGUE

A Collaborative Workshop organized by NUJS and the Max Planck Institute on Intellectual Property, Competition and Tax Law

Venue: A two-day program to be hosted at NUJS, Kolkata

Dates: 19-20 November 2010

Day 1- November 19, 2010

I. REGISTRATION-9.00 am to 9.30 am

II. INTRODUCTION AND WELCOME- Prof. Shamnad Basheer, MHRD Chair in IP Law, NUJS, Kolkata & Dr. Henning Grosse Ruse – Khan, Research Fellow, Max Planck Institute for Intellectual Property, Competition and Tax Law, (9.30 am to 9.45 am)

III. INTRODUCTORY REMARKS- Mr. Felix Kahle, Representative, Max Planck Society, India (9.45 am to 10.00 am)

IV. KEYNOTE ADDRESS –PH Kurian, Controller General of Patents and Trademarks (10.00 am to 10.30 am)

V. THEMES

1. INNOVATION, TECHNOLOGY TRANSFER AND NON MAINSTREAM INCENTIVES

This session will explore the key challenges in innovation and technology transfer. It will also discuss non-mainstream incentives for innovation such as utility models and liability rules.

SPEAKERS

Duration of the Panel: 10:30 am to 1.30 pm

i. “Intellectual Property Protection, Innovation Policy and Academic Technology Transfer– The German Experience” (Ms. Andrea Wechsler, Research Fellow, Max Planck Institute for Intellectual Property, Competition and Tax Law)
ii. “Innovation and Technology Transfer at European Universities: Lessons Learnt” (Ms. Agnieszka Kupzok, Doctoral Candidate, International Max Planck Research School for Competition and Innovation)
iii. “Utility Models Instead of Patents” (Mr. P.H. Nishantha Sampath (Doctoral Candidate, Munich Intellectual Property Law Center)
iv. “Recalibrating Pharmaceutical Innovation and IP policy” (Prof. Shamnad Basheer, MHRD Chair in IP Law, NUJS, Kolkata)

Moderator: Mr. Sudhir Ravindran, Founding Partner, Altacit Global

COFFEE BREAK -11.30 am to 11.45 am

LUNCH-1.30 pm to 2.30 pm

2. COMPETITION LAW AND INNOVATION POLICY

A carefully calibrated competition policy ensures that the markets remain healthy and open to new ideas and entrants. Europe has traditionally been much more open to the deployment of competition law to open up the “innovation” space. Indeed, it has used instruments such as the essential facilities doctrine to curb the foreclosure of secondary markets using IP. Given that India is coming to grips with a new competition regime now, it becomes important to ask as to what lessons Indian could learn from Europe in this regard.

SPEAKERS

Duration of the Panel : 3:00 pm to 5:00 pm


i. “IP, Competition and Innovation Related Agreements”(Mr. Mark Oliver Mackenrodt, Research Fellow,  Max Planck Institute for Intellectual Property, Competition and Tax Law)
ii. “IP, Competition and Refusals to Licence” (Dr. Mathias Lamping, Research Fellow, Max Planck Institute for Intellectual Property, Competition and Tax Law)
iii. “Competition Law and Innovation/Development Dilemma in Developing Countries” (Dr. Mor Bakhoum, Research Fellow, Max Planck Institute for Intellectual Property, Competition and Tax Law)
iv. “Competition Law and IP: The Indian Interface”, (Mr.Rahul Singh, Associate Director, Legal Education Directorate)

Moderator : Justice Pinaki Ghosh, Judge, Calcutta High Court

Day 2- November 20, 2010


3. COPYRIGHT, CREATIVITY AND DEVELOPMENT

This session aims to explore the nexus between copyrights and creativity, particularly in the context of the internet and social networks. It will also attempt to place the debates within a “developmental” framework.


SPEAKERS

Duration of the Panel: 10.00 am to 1.30 pm

i. “Prosumers and Copyright Law” (Prof. Maximilian Haedicke, Chair Professor of Intellectual Property and Competition Law, Albert-Ludwigs University,Freiburg)
ii. “Copyright Law in India: Challenges for Development” (Prof. NS Gopalakrishnan, MHRD Chair in IP Law, Cochin University of Science and Technology, Cochin)
iii. “The Recent Copyright Amendments: An Inside Perspective” (Mr. GR Raghavendar, Registrar of Copyrights, Copyright Board, India)
iv. “Social Networks and Copyright Issues” (Mr. Rajendra Kumar, Partner, Kumaran and Sagar)
v. “Copyright Law in the Digital Era” (Mr. Ranjan Negi, Partner, Amarchand Mangaldas and Suresh A. Shroff & Co., New Delhi)


Moderator: Prof. Anirban Majumdar, NUJS

COFFEE BREAK -11.30 am to 11.45 am

LUNCH-1.45 pm to 2.45 pm

4. INTERNATIONAL TRADE AND INNOVATION POLICY

Innovation cannot be discussed without taking into account the dynamics of international trade. Indeed, optimal innovation policy cannot be divorced from the realities of the global market and the possibilities that it throws up for internationalization of policies.


SPEAKERS

Duration of the Panel: 2.45 pm to 4.45 pm

i. “TRIPS, FTA’s and BITs: Impact on Domestic IP- and Innovation Strategies in Developing Countries” ( Dr. Henning Grosse Ruse – Khan, Research Fellow, Max Planck Institute for Intellectual Property, Competition and Tax Law)
ii. “TRIPS and Indian Patent Law” (Prof. VK Unni, Assistant Professor, Department of Public Policy and Management, IIM, Calcutta)
iii. “Indian IP and International Trade” (Mr. Madhukar Sinha, Center for WTO Studies, Delhi).
iv. “Redesigning the Global Innovation Architecture for the 21st century: A Critical Approach to the Notion of Minimum Mandatory Limitations and Exceptions to IP Law in the Post-TRIPS world” (Mr. Yogesh Pai, Assistant Professor, Faculty of Law, NLU, Jodhpur.)

Moderator: Mr. CH Unnikrishnan, Mint

COFFEE BREAK: 5:00 pm to 5:30 pm

VOTE OF THANKS: 5.30 pm onwards