GIIP announces Executive Post-Graduate Program in Patent Protection, Enforcement and Management at Bangalore

(Image obtained from here)
The Global Institute of Intellectual Property (GIIP: an institute that offers IP related courses adhering to international standards) is soon going to offer what promises to be a very useful full-time Executive Post-Graduate Program in Patent Protection, Enforcement and Management.

AIM: The program intends to provide professional skills in the field of patents, with a curriculum designed to train and translate knowledge gained into practical application, so that a person, following successful completion of the program, becomes equipped with the skill-set necessary to be an asset to the in-house IP team of a body corporate and engage in matters relating to patents.

PERIOD, VENUE and SCHEDULE: The duration of the program will be 8 weeks (full-time), ranging from February 7, 2011 to April 4, 2011. Classes will be held from Monday to Friday from 10 a.m. to 4 p.m. in Bangalore at Site No. 6, TMR Towers, Level 3, Thubarahalli (500 m. from Kundanhalli Gate on Varthur Road), Bangalore -566006.

ELIGIBILITY: Following people can participate in the program:

• Graduates (science, engineering and any other technical degree) having a minimum work experience of 1 year.
• Post-graduates (science, engineering and any other technical degree).
• Legal professionals (LL.B. & LL.M.) with technical background.

All candidates must have sufficient proficiency in English to participate in the Program.
GIIP welcomes Corporate participation and/or Employee Nominations.

NOVELTY: Among other things, the 240 hours long program curriculum covers as many as 3 jurisdictions viz. India, EU and USA, focusing on technical, legal and commercialization aspects of patents. The participants will also receive one-on-one tutorials and mentored guidance from experts in the subjects, and interactive teaching sessions comprising illustrative case-study methods and special sessions relating to personality development, writing and presentation skills. They will be assessed on multiple fronts, including classroom assignments, group discussions and final examination.

APPLICATION AND SELECTION PROCESS: Application forms for the Program can be obtained from here and filled-up forms should be sent to admissions@giipinfo.com. The selection is based on merit, personal interview and written examination (optional).
For Corporate Nominations, one can contact giip.delhi@giipinfo.com.

PROGRAM CONTENT: Following are the modules offered in course of the Program:-

A. Introduction:

• Introduction to IP – History, Concepts and Types;
• International Treaties and Conventions for Protection of IP;
• Trademarks- Act and Filing Procedure
• Copyright - Act and Filing Procedure
• Trade Secrets
• Patent: Statutes/Acts (India, US & Europe)

B. Patent Protection:

• Filing Procedure in US, Europe and India
• International Patent filing system(PCT)
• Patentability Analysis
• Prior Art Searches
• - Freedom to Operate study
• - Exposure to paid databases such as QPAT, Thomson Innovation, STN, Patent Insight pro etc.
• Patent Landscape and Analysis
• Drafting of patent Application
• - Claims Drafting
• - Specification drafting
• Patent Prosecution Procedure and strategies- Responses to office actions

C. Patent Enforcement:

• Patent Enforcement rights in various Jurisdiction
• Enforcement Readiness(validity)
• Working and maintenance of patents
• - Revocation of patents
• - Restoration of patents
• - Compulsory Licensing
• Reissue and Re-examination of patents
• Pre and Post Grant Opposition
• Pre litigation strategies Patent Litigation
• - Infringement
• - Claims construction
• - Doctrine of equivalence
• - File wrapper
• - Damage Calculations
• Post Litigation(Appeal process)

D. Patent Management:

• Strategies during patent prosecution
• IP Valuation techniques
• IP Portfolio Audit and Management
• Commercialization of Patents
• - Contractual Licensing
• Role of Patents in identifying business opportunities

IMPORTANT:

• The program follows case study based method of teaching and will involve extensive hands-on exercises, critiquing and feedback sessions by program mentors. Focus will be on Software, Electronics, Mechanical, Chemical and Drugs related patents.
• The last 2 weeks of the program are dedicated for subject specialization, mentoring and examinations.
• Education Loans for the Program can be availed from leading banks and financial institutions.
  

GIIP's curriculum is enriched through affiliation & partnership with reputed institutions and individuals such as:

• Silicon Valley Seminars Inc. (http://www.patentseminars.com/),USA
• University of Washington, CASRIP (http://www.law.washington.edu/casrip/), USA
• William Mitchell College of Law (http://www.wmitchell.edu/), USA
• Recognized and practicing IP Attorneys, Practitioners and Experts from US, Europe and India

Madras High Court admits PPL’s appeals and vacates ‘stay’ granted to SIMCA against Copyright Board order

In an order on the last day before the X’mas vacations the Madras High Court admitted the appeals filed by PPL against the Orders of the Copyright Board in the compulsory licensing dispute. We had blogged about this move over here. The radio stations had initially challenged PPL’s appeals on the grounds that the Madras High Court did not have the jurisdiction to hear the appeals. The provision in question, i.e. Section 72 of the Copyright Act, 1957, allows the Appellant to file an appeal against the Copyright Board in the jurisdiction where the appellant is carrying out his own business. In the present case PPL had contended that it was doing business within the Madras High Court. The radio stations tried to oppose this on the grounds that the present appeal should have been filed before the Bombay High Court because PPL had preferred this jurisdiction the previous time they had filed an appeal against a decision of the Copyright Board. The High Court obviously shot down this argument and held that since there was no dispute that PPL was carrying out business in Madras, the criteria of Section 72 was fulfilled thereby paving the way for PPL’s appeals to be admitted.

Image from here.

PPL had also filed an application for a stay of the Copyright Board judgment. The Madras High Court however refused to grant such a stay since PPL was unable to convince it of the need for such a stay.

Surprisingly, the Court also vacated its earlier stay of the Copyright Board Order with respect to its application against SIMCA and Super Audio. We had blogged about the initial stay over here. The surprising factor in this order is its scanty reasoning which is limited to a mere 5 lines. Given the completely different fact situations between PPL’s request for a ‘stay’ and SIMCA request for ‘stay’ the Madras High Court should have passed a more detailed order especially since the Delhi High Court has stayed the operation of the Copyright Board with respect to T-Series which like SIMCA was not heard by the Copyright Board before orders had been passed against it.

Here's hoping these litigants learn to make love and not war, this coming New Years! We wish our readers a fantastic 2011 - may the force be with you! Don't drink and drive and oh yes, be safe - issued in public interest.

2nd IPR Researcher's Confluence at IIT Bombay!!

Shailesh J. Mehta School of Management (SJMSOM) , IIT Bombay will be hosting the 2nd IPR Researcher's Confluence during February 11-12, 2011.

The confluence is an attempt towards creating an environment where people interact, share and unlearn to learn new concepts, appreciate issues and brainstorm to identify suitable approaches to the problems raised. This year's theme has been titled as Paradigm of IPR in the Digital Context , which tried to understand the literal linkage between digital technologies,legal and business in the digital context.

Original articles in the relevant areas of IPR discussing the changing paradigm are thus invited. However, articles need not be limited to the theme of the confluence. Articles in the generic IPR space are also invited.

Partial List of Confirmed Experts include:

Prof. N.S. Gopalakrishnan of CUSAT,

Prof. Damodaran of IIM Bangalore,

Prof. Vivekandanan of NALSAR,

Dr. Parasu Veera U. of Reliance Industries,

Dr. Raj Hirwani of URDIP CSIR

Dr. Kalyan Kankala, Brainleague IP services

Mr. Krish Ashok , TCS Innovation Labs

Important Deadlines:

Submission of Papers -  January 05,2011
Acceptance Notification - January 11, 2011
Date of Confluence - February 11 -12, 2011 

The Call for Papers is available here.

Registration Details:

Students and Researchers - Rs.1500/- [Rupees One Thousand Five hundred Only]
Others - Rs. 2500/- [Rupees Two Thousand Five Hundred Only]

 
Mode of Payment: Demand Draft in favour of "The Registrar, IIT Bombay", payable at Mumbai. 

For a purview of the confluence, see here .

For registration, please click here.

Accepted students and full time researchers who present their work would be eligible for travel grant.

Limited accommodation [shared] in IIT Bombay hostels are available for those who register on a first come first served basis.

For more updates, please keep an eye here.

Progress(?) in international effort to tackle pandemics

The  'Open Ended Working Group" on Pandemic Influenza Preparedness recently completed its 2nd meeting and has resulted in some breakthroughs in the long standing effort by nations to prepare a framework for tackling pandemics, especially for poorer countries which do not have the capacity to develop or receive vaccinations. As usual, there is a developing - developed country divide on certain issues. [William New of IP Watch has an interview with a key negotiator of these meetings here.] The issue which they've gotten together to resolve is that currently there is a total capacity of manufacture for 1 billion people only, leaving the other 5.8 billion in the lurch. [Image taken from here]

The main goals of the meetings are to examine how nations are best able to cope with future pandemics and other health crises, and as a part of this, very importantly, WHO's work on creating a virus and other pandemic related benefit sharing mechanism. Prior attempts at constructing such a framework usually came across a lot of friction regarding the Standard Material Transfer Agreement (SMTA), however this time, IP Watch reports that countries came to the table ready for more flexibility regarding who would be bound by the SMTA. (Previously, the friction was regarding whether it would be mandatory to share benefits or remain optional, with developing countries worried that this being voluntary would render too much uncertainty for them). Developed countries seem to still be unwilling to commit to this, despite the recent Nagoya protocol (of the CBD). There also seems to be issues with the IP provisions, as well as transparency.  Sangeeta Shashikant of Third World Network reports that developed countries have taken a rigid stance on a range of issues including benefit sharing, IP and transparency which indicate that they're interested more in protecting their industries, and their access to treatment in case of a pandemic - which, if true, is not at all surprising. 

Interestingly, US's ambassador Betty King has said that India currently produces 70% of the world's vaccines. This isn't a fact that I've verified, but if true, as she pointed out, it should also mean that the nations should be concentrating on drug transfer and delivery systems, since a concentrated bloc of vaccines in one part of the world means it's much harder to send those drugs to the other side of the world - an issue that the EU hopefully recognises. I'm referring to the oft-raised issue of drug seizures that the EU officials recently claimed has now been resolved - a claim which time will hopefully verify. 

INTA - Trademark trailblazers - 12th February, 2010

Despite the surge in the domestic economy, home grown brands are slow in registering their trademarks overseas and lack robust brand management strategies. It is important to expose Indian brand owners to international trends in trademark law in order for them to better compete with other brands at the global level.

At Trademark Trailblazers in India, taking place February 12 in Mumbai, you’ll receive updates on global developments and local trademark issues and learn cutting edge strategies on leveraging a brand’s most valuable asset–trademarks!

Leading experts will discuss:

* Best practices in brand management strategies.

* Developments in trademark rights management in sports and entertainment.

* New trends in protecting geographical indications.

* Implications of advancements in the virtual world.

* Considerations in parallel import issues.

* Global standards of registration via the Madrid Protocol.

Meet and network with leaders of the trademark community and adapt valuable brand building strategies. For more, see here.

Copyrighting a Wrong and Injecting Fairness into Bollywood

A Parliamentary Standing Committee recommendation that music composers and lyricists are to get an equal share of all revenues that flow from the commercialisation of film music has stirred a hornet's nest.

Bollywood producers are now threatening to strike against this provision and apprehend that if this provision converts to law, they will be forced to shut down! As we debate the pros and cons of this historical provision, we need to ask ourselves a fundamental question. What is the "law" really about? Isn't it about fairness? About justice?

In the "Idea of Justice", a book slated to become a classic, Amartya Sen acknowledges the futility of searching for a perfectly just world. However, he argues that, as human beings, we are often moved to remedy immediate injustices wherever we find them. I quote:

"In the little world in which children have their existence, says Pip in Charles Dickens's Great Expectations, "there is nothing so finely perceived and finely felt, as injustice."

I expect Pip was right....but the strong perception of manifest injustice applies to adult human beings as well. What moves us, reasonably enough, is not the realisation that the world falls short of being completely just--which few of us expect--but that there are clear remediable injustices around us which we want to eliminate.

It is fair to assume that the Parisians would not have stormed the Bastille, Gandhi would not have challenged the empire on which the sun used not to set, Martin Luther King would not have fought white supremacy in the "land of the free and the home of the brave", without their sense of manifest injustices that could be overcome. They were not trying to achieve a perfectly just world, but they did want to remove clear injustices to the extent that they could."

Bollywood is one clear instance where there is "injustice" writ large ..where the creative wares of many an artist are whisked away for a one time lump-sum pittance, while the producer who merely packages and markets the wares walks away with the lion's share of the proceeds. Unfortunately, in this fine world of free will that we live in, producers never thought it fit (for the most part) to share the benefits of the booty with those whose creative juices helped fill their coffers. So much for the freedom of contract!

I document some instances and even a contractual clause to this effect in an editorial piece that I wrote for the Indian Express sometime back. For more legally nuanced arguments on this issue and our recommendations in this regard, see our submissions to the Standing Committee. Tellingly, even Mukesh Bhatt, a film producer and executive VP of the Film Producers' Guild admitted in a recent CNN-IBN interview that composers: lyricists were never treated "fairly" in Bollywood.

Copyright is about creativity..indeed, it aims to foster the creativity of the content creator, and not line up the pockets of the funder/packager at the cost of the content creator. To my mind, even a 50% split seems unduly skewed in favour of someone who merely pumps in the moolah. However, the standing committee decided, in its infinite wisdom, that if film music were to be exploited in any other form other than as part of the "film", the proceeds of such exploitation were to be split equally between the lyricist, music composer and the film producer. In other words, a 50:50 split of the profits between the content creator and the content funder/packager. Seems like more than a fair provision to me. In fact, similar provisions ought to be transposed to other contexts such as book publishing, where authors are often at the receiving end of a paltry single digit royalty sharing percentage!

Bollywood producers wail that such a provision will lead to bankruptcy and a closure of the industry. A quick look at European countries such as Germany where similar provisions in favour of artists have lasted several years without necessarily throwing producers into penury should serve to assuage their concerns.

However, this issue is not just about logic and fairness. It is also about status quo...and an industry that has got away with too much..too easily...and is now thoroughly rattled and unsettled that a party (read "Javed Akthar") with considerably weaker muscle and money power got the better of it and managed to appeal to an innate sense of fairness that lurked beneath an otherwise impervious exterior of our government and Parliament. A clear moral victory, as one might say! And one that reveals that in a country obsessed with "fair and lovely", the concept of fairness is not merely skin-deep.

ps: On a related note, it bears mention that this one man crusade by Javed Akhthar against an entire industry could not have been successful, but for the excellent counsel of two outstanding IP lawyers, Ameet Datta of Luthra and Luthra and Sai Krishna Rajagopal of Sai Krishna Associates. And the unflinching efforts of some good hearted government officials and Parliamentarians who saw this as the right moment to revolutionise Indian copyright law for the better.

The debate on the Copyright Amendment Bill, 2010 to spill out on the streets of Delhi

In what must be a first for Copyright Law in India, film producers across the country have announced a one day strike, on the 6th of January, 2011, during which they shall carry out protest marches in New Delhi against the proposed amendments, to the Copyright Act, 1957, which not only promise greater royalties to composers and lyricists but also bar assignments of copyrights to producers. In addition to the strike, the Film Federation of India, the mother body of all film associations, has banned its members from working with noted lyricist Javed Akhtar.

Javed Akhtar, one of the most sought after lyricists in Bollywood, is widely credited as the one man lobby pushing for the amendments, to the Copyright Act, which aim at correcting some rather inequitable historical anomalies. An interview with Mr. Akhtar is available here on the CNN-IBN website as also the DNA website. An editorial from the Indian Express supporting the amendments is also available here. Image from here.

There are already rumblings on constitutionality of the proposed amendments especially the bar on assignments. Lawyers for the producers claim that the amendments violate the freedom to contract under Article 19(1)(g) of the Constitution. Apart from the fundamental right arguments there is also the Article 300A, property right argument which requires Parliamentary legislation to conform to a reasonable standard while regulating property rights. However this is a constitutional right and not a fundamental right. Nevertheless the State will have to establish an overwhelming reason to justify a complete bar on assignments of copyright. It is one thing to regulate royalties but it is a completely different game when barring assignments of any sort. To draw a crude analogy to tangible property, it is reasonable for Parliament to regulate rents payable by a tenant for the use of a house but it is a completely different proposition for Parliament to state that the owner of the house cannot sell it.

Presuming that these amendments get through we still have to ask ourselves how they will play out in reality. It is all well to have statutes prescribing strong rights for lyricists and composers but will these same people be able to enforce their rights before the Copyright Board or the District Courts? If India’s experience with social justice legislations, such as minimum wage legislations, is anything to go by it is but obvious that well-meaning legislations such as the one under discussion need to be complemented by a strong collective bargaining power. Unfortunately the entertainment sector in India seems to lack a tradition of collective bargaining. Contrast this with the strong unions in the U.S. and Europe. For example the famous ‘Writers Strike’ in 2007-2008 carried on for more than 4 months by the Writers Guild which consists of script writers etc. for Hollywood. The strike caused major losses and drove the industry to a stand-still but at the end of it the Writers Guild did manage to win substantial benefits for its members. Even in countries like France and Germany, the key to justice, has been the strong collective bargaining tradition by artists and performers who provide their members the means to negotiate equitable contracts.

The lyricists and composers in India will therefore need to organize themselves to protect themselves. Javed Akhtar may have pulled of a miracle by getting the present amendments through but let’s face it, there is only so much one man can do.

Copyright Act Standing Committee Report:Technological Protection Measures

In the next few posts, I will be covering various aspects of the Parliamentary Standing Committee's report on the proposed amendments to the Indian Copyright Act. I will try and highlight the key points discussed during the committee proceedings with minimal analysis, and provide links to our earlier discussions and posts on the concerned issue. I hope to present the different industry positions and lobbying strategies, in the name of transparency.

In this post, I will be covering the issue of 'Technological Protection Measures (TPM's)'.

Background:
For those interested in a little background, you can read our earlier few posts on the issue (here, here and here). Essentially, TPM's, as the name suggests, are technological devices that restrict the use of digital files in several ways – they can prevent copying, altering, sharing, saving, printing etc. - digital activities that the copyright holder might want to prevent. TPM's are like sheaths or protective coverings around your digital files, to provide a more pictorial description. To make TPM's effective, governments enact anti-circumvention laws, that prevent consumers from bypassing such digital locks. The objective: to curtail illegal sharing and unauthorised use of files. The biggest concern: restriction of consumer and fair use rights.

Proposed Amendment:
Section 65A seeks to make circumvention of such technological protection measures a criminal offence, with imprisonment for a maximum period of two years. Section 65A(2) however, provides various exceptions, enumerating permissible acts of circumvention.

Increasing term of imprisonment:
Interestingly, the Indian Broadcasting Federation (IBF) recommended enhancement of the prison term from 2 years 3 years for first offence, 5 years for second offence and that all offences should be made cognizable and non-bailable. Just to provide a comparison, under the DMCA, if the circumvention violations are determined to be wilful and for commercial or private financial gain, first time offenders may be fined up to $500,000, imprisoned for five years, or both; for repeat offenders, the maximum penalty increases to a fine of $1,000,000, imprisonment for up to ten years, or both. Thus, on the face of it, the suggestion seems fair, although the biggest problem with this in my opinion is that there is no gradation of offences based on the scale and nature of circumvention.

Absence of Civil Remedies:
Flowing from the previous point, the bigger issue however is the absence of civil remedies in such cases. Under the DMCA for example, there is a provision for both civil and criminal penalties, based on the commercial nature of the activity and whether it was wilful. Luckily, this was pointed out by several parties in the proceedings. Google for example, wanted the act of unlawful circumvention to be made a civil wrong punishable by damages and not a criminal offence. The IBF and the Business Software Alliance also supports this. Of note is the fact that with a provision for criminal and civil liabilities, it would be in conformity with the WIPO treaties.


Maintaining records:
Google was not in favour of this requirement contained in the proviso to S.65-A(2)(a), wherein a person facilitating circumvention is required to maintain records. While this may appear harmless, the sheer amount of time and energy wasted in cases that are clearly permissible under the Act is clear. Also, there is nothing in the amendment stating the effects of failure to maintain such a record. Thus, Google's position to do away with this requirement entirely, appears reasonable

Manufacture and Distribution of anti-circumvention devices:
The other issue was in respect of distribution and manufacture of devices and software used for circumvention, and whether it should be made a criminal offence. Many feel that this would obstruct the development of such technologies, that may be useful in the future. For example, we all heard the loud protests after the arrest of the Indian engineer, Hari Prasad, for exposing technological flaws in the Electronic Voting Machines, allowing them to be compromised. If the EVM's contained TPM's and Hari Prasad distributed such software, he might have been held criminally liable under S.65-A. Thus, there is scope for misuse of such a provision, and this must be kept in mind as well.

Restriction of consumers' fair use rights:
Thankfully, there were some participants who found the unnecessary restriction of fair use rights to be unfair and even raised the point during the proceedings. Yahoo! India reiterated most of the common arguments against inclusion of TPM's and anti-circumvention measures. However, based on the minutes, it appears that it was in the minority with industry representatives pushing for stricter provisions. One of the major problems with TPM's, as I had mentioned in an earlier post, is the possibility of extra-legal measures being introduced in the guise of TPM's. However, the phrase, “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” appears to have addressed this concern. Even so, Yahoo's point appears valid in circumstances where fair use rights are indecisive and TPM's cause unnecessary hurdles for the user (for example conversion of works to all formats for persons with disabilities).

Proving Intention and Burden of Proof:
The Indian Broadcasting Federation (IBF) also suggested that in any case of circumvention, the presumption such be that there was intention to infringe. This would shift the burden of proof on the infringer to establish that there was (a) no intention to infringe (b) that it falls within the scope of clause (2) of the section providing exceptions. It is interesting to see to the necessary ingredients required to establish intention in such cases. I for one, am curious to know the extent to which courts will equate knowledge with intention in cases of circumvention, based on knowledge of probably consequences, since this might involve considerable technical understanding. RPG Enterprises-Saregama considers the provision to be 'vague' and hence it would be difficult to establish intention.

Interestingly, there were several calls for the provision to be redrafted so as to make the very act of interfering with technological measures itself an offence (from the Indian Music Industry & Indian Performing Right). This appears to be a suggestion to eliminate the need to prove intention and to create a strict liability offence. The Indian Performing Right Society made an interesting claim by saying that Section 65-A did not actually create a new criminal act, since an attempt to infringe copyright was criminally punishable anyway. However, such a view appears disjointed to me since the point of Section 65-A is to provide legal recognition to the idea of technological protection measures and its insertion by copyright owners, and thereby, the offence of anti-circumvention, which wouldn't be permitted before such an amendment.

Standing Committee's Recommendation:
The Standing Committee, took note of experience of developed countries and conceded that inclusion of TPM's had caused a significant blow to innovation, access to public works, fair use rights and in general, had proven to be a hindrance. Thus, the Standing Committee suggested that the Indian judiciary should evolve the law based on practical situations, keeping in mind the larger public interest of facilitating access to work by the public. It also acknowledged that many terms had been left undefined, but stated that this was deliberate, given the complexities faced in defining them. Thus, it appears that the Committee recommends minimal legislative interference in the proposed amendment to Section 65-A and rather that there should be judicial scrutiny as and when required to create rules and guidelines based on current trends and requirements.

Though the Committee's view appears balanced and well though-out, it is disappointing to note that that there were only a few calls for the deletion of Section 65-A in its entirety, given the terrible experience of such provisions in developed countries across the world. As always, readers' comments are welcome.

First GNLU-Y. J. Trivedi Annual IP Essay Competition

We are pleased to inform you that GNLU in collaboration with the Y. J. Trivedi & Co., Ahmedabad is organising a National level Annual Intellectual Property Rights Essay Competition 2010-11.

Following are the topics for the IP Essay Competition:

1) IPR: A key driver of business strategy in I.T. Industry
2) Protection of Database: An analysis of international scenario and the Indian Position - the road ahead.
3) The role of Indian Judiciary with special reference to the Global IP Regime.
4) Comparative Advertisement and Infringement of Trademarks: A perspective from Consumers

The rules and regulations and other relevant details maybe found www.gnlu.ac.in
Submission of the entry should be made at ipessay@gnlu.ac.in on or before 25th February, 2011.

IMRSCI announces Second Workshop for Junior Researchers on the Law and Economics of Intellectual Property and Competition Law

(Image taken from here)
Followers of Spicy IP may be interested to know that the International Max Planck Research School for Competition and Innovation (IMRSCI: A joint initiative by the Max Planck Institute for Intellectual Property and Competition Law as well as the Department of Economics, the Munich School of Management, and the Faculty of Law of the Ludwig Maximilians University of Munich) and the Professorship for Intellectual Property at ETH Zurich have decided to jointly host the Second Workshop for Junior Researchers on the Law and Economics of Intellectual Property and Competition Law.

The workshop will see junior researchers from law and from economics discussing their own research projects and exchanging ideas, which will be commented upon by senior professors from the departments of law and economics in Europe and U.S.A. Commentators include faculty of both hosting institutions as well as Professors Dan L. Burk (University of California at Irvine), Michael Meurer (Boston University), and Timothy Simcoe (Boston University).

For junior researchers from economics, research projects should relate to industrial organization, competition, innovation and/or intellectual property and may include formal models as well as empirical or experimental approaches. For junior scholars from law, research projects should relate to intellectual property and/or competition law and must use law and economics as a research methodology. In order to achieve a good international mix of workshop participants, submissions from researchers from outside Europe are particularly encouraged.

Place: The workshop will be held in Wildbad Kreuth, a lovely region one hour south of Munich, Germany.

Fees: The organizers will fund travel and hotel expenses for all invited workshop participants.

Application Instructions: Excellent junior researchers (doctoral students, post-docs, research fellows and assistant professors) from law and from economics are invited to submit their application online here. After registering a user account, please fill out the “New submission” form. You must attach an extended abstract or a draft pa-per (“Upload Paper”, PDF or Word) as well as a curriculum vitae with a list of two references (“Attachment”, PDF or Word) in order to complete the submission. Incomplete submissions will not be accepted; reference letters are not required at the time of submission.

Important Dates: The workshop will take place from June 5 to June 7, 2011. The submission deadline is February 28, 2011. Notifications of acceptance will be sent out by March 21, 2011. Papers are due for circulation among workshop participants and commentators on May 15, 2011.

Contact Person: Any further question concerning the workshop should be directed to Prof. Stefan Bechtold, sbechtold@ethz.ch, phone: +41-44-632-2670

Delhi Metro Rail Corp. v. Sudhir Vohra: State’s Copyright not exempt under RTI Act

In the present petition, the Delhi High Court day before yesterday (December 24th 2010) rejected the contentions of the Delhi Metro Rail Corporation (DMRC). DMRC had refused to disclose the design of the Metro Pillar sought by an RTI applicant.

Facts: The Respondent, Mr. Sudhir Vohra is an architect who sought the designs of the Metro Pillar No. 67, which collapsed on 12^th July, 2009 killing seven. The Central Public Information Commissioner and the Appellate Authority rejected Mr.Vohra’s contentions. The Central Information Commission however accepted Mr.Vohra’s contentions. This was appealed against in the Delhi High Court before Justice. S. Muralidhar by the Petitioner, DMRC.

Contentions: Apart from mainly claiming for an exemption under Section 8(1)(a) of the RTI Act (which exempts disclosure of information on grounds of security of the State) DMRC also claimed exemption under Section 8(1)(d). The latter Section exempts disclosure of “information including commercial confidence, trade secrets or intellectual property, the disclosure of which would harm the competitive position of a third party”, unless there is a larger compelling public interest.

Judgment: The judge held that in this instance disclosure will not affect the competitive position of any third party. The court also noted that the Respondent was a professional architect and had sought the information for academic purposes; for studying and analysing the failed design. It must also be noted that the DMRC has accepted that the design was faulty and has decided to discontinue its use.

Most importantly the court held that “seeking information about a design under… the RTI Act is independent of the rights of DMRC to enforce its copyright in the said design.”

The Court supported this with a reading of Section 9 of the Act. Section 9 provides that an Information Officer can deny information if it involves an “infringement of copyright subsisting in a person other than the State.” DMRC contended that the Information Officer under Section 9 could reject the request for information, if it involved a copyright even if the information pertained to copyright vesting in the State (DMRC).

This Court rejected DMRC’s contention in relation to Section 9. The judgment noted that the words “other than the State”, at the end of Section 9 reflects the legislative intent that the exemption from disclosure is available only if the disclosure involves infringement of the copyright of a person. There can be no discretion to refuse if the copyright is subsisting in the State. The Court thus held that “the DMRC cannot refuse information sought even if it might involve infringement of its copyright in the design”. It was added that the DMRC can protect its copyright on the design under copyright law.

Conclusion: The Right to Information Act is a revolutionary legislation empowering the common man. It has become all the more important in the light of recent scams. Any attempt to go around the legislation needs to be struck down. The Copyright Act is a self-sufficient legislation consisting of remedies for infringement. There is no need for additional protection of copyright held by the State. The Delhi High Court has rightly struck down the present petition. In the present case, the design of the pillar was already on the Internet in the public domain. Mr. Vohra merely wanted the DMRC to confirm that the design in the public domain was the design of the pillar that collapsed.

Click here for the judgment on indiakanoon.

Click here for the RTI Act.

Images from here and here.

We would like to thank Mr. SK Mohanty for passing on this info to us.

SpicyIP Tidbit: Bennett Coleman appeals Financial Times order

An update via Mint, we hear that Bennett Coleman Co. Ltd. (BCCL) has appealed against the 15 December 2010 order of a Single Judge Bench of the Delhi High Court which refused to stay an infringement suit filed by the Financial Times Ltd. (London).

Readers will recall a post we'd run some days ago in the matter, which you can read here. The Mint story reports that the appeal has been admitted by a Division Bench of the Delhi High Court, and the matter has been listed for final arguments on January 3, 2011.

By way of additional detail in the matter, Mint quotes a senior BCCL official:

The actual matter is before a court in Bangalore and “The Financial Times title is registered with the office of the Registrar of Newspapers for India (RNI) and Times group still brings out the paper”.

Clearly, we haven't heard the last of this yet!

Guest post - Must law lag behind in innovation? : The need to encourage legal entrepreneurship

Ramanuj Mukherjee is a fifth year student of NUJS, Kolkata. He is the founder of iPleaders Legal Risk Management Services which works with start-ups. He blogs at A First Taste of Law .

Start-ups are ventures that question the existing business wisdom. Most people create start-ups because of two reasons – they are insomniacs, and they can't find a place or can't fit into conventional businesses. Also, usually they are short on cash in the beginning at least. The last decade has been the decade of conspicuous start-ups – the technology companies established in rundown garages became giant corporations like Microsoft, Ebay and Google. However, start-ups have always been there – coming from no-where, engaging in trade that others would not touch or did not think of, minting money in the process. Let's confess: we love start-ups because of the rags to riches stories.

India should have been a fertile place for start-ups that way – most of us are in rags, and we dream in copious amounts. However, apparently most of our dreams are about bagging the best jobs in the world rather than bootstrapping to start our own companies, so things have not really worked out on the entrepreneurial front until very recently. In the last decade, things have changed bit by bit – until the recession, which worked like a catalyst. Entrepreneurship suddenly seemed much more attractive than ever as job markets dried up. The most convincing evidence of changing entrepreneurial landscape in India can be found in the popular culture – movies like recent 'Band Baaja Baarat' (2010) (story of two college grads' entrepreneurial venture in the marriage ceremony management market) or 'Rocket Singh – Salesman of the Year' (2009), books like Rashmi Bansal's 'Stay Hungry, Stay Foolish' that made to bestseller lists and numerous TV programs on startups bear testimony to that. Starting up is on the top of 'to-do' lists of the brightest kids at the IITs and IIMs these days. Fests at these places are incomplete without a business planning competition.

Entrepreneurship has been the key to success for almost every lawyer – only the rules are different in case of litigators and law firms. The lawyers who don't understand business require rehabilitation – generally available in academia and government jobs. Although often such entrepreneurship involves wrestling over clients, petty politics, paying bribes and everything dishonorable that one can imagine, but it's business nonetheless. Clean business happens when the environment is right and forces of free market economics are allowed to play out under right sort of regulation, and the other type flourishes when license raj and intervention is rampant. In either case, a lawyer doesn't get to escape entrepreneurship, unless he goes straight to a law firm/ family practice and settles down, and gets paid well for routine work from the very beginning.

There have been only a handful of people who have formally 'started up’ - in the legal area itself (like Rainmaker, Akosha, various LPOs), or non legal ventures (Mooli's, LST) and even social entrepreneurship (Inclusive Planet). Of course, there are the start-up law firms – in the last two years at least a hundred law firms must have emerged. Trilegal, which was a startup once, is fast catching up with the biggest firms now.

Still, from what I have seen, experienced and studied about the bigger startup scene in India, something is missing when it comes to legal entrepreneurship. And that is innovation. Not enough people are thinking of, let alone working to shower in innovation – there is too much premium on starting another conventional business – be it a law firm, or a coaching center. There is overinvestment in what 'is', rather than what 'could be'. That is why, the legal industry today is a decade behind other professions in technology adaptation. Technology is not adopted for the sake of it, to increase coolness effect, but to increase efficiency and convenience. Increasing efficiency means saving money, creation of wealth. A little tweak here, another hack there can change user experience, client satisfaction, and can generate enormous wealth (if you are not with me yet, think Ebay, or Twitter). This is why the lack of approach of innovation is sad.

What is the true scope for innovation and entrepreneurship in the legal industry in India? The market is not just law firms and lawyers. Legal services are too costly, too inaccessible for the Indian masses. Making a will, for instance, is cheaper and easier in the UK than in India. Anyone can pick up a template from a supermarket in the UK to make his own will. Same for a host of other regularly needed legal documents. These templates are also available online, on CDs, and on do-it-yourself software. In India, the cheapest solution is to find a lawyer in the court area and pay a few hundred for having the document typed, and the lawyer charges usually according to what he thinks the client can pay, which often involves bargaining. After that, the quality of work is suspect, and I being in the legal field myself, find it extremely difficult to find a half decent lawyer at an affordable price for handling cases for my family. Access to quality lawyers and law firms is out of question for 95% of the population.

Services are always a costly model, especially when the service involves substantial skill. Therefore, the primary challenge of the emerging legal entrepreneurs will be to develop product models for providing legal solutions. Their challenge will be to reach the vast majority of Indian citizens who have no access to legal services (or solutions) in the current scenario, nor can they hope to have the same – no matter how grave or important the legal issues they face are – from divorce to succession to contract drafting, raising investment or just taking a loan.

Little of the entrepreneurship skills that a lawyer requires is taught in law school in any way whatsoever. I think that is not surprising, while one can learn business by observing, imbibing through a culture, or just by doing things hands on – teaching business is altogether a different ballgame, assuming it is possible at all. Still, IITs and the IIMs have been the most conspicuous sources of student innovation and entrepreneurship in India. The E-cells and Startup Clubs have helped to bring up a generation of entrepreneurs. Is it not time we think in the similar line for the law schools?

I suggest establishment of entrepreneurship cells in every law school, with enough funds to give seed funding to a few startups every year, from which the entrepreneurial law students can benefit. Basic ecosystem and services such as incorporation, account keeping help, initial training in running a business, access to VCs and showcasing opportunities should be created. This would go a really long way in fostering an effective culture of innovation and entrepreneurship in law schools.

Seasons greetings!!

From Spicyip Team
Click here to view the photo greeting or paste this URL into your browser: http://www.picnik.com/greeting/11375672122_cPbX8 

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Hart Publishing Launches New Titles !

Christmas is here! And so are a whole range of fabulous books by Hart Publishing to keep you merry!

The Common Law of Intellectual Property
Essays in Honour of Professor David Vaver
Edited by Catherine W Ng, Lionel Bently and Giuseppina D'Agostino
Aug 2010    9781841139708;    Hbk;   528pp;    £75
http://www.hartpub.co.uk/books/details.asp?ISBN=9781841139708 books/details.asp?ISBN=9781841139708>

'Expert Privilege' in Civil Evidence
Paul England
Dec 2010;    9781841133034;    Hbk;   £45.00
http://www.hartpub.co.uk/books/details.asp?ISBN=9781841133034 books/details.asp?ISBN=9781841133034>

Intellectual Property Law and Policy Volume 11
Edited by Hugh C Hansen
Nov 2010    9781841139968;    Hbk;   862pp;    £125
http://www.hartpub.co.uk/books/details.asp?ISBN=9781841139968 books/details.asp?ISBN=9781841139968>


International Trade Mark and Signs Protection
A Handbook
Edited by Paul Lange
Jun 2010    9781841139005;    Hbk;   £300
http://www.hartpub.co.uk/books/details.asp?ISBN=9781841139005 books/details.asp?ISBN=9781841139005>
  

And that is not all- Hart promises to give you a whooping 20% discount on these new titles from the retail selling price.

To receive the discount please quote reference ‘IPSPICYIP11’ when placing your order. If you are ordering online then please quote the reference in the special instructions field. The discount will not show up on your order confirmation but will be applied when your order is processed. All enquires should be directed to Hart Publishing Tel: 01865 517530; E-mail: mail@hartpub.co.uk ; Website: www.hartpub.co.uk.

Hope this makes it a real merry Christmas for you!!

An Order for the Times: a tenable TM challenge

The longstanding multi-forum dispute in India between two global newspaper giants The Financial Times Ltd. ('FT') - Bennett Coleman & Co. ('BC') (the people behind The Times of India) is a classic case of using IP as mainstream business strategy to sculpt the growth of an industry.

In the latest in the turf war ongoing since the mid-1980s, the Delhi High Court refused to stay FT's infringement suit merely because BC had filed a rectification petition at the Intellectual Property Appellate Board challenging the validity of FT's trademark. The order discusses the "tenability" of a validity challenge in context of the much-debated S. 124 (Trademarks Act) [which deals with the stay of an infringement suit where the (infringed) trademark's validity is challenged.]

You can download and read the order here.

As ever, a quick backstory:

I gather these snippets primarily from the order, but also from two old articles which discuss FT's and BC's business strategies in India: in Mint and ContentSutra.

[Historically, foreign newspapers have not been allowed direct entry into India (there are still huge restrictions in the industry). As a result, newspapers had to circuitously enter the Indian market. TM registrations would have been one way of blocking their own brands, as well as entering into content sharing agreements with the Indian media, as FT had with Business Standard for several years.]

FT applied for the mark "FT" in India in 1987, which was granted in 1994. I haven't unfortunately seen the plaint, but I make some connections here. About a decade ago, BC's financial daily the Economic Times used to run a periodical supplement which they called The Financial Times, where they may also have used the "FT" moniker. It is likely that this forms the core of the present infringement suit filed in 2001.

In its response to the suit in 2002, BC pleaded lack of inherent or acquired distinctiveness of the FT mark. BC filed for rectification in 2007, and moved the present application under S. 124 in 2010. BC has also in 2010 itself applied for the same "FT" mark.

[Additionally: BC (via its arm, the Times Publishing House) has registered marks including variations on "Financial Times" and "FT". BC also appears to have registered newspaper titles with the Registrar of Newspapers in India, on these same variations.]

The Order

BC argued that when a rectification is moved before the IPAB against a mark which is allegedly infringed, at best the Court needs to be satisfied that the rectification (validity) challenge is, prima facie, tenable and if so proceed to stay the suit. Further, to determine such tenability, BC argued that the court should look at the validity challenge at the time when the mark was applied for (1987), and no later.

FT was in agreement that S. 124 required assessing whether the challenge was prima facie tenable. But this had to be done carefully, in view of any implications it would have on the rectification proceeding itself.

Hypothetically, they argued, in such assessment, if a Court were to accept that the marks were not distinctive, and thus not capable of registration, BC would likely rely on these decisions in the rectification before the IPAB. The IPAB, being a lower Tribunal, would likely accept the Court's opinion, and decide the rectification against FT.

FT also referred to BC's delay in filing the rectification, and how the distinctiveness challenge ought to rebound on BC because they had themselves filed for the mark.

Justice S Ravindra Bhat accepted FT's argument, but pointed out that this was conditional; and that "tenability" played out differently in case of a temporary injunction, and while staying a suit.

"The Court is conscious that this reason cannot be invoked under all circumstances, because Section-124 does empower prima facie examination of tenability. Nevertheless, while exercising that jurisdiction, a fine distinction has to be kept in mind between the nature of “tenability” of such a plea, while considering a temporary injunction motion, and one for stay of suit."

What must have hit BC hard was the Court noting that BC's application for registering FT as a trademark was indicative of their own claim of distinctiveness, and was near-synchronous with the filing of this S. 124 application.

There's a lot more to the FT-BC story than what the order tells us, and it would be great if anyone who has the juice on this could share!

Misuse of post-grant opposition proceedings

A recent decision by the Controller highlights the use (or rather misuse) of post grant opposition proceedings at the IPO.  
In Pfizer Health vs. Ranbaxy Labs. Ltd., the Controller had initially dismissed pre-grant opposition proceedings brought in by Ranbaxy after providing an opportunity and granted the patent. Subsequently, Ranbaxy filed a post-grant opposition  (against Indian patent number 211539) with a written statement and evidence - within the prescribed time limits.  The patentee then filed reply statement and evidence.  Ranbaxy neither filed reply evidence nor attended the hearing. 
While dismissing the post-grant opposition, the Controller observed that Ranbaxy had claimed to be an interested person for filing the post-grant opposition but did not show any interest subsequent to the filing.  
The Controller reasoned, that the post-grant opposition proceedings were misusing the provisions of the Patent Act because, "[T]he purpose of the provision in the Act is defeated when the opponent failed to continue with the post-grant opposition proceedings."  The decision clarified that the scope of a post-grant opposition is much narrower than a pre-grant opposition  where any person may provide information to the controller to decide the fate of the application.  
Finally, the decision cautioned bringing in "frivolous" opposition proceedings because such proceedings, "unnecessarily put more workload on the patent administration, which also creates a suspicion on the opponent for misusing the provisions of the Act.  The opponent should stop this sort of practice in future at least in the post-grant stage for smooth running of the administration."


The decision can be accessed here with patent number 211539.

SpicyIP Announcements: IJIPL Call for Papers

The Indian Journal of Intellectual Property Law is India’s only student run journal that is wholly devoted to intellectual property law. Published annually, it is an endeavour of NALSAR University of Law, Hyderabad in collaboration with the N.C. Banerjee Centre for Intellectual Property Law. The Journal, now in its fourth year of publication, serves as a forum for contributing to the fascinating and burgeoning field of intellectual property law. The Journal aims at not just documenting student scholarship but also serves to boost the intellectual property academia in the country. The force behind the IJIPL is its five member student Editorial Board which is assisted by an Advisory Panel consisting of several renowned experts in the field of intellectual property law such as Prof. John Phillips, Prof. Shamnad Basheer, Praveen Anand and Dr. Peter Ganea. The journal accepts submissions in the form of articles, essays, notes and comments.

The Indian Journal of Intellectual Property Law is pleased to invite contributions for Volume 4 of 2011. The Journal promotes original scholarship and hence all manuscripts sent for publication must contain original thought and research and must be previously unpublished.

The Submissions must be made in accordance with the Submission Guidelines and Editorial Policy found in the ‘submissions’ section of our website: www.ijipl.com

Submissions are to be mailed to submissions@ijipl.com

For any queries please mail: queries@ijipl.com

The last date for submission is February 15th, 2011. Please find attached the poster eliciting submissions.

SpicyIP Events: Consilience - A Conference on Privacy

The Law and Technology Committee (elTek) of the National Law School of India University, Bangalore is hosting ‘Consilience’, a conference where contemporary issues of critical relevance in the field of law and technology are addressed. Past editions of the conference have engaged with a vast spectrum of cutting edge issues such as “Legal Aspects of Business Process Outsourcing”, “Biotechnology and the Law” and “Free and Open Source Software" drawing in on the rich experience of luminaries like Mr. Montek Singh Ahluwalia (Deputy Chairman, Planning Commission), Mr. R. Ramraj (MD and CEO, Sify Technologies Ltd.,), Mr. Richard Stallman (Founder – GNU Project). Last years' conference, the theme for which was "Internet Intermediary Liability in India" has been hailed to have made rich contribution to the evaluation of status quo and the future trajectory of intermediary liability in India by bringing in diverse perspectives from the academia, the industry and other important stakeholders. Some of the keynote speakers at the Conference included Wendy Seltzer (Founder, Chilling Effects Clearhouse and Fellow, Berkman Centre for Internet and Society), Gavin Sutter (Lecturer, University of London ) and Sunil Abraham (Executive Director, Centre for Internet and Society, Bangalore). Conference videos from last year's conference are available at www.consilience.in.

The 2011 edition of Consilience will focus on the theme of privacy and how it affects individuals and organisations. Consilience 2011 thus seeks to explore the interface between privacy and technology, the effect technology has on our understanding of privacy, and how technology shapes the contours of privacy and is in return shaped by privacy. Specific dimensions that the conference will engage with include privacy in the context of e-commerce transactions, social networking sites, upcoming gadgets, its equation with the State, (with a special focus on the UID project). Updates regarding the schedule of the conference will be posted on www.consilience.in.

Strengthening the Indian Bayh Dole bill: A provision for recovery in case of fraud?

Shamnad had recently discussed the presentation of the report of the standing committee to both houses of the Parliament on the Indian version of the Bayh Dole Act.  Recent case law in the U.S. suggests that the clause 20 of "The protection and utilization of public funded intellectual property bill, 2008", hereafter "The bill," may need "more teeth" for effective implementation.  The teeth may either come in the form of a direct clause or in the rules.  
The case of interest here is St. John's University v. Bolton, where a Federal Court affirmed the bid by a university to bring suit against a former professor and his star student on the grounds of fraud and breach of contract claims. The university alleged in its complaint that the professor and the student had secretly patented research done at the university and collected more than  $100,000,000 in patent licensing fees.
The bill provides for a recovery of the total amount of the grant and with interest and barring the recipient from future grants in case of a breach.  See clause 20, The bill.  
I do not believe that a direct fraud provision in the act would encourage a purpose of The bill - encourage innovation.  However, a provision empowering universities or any entity that disbursed the funds to recover the entire proceeds (less the minimum due to the inventors) may prove to be useful.   
When reading cases like the one discussed above, do you feel that a specific 'fraud provision' needs to be included, or whether a clause in the rules for implementing the bill will suffice? 


Image created: www.wolframalpha.com

Guest Post: U.S. Supreme Court dismisses Tiffany's Trademark Appeal

Avni Chari, a frequent guest blogger and student of NALSAR sends in this interesting piece on contributory trademark infringement on the internet in the context of a tussle between Tiffany & Co. and E-Bay.

U.S. SUPREME COURT DISMISSES TIFFANY’S TRADEMARK APPEAL

By: Avni Chari

The U.S. Supreme Court on Monday (29^th November, 2010) dismissed the appeal of Tiffany & Co. in a dispute over eBay’s liability for trademark infringement for selling counterfeit goods on its website. The concept of trademark infringement applies on its face to manufacturers and distributors of goods and providers of services. Although this is not the first U.S. case to extend the application of this traditional concept to the Internet, it is the first to consider its applicability to an online marketplace.

Tiffany instituted a suit against eBay in 2004 before the U.S. District Court for the Southern District of New York. Judge Richard J. Sullivan concluded that eBay, the proprietor of a website through which counterfeit Tiffany merchandise was sold, engaged neither in trademark infringement nor trademark dilution. This judgment was affirmed on appeal by the U.S. Court of Appeals for the Second Circuit.

eBay is the proprietor of www.ebay.com, an Internet based marketplace that allows those who register with it to purchase goods from and sell goods to one another. eBay generates revenue by charging sellers to use its listing services. Tiffany is a famous purveyor of, among other things, branded jewelry. eBay spends as much as $20 million each year on tools to promote trust and safety on its website. In addition, eBay has allowed rights owners such as Tiffany to create an “About Me” webpage on eBay’s website “to inform eBay users about their products, intellectual property rights, and legal positions.” The “About Me” webpage maintained by Tiffany presents a caveat that “Most of the purported Tiffany & Co. silver jewelry and packaging available on eBay is counterfeit.”

The cardinal issue before the Court was whether eBay is liable for contributory trademark infringement for culpably facilitating the infringing conduct of the counterfeiting vendors. In order for eBay to be liable for contributory trademark infringement, it would have to satisfy the Inwood test [conceived in Inwood Laboratories Inc. v. Ives Laboratories Inc., 456 U.S. 844 (1982)]. When applying the Inwood test to service providers, there are two ways in which a defendant may become liable for the infringing conduct of another: first, if the service provider, “intentionally induces another to infringe a trademark” and second, if the service provider, “continues to supply its service to one whom it knows or has reason to know is engaging in trademark infringement”. Tiffany argued the second.

The Court rejected the argument of the appellant, Tiffany & Co. eBay discontinued listings once it learned that they were specious. The Court found that eBay’s practice was promptly, “to remove the challenged listing from its website, warn sellers and buyers, cancel fees it earned from that listing, and direct buyers not to consummate the sale of the disputed item.” Tiffany demonstrated that eBay continued listings despite having a “generalized notice” that some portion of the Tiffany goods sold on its website might be counterfeit. However, the Court found this “generalized knowledge” insufficient to meet the “knowledge or reason to know” requirement of the Inwood test. eBay would have to have specific knowledge of identifiable infringing activity.

Another issue raised before the Court was whether eBay is liable for trademark dilution by its use of Tiffany’s famous trademark on its website. According to U.S. law [15 U.S.C. § 1125 (c) (2)(B)], “Dilution by Blurring” is, “an association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” It can occur, “regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” The Court, however, rejected Tiffany’s dilution by blurring claim on the ground that, “eBay never used the TIFFANY Marks in an effort to create an association with its own product, but instead, used the marks directly to advertise and identify the availability of authentic Tiffany merchandise on the eBay website.” There is no second mark or product at issue to blur with “Tiffany”.

The U.S. Supreme Court’s refusal to hear Tiffany’s appeal lays bare the onerous challenge faced by luxury retailers all over the world in the wake of bourgeoning Internet Service Providers and online marketplaces. As Judge Richard J. Sullivan of the District Court put very bluntly, trademark proprietors such as Tiffany, “must ultimately bear the burden of protecting [their] trademark.”

This is not the first time a luxury brand has initiated legal action against eBay for hosting the sale of counterfeit goods. Both German and UK Courts, in 2009, held in favour of eBay (the suits were filed by Rolex and L’Oréal respectively). However, a French Court, in 2008, ordered eBay to pay damages to Louis Vuitton to the tune of €40 million as compensation for allowing the sale of counterfeit goods.