Lost in Relocation? No More: Long Arm of Trade Mark Registry hunts down Missing Applications

(Image taken from here)

Some of the readers may already be aware of the negative publicity that the Trade Marks Registry had got back in April, 2011, when it had been discovered that a number of registered trade mark files had gone missing from the archives of the Registry Offices at Mumbai, Delhi, Chennai, Kolkata and Ahmedabad. The matter had been revealed in a proceeding before Justice Murlidhar of the Delhi High Court, when the Department of Industrial Policy and Promotion (DIPP) had filed an affidavit, stating on oath the number of missing files ranging to an astonishing 44,000!

However, in an optimistic turn of events, the office of the Controller of Patents, Designs and Trade Marks has issued a notice on July 28, 2011 wherein it has been revealed that at present, the total number of missing files from all the 5 offices is a mere 0.99% of the total number of registered files. This takes into account the files that have been traced since April (more than 12000), the ones that have been reconstituted through input from registered proprietors (more than 6000), as well as the files of those marks that have been removed since owing to non-renewal (more than 9000).

The total number of registered files is at present 829109 (Mumbai: 285704, Delhi: 274592, Chennai: 120766, Kolkata: 87968 and Ahmedabad: 60079), while the total number of missing physical files as on July 28, 2011 was 8183 (Mumbai: 1251, Delhi: 1875, Chennai: 4688, Kolkata: 287 and Ahmedabad: 82), which brings the missing percentage approximately to the abovementioned 0.99% (Mumbai: 0.44, Delhi: 0.69, Chennai: 3.89, Kolkata: 0.32 and Ahmedabad: 0.13). Even in respect of the missing files, the critical information affecting the rights of the registered proprietors have been able to be reconstructed according to the Delhi High Court’s directions, as per the claims voiced by the said notice. The last date for submission of documents available with the proprietor/agent has also been extended up to October 31, 2011.

The misplacement of files, as per the DIPP affidavit, had taken place during the decentralization of the Registry offices from Mumbai. While that was indeed a considerable embarrassment for the Trade Mark Registry, one must commend the authority figures and the personnel responsible to have achieved such a turnaround within such a short time period, especially the reconstitution of records, which one feels must have been quite a mammoth task. It only goes on to show that the personnel involved are indeed capable of attaining high degree of efficiency if they put their mind to it and raises our expectations accordingly. The DIPP and the Controller had also promised the Delhi High Court of implementation of a scientific record keeping scheme, quarterly audits of all the files stored in the different trademark registries, reduction of scope of such recurrence by introducing the mandatory e-filing of trademark applications.

Does size matter: the case of an anti-narcoleptic drug, modafinil?

Long post follows: 

About a month ago, the UK Chancery division patents courts (England and Wales) rendered an opinion (Justice Floyd) regarding claim construction in defining size of particles of an anti-narcoleptic drug, modafinil, in pharmaceutical compositions.  The patent court construed patent claims to determine whether there is an infringement, if any. 

Facts:  The dispute involves three patents related to the drug modafinil, used to treat sleep disorders such as narcolepsy.  Orchid Europe is the manufacturer of generic modafinil and Mylan intended to manufacture the drug in UK.   Cephalon is the proprietor, an exclusive licensee in the UK and a sub-licensee of the patents involved (European Patents (UK) Numbers 0 731 698 ("698"), 0 966 962 ("962") and 1 088 549 ("549")). These patents contain a very similar disclosure with differentiated claims, and they all claim a priority date of 6th October 1994.

Mylan denied infringement and challenged the validity of all three Cephalon patents on the grounds of lack of inventive step and insufficiency.  

Background:  Modafinil, the active substance, was discovered and developed by a French company, Lafon.  Cephalon licensed modafinil in the USA in 1994 and conducted further tests on it to bring it to the market as an agent to treat sleep disorders.  In the course of the tests in the US, modafinil caused more side effects than in Europe in corresponding trials involving equivalent doses.  The cause was traced to smaller particle size of the input active pharmaceutical ingredient ("API") of the lots used in the US trials. 

In the first human trials performed on non-commercial samples of modafinil ("early lots"), the median particle size diameter was between 80 and 150 µm.  The studies in US involved "late lots", revealed unanticipated side effects at doses of 800 mg per day. These late lots employed a particle size of 30 to 50 µm. This led the patentee to conclude that the late lots could be more readily absorbed than the early lots, and therefore leading to an increased plasma concentration (increased bioavailability) of modafinil.

Claims:  Each patent claimed different formulations of modafinil, with different particle sizes.    The relevant portions of the first independent claims of each patent are reproduced below.

‘698 patent	‘962 patent	‘549 patent
....comprising .... modafinil particles, wherein at least about 95% of the cumulative total of modafinil particles in said composition have a diameter of less than about 200 micrometers (µm).	.... comprising modafinil particles having a median particle size of about 2 to about 60 µm...	... wherein at least about 95% of the cumulative total of said modafinil particles in said composition have a diameter of less than about 200 µm and wherein the median particle size is about 10 to 60 µm.

Issue:  “Whether the claims were referring to the particle size within the composition (Cephalon's contention) or whether they were referring to the particle size in the active ingredient used to make the composition (Mylan's contention).”  Additionally, during the tabletting process, the size of the particles in the final finished tablet differed from that in the API from which the tablets are made.  Therefore, the sizes of the particles in the API did not correspond to the size of the particles in the finished tablets, and vice versa.

Claim construction and analysis:  In the claim construction, both sides pointed to claim language that supported their particular construction.  For example, Cephalon pointed to the '698 patent, which claimed ‘compositions comprising’ modafinil particles and hence referring to the size of the particles in the final tablets.  Mylan pointed to the claims in the '962 patent for use of ‘modafinil particles ...at least about 95% of the cumulative total of said particles have a diameter of less than about 200 micrometers for the manufacture of a pharmaceutical composition …" and hence points to the particle size in the input API, as it is used in the manufacturing process.

Several industry practices were listed to aid in the interpretation of claims, one of which was, “[A] general practice in the pharmaceutical industry was not to measure particle size in a solid formulation, but to make measurements on the input API.” 

Conclusion:  Based on the common knowledge, the Judge concluded that the patentee must have meant particle size to be measured on the bulk API.  “Particle size is never measured in the dosage form, and the skilled person would not know how to do so.”  Although it routine industry practice to measure the particle size of API, the particle size in finished tablets could not have been measured at the priority date of the patents (1994).  Additionally, particle size of the API has a direct correlation with bioavailability in the final tablet.      

Therefore contentions of Mylan were accepted.     

Infringement:  Both parties agreed that if Mylan's construction of the claims was the correct one, there was no infringement. 

Obviousness:  Mylan contended that the patents were invalid in view of prior publications, ‘Drugs of the future, and Nguyen, a PCT application applied for by Lafon. 

On the basis of ‘common general knowledge’ and the knowledge of the relationship between lower particle size and improved plasma concentration or bioavailability, it was held that it would be routine to investigate the particle size to improve the bioavailability of a compound, with the expectation that this investigation would be fruitful.  Hence Cephalon patents were obvious in view of the first publication.  As regards the Nguyen publication, no dosage for modafinil specified but it did provide a formulation with a particle size of 2–5 µm.  J. Floyd rejected the contention that it would require significant experimentation/investment to the results of Nguyen to reach an appropriate dosage for modafinil. 

“The skilled person is entitled to implement a disclosure in a technically obvious way, even if doing so might not appear commercially attractive. Had I not come to the conclusions I had already reached in relation to obviousness, I would have required the claims to be limited so as to avoid the attack.”

Significance to Indian scenario:

Shamnad, in a previous post, referred to a need for having broad guidelines for defining ‘efficacy.’  In that post, the question was whether increased bioavailability would constitute as a significant enhancement in efficacy.   If this case was decided under the Indian law, increased bioavailability and (therefore efficacy) would have been the argument to counter a 3(d) opposition and it would have overcome the challenge.  This case therefore highlights when the patent office should undertake the 3(d) analysis: Only when the basic issues (inventive and non-obvious) should the Controller decide the issue of patentability under section 3(d).  This case also highlights whether it makes sense to equate bioavailability to efficacy.  The exclusionary test may perhaps make more sense in such a scenario for formulation applications like the one described here.

Silencing the Song

A series of decisions emasculating the rights of some of our finest creators (music composers and lyricists) have confounded many of us.

First it was the Kerala High Court. Then the Mumbai High Court. And the latest in this blunderful series is a Delhi high court decision that falls prey to the same jurisprudential folly that assumes that when a song is broadcast, there is no violation of the underlying rights of music composers and lyricists.

We've requested our popular guest blogger, Nikhil Krishnamurthy to pen his thoughts on this decision.

In the meantime, let me bring you a very heartfelt (stream of consciousness) piece from Achille Forler, the Managing Director of Deep Emotions, a music publishing company based out of Mumbai. In his own quiet way, he's been at the forefront of a slow revolution to help strengthen the rights of creators in India.

Though not a lawyer, Achille appreciates the subtleties of copyright law better than most IP lawyers that I know of. He is a French national who's been living in India for over four decades now. His multifaceted biodata begins with a stint in graphic arts and cultural management (organization of art exhibitions, artist touring, etc.).

He then donned the robe of a public servant, where the French government put him in charge of their creative industries (during the course of which he learnt how to translate discernible currents of change in media industries and media technologies into public policies).

And finally, he took on the mantle of an entrepreneur and has since 1995, established the business of music publishing in a passive and fairly hostile environment.

Here is the uncut and uncensored version of what Achille had to say after hearing of these cataclysmic judicial developments in a country that he now calls home.

"I am not a lawyer. I cannot use legal arguments to counter the judgements in Kerala, Mumbai and Delhi which divest authors of their rights in favor of the producer/record label whenever they authorize their songs to be recorded.

But I have been a music publisher for almost two decades, I know how the business functions globally, I know the sources of income of authors and how they make a living from their creations. With great difficulty for most of them. Equally important, I know that copyrights did not fall from heaven but authors and their publishers had to wage numerous battles against powerful vested interests for over 2 centuries.

We know that the assault on authors' rights goes on as ever – file sharing, ISPs, competition law, industry concentration, etc. - but nowhere in the world is it as vicious as in India. Nowhere in the world has any judge decided that creators are laborers and their work can only be work-for-hire (contract of service, SC 1977) on the argument that they are commissioned and work for valuable consideration.

There is very little creative output in the world that is not commissioned; since copyright is generated by creation and not by ideas, how can ownership of a work be attributed to the one who has the idea and not to its creator? And do creators have to work for "no valuable consideration" if they are to retain their rights - I.e. pass the hat around like in the good old pre-copyright days?

Again, I am not a lawyer but I know that all you can record is silence if there is no song. No song, no music industry. No song and radio will be talk show. When I listen to the radio I hear the lyrics and the tune of my songwriters. By what logic are my songwriters prevented to use recording technologies to communicate their works to the public and restrict them only to live performances? By the same logic, they should also lose their rights when someone else performs their songs, the only difference being the support: mechanical for one, vocal for the other.

Again, why are copyrights painted as negative – the right to prevent the exhibition of a film (IPRS's Sen's arguments in SC 1977) or the broadcast of a sound recording (Kerala, Mumbai)? Haven't these people heard about licensing? Once a license is given – mechanical or sync – where is the scope for the author to prevent the exploitation of what he has authorized? Copyright is the right for remuneration. If you divest an author of this right, on what basis can he claim remuneration? Authors never prevent the exploitation of their works but they claim to be paid when someone else makes commercial use of them.

The copyright system is the simplest and fairest commercial system in the world. It rests on this simple equation: creation, communication, remuneration. It is fairest because it is based on proportional revenue sharing.

I want to asked these three learned judges the following questions:

1. What is wrong with the global copyright system that you feel the need to invent a new one?

2. How will the royalties flow globally in your new system? Rights that do not exist in India cannot spring up elsewhere, right? So Indian literary and musical works cannot be remunerated outside India except for live performances. But what about the performing and mechanical rights of international repertoire, they do have a legal existence in the rest of the world: how will you treat them in India under the Berne Convention and TRIPS?

Whither the Song of Justice?

It all began with a 1977 Supreme Court decision, where a judge, for reasons best known to him, interpreted the law relating to Bollywood music in a manner that effectively emasculated the rights of music composers and lyricists. His brother judge, known otherwise for standing up for the under-dog in language often reminiscent of "poetic" justice, remained largely silent (by his "verbose" standards).

Fast forward a couple of decades and we have two collecting societies (IPRS and PPL) that enter the scene and master the art of "fleece" within no time: had section 375 of the Indian Penal Code (IPC) been worded liberally enough, they might have faced criminal sanction. The government finally woke up (thanks to the courageous advocacy of Javed Akhtar and a leading copyright lawyer), and sought to redress the historical injustice by mandating a largely controversial sharing of royalties. One would have thought the tide was slowly changing.

Unfortunately, a Mumbai High court judge is attempting, à la King Canute, to stop the flow of the changing tide, forcing it to beat a hasty return to its old exploitative path.

For those that are still in the dark of that which I speak about, let me refer you to a Times of India article that reports on a recent decision that effectively completes the process of emasculation that I referred to at the start of this post:

"In a setback to music composers and lyricists, the Bombay high court..... ruled that the Indian Performing Right Society Limited (IPRS), a body that safeguards the copyrights of music composers and lyricists, was not entitled to claim or demand royalty or licence fees from a private FM channel for the recorded song and music it plays on its radio station. This means that the FM stations would now have to only deal with Phonographic Performances Limited for obtaining a licence to play the music."

Let me also refer you to a Bar and Bench piece which encapsulates my key objections to the Mumbai High Court decision:

"While the judgment is quite lucid and rehearses the various arguments and counter arguments in a very articulate manner, the judge unfortunately got the law wrong. The making of a sound recording does not extinguish any of the underlying rights in the music and lyrics (these underlying rights continue to vest with music composer and lyricist). When a song is broadcast on an FM channel, both the rights in the sound recording as also the right in the underlying works are implicated. And the FM radio station has to pay two separate license fees (one to IPRS which collects on behalf of underlying artists and the other to PPL which collects on behalf of sound recording copyright owners).

It is pertinent to note that the Indian government has taken note of the historical exploitation of Bollywood lyricists and music composers (underlying authors) and attempted to redress the injustice through proposed amendments to the copyright act that provide for compulsory sharing of royalties. Contrast this attitude with the present judgment which effectively perpetrates grave injustice against underlying authors by denying them their rightful license fees."

The Mumbai High Court judge harps, time and again, on how sound recording companies (that have acquired the license from owners of underlying works such as lyricists and music composers to create the sound recording) need not repeatedly ask for licenses from underlying artists each time they sell a CD containing the copyrighted recording. And therefore it must logically follow that they need not do the same any time a song is broadcast (on FM channel or otherwise).

The very concept of a "license" itself ought to have alerted the judge to the jurisprudentially flawed nature of his reasoning. In other words, the terms of the license between underlying artists and the sound recording company determines the extent to which a recording company is able to exploit the song, and particularly the underlying works.

Almost all licenses invariably permit companies to reproduce sound recordings (and thereby the underlying works as well) and sell them through CD's and the like. However, unless the license permits sound recording companies to broadcast the music as well or to permit others (through sub licenses) to broadcast, they cannot do so. And if they cannot do so, neither can FM stations, merely because they pay license fees to sound recording companies (or to PPL which collects on behalf of most sound recording companies). Two sets of rights are implicated, as I mention in this article here.

Net result: in order to legally broadcast music, radio stations ought to obtain two sets of licenses: one from the owners of sound recordings (or PPL, which often collects on their behalf) and the other from the owners of underlying works (or IPRS, which is meant to collect on their behalf).

Given that songs are effectively exploited in their "sound recorded" form across different mediums, a denial of the right to share in the proceeds of such exploitation in favour of underlying artists' is downright unjust. And must be redressed at the earliest.

Asked what he believed his life song was, the inimitable Belafonte once remarked: "The same melody. It just needs to be sung again. What it needs are more voices of harmony. It's a beautiful chord that everybody gets to sing in the same place at the same time with the same purpose. The song is the same: justice."

One can only hope that the appellate court sets the course of justice right...and with it, the fortunes of a talented community that has been at the receiving end for far too long.

ps: Prashant and Sumathi referred me to this Kerala HC decision which arrives at a similar result (that IPRS has no right to claim royalties over FM broadcasts), but does so solely through a reliance on the 1977 Supreme Court decision (which effectively held that absent an express contract, the film producer is effectively the first owner of copyright over music and lyrics created for the movie).

Injunction Order against Cleartrip for Data Theft Refused by Bombay High Court

Quick recap:

To quickly recapitulate the facts surrounding this order, one might remember the FIR that was filed against Cleartrip by Travelocity in late 2009. Travelocity is a foreign company that acquired Travelguru, who in turn had acquired Desiya (another online travel agency web portal) in 2007 for data theft. 

Essentially, the charge was that Desiya employees, including former CEO of Desiya, Amit Taneja, had criminally conspired to hand over data belonging to its company to Cleartrip. This resulted in the arrest of Amit Taneja and Stuart Crighton, CEO of Cleatrip in August, 2010. A suit was filed in July, 2011 in the Bombay High Court claiming damages of $37.5 million (over Rs 165 crore).

FIR & Chargesheet:

To provide some clarity by means of chronology, it should be pointed out that initially, an FIR was filed in December 2009. As Medianama reports, the FIR charged Desiya employees and Amit Taneja of sharing sensitive and secret information with Cleartrip CEO, Stuart Crighton including intellectual property, trade secrets, databases and in particular, the data related to hotel business model, projections and proprietary information. 

The chargesheet, as a follow up to the FIR, included charges of criminal breach of trust, misrepresentation and cheating, directed towards Sanjeet Singh, Regional Manager (North) and Imran Ansari, Travel Consultant as well as separate charges of collusion, abetment and misappropriation. It also stated that Taneja had been offered a 1.5% equity stake by Cleartrip in exchange for the information and that losses faced by Travelocity amounted to Rs.20 crore. 

The chargesheet also made a reference to money laundering, which pushed Alok Mittal, joint commissioner of police, Gurgaon to state that the police may refer the to the Enforcement Directorate (ED).

Injunction Refused

The case was scheduled for hearing on July 20th, 2011. Medianama reports that they received a statement from Cleartrip stating that the Bombay High Court rejected the plea for injunction and damages, based on the suit filed by Travelocity. One feels however that there is more to come from this case, given the far-flung charges and the insistence that there have been serious economic irregularities on the part of the defendants, aside from the intellectual property theft claims. We will keep an eye out for developments in this case.

From Cola Wars to Whisky Wars: If anything has been ‘Made Large’, they are Commercial Disparagement and Copyright violations

Guest Post by Prateek Bhandari

Prateek Bhandari is a fourth year student of NUJS, Kolkata. He is the Co-founder & Manager (Website Development & Finance) of Lawctopus. In the light of various judgments on commercial disparagement, he analyses the possible violations committed by McDowell's advertisement which was, however, later withdrawn.

 

                                                    
                        versus

                                                        
If you thought the cola wars are losing the fizz, check out what could have snowballed into a high ‘spirited’ new edition- Whisky Wars! UB Spirits launched a television commercial that depicts MSD mocking Harbhajan Singh’s Royal Stag commercial. Pernod Ricard’s Royal Stag and UB’s McDowell's No. 1 are rival whisky brands. The commercials are however of cricket gear and soda because of restrictions on advertisement of alcohol.

The McDowell’s commercial displayed a Bhajji look-alike working in a ball-bearing factory who gets smacked by his father for producing large iron balls in hope of 'making it large’ at the factory. This post tries to analyse the possible violations done by the McDowell’s commercial.

Commercial Disparagement

The subject of disparagement has been briefly touched upon in the context of Britannia successfully restraining Unibic from disparaging its “Good Day” biscuits. There, Unibic was restrained from showing a commercial with the tagline, “Why have a good day, when you can have a great day?” which was an apparent mockery of rival Britannia’s ‘Good Day’ biscuits.

The New International Webster’s Comprehensive Dictionary defines disparage/disparagement to mean, "to speak of slightingly, undervalue, to bring discredit or dishonour upon, the act of depreciating, derogation, a condition of low estimation or valuation, a reproach, disgrace, an unjust classing or comparison with that which is of less worth, and degradation." The division bench of Delhi High Court in Pepsi Co. v. Hindustan Coca Cola said that for disparagement three-pronged test of (1) intent (ii) manner and (iii) story-line and the message sought to be conveyed needs to be fulfilled. If the manner is ridiculing or the condemning product of the competitor it amounts to disparaging. 

In one of the two commercials which were the essence of the Cola wars case, Salman Khan while conducting a Grow Up to Thums Up Challenge asks a boy from the audience to give his preference of cola drink. When the cover from the ‘sweet’ bottle (referring Pepsi) is removed the boy puts his hand on his head in an expression of denial and the crowd boos the drink. By referring Pepsi as "Woh meethi hai, bachon ko meethi cheezein pasand hai" (that one is sweeter and thus kids would like it) and "wrong choice Baby", Thums Up (a Coca-Cola brand) depicted the commercial in a derogatory and mocking manner. The court did not treat it within the ambit of permissible puffing up. The court held that puffing one's product by comparing others' goods and saying his goods are better is not an actionable claim but when puffing or poking fun amount to denigrate the goods of the competitor, it is actionable. The court observed that the choice of Pepsi (‘Pappi’ used in the commercial) between Pepsi and Thums up has been projected as a “wrong choice.” The court held that by projecting so Salman Khan in the commercial conveys in a sophisticated way that Pepsi is rubbish.

Mahi’s commercial for McDowell's has a Bhajji look-alike mimicking, "Have I made it large?" and Dhoni ridiculing him by saying, "If you want to do something in your life, forget large, do something different, pal." In the present case, the commercial does not rubbish Royal Stag directly. However, the adoption of the phrase “forget large” clearly refers to Royal Stag whisky. The sophistication adopted in the term “forget large” does leave the question as to whether the commercial denigrates Royal Stag open-ended. I am of the opinion that if the court construes “wrong choice” as derogatory then “forget large” should also be pegged into the same species.

Copyright violation of Tagline

The Royal Stag commercial featuring Bhajji shows his journey from a ball-bearing factory to a cricketer and has the catch phrase "Have I made it large?" Mahi’s commercial for McDowell's makes use of mimicry to express "Have I made it large?" and then the question posed is ridiculed by Dhoni’s words “forget large.” Would this be a copyright infringement?

In the Cola wars case question arose regarding infringement of copyright of literary work of the Pepsi namely the phrase "Yen Dil Maange More." The Thums Up commercial shows Salman Khan asking "Kyo Dil Maange No More?" It was contended that the phrase has been exclusively associated with Pepsi and is fully reminiscent of Pepsi's business. It was contended that to popularise the phrase Pepsi had spent mints on the advertising theme and it was a successful theme in India and had acquired distinctiveness and association with Pepsi. In another version Salman says “Wrong choice, baby” which is also a rip-off from “Yeh hi hai right choice, baby.” In another rip-off, Sushmita Sen shouts “Yeh hi hai Right Choice ko....” and the crowd erupts “nahi” (No to right choice). In yet another commercial, Pepsi’s limited edition lemon-flavoured drink, Aha is ridiculed and the children yell “Naha” (No) to Aha.

The Delhi High Court basing itself on the de minimis rule held that advertising slogans are prima facie not protectable under the Copyright Act as they are not substantial literary works. They may however be protected under the law of passing off. Thus, we can conclude that the Royal Stag slogan is not capable of copyright protection w.r.t. taglines.

Copyright violation of Cinematographic film

In the case, Pepsi also pleaded that another commercial, the Roller Coaster commercial, had been copied by Sprite (another Coca-Cola brand) which amounted to infringement of copyright. In the Pepsi commercial a boy takes a glass of Pepsi to a roller coaster and the drink doesn’t spill out during the ride. However in the Sprite commercial after a similar chain of events Sprite spills out and makes the boy an object of laughter. The message which the Sprite commercial gives is ‘Bujhaye only pyaas, baaki sab bakwaas’. (Quenches thirsts, everything else is worthless).

Section 14 of the Copyright Act defines “copyright" as the exclusive right... to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely:

(d) In case of a cinematograph film,-

(i) to make a copy of the film including a photograph of any image forming part thereof;

(ii) to sell or give on hire or offer for sale or hire, any copy of the film, regardless of whether such copy has been sold or given on hire on earlier occasions;

(iii) to communicate the film to the public...."

Supreme Court in the case of R.G. Anand v. Deluxe Film observed that " the fundamental fact which has to be determined [is] whether or not the defendant not only adopted the idea of the copyrighted work but has also adopted the manner, arrangement, situation to situation, scene to scene with minor changes or super-additions or embellishment here and there. Indeed, if... defendant's work appear[s] to be a transport rephrasing or a copy of a substantial and material part of the original, the charge of plagiarism must stand proved..."

The court held that Coca-Cola’s roller coaster theme is a copy of Pepsi’s theme which was its original work and therefore covered under Section 14. The court also noted that the dress of the boys in the commercial was similar. The court held the replica commercial in the instance case was nothing but a substantial literal imitation of the copyright work of the appellant with some variations here and there and a different last portion. The court held that since the commercial is a cinematograph film as defined in Section 2(f) the use of the elements of the commercial for promoting Sprite violates and infringes the copyright of Pepsi under Sections 51 & 52(A).

In the Whisky Wars too, the entire theme of the commercial and the sequence of events point out towards the Mahi commercial being a copy of Royal Stag’s commercial. Both the commercials show a similar factory, workers moving objects in vicinity and Harbhajan and his look-alike wearing hoods, In fact, both the commercials have a similar storyline and begin with the same line- Papa (ji) ki ball bearing factory main pehla din aur samne khada tha ye sawal ‘have I made it large?’ (First day at father’s ball-bearing factory, and puzzling me was the question, ‘have I made it large?’) Even the music employed is merely a slight modification. This bears witness to the copyright violation of the Roller Coaster cinematographic film.

As far as the pleading of Coca-Cola in the Cola wars case, that Cola Wars is a matter of trade rivalry and thus a market place matter alone which ought not to spill over to the court of Law, is concerned, the court made it clear that market place is not a suitable substitute for injunction by courts. Pepsi also contended that in campaigning for the commercial they had spent lot of money and that the commercial had acquired a special significance and had been associated with Pepsi. It further said that the shell life of a commercial is for a year or so and if interim injunction is not granted against the use of the Coca-Cola commercial, it will have far reaching consequence of defeating the purpose for which the campaign was launched.

The Whisky issue has however been doused by withdrawal of the commercial by UB Spirits. However, you can savour the two whiskies and quench your thirst at: http://www.youtube.com/watch?v=Jp9ZU-E5qBU (Royal Stag’s original featuring Harbhajan), http://www.youtube.com/watch?v=s1Ux8MKQTaw (McDowell’s freshly fermented featuring Mahi) & Aah! Teetotaller? Visit http://www.youtube.com/watch?v=Da7RF_ig308 (One of the Thums Up commercial which was under dispute in Cola wars case).

It may be none of my business: but does that make it any of yours?

(Image taken from here)
Those familiar with the Indian Patent Act, 1970 are doubtless aware of the ubiquitous and controversial provision of S. 3(k) that excludes from the realms of patentability any business method. While A. 27 of TRIPS advocates patentability in all "fields of technology", nonetheless, India as a developing country can also avail itself of the alternate paths laid out in Articles 70.8 and 70.9, which it has done by such exclusion as per S. 3(k). A business method patent confers upon its holder a set of exclusive rights with respect to a particular manner in which a business operation can be carried out. However, the same is not available in India owing to aforementioned S. 3(k). Moreover, by virtue of S. 3(m), a mere scheme or rule or method of performing mental act or method of playing game is not invention within the meaning of the 1970 Act. In other words, a mere abstract idea is not subject to patent unless the same is actually implementable. Further, the Act also excludes a presentation of information from the purview of patentability by treating it as non-invention under S. 3(n). While there are many fields to which business method patents have been linked to, traditionally, software inventions have shared the closest linkage with them.

It would interest the readers, therefore, to look upon the following patent application that has recently been brought to the notice of the Spicy IP team by the kind efforts of Dr. Gopakumar G. Nair, an IP attorney of repute. The application (Application No.40/DEL/2010 A) has been filed by the NATIONAL SMALL INDUSTRIES CORPORATION LIMITED on January 7, 2010 and published on July 8, 2011 and has the rather grand-sounding title of “RAPID INCUBATION FOR SMALL ENTERPRISE ESTABLISHMENT THROUGH NSIC-TRAINING CUM INCUBATION CENTRES (NSIC-TICS)”.

The abstract describing the invention has been reproduced below:
“Unemployment is a colossal problem in India and most of developing countries have similar troubles. Self-employment generation is perhaps the fastest process by which one gets employed also employs other unemployed youths in their small enterprises. We, the claimant, have invented an innovative process that envisages Rapid Incubation for Small Enterprise Establishment in just three months time, whereby an unemployed youth is incubated and transformed into budding entrepreneur. The major components of the Incubation process are Entrepreneur Skill Development, Project/Product selection and opportunity guidance, Hands-on practical training on working projects/training modules, Facilitation of funds through banks, Facilitation on setting up an enterprise, Support services to run small business. The technology used in this incubation process is low cost, appropriate any easy to maintain. This process can incubate any youth / person aged between 18-60 years. The process is applicable to all parts of the country and suitable for addressing unemployment issues of many least developed and developing countries. A private partner can also become an incubator under this process.”

Prima facie, the process mentioned above, along with the flow-chart accompanying it, seem indistinguishable from a business method, which by virtue of the aforementioned provisions of the 1970 Act, ought to belong outside the purview of patentable subject matter in the first place. The question is, given the Indian position on business methods patents is pretty clear-cut, albeit not perceived as the ideal one by everybody, what could have been the possible motives behind the applicant having filed such an application in the first place?

One can come up with feasible conjectures, although they may very well fall short of the mark in reality. Can the applicant be seeking to obtain a priority date by filing an application under the comparatively less expensive Indian patent regime? That would signify subsequent possibilities of the applicant seeking to obtain such a patent in patent regimes such as the U.S. perhaps. While cases such as In re, Bilski, (on which, discussions have carried in this blog previously, here, here and here) had exhibited the US Federal judiciary rejecting applications for business method patents, there are decisions like Bilski v. Kappos, which have succeeded in making the waters more rather than less murky, by not rejecting the possibility of excluding business methods from patentability altogether and by holding the Machine-or-Transformation Test not to be exhaustive. Under such circumstances, it may be presumptuous to decide what the fate of such an application is going to be in US, but if the Indian filing is only intended to provide a cheap priority date to the applicant, questions may arise as to the ethical validity of such practice, on which the Spicy IP team will like to throw open the floor for discussions and debates.

Fighting Piracy with Oppression?

Screenshot taken from TorrentFreak

A frantic call from a friend last night informed me of a rather strange message on their screen. "This site has been blocked as per instructions from Department of Telecom (DoT)". The site my friend was trying to access was Megaupload.com - an online storage site. A quick google inquiry brought up similar concerns being voiced by other internet users on internet forums. I, myself, however, was able to access the site with no problems. From reading around the online forums, this is what I gathered to have taken place: 

Several ISPs, apparently Airtel being the most aggresive, blocked access to several popular 'file-sharing' sites including Megaupload.com, Mediafire.com, Megavideo.com, etc. with the above message being the message posted. (Screenshot on top). There is no official word from the DoT on the matter. 

The reason behind the ban apparently is due to a John Doe order from the Delhi High Court granted to Reliance Big Pictures for their movie Singham in order to prevent any copyright infringement. Whether the ISPs were warned by the DoT, or took the move themselves, is unknown, but either way it led to the complete blockage of many sites which could be used to host infringing copies of the movie. However, as mentioned, by the time I had heard about this, which was about 24 hours after the sites started being blocked, I was able to access these sites on my Airtel connection. Several forums also had users reporting they were no longer seeing that censorship screen. 

Does this type of censorship make any sense? No, certainly not. There are many paying members who host their perfectly legal files online in these cyberlockers. Considering the movie Singham released today, there are no doubt pirated copies already being passed around both online and offline. But this kind of action is no way of going about 'preventing' this piracy.  Even leaving legalities aside, it seems to just be bad policy to slam down with excessive force ignoring definite 'splash damage' to bystanders. In fact, this censorship seems to have angered many on the various online forums into asking people to boycott the movie in theatres! Online piracy continues to be rampant, but with torrents, proxies, secure tunnels and what not, combined with the seemingly infiniteness of the internet, it seems a much more tactful method would be required to deal with this kind of infringement. 

ISPs no doubt took this step out of abundant precaution to negate any potential liability. However, certainly this was above and beyond what was required. Sections 79 and 81 of the IT Act provide protection to intermediaries - so long as ISPs take sufficient precaution (including immediately taking down content which was reported infringing) to ensure that they aren't knowingly infringing on copyrighted content (here - the movie Singham), they ought to be in the clear. If at all they wanted to take an extra step, wouldn't it have made more sense to just make a filter for the word "Singham", rather than block all and any content on several file storing sites? In any case, it appears that the ban is no longer active, so we can hope that it was only a temporary 'mistake'. 

Forums and blogs that I checked included:

MediaNama,  Techtree, India Broadband Forum, TNW.
Also see Amlan's earlier post on Intermediary Liability here. 

Patent Discrimination Against Indigenous Communities?

The Times of India recently reported that the Indian Council of Medical Research (ICMR) is in the process of documenting traditional medicinal knowledge belonging to indigenous communities (tribals) from the Andamans and is even planning on helping them patent it.

By way of background, the ICMR is the apex agency responsible for the promotion of biomedical research in India. The TOI piece notes in pertinent part:

"ICMR's Regional Medical Research Centre (RMRC) is preparing a unique Community Biodiversity Register (CBDR) for the tribals of the Andaman and Nicobar Islands that will document their traditional healing practices, use of medicinal plants, healing record, mode of preparation of plants' parts and number of patients treated.

Scientists have travelled to 11 of the 15 villages of the Car Nicobar Island, inhabited by the ancient Nicobarese tribe, documenting the use of 124 medicinal plants that are being prescribed to cure 34 different diseases. They have also interviewed 42 Traditional Knowledge Persons (TKP)/folk healers for the project, which is estimated to cost over Rs 38 lakh.

The ICMR plans to acquire patents of these traditional healing techniques for the tribals.

RMRC director Dr Palaru Vijayachari said, "Traditional treasures of the tribal people, like their healing techniques, need to be protected. We are documenting them so that patents can be applied for such practices. We will be documenting all medicinal plants among all accessible tribes. Scientific explanation of the use of the plant will accompany it."

Given this explicit public announcement of an intention to patent traditional knowledge (TK), I went back and examined the relevant TK provision in our patents act and was struck by the way it was worded. Our Act states in very broad terms that any invention based on TK is not patentable. More problematically, it appears to suggest that no patent shall be granted even if the patent application happens to be from the community owning the TK in question. I extract the relevant portion of section 3(p) below:

Section 3: The following are not inventions within the meaning of the Act....
(p) "an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components."

Does this mean that indigenous communities cannot patent their own traditional knowledge, even if such knowledge is known only to that community and is a "trade secret" in this sense?

If interpreted this way, it is nothing short of discrimination against indigenous communities, actionable as a violation of the right to equality guaranteed under Article 14 of the Constitution of India.

One might also interpret the term "traditional knowledge" as used in the section to refer to only publicly known or available TK? But then, why have such an exclusion at all? Is it not redundant? TK that is publicly known or available will in any case not be patentable since it fails the "novelty" test.

Further, such a definition runs counter to the many definitions that have been proposed thus far for TK protection at the international level.

Illustratively, the most recent glossary of terms from a WIPO committee (intergovernmental committee on IP and TK) defines "traditional knowledge" as:

“the content or substance of knowledge resulting from intellectual activity in a traditional context, [including] the know-how, skills, innovations, practices and learning that form part of traditional knowledge systems, and knowledge embodying traditional lifestyles of indigenous and local communities, or contained in codified knowledge systems passed between generations. It is not limited to any specific technical field, and may include agricultural, environmental and medicinal knowledge, and knowledge associated with genetic resources.”

As evident, this definition clearly encapsulates both publicly known community knowledge and knowledge that is "known" only to the community and is therefore a "secret" in so far as members of the general public are concerned.

Apart from the definitional and interpretative problem with section 3(p), this ICMR episode raises other concerns.

Firstly, one hopes that informed consent norms were strictly complied with and that these communities knew exactly what this project was all about and the proposed documentation of their precious knowledge and its subsequent use.

Secondly, while this is a commendable exercise in terms of the potential for the discovery of new drugs based on this knowledge, the ICMR needs to be very careful about what it does with this database.

The TOI piece goes on to suggest (in language this is a bit difficult to fully comprehend) that the database might be made available publicly, so that others could use this medicinal knowledge to arrive at important medicinal drugs and formulation and presumably take patents out on these new products. The article assumes that the patentee would then compulsorily share proceeds with these indigenous communities, based on whose knowledge, the said patented invention came about.

While this may be true for India (given that Indian law mandates prior approval and benefit sharing), it is not true for other countries. Once the database is available publicly, person X in a foreign country (such as the US) can easily use it to formulate an independently patentable invention without in any way compensating the tribals. And this is precisely why a number of countries are fighting hard for an international instrument that would set minimum standards for the global protection of traditional knowledge. Clearly a murky area that needs to be handled with a lot of sensitivity and care.

Indian granted patents...diminishing focus on future enforceability?

Guest Post by Tarun Khurana

Tarun Khurana, Partner in Khurana & Khurana, Advocates and IP Attorneys and its IP Consulting Firm - Institute of Intellectual Property Research & Development (IIPRD), has over 10 years of experience in Intellectual Property matters. In this guest post, he examines whether the Indian Patent Office has lived upto the expectation of granting patents which are enforceable.

Objective

The Indian Patent Act, 2005, like municipal statutes of other TRIPS compliant countries, incorporates the patentability grounds mandated under TRIPS. Decisions on patentability of an application during prosecution in one country have often been relied upon partially, if not completely, for determining patentability of allied applications in other geographies. Further special provisions such as those provided under Section 8 of the Indian Patent Act enable the Indian Patent Office to retrieve additional and more relevant information about the prosecution that happens with the foreign Patent Applications corresponding to the Indian filed national phase application. Even more, additional prior art available by means of results cited by ISR, literature/patents cited by the Applicant and earlier Patent/Prosecution History of the Applicant  give way for searching more relevant and anticipating applications. Keeping all above pointers in context, is it not crucial for Indian Patent Office to try and grant patents which are enforceable and not susceptible to successful invalidity attacks. But is the Patent Office living upto the expectations?

Introduction of Target Patent

For the present discussion, let’s take an exemplary and recently Indian granted Patent X, having publication of grant in Feb 2011. In summary, the invention relates to address-based network communications and more specifically to determination of a prefix portion of an address. Abstract of the granted Patent states:

A network element (10) can retain a plurality of prefix identifiers as are used to formulate an address to be used by individual network users. Pursuant to a preferred approach, one or more of these prefix identifiers are pre-correlated to a given domain name while at least one other prefix identifier is pre-correlated to the absence of a domain name. So configured, a specific prefix identifier can be allocated for use by a given network user as a function, at least in part, of the domain name (or lack of a domain name) as may be presented by that network user when seeking to establish a network connection.

 

The first independent claim as granted as per the Indian Patent Office is:

A method comprising: receiving a communication from a network user seeking to establish a network connection; when the communication presents a domain name as corresponds to the network user: identifying a first prefix identifier as having been pre-correlated to the domain name; providing to the network user the first prefix identifier; when the communication does not present a domain name as corresponds to the network user providing to the network user a second prefix identifier, which second prefix identifier is reserved for use with network users that do not present a domain name.

As evident from the first claim itself, the invention relates to two scenarios of mapping between “Domain name” and “Prefix Identifier” or “IP Address” or “Network Address”:

i)         In case the domain name is given by a network user, an IP Address corresponding to the same is returned back; and

ii)         In case the domain name is not provided by the network user, a new/second prefix identifier is generated and provided to the user. This is typically a well known function of a DNS system, wherein the claimed novelty seems to relate to generating a second prefix identifier in case domain name is not presented by a user.

Due-Diligence Steps which could have been exercised:

Step 1

As at the time of writing this article, the Application Status search of the Indian Patent was not working, I am assuming that as the patent was granted in Feb 2011, the First Examination Report was issued somewhere around Jan-Feb 2010. From a strategic perspective, would it not have made sense to see the prosecution status of the corresponding applications in geographies including EP or US, more so given the fact that Section 8 of the Indian Patent Act asks the Applicant’s to submit detailed updates on filing/publication/prosecution/abandonment/grant activities related to the corresponding foreign applications. It is to be noted that for the Corresponding application EP Y, the application was withdrawn by the Applicant on 28.08.2009, i.e. before the Indian Patent Office issued the FER. The same was the case in the corresponding US Application, wherein the Applicant itself failed to respond to the Final Office Action.

Step 2

A close look at the cited portions of the Prior arts cited in the International Search Report, specially US 6324585, could also have given help in identifying anticipating documents, specially with the claimed subject matter being broad and relating to the overall functionality of a standard DNS system. Furthermore, prior arts discussed in US prosecution including ‘585 and US 2004/0258005 and US 2002/0172206 give clear pointers to claimed subject matter.

Step 3

Furthermore, even if the above due-diligence was not considered worth, a very brief and quick search with the most basic keyword string (Dynamic AND "domain name" AND "network address") would have revealed many below like relevant patents, based on which the patentability of the subject matter involved could have been evaluated. Based on our quick due-diligence, we found following relevant patents that covers application X matter partly or wholly.

Exemplary and Illustrative Search Results

Search Result 1: US 6338082 - (Cited Portion for the first element of the independent claim which claims mapping between a domain name and a prefix identifier (IP Address)): A client of the DNS is called a resolver 114 . Resolvers 114 are typically located in the application layer of the networking software of each TCP/IP capable machine. Users typically do not interact directly with the resolver 114 . Resolvers 114 query the DNS by directing queries at name servers, which contain parts of the distributed database that is accessed by using the DNS protocols to translate domain names into IP addresses needed for transmission of information across the network. DNS is commonly employed by other application-layer protocols—including HTTP, SMTP and FTP—to translate user-supplied domain names to IP addresses….As part of a DNS query message, the DNS client 114 sends the domain name to a DNS server system 120 ′ connected to the Internet. The DNS client 114 eventually receives a reply, which includes the IP address for the domain name. The browser then opens a TCP connection 116 to the HTTP server process 120 located at the IP address.

Search Result 2: US 6425003 - (Relevant Cited Portion for the second element of the first independent claim which claims mapping between “no domain name” and a “second (new) prefix identifier”):  If a match is found, then the DNS request packet is modified to re-direct the DNS request to the DNS server configured for the matched service. If no domain match is found and the user is logged into an Internet Service, then the DNS request packet is modified to re-direct the DNS request to the DNS server configured for the first Internet Service found in the user's ASL. If no domain match is found and the user is not logged into an active Internet Service, then the DNS request is not re-directed, but rather forwarded unmodified.

Search Result 3: US 6,944,167 – Although relevant, to restrict length of the article, the cited portion is not presented here.

Disclaimer:

It would be appreciated that the above prior arts have only been given for exemplary purposes after a very brief search merely to draw relevancy to the concern and no comprehensive evaluation of patentability  can be done based on these.

Step 4

It further needs to be considered of how the first independent claim passes the bar for Section 3(k). The claimed method merely aims at providing a new IP address to a user request which does not have a domain name. The method clearly does not involve any change in structure of the mechanism of data/packet communication, or packet format, or increases the efficiency of transmission, or produces a tangible output in any manner whatever to qualify the concerned test and merely gives an IP address from a pool of prefix identifiers, a step that DNS is already is configured to do.

Conclusion:

There are many more of such patents, which even though granted, might not live up to the expectations of the Applicant and be easy targets for invalidity. Also, there are many more allied issues that might crop up for discussion when more of such patents are evaluated for actual merit but the two I would last put across are:

Firstly, what worth would be such patents, both from enforceability and commercial perspective, if they would be invalidated the day they are litigated?

Secondly, what credibility would such Indian Granted Patents have if the Patentees themselves are not even confident that they would be able to enforce their rights when the need arises?