Guest Post: Reliance Entertainment gets yet another 'John Doe' order from the Delhi High Court

I'm pleased to bring to you yet another guest post from our guest blogger - Tania Sarcar a recent graduate from NUJS, Kolkata.

Reliance Entertainment gets yet another 'John Doe' order from the Delhi High Court

By, Tania Sarcar

Reliance Entertainment has recently announced that the Delhi High Court has granted it a 'John Doe Order' to prevent the illegal broadcast or streaming of its upcoming film, 'Bodyguard', which stars Salman Khan and Kareena Kapoor as the lead pair.

This order restrains websites, cable operators and Internet Service Providers (ISPs) and others from infringing or violating Reliance's copyright by illegally showing the movie. The order is supposed to be a measure to prevent piracy of 'Bodyguard' and is expected to bring down piracy levels for the film by 60 per cent according to Reliance Entertainment Vice-President Music and Anti-Piracy, Sanjay Tandon.

This 'John Doe' Order gives protection to the intellectual property owner, Reliance Entertainment, from copyright violation by prospective anonymous offenders. It thus enables an IP owner to serve the notice and take action at the same time against anyone who is found to indulge into infringing the copyright of the movie. A ‘John Doe’ order does not specify any one defendant in particular. It is meant for everyone who would infringe the copyrights of a product. The name 'John Doe' is used as a placeholder in a legal action or case for any person whose true identity is unknown- in this instance, a potential pirate interested in illegally downloading or sharing prints of the film for which the order has been obtained.

Earlier, the company had procured a similar court order for its last film, 'Singham', starring Ajay Devgan. This had allegedly brought down piracy of the film by 30%. For Singham, the Delhi High Court order did not ask for the file-sharing websites to be shut down; it only asked for the ISPs to ensure that the film in question was not illegally distributed. The trouble is that ISPs with the technology they use cannot ensure that they can monitor users to share other files which blocking only Singham. As a result there cannot ensure adherence to the order. Therefore, the ISP played safe and blocked all popular file-sharing sites. Websites such as Megaupload, RapidShare, MediaFire, DepositFiles, and others served up a static page saying that the “site has been blocked as per instructions from the Department of Telecom”. This ban was reported by subscribers of major ISPs, including Reliance, MTNL, and Airtel.”

If this is set as a precedent, one might as well say goodbye to file-sharing sites forever.

A clarification on the ‘single window’ copyright societies

In my last post I had stated that the amendments to the Copyright Amendment Bill, 2010 would now allow for only for one copyright society to subsume the functions of both IPRS and PPL. As pointed out in the comments section to my last post, such an interpretation may not be entirely accurate. The amendment would allow IPRS and PPL to continue their businesses separately provided that they re-register themselves. Having said that I don’t think that there is any bar against the Registrar of Copyrights from considering an application for a new copyright society which combines the functions of IPRS and PPL. Such a move makes it much easier for content users since they will now have to negotiate with only one body instead of two. In fact this was the logic for Select Media Pvt. Ltd. to collect royalties on behalf of both PPL and IPRS. I’m not sure of the status in other countries but I do know that the E.U. was asking India to for such a clause in the FTA that it was negotiating with India.

A first look at the ‘Amendments’ to the ‘Copyright Amendment Bill, 2010’

Thanks to Shamnad, we now have a copy of the ‘Amendments’ being moved by Minister Kapil Sibal to the ‘Copyright Amendment Bill, 2010’. The amendments are accessible over here. Most, though not all, of these amendments are based on the report of the Standing Committee which we have blogged about here. I’ve identified the most important amendments below:

(i) The ‘parallel imports’ clause: It had been reported in April of this year that the ministry was thinking of dropping the proposed amendment to Section 2(m) of the Copyright Act, 1957. The amendment would have allowed for parallel imports of books into India and significantly dropped the prices of books especially educational books. This proposed amendment to Section 2(m) has now been deleted by Minister Sibal in his amendments to the amendments. This is a big victory for the publishing industry which until now had strongly and staunchly opposed the amendments. The Minister will however have to answer to the House on why exactly he is disagreeing with the recommendations of the Standing Committee, which in its report had strongly supported parallel imports of books. Our earlier reports on the parallel imports clause can be accessed over here and here.

(ii) The Bollywood clauses: The revolutionary amendments re-defining the rights of the lyricists and composers vis-à-vis the producer in Bollywood have been retained and in fact strengthened on the basis of the Standing Committee’s report. This revolutionary clause will now prohibit lyricists and composers from assigning away and their rights and also mandate that the producer share all royalties equally with them. Therefore the lyricist, composer and the author will each get 33% of the royalties. The second set of amendments, have a lot more clarity than the original provisions in the Copyright Amendment Bill, 2010 and will undo the injustice of the 1977 decision of the Supreme Court in the IPRS case.

(iii) The ‘Copyright Board’: As you all know the constitutionality of the Copyright Board has been challenged by SIMCA before the Madras High Court. For some reason the Copyright Office told the Delhi High Court that it wanted to amend Sections 11 and 12 of the Copyright Act, 1957 which created the Copyright Board. It then went ahead and filed an affidavit before the Madras High Court defending Section 11 and 12 which had been challenged by SIMCA. We blogged about it over here. Now the Copyright Office has moved completely inadequate amendments in the form of a new provision ‘2A’ to Section 11. Although the members of the Copyright Board will now be appointed in consultation with the Chairperson of the Copyright Board the amendments fail to prescribe any minimum qualification criteria for the remaining members. The terms and conditions of the employment of the Chairperson and members will be decided by the Central Government with the caveat that these conditions will not be manipulated to the disadvantage of the members. Such delegation is impermissible in law. Parliament cannot give away such essential legislative functions to the Central Government. It however remains to be seen whether SIMCA will continue its challenge against the Board.

(iv) The disability provisions: The group of persons lobbying for wider fair dealing exception for ‘disabled’ persons have scored a complete and total victory with the Ministry accepting all amendments of the Standing Committee.

(v) The Copyright Societies: The amendments to the Copyright Amendment Bill, 2010 have brought about sweeping changes to the provisions governing the creation of Copyright Societies. On the advice of the Standing Committee the Ministry has rightfully deleted the clause which stated that only authors would have control of copyright societies, as opposed to the ‘owners of the rights’. Instead the Ministry has brought in the following amendments:

(a) ‘Single window’ Copyright Society: [update: My interpretation of a 'single window copyright society'is most probably wrong. I have corrected the same over here] The new amendments to the Copyright Amendment Bill, 2010 requires that “the business of issuing business of issuing or granting license in respect of literary, dramatic, musical and artistic works incorporated in a cinematograph films or sound recordings shall be carried out only through a copyright society duly registered under this Act”. This basically means that only one Copyright Society will now grant a single licence for literary, dramatic, musical and artistic works. Earlier this function was carried out by two copyright societies – IPRS and PPL. While the former would licence literary, dramatic, musical and artistic works, the latter would licence only sound recordings. Now this arrangement was not working out well for a majority of content users, who had demanded a ‘single-window’ licence i.e. both PPL and IPRS give them a joint licence since most content users had to take licences from both societies. As a result both these societies had appointed Select Media Pvt. Ltd. as an agent to issue ‘single window’ licences on behalf of both PPL and IPRS. As we had blogged earlier Select Media Pvt. Ltd. had made a very cool US $ 1.2 million dollars in profit last year with revenues in the neighbourhood of US $ 30-40 million dollars. If this amendment gets through Select Media Pvt. Ltd. can now no longer play the role of a ‘single window’.

Most interestingly, the provision uses the word ‘shall be carried out only through a copyright society’. I think this means that individual music companies cannot carry out their own licensing business. Everything will now have to be routed through this one Copyright Society registered under the Copyright Act.

(b)Registrations of Copyright Societies to be renewed every five years: The government having learnt from the nightmare faced at IPRS by authors, has now mandated a renewal of registration for all copyright societies every five years. This is hardly a surprise given the manner in which IPRS took the Registrar of Copyrights for a ride in 2009. We had blogged about that inquiry over here.

(c) IPRS and PPL to lose their registrations as Copyright Societies: The new round of amendments also requires all existing copyright societies to get themselves registered once again with the Copyright Office. This would mean that IPRS and PPL will lose their registrations and given the requirement of creating a new ‘single window’ copyright society, it is most likely that IPRS and PPL will either have to dissolve entirely or maybe merge before they can even approach the Copyright Office for registration as a Copyright Society.

(d) Registration to be withdraw if copyright societies are not transparent: The new amendments to the existing Bill allow for the Central Government to revoke the registration of a copyright society if the said society does not fulfil the criteria of the new Section 33A which imposes stringent transparency conditions on the copyright societies. Copyright Societies will have to publish tariffs, details of their members etc. failing which their registration will be withdrawn. Even this particular provision has been inspired by the complete mishandling of affairs at IPRS.

The Copyright Amendment Bill, 2010 is scheduled to be discussed tomorrow but it is likely that the same may not be taken up because there are already two heavy bills listed before the Copyright Amendment Bill.

Practice Pointer Series: Commercial Evaluation, An Integral Part of Out-Licensing

Tarun Khurana, one of our frequent guest bloggers, has sent us a practice pointer related to commercial evaluation.  This post would be useful for patentees, applicants and attorneys as Tarun provides an excellent overview of diligence both prior to and post patenting by providing specific cases.  (Warning: Long post follows).

Working in Technology Transfer and IP Out-Licensing domain makes one assess and evaluate commercial viability of numerous IP backed innovations across technology domains.  This evaluation helps appreciate that apart from the technology per se, there are multiple other parameters that play an even significant role in the commercialization process.  This evaluation process also helps inventors analyze their own work, not only from a technology point of view, but more importantly from a commercial viability and marketability perspective before initiating their research and investing in protecting IP relating thereto. However, most of such potential technologies do not undergo the “commercial fit test” and hence get added to Corporate’s portfolio as a white elephant with merely a show value.

In advanced jurisdictions like Israel and certain European Countries including Denmark and Finland, that there are hardly any patents filed without proper due-diligence on the future return on investment on the patent and/or without some of kind tie-up already having being done for commercialization or Out-Licensing of the technology.  To the contrary in India, even though there is a mandatory requirement for submission of details on working of the invention there exists very few cases where regular due diligence is part of the patenting process.

Hundreds of patent applications across technology domains are filed every month, with a number of them being from individual inventors and research institutes.  As individual inventors and R&D entities mostly have limited resources for commercialization of their technologies, they look out to out-license or sell the patent rights either before or soon after the grant of the patent. Licensing needs dictate the efforts required in terms of potential licensee analysis, marketing strengths, and convincing capabilities, and therefore licensing firms are chosen to represent such patented technologies and approach appropriate licensees to understand their interest levels in the technology before proceeding for discussions on terms and conditions for licenses and valuing the technology for the same.  Because such licensing efforts are generally taken on success basis, it becomes crucial for the licensing firms to assess and evaluate commercial strength of the patent and the technology protected therein thoroughly before committing to proceed with the out-licensing process.

It, however, remains a challenge to convince applicants and patentees about the commercial evaluation of each application in the overall out-licensing process.  The mind-set of the patentee that a granted patent is bound to be commercially successful is fallacious and needs to be corrected.  There is no guarantee that a granted patent will be enforceable or will lead to a commercially successful product. 

It is high time that technology commercialization, as a field of IP, be looked upon from a matured perspective, in which novelty and patentability of technology is only one of the parameters to be considered while assessing the chances of successful commercialization.  A host of other attributes play an even more important role during Out-Licensing process, some of which have been briefly discussed below through two case studies. These examples are mere illustrations and no other interpretations should be drawn from the analysis:

The first technology relates to a method and system for administering life cycle of Health insurance policy holder, in particularly a web-based solution for managing complete life cycle of Health insurance policy holder. More specifically, the disclosure relates to a web based system that is capable of managing the entire life cycle of a health insurance policy holder, right from the time he/she subscribes to a policy till the final settlement of insurance claims. The system and method described in the said patent application particularly discloses various interfaces and modules to connect the policy holder to the different stakeholders in his treatment, specially, the Doctors, the Drug Store Attendant, the Lab Assistant, the Nurses, and the Surveyor at the Insurance Company etc.

The second technology relates to a topical formulation for treatment of Warts comprising of two carrier systems, with one being a soluble sulfide and the other being a mixture of two drugs in oil in water emulsion.

Following is a small subset of parameters to be considered prior to initiation of an R&D project.  

Market Perspective: Even before the R&D process for a specific problem that is intended to be solved is started, it is extremely important to understand the market of the concerned domain as to whether the same is receptive to new technologies, especially for such technologies/products that expect royalty. For instance, in the warts application, the existing treatments available for warts include Chemical Destruction, Cryosurgery, Surgical removal method, and prescription medications using agents including Pondophyllin, Cantharidin, Bleomycin, Dinitrochlorobenzene, and Fluorouracil. The proposed formulation, on the other hand, is a topical formulation, based on sulphides alkali metals, which inherently have stability and toxicity issues. Further, sulphides based products, are typically not OTC products and hence have to be prescribed by Doctors, which is a non-preferred route of curing the warts by the patients. The market scenario also tells us that companies such as GSK, Merck, Dr. Reddy’s, and Cipla are the major players in the domain, and being a skin disorder product, which is already heavily populated, most of the focus of these companies lies in other medical indications including cervical cancer etc. Further, with a flood of salicylic acid based and non salicylic acid based products in the market, there seems to be little scope for companies to invest in such products. This is more in cases where there is limited clinical data available to the Potential In-Licensees.

Existing Technology Perspective: As was discussed above, with respect to the warts technology, a snapshot of products being right now marketed was analyzed and over 45 products including Duofilm, Salicure-17, Shaloxy-FW, Salicylix-SF, and Dr. Scholl’s were found out in the same domain. Being a heavily populated domain, introduction of a new product, which combines an active ingredient with a pain reliever, which also is quite known, would have a hard time creating excitement.

Patent Strength/Enforceability Perspective: Being granted a patent is completely different from being granted a strong and enforceable patent. A number of times, we encounter patents which although are good and bypass the market and product level analysis, are drafted and protected so narrowly that instead of in-licensing, there of more chances of the potential licensee designing around the technology. Taking for instance, the first independent claim of the web-based health insurance software, which claims:

“A web based method for managing complete life cycle of health insurance policy
holder, said method comprising acts of:

registering subscriber to policy…;

prescribing clinical tests for the insured person …;

performing the prescribed tests and updating the test results …;

commencing the treatment by admitting the patient based on the test results …;

generating discharge summary upon completion of the treatment …;

forwarding claim documents along with discharge summary to the surveyor...”

Even if it is assumed that the above subject matter is patentable under S. 3(k) of the Indian Patent Act and also overcomes the novelty and obviousness issues, with the above exemplary claim being so narrowly drafted, enforceability would always be questionable and significantly hamper efforts of Out-Licensing the patent rights.

Potential Licensees Perspective: There are often cases in which the technology has a strong market application and that there does exist a need for such a technology to improve the manufacturing process. However, even under such circumstances, out-licensing efforts might not go through because of the target potential licensees that might be involved. For instance, a wire mesh machine that allows a continuous strip being used for making a welded metal lattice is a product that would do very well in EP and US geographies but Indian companies, most of them being unorganized in this domain, would be reluctant to in-license or buy patent rights of such a machine due to parameters such as cost involved, ease of replication, among others.

Supporting Data/Prototype/Clinical Data Perspective: Another important parameter used for evaluating products/technologies, especially in the pharmaceutical domain, is the level to which the Clinical tests have been done. With most in-licensees, particularly in India, looking to evaluate in-licensing proposals based on prototypes being developed and the clinical data available, it becomes integral to provide as much supporting data as is possible along with the IP details being given in the commercialization proposal.

It would be appreciated that above mentioned parameters are only an exemplary set, and many other attributes such as patent validity, extent of estimated effort and time involved in the process of commercialization, expectations of upfront and royalty payments, research being carried out with other competing technology companies, other available in-licensing opportunities, among many others play an equally important role.

Therefore patentees should appreciate that there is more to a successful technology transfer than merely having a patent in hand and a superior technology in mind. Many other considerations play a role in determining whether the patented product would be acceptable in the market and these are the considerations that need to be analyzed before even initializing the R&D process so that there is little resentment in case after the complete R&D and patent process, one realizes that the applicability and commercial viability of the concerned subject matter is limited.

News on ‘intellectual property’ from Parliament

The much anticipated debate on the Copyright Amendment Bill, 2010 had to be postponed till tomorrow on account of Minister Sibal not being present when the Bill was called out today. The Chairperson has scheduled the debate for tomorrow.

The Minister for Law & Justice, Mr. Salmand Khurshid however initiated a discussion, today, on ‘The Commercial Division of High Courts Bill, 2009’. This debate will continue tomorrow. Interestingly the very first intervention made by the Leader of the Opposition Mr. Arun Jaitely was with regard to the valuation of IP disputes under this Bill with relation to the court-fees payable. Mr. Jaitely was one of the leading senior advocates in Delhi before he became the Leader of the Opposition in the Rajya Sabha and has extensive experience in IP cases.

In other news the Minister of State for the DIPP has laid before the Lok Sabha, the Patents (Appeals and Applications to the Intellectual Property Appellate Board) Rules, 2011. We had posted an earlier draft of these rules on our website available over here. Surprisingly the final rules are not available on the website of either the DIPP or the IPAB. The Lok Sabha was also scheduled to debate the Academy of Scientific and Innovative Research Bill, 2011 today.

Rajya Sabha to vote on radical judicial reforms for high value IP disputes

The Rajya Sabha is scheduled to debate and vote on the “Commercial Division of High Courts Bill, 2009” on the 29th of August, 2011, after it concludes voting on the Copyright Amendment Bill, 2010. The Commercial Division of High Courts Bill, 2009 seeks to transfer to the High Courts all high-valued commercial disputes valued at Rs. 5 crores (US $ 1.2 million approx). The ‘radical reform’ that this Bill seeks to bring about is with regard to procedure. The Bill has been drafted in a manner which will ensure that all such disputes are concluded within a span of a year of filing. I’ve done a more detailed note explaining the Bill over here.

The Lok Sabha had passed the Bill in December, 2009 without so much as referring it to a Standing Committee. This Bill was one of the 5 Bills that the Lok Sabha had passed in that particular session without any debate due to a ruckus over the creation of Telangana. Thankfully when the Bill was introduced into the Rajya Sabha the Chairperson of that House referred it to a Select Committee consisting of only Rajya Sabha members. The Select Committee deliberated extensively on the Bill and consulted several experts on the matter and tabled its report last year before Parliament. One of the main amendments recommended by the Committee was to reduce the threshold value from Rs. 5 crores to Rs. 1 crore (US $ 200,000). Although the Committee in principal agreed to the Bill with several amendments, the Bill was opposed by at least 2 MPs on the Committee. The main reason for their opposition was the perceived inequality at reforming the system for only high-value litigation without bothering to overhaul the entire system. The Select Committee Report itself can be found on the excellent website of PRS over here. Although the Communist parties and some other parties are opposed to the Bill, it is likely that this Bill will sail through Rajya Sabha since the BJP does not have any fundamental opposition to the Bill. Since the Lok Sabha has already approved the Bill, it will become law once the Rajya Sabha passes it.

This Bill will significantly affect the manner in which IP litigation is conducted in India since the definition of ‘commercial disputes’ includes patent, trademark and copyright litigation. Given that valuation of IP disputes is anyway left up to the Plaintiff, it is possible that most IP lawyers will value their IP suits at Rs. 1 crore so as to avail of the fast-track mechanism before the new Commercial Benches.

Having said that I must also mention that given the rigorous schedule set down by the Bill there will be tremendous pressure on the IP firms to meet deadlines for trials and it may be prudent for such firms to start recruiting more lawyers to cope with the inevitable pressure. Although I was earlier of the opinion that it was possible to finish trials and arguments, in an IP dispute, within a span of 1 year, I now have serious reservations as to whether patent litigation can proceed at such a pace without seriously compromising the rights of at least one party. have a look at the Bajaj-TVS patent dispute its been more than 3 years and the trial is yet to begin mainly because of questions of law. Unfortunately none of the IP associations seems to have brought the peculiarities of IP litigation to the notice of the Select Committee.

Rajya Sabha to debate and vote on the Copyright Amendment Bill tomorrow

The Rajya Sabha is scheduled to take up the Copyright Amendment Bill, 2010 on the 28th of August, 2010 i.e. tomorrow for a debate followed by a vote. The ‘List of Business’ available on the website of the Rajya Sabha states that the Government is seeking a debate and voting on 4 Bills tomorrow. The Copyright Amendment Bill, 2010 is third on the list and if the House is not adjourned tomorrow, it should sail through the voting process. The BJP, which is the principal opposition party has already supported the Bill. For those of your interested in following the debate you can watch it online on the Rajya Sabha website over here. It should come up for voting by around 12:00 PM.

It has been almost 10 months since the Standing Committee submitted its report, which we blogged about over here. This report had recommended a range of amendments to the existing Bill. According to the ET the Cabinet has approved the recommendations of the Standing Committee which would mean that the Bill has been amended further. Unfortunately we do not have access to the amended version of the Bill.

Darjeeling Lounge survives: Tea Board loses appeal

The Tea Board of India has lost its appeal before the Calcutta High Court to injunct the Indian conglomerate ITC Limited, and its hospitality/hotel chain, from using the word “Darjeeling” in connection with its tea lounge. In its order dated 24 August 2011, a Division Bench of the Calcutta High Court emphatically upheld the earlier decision of the Single Judge (which we reported on here and here), saying that the injunction had been refused on “well-established principles”, and that the Board had failed to make out a prima facie case even. The order is available here.

Backstory:

For those of who arrive a little after the tea has been brewed, a brief history of the facts: “Darjeeling” and the logo of a woman holding tea leaves are registered by The Tea Board as geographical indications GIs as well as certification trademarks, under the respective Acts, in connection with “tea”. The Tea Board sued the ITC Sonar, a leading Kolkata hotel, for naming its executive lounge, “Darjeeling Lounge”.

The suit hinged mainly on issues of infringement of the GI and the certification TMs, as well as for passing off and dilution. In April this year, a Single Judge of the Calcutta High Court had refused to grant an injunction to the Tea Board. The Tea Board then came in appeal to the Division Bench (DB), which refused to reverse the order of the trial court. Mr S Majumdar of S Majumdar & Co, a Kolkata-based IP law firm, brought the DB decision to our attention.

On a side note, the word “Darjeeling” and the corresponding logo are the first two GIs registered in India, numbered 1 and 2, in class 30. One would think it is entirely appropriate that the first decision involving GIs in India should be in connection with these two registrations!

The appellate (DB) order:

The DB said that the Tea Board had failed to make out a prima facie case of passing off. The court noted that the Tea Board was admittedly neither a trader of tea nor was it in the hospitality industry. The Tea Board was in fact a statutory authority which had obtained certification marks in order to protect its “authority to certify” that a particular type of tea was connected with the Darjeeling region. The Tea Board did not contend that ITC Sonar’s Darjeeling Lounge was trying to hijack this authority to certify in any way, and therefore had no case for passing off.

The Tea Board had alleged that the beverages sold and served in the Darjeeling Lounge had no connection whatsoever with the Darjeeling GI or the Darjeeling region itself (the tea-producing hill region in the eastern Indian state of West Bengal, soon to be [*groan*] renamed Paschim Banga). As a result, according to the Tea Board, the intention of the hotel to convey a nexus to that effect was ‘false and fraudulent’. The Board also alleged that the serving of a wide range of beverages (other than Darjeeling teas) at the Darjeeling Lounge was “an act of unfair competition inasmuch as it discredits the famous Darjeeling tea and misleads the [hotel’s] patrons as to the nature of the beverages served there”.

The DB also drew attention to the rights of owners of registered certification marks (section 78 and 75, Trade Marks Act) as being different from the owners of registered trademarks (section 28 and 29). “Darjeeling” is registered as a certification mark.

I thought that the Division Bench offered a very sound judgement (some of you may well disagree with me on this). But I believe this is a good precedent to have set in terms of establishing what may not be claimed as an infringement of a certification mark or a geographical indication. This is also a great opportunity for registered owners, such as the Tea Board, to better understand the boundaries of their rights, and enforce and strategise accordingly.

Note on Malar Network (P) Ltd. Vs. Arun Prasath D

In this post, I shall discuss the Madras High Court judgment dated 28^th March, 2011 which decided on an appeal directed against Single Bench Order. The judgment is available here.

Facts

The Appellant/Plaintiff Malar Network (P) Ltd., with an intention to engage in the business of Telecommunications, T.V. Channels, websites and related fields, registered the domain names “MALARTV.COM” and “MALARTV.IN” in 2005 and 2007 respectively under Class 38. The appellant, however, did not put them into use in the public domain. In the meanwhile, the Respondent registered "MALAR.TV" as its domain name with ICANN in 2009 and started using the mark.

The Appellant / Plaintiff sought interim injunction restraining the Respondent / Defendant from passing the products and services off as "MALAR TV" or "MALAR.TV" or "MALARTV.IN" or "MALARTV.COM". The Single Bench declined to grant injunction on the ground that the defendant was the prior user of the trade name “MALAR.TV”. However, the defendant was asked to modify his website as “ARUN’S MALAR.TV”. Aggrieved by the above orders of the learned single Judge, the Plaintiff filed the instant appeals.

Arguments of Appellant

It was contended that the respondent infringed the trademark “MALAR TV” by using “MALAR.TV” with a similar emblem in the internet. The respondent did not have the right to infringe the trademark of the appellant on the ground that he had been using the mark "MALAR.TV" since 2009. It was also submitted that prefixing "ARUN’S” before “MALAR.TV" would not change the character of the said usage. 

Arguments of respondent

The defendant contended that the appellant had not used the domain names “MALARTV.IN” and “MALARTV.COM” in the public domain. Since they were never placed in public domain, the right over the trademark did not accrue to the appellant. Further, as he was the prior user of the domain name “MALAR.TV” and had been in business since May, 2009, injunction should not be granted. Further, exclusivity could not be claimed over “Malar” & “Television” which were generic words in print and electronic media. The respondent's domain name had a dot in between “MALAR” and “TV” whereas the Appellant's domain name had a dot between “MALAR TV” and “COM”, “MALAR TV” and “IN”. Furthermore, pursuant to the orders of the learned single Judge, the Respondent added the word "ARUN'S" to his website "MALAR.TV". Therefore, in appearance, the present domain name of the Respondent was quite different from its earlier appearance when it was just "MALAR.TV"

Judgment

It was held that any word, abbreviation or acronym which had become 'publici juries' could not be exclusively claimed by anyone. The Court held “MALAR” and “TV” to be generic terms. Further, it was held that a mere presence in the register would not prove that the mark had been used (citing Corn Products Refining Co. v. Shangrilla Food Products Ltd, AIR 1960 SC 142 (SC)) It was noted that the appellant did not commence any business under the name “MALAR TV”.  Since the domain names “MALARTV.COM” & “MALARTV.IN” or trade name “MALAR TV” did not earn goodwill or reputation as a result of non-use, “passing off” could not be held against the respondent

Considering the aforesaid aspects, the Court refused to hold a prima facie case in favour of the Appellant / Plaintiff. Further, the Appellant had not commenced the business so as to sustain any loss either towards infringement or towards passing off. Therefore, the balance of convenience was held to be in favour of the Respondent. Further, in the absence of non-commencement of business, the issue of irreparable injury caused to the appellant did not arise. The High Court, therefore, upheld the Singh Bench Order directing the dismissal of applications and modification of "MALAR.TV" to "ARUN’S MALAR.TV" which was complied by the Respondent.

Some brief comments:

Firstly, from a legal perspective, is “ARUN’S MALAR.TV” different from “MALAR TV”? In Times Internet v. M/s Belize Domian Whois Service Ltd & Others, the Delhi High Court held that “indiatimes” which was the essential component of the domain name, was used by the defendant without any explanation. This could confuse an ordinary netizen and could result in associating defendant's portal with that of the plaintiff company [covered here]. A prefix or suffix, addition or deletion of dot, plurality or singularity of a registered mark would not create a distinct mark. It was, however, pertinent to note that the instant order for modification was only an interim measure.

Secondly, while denying prima facie case for infringement, Court made an observation which was quite incoherent: “Since the class of people who are browsing internet as well as website are literate persons, who would not likely to be carried over the different names of the Appellant and Respondent, we are of the firm view that there is no prima - facie case for infringement.” Unfortunately, this observation was made without any reasoning whatsoever and evidently prejudicial to the interests of rapidly growing netizens. A reasoned approach would have been definitely appreciated.

Note: Trademark search shows that a rectification application has already been filed against “MALAR TV”.

Guest Post: Factors Contributing to Orphan Works vis-a-vis a viable Option

We are extremely pleased to bring to our readers a short piece by Nirajan Man Singh on orphan works and the viable alternatives for protection works from being orphaned, with a specific analysis of the Google Books settlement. Nirajan was a student of NALSAR University and then pursued his masters at UC Berkeley School of Law. This particular paper was written during his time at Berkley Law, under Professor Pamela Samuelson.

You can read the entire paper on Nirajan's SSRN page here. For our earlier posts on the Google Books Settlement, you can go here, and for our analysis of the settlement you can go here.

Google Books Settlement: My Analysis

As you know, Google has scanned millions of books from the collections of major research libraries for its Google Book Search (GBS) initiative.  For books that were published prior to 1923 or that are U.S. government works, Google considers the books to be in the public domain; it makes these book available for free downloads or display uses in response to search queries.  For in-copyright books, Google currently makes a small number of snippets of book contents available in response to search queries (unless rights holders have come forward to authorize more extensive uses or to ask that snippets not be made available for display).  Google also makes what it calls “non-display” uses of book contents, such as testing out search algorithms on the corpus of GBS books, refining its automated translation tools, and developing services for GBS. 

The Authors Guild and five major publishers sued Google for copyright infringement, claiming that scanning in-copyright books, indexing their contents, and making snippets available in response to user search queries infringes copyrights.  (Neither plaintiff has challenged non-display uses of the books as infringement). Needless to mention, there are insurmountable issues to be pondered upon, but few issues that I would like to analyze for this post are as follows:

Was Google’s scanning in-copyright book to index them and serve up snippets a fair use of them?

It is a fair use because:

a.       Purpose of Use: Google showing snippets by scanning in-copyrighted works is highly transformative and is in lieu with Kelly v. Arriba and Perfect 10 v. Amazon, where a thumbnail image in a search engine was found to be a fair use as it was transformative and had public benefit ingrained in its character.

b.    Nature of Work:  Though snippets are the exact copy of the original works, as held in Campbell v. Acuff Rose, a ‘creative work’ is strongly protected, but is not dispositive.

c.     Amount Used: Here Google has to strike a balance between the amount that was taken and the purpose. In Nuñez v. Caribbean, copying of the entire picture was justified, though the purpose was commercial, it was transformative and the defendant showed good faith by giving proper attribution and lawfully obtaining the photos.

d.     Market Effect: The display of snippets by Google might promote the books and increase their sales. There is no displacement, but a likelihood of market expansion. As held in Bill Graham Archives v. Dorling, since the use was within a transformative market, and plaintiff did not suffer market harm, a copyright owner may not anticipate exploitation of transformative markets.

Are Google’s non-display uses of in-copyright books fair use?

Google is likely to make non-display uses of books not in the settlement or those books which opts out from the settlement or orphan works which are already in public domain. Who is to know? Such non-display uses will improve Google’s search technologies because they will have access to more data than other search engines. It will allow Google to develop new services such as machine translation tools. On the basis of the new services rendered to the customers, Google can levy higher fee, resulting in price gouging. Since, Google is likely to maintain a monopoly as it has no competitors, how can such purpose, nature or market effect of non-display uses amount to fair use?

Would the answer be different insofar as the books are “orphans”? How much of the contents of orphan books should be available for display uses under the fair use doctrine, in the absence of orphan works legislation?

Google need not make non-display uses of orphan books, as no right-holder would come forward asking not to make available the snippets for display. Incase, Google chooses to make non-display of orphan works, it is even worse, as no one will be aware of orphan works that have reached public domain. Google making non-display uses of orphan works also implies that they are not performing reasonable diligent search for the owners of the works, as the books are secretly hidden in their corpus which they can exploit as much as they want. As a result, my answer remains the same as in 1(c). In the absence of Orphan Works Legislation, an orphan work is treated as any other copyright work henceforth as held in Campbell v. Acuff-Rose Music, a parody must be able to “conjure up” the original; for a parody, taking the original’s heart is acceptable in order to conjure up. Likewise, Google should display the contents as required to serve the purpose of the display.

As between authors and publishers, whom do you think should be held to be the owner of rights to authorize Google (or anyone else) to digitize in-copyright books?

I think the authors should have the rights to authorize Google or anyone else to digitize in-copyright books. There would be numerous authors who must have given publishing houses exclusive rights to “print, publish and sell the work in book form” but such exclusive rights is different from letting someone “publish their works in digital format over the internet (ebooks)”, a distinction that was highlighted in Random House v. Rosetta Book. In this case the agreement distinguished pure content (the work) from the format of display (in book form), as such contract was a limited grant. The case also compared itself with Boosey & Hawkes v. Walt Disney and highlighted how they have broader language in their agreement as it covered the same medium(film and video) rather than totally different media(book and ebook).

Assuming that Google loses its fair use defense and a court decides that unauthorized scanning of the contents of whole books is per se an unfair use.  What (if any) kind of injunctive relief should the court order?  Should the GBS corpus be impounded and destroyed?

After eBay v. MercExchange plaintiffs are not “entitled” to an injunction, it is the court’s discretion, based on the four factors: 1) irreparable injury suffered by the plaintiff, 2) inadequacy of remedies available at law, 3) balance of hardship, and 4) showing that public interest would not be disserved by a permanent injunction. The Google corpus is a valuable resource and should not be destroyed, it can be impounded by the government provided they create a governing body to regulate it, or else it is a waste of a tremendous resource capable of copyright reform.

We would like to thank Nirajan for sending in this piece and hope to receive more such papers in the future.

SpicyIP Announcements: Call for Submissions - Special Issue on Dispute Settlement at the WTO

The Editors of TL&D invite submission of unpublished, original works for publication in the forthcoming Special Issue of TL&D (vol.4, no.1 (2012)). The theme for the Special Issue is: Dispute Settlement at the World Trade Organization. Manuscripts received by 31st October, 2011 shall be considered for publication in the TL&D Special Issue on Dispute Settlement at the WTO. Submissions can be made online through our website, ExpressO, LexOpus, or by way of e-mail. Please see the submission guidelines, and in case of any doubt, feel free to contact us.

Trade, Law and Development is a bi-annual, student-run, academic journal published by National Law University, India.

 

Inspired by the best traditions of scholarly journals worldwide, Trade, Law and Development seeks to explore inter-disciplinary perspectives on the international legal order, focusing on issues of relevance to the international trading system, environment and development; as well as policy issues. In keeping with our institutional belief that knowledge is empowerment, TL&D seeks to establish itself as an authority in these areas and contribute to the dissemination of ideas and promotion of free thinking in the developing world. 

Trade, Law and Development offers a forum for the free exchange of ideas and generation of constructive debate on legal and policy issues surrounding international trade, environment and development. Towards these ends the Journal publishes original works from a diverse and distinguished pool of authors, comprising, inter alia, scholars, practitioners, and students. Committed to improving access to research, TL&D is a signatory to the Budapest Open Access Initiative and is indexed on the PKP-Open Archives Harvester2 archive.

The call for paper can be found here. The author guidelines can be found here.

TenXC patent litigation-arguments concluded

Arguments were concluded in the TenXC patent litigation last Friday.  We now eagerly await the decision.  As discussed in our previous posts, here and here, the arguments from both sides went predictably-the plaintiff arguing patent was valid and infringed and defendants that the patent was invalid.  Of course, this is the general case in patent litigation.

The defendants argued that all they had to show was a credible challenge to the patent, and because there was no presumption of validity of a patent under Indian law, they had to overcome a very low threshold by showing a credible (non-frivolous challenge).  This challenge was shown by referring to the (rather cryptic office action) at the Indian patent office and the proceedings at the USPTO and at the EPO.  Both the US and EP patent offices have rejected the similar claims in at one office action.  Between our last post and present, the US patent office has issued a final rejection to the application.  After the final rejection, there was an interview with the applicant/representative where the Examiner formally stated that more search was required in view of the new art.  The defendants also cited additional art, that in their opinion, disclosed the novel features of the plaintiff's patent.  Other arguments included the recent grant of the patent, the process of grant at the Indian patent office, and the role of the PCT application/examination.

The plaintiff, on the other hand,  discussed that the first US action included a 102 and a 103 rejection, and the 102 rejection was withdrawn in the final office action.  TenXC argued that the patent was granted in Canada, India and Indonesia.   Additionally, TenXC argued that the application had undergone extensive examination at the PCT stage and at the national patent offices in India and Canada.  It was argued that because the application had undergone  multiple examinations at different levels (2 at PCT including a negative written opinion, and a later positive IPRP) and at different patent offices, the patent was valid.  With respect to the newly cited art, it was argued that it was not relevant.  

As a side note, the cited art (in the currently proceeding before the DHC) was disclosed in a recently filed information disclosure statement (IDS) to the USPTO and the decision whether the art was relevant or not left on the Examiner.  We will carry a separate post to update about the judgment when delivered.

Christian Louboutin Sees Red—New York Court Refuses to Stop Yves Saint Laurent's Use of Red!

The followers of Spicy IP, especially the fashion-conscious ones, may be interested in having a look at the following guest post by Sujata Chaudhri, Esq,.a lawyer specializing on U.S. trademark law, a former partner at Cowan, Liebowitz & Latman, P.C., a leading U.S. IP law firm, as well as an adjunct professor at the University of New Hampshire Law School and a member of the Advisory Council of Franklin Pierce Center for Intellectual Property. The Spicy IP team thanks Ms. Chaudhri for sharing her expert comments and analysis of this case-decision with us.

Summary:

On August 10, 2011, Judge Victor Marrero of the Southern District of New York denied Christian Louboutin's ("Louboutin") motion for preliminary injunction against Yves Saint Laurent America, Inc.'s ("YSL") use of red color on outsoles of women's high heeled shoes. At issue in this case were several models of YSL's shoes that had bright red outsoles as part of a monochromatic design in which the shoes are either entirely red or blue or yellow, etc.

Although the court acknowledged that a niche group of "well heeled" consumers associated Louboutin's lacquered red outsoles with him, it refused to extend protection to the red outsoles. Rather the court found that the red color serves non-trademark purposes particularly because fashion is dependent on colors. Allowing Louboutin to have a monopoly over a single color would "cast a red cloud over the whole industry, cramping what other designers could do, while allowing Louboutin to paint with a full palette." Furthermore, Louboutin's federal registration for the color red as applied to footwear ("Red Sole Mark") did not help him. As discussed below, the court held that Louboutin failed to demonstrate that its Red Sole Mark merits protection.

The court held that because Louboutin did not demonstrate that its Red Sole Mark merits protection, it need not consider whether YSL's shoes are not likely to cause confusion with Louboutin's shoes, nor whether Louboutin is likely to suffer irreparable harm absent an injunction. Judge Marrero invited YSL to cancel the Red Sole Mark.

Facts:

Renowned women's shoe designer, Christian Louboutin is known for high heeled shoes that have a glossy vivid red outsole. Louboutin first thought of these red outsoles in 1992 and in his own words, he regarded the color red as engaging, flirtatious, memorable and the color of passion as well as sexy. Sometime in early 2011, YSL began offering several models of shoes that featured a bright red outsole as part of a monochromatic design in which the shoe is entirely red or yellow or blue, etc. After attempts to have YSL withdraw the challenged models from the market failed, Louboutin sued YSL for trademark infringement among other claims. Subsequently, Louboutin sought a preliminary injunction to prevent YSL from selling the challenged shoes during the pendency of its trademark infringement action.

The SDNY denied Louboutin's motion for preliminary injunction.

The Opinion:

At the heart of the SDNY's opinion was the question whether Louboutin's Red Sole Mark merits trademark protection. Judge Marrero acknowledged that a single color alone is "sometimes" protectable as a trademark "if it "act(s) as a symbol that distinguishes a firm's goods and identifies their source, without serving any other significant function." However, the judge held that in the fashion world, single colors have significant non source identifying functions. Just as painters cannot stake a claim to single colors, fashion designers could also not stake such a claim because this would stifle creativity. Moreover, single colors, when used on fashion items, are functional because they affect the quality and cost of the items.

To deal with the "creativity" aspect, the court took the help of a hypothetical involving two stellar modern masters--Picasso and Monet. (Judge Marrero acknowledged that lawyers could argue that this hypothetical is inapt and distinguishable.) The judge hypothesied that Picasso has a problem with Monet's water lillies because the distinctive indigo color of the lillies is the same or too close to the "exquisite shade that Picasson declares is "the color of melancholy."" As per the court, "[n]o one would argue that a painter should be barred from employing a color intended to convey a basic concept because another painter, while using that shade as an expressive feature of a similar word, also staked claim to it as a trademark in that context." Every painter and designer has the "freedom to pick and choose color from every streak of the rainbow" and "allowing one artist or designer to appropriate an entire shade... would unduly hinder not just commerce and commerce and competition, but art as well."

As for the functionality aspect, the court concluded the lacquered red color serves a functional purpose. It is well-settled that a single color is functional if a monopoly over its use will put a competitor at a significant disadvantage because the color is "essential to use or purpose" of the article to which it is applied or if it "affects its cost or quality". Here, the court held, color is functional because in Louboutin's own words, he chose the lacquered red color because it gave his shoes "energy", is "engaging" and "sexy" and "attracts men to the women who wear my shoes." On the other hand, YSL used red in its shoes to evoke Chinese design elements. Moreover, YSL's shoes are entirely red in color—to indicate that they are part of the brand's history and coordinate with clothing items offered in the same collection. It follows that the red outsole is an "object of beauty" and "[t]o attract, to reference, to stand out, to blend in, to beautify, to endow with sex appeal—all comprise nontrademark functions of color in fashion."

The court was also of the opinion that the red lacquered outsole affects the cost of the shoe, though not in a manner traditionally understood in a functionality analysis. Here, adding the red lacquered finish to a plain raw leather sole costs more than producing shoes without the red lacquered finish. However, for fashion designers such as Louboutin and YSL, "the higher cost of production is desirable because it makes the final creation that much more exclusive, and costly."

Unfortunately for Louboutin, the court criticized its Red Sole Mark and invited YSL to cancel the mark. First, the court took issue with the vagueness of the Red Sole Mark because it claims the color red without any limitation as to shade. (In its reply brief, Louboutin identified the exact Pantone shade of its red color for the first time. However, the court held that Louboutin could not limit its registration by representations made in its litigation with YSL. Accordingly, the color in the registration governs. Even if the court were to accept the limitation of Louboutin's color to the Pantone shade identified in the litigation, YSL represented that it had never used that exact shade on its outsoles). This, the court held, was "overly broad and inconsistent with the scheme of trademark registration established by the Lanham Act." Permitting Louboutin to get a monopoly over the color red would prohibit competitors such as YSL from using red on outsoles of its shoes for stylistic purposes discussed above. Second, the goods covered by the registration of the Red Sole Mark are "women's high fashion designer footwear." This broad identification of goods could cause Louboutin to prevent competitors from using red not only in high fashion shoes, but for other articles as well, including articles that have been designed to match with monochromatic shoes. Third, the registration claims protection not just in the base of the color red, but also its gloss. Thus, the court held that it is not clear whether the Red Sole Mark extends protection to a "Chinese red" outsole that was not shiny, but entirely flat.

The court also addressed the oft used "color depletion" theory in support of its opinion. It held that if Louboutin is allowed to own one shade of red for an outsole, another designer can "just as well stake out a claim for exclusive use of another shade of red, or even Louboutin's color, for the insole...."

Louboutin proposed that the court draw out a forbidden zone above and below the exact Pantone shade stated in the reply brief. However, the court rejected this proposal on the ground that its acceptance would give Louboutin rights far beyond the injunction requested by him. The court envisaged that if it were to accept Louboutin's proposal, other designers would need to seek advance clearance from Louboutin himself or go to court for a declaratory judgment that their proposed red sole does not infringe Louboutin's mark, "thereby turning the judge into an arbiter of fashion design."

Conclusion:

The tone of the opinion indicates that Judge Marrero meant to sent a message to fashion companies which take aggressive stances with regard to their intellectual property. The court could have simply denied the preliminary injunction by finding that Louboutin was not likely to succeed on the merits because there was no likelihood of confusion or that YSL’s use of a red outsole on all red shoes was a fair use. Instead it chose to attack the very existence of Louboutin’s trademark rights.

The court acknowledged that Louboutin had secondary meaning in its red outsole and ownership of a federal registration. However, it appears that the very broadness of the registration, as the court saw it, might have been a death knell for Louboutin. Judge Marrero clearly appears to favor free competition over exclusive rights. It is possible that this case might have had a different outcome if Louboutin had objected to shoes that were not entirely red (the court also wondered why Louboutin had not previously objected to YSL shoes which were also monochromatic red), but for example, a black high heeled shoe with a red outsole. That would have made it difficult to argue that the competitor needed to make the outsole red.

This dispute between the two French giants is certainly not over. Louboutin's attorneys have indicated that Louboutin will appeal the decision. Furthermore, the trademark infringement action is still pending. The next important event in the case will be the results of a court conference at which Louboutin is required to show why its registration should not be canceled.

What the Opinion Means for the Indian Fashion Industry:

In recent times an increasing number of Indian designers have forayed into the US market. Undoubtedly these designers will be interested in protecting their intellectual property, including single colors, in the United States. In the event any entrant into the US market desires to apply to protect her or his right in a single color, adding a design feature to a single color should be considered. If, however, a designer applies to protect a single color at the US Patent and Trademark Office, the application should describe the color with specificity. It is probably not enough to say red or magenta. It is advisable to mention a Pantone shade, if possible. Furthermore, the goods covered by the application should also be described narrowly. The application must also include a particular placement of the color.

This decision was handed down by the Southern District of New York. We do not know for sure how this case will fare in the Second Circuit Court of Appeals or the fate of the pending action for trademark infringement. However, at this time, if an Indian designer wants to litigate a case involving single color, she or he would be ill-advised to bring the case in the Second Circuit.

CIC fines CPIO of Trade Marks Registry Rs. 25,000

One of our readers recently sent us a decision of the Central Information Commission (CIC) in the case of Shri Kamal Kishore Arora v. the Central Public Information Officer (CPIO) of the Trade Marks Registry. The case is available for download over here.

The Appellants in this case are practicing advocates who had filed applications under the Right to Information Act, 2005 with the Trade Marks Registry requesting for information pertaining to two trademarks. The CPIO had failed to reply to these applications within the statutory deadline of 30 days. As a result Mr. Kamal Kishore Arora filed appeals with the Central Information Commission (CIC).

After giving the CPIO an opportunity to be heard the CIC noted that although the CPIO had claimed to have replied to the appellants, she had failed to produce any evidence to this effect. As a result the CIC fined the CPIO Rs 25,000 for a delay of more than 100 days in replying to the Appellants.

Such decisions are welcome and come as a huge relief to those of us who have had to deal with the cavalier attitude of the bureaucracy towards the RTI Act.
H/T: Devanshu Jain

INTA Discussion on Trademark Litigation and Pre-Enforcement Strategies

(Images taken from here)

The followers of Spicy IP may be pleased to know that the International Trademark Association (INTA), that has organized a host of significant and informative discussions and programs in the past (see here, here and here), is coming up with what promises to be yet another relevant and lively discussion on trademark litigation and pre-enforcement strategies in India.

The discussion is scheduled to take place on Saturday, September 10, between 10:30 a.m. and 2:00 p.m. at Season I Hall, Hotel Royal Orchid, No. 1, Golf Avenue, Adjoining KGA Golf Course, Airport Road, Bangalore- 560 008, India.

The discussion promises to be a useful vehicle for networking and trading thoughts with one’s peers, comparing and assimilating new strategies and addressing common issues and challenges facing the trademark and intellectual property community. Among others, IP counsels (in house and independent), business development managers and marketing managers are likely to find it to their benefit, in the form of tips on building a robust enforcement strategy for their brand, getting insights on available legal options in different situations and also analyzing past judicial trends.

The registration fee is US $ 40 per person and includes tea and a buffet luncheon. The fee is nonrefundable upon confirmation of this registration by INTA. (Online credit card payment is the only acceptable method of payment) In case the registrant is unable to the discussion, a substitute may be sent in his/her stead. Reservations are accepted on a first-come, first-served basis. The standard limit of the session is 30 registrants.

In case of any further comments or queries, readers are requested to get in touch with INTA's India Representative, Simran Daryanani Zainulbhai at sdaryanani@inta.org.

For immediate registration, click here.

IP and Freedom Fighters

On the 65th birthday of a nation that represents one of the world's oldest civilizations, let me (on behalf of SpicyIP) wish all of you a wonderful independence day.

Rather than pondering the meaning of independence and how our IP offices are still not fully "independent", I thought it might be more interesting to explore the nexus between IP and our freedom fighters i.e. those that helped India break free from the yoke of colonial rule.

Let's start with the father of the nation, Mahatma Gandhi, the biggest brand of them all. Not too surprisingly, his trademark image was sought to be used by Montblanc, a leading manufacturer of luxury pens. Unfortunately, in the face of stiff public opposition and a law suit, Montblanc had to roll back its plans to introduce this special series of "Gandhi" pens. In view of the fact that any use of the Mahatma's name or imagery (without due permission) violated a central law (Emblems and Names Act), the matter was finally settled and Montblanc agreed not to sell the pens.

But the name Gandhi cannot remain hidden from the roving eyes of commerce for too long (paradoxical rather, given that the man himself was known to shun all things material). It turns out that a TM application was recently filed in Ecuador for "Arroz Gandhi" (which effectively translates to "Gandhi Rice"). The application was promptly opposed by Lalit Bhasin, a leading lawyer most notably reputed for being the fiercest opponent of foreign law firm entry into India.

Hopefully Shan (one of our bloggers) will being you a more detailed and nuanced discussion on this along with bloggers from the wonderful IPTango (we thought it'd be fun to collaborate with other blogs and churn out articles of interest to both sets of readers).

Second, we have Maulana Abdul Kalam Azad, a reputed educationist and freedom fighter, whose book "India Wins Freedom" was embroiled in a major copyright controversy. Well he didn't exactly write it, but therein lay the controversy. He dictated it to another noted educationist (Prof Humayun Kabir) in Urdu, who copiously transcribed all of this thoughts (and more) into English. The dispute naturally turned on "authorship". The Delhi High Court held that in view of the fact that Prof Kabir was more than a mere scribe, the resulting work was one of joint authorship.

This jurisprudence came in somewhat handy when assessing the Chetan Bhagat copyright controversy involving the Bollywood blockbuster "3 idiots". Interestingly enough, Aamir Khan, who produced the movie and played the lead role as well is a direct descendant of Maulana Abdul Kalam Azad. Speak about linkages!

So there you have it--at least some nexus between IP and our freedom fighters. Needless to add, if you know some interesting connections in this regard, feel free to share in the comments section.

Google buys Motorola Mobility for $12.5Billion

Google today announced that it will purchase Motorola Mobility for $12.5Billion.  This decision comes on the heels of the Nortel patent auction where Google had missed out on the erstwhile Canadian telecom giant's assets.  With the purchase of Motorola Mobility, Google now owns about 17000 patents in the wireless domain.  This number is almost three times the patents in the Nortel patent auction.  Motorola Mobility was formed earlier this year when Motorola hived off its operating units into separate entities-Motorola Mobility and Motorola Solutions.  It is extremely reasonable to state that Motorola Mobility has a fairly large number of essential patents relating to wireless technologies and hence Google can safely develop wireless hardware based on the Android platform and compete more closely with Apple, HP, and Microsoft.  It is fairly reasonable to state that Motorola Mobility has very few number of patents relating to use of a touch screen based device.
In our opinion, the acquisition of Motorola Mobility may help Google defend itself and its partners (like HTC/ or Samsung) from lawsuits from Apple, Microsoft or HP (or any combination thereof) related to the Android platform.