FICCI announces Certificate Course on IP Laws and Practice: Oct-Nov 2012

Federation of Indian Chambers of Commerce and Industry (FICCI) and Global Institute of Intellectual Property (GIIP) are jointly conducting the "Certificate Course on Intellectual Property (IP) Laws and Practice".

Conduct of Course      :        October 15 – November 28, 2012

Classes                        :         Monday to Friday at 6.30 pm – 8.30 pm

Venue for Classes       :        FICCI, Federation House, Tansen Marg, New Delhi – 110001.

Number of Seats         :         100

Last Date of Receipt of Applications    :     24^th September 2012

The course is of 6 weeks duration and includes 60 hours of interactive classes.  The course offers world class training opportunity and opens new career opportunities. The course provides practical exposure & hands-on experience on all forms of IPRs, international treaties, patent processes, prior art searches, claims drafting etc. The curriculum also includes case studies from US and Indian jurisdictions.

The Course is highly recommended for Students from management, law, science and related disciplines, working professionals in law, science and related disciplines, academicians, legal fraternity, patent agents, researchers and innovators, entrepreneurs, aspirants for IP career, MSMEs.

For further details like program curriculum, unique features, program schedule, application and selection procedure, etc., the readers are requested to visit the website www.ficciipcourse.in or e-mail at ipcourse@ficci.com .

Guest post: Samsung v. Apple - Billion Dollar Game

We bring to you another guest post from Tarun Khurana.  Tarun has blogged for us earlier here. This time Tarun has chosen the recent billion dollar verdict against Samsung and in Apple's favor.  Swaraj had blogged about this case earlier here.  While Tarun concludes that at least some of Apple's patents can be designed around, I feel that it unlikely that Apple's dominance in the "overall look and feel" can be easily challenged.  Apple has the first mover advantage, and this decision firmly underscores that the fact that Apple is reaping the rewards of investing in intellectual property.  Long post follows.

24’th Aug 2012 was another milestone date indicating the value that IP can (of course in geographies which have respect and appreciation for IP!!!) hold and govern for a corporate. More than the award, it’s the injunction and respect for IP that matters and boosts the confidence of Corporates that have innovation as a core philosophy of their existence. The story of contention between Apple and Samsung is not new and has been on in various geographies for over 2 years now but the verdict of last Friday did make waves, tremors of which would have surely been felt strongly in South Korea as well. Apple was awarded USD 1.05 Billion in damages and it was found that Samsung was infringing on valid design and utility patents. Although, the hearing for injunction (to be given by a judge and not jury) is due for 20’th of September this year, such a unanimous decision by the jury on almost all patents being used by Apple is sure to increase the probability of getting injunctions on most tablet/smart-phone products of Samsung.

Although the jury did mention that Apple could not prove that Samsung had broken any antitrust laws or violated its agreements with the UMTS standards bodies and also that Samsung couldn’t have enforced '516 and '941 3GPP patents against Apple due to "patent exhaustion", the mandate of this article would be to give a brief on the patents that Apple was able to enforce against most devices of Samsung including Galaxy S II variants, Galaxy S, Galaxy Tabs, Galaxy S 4G, Gem, Indulge, Mesmerize, Nexus, and Vibrant among many others.

US patent 7,469,381, which relates to a window bounce back feature, is the biggest bet for Apple as Claim 19 of ‘381 led to most infringement counts of Samsung products. Claim 19 states:

19. A device, comprising:... programs including:..instructions for displaying a first portion of an electronic document;....instructions for detecting a movement of an object on or near the touch screen display; instructions for translating the electronic document displayed on the touch screen display in a first direction to display a second portion of the electronic document, wherein the second portion is different from the first portion, in response to detecting the movement; instructions for displaying an area beyond an edge of the electronic document and displaying a third portion of the electronic document…in response to the edge of the electronic document being reached while…; and instructions for translating the electronic document in a second direction until the area beyond the edge of the electronic document is no longer displayed to display a fourth portion of the electronic document.

The primary mandate of this patent is to show an area beyond the edge of the document when movement of an object is continued and reaches an edge.  Most but not all products of Samsung also infringed on a zooming and scrolling Patent US 7,844,915 ‘915 of Apple. The contended claim 8 of Apple claims the following subject matter:

Claim 8. A machine readable storage medium storing executable program instructions which when executed cause a data processing system to perform a method comprising:....receiving a user input, the user input is one or more input points applied to a touch-sensitive display that is integrated with the data processing system; creating an event object in response to the user input; ..determining whether the event object invokes a scroll or gesture operation by distinguishing between a single input point applied to the touch-sensitive display that is interpreted as the scroll operation and two or more input points applied to the touch-sensitive display that are interpreted as the gesture operation….

Yet another patent that was successfully enforced is tap to zoom patent US 7,864,163 (’163) of Apple, of which claim 50:  A portable electronic device, comprising:..one or more programs… wherein the structured electronic document comprises a plurality of boxes of content… instructions for detecting a first gesture at a location on the displayed portion of the structured electronic document; instructions for determining a first box in the plurality of boxes at the location of the first gesture; instructions for enlarging and translating the structured electronic document so that the first box is substantially centered on the touch screen display…

 

Apart from the utility patents discussed above, four other design patents were successfully enforced by Apple. D618,677 as shown on the right covers the basic shape of the iphone.

D 593,087 also claims the shape of the iphone and an exemplary shape, as claimed.  Finally, D604,305 (‘305) Patent covers the trade dress registration of the iPhone's home screen.

Further, a quick look at Samsung’s Fascinate, against which the maximum monetary award of USD 1, 43, 539, 179 were awarded, could probably give us at least an idea on the potential infringement on the design patents:

Conclusion:

One key take away for the moment is for relatively smaller companies that are playing in the touch screen space. With Apple’s patents being held valid and enforceable, utility patents, typically which relate to zooming and scrolling (‘915) need to be kept closely monitored. The other two utility patents covering the bounce back and tap to zoom features can still be designed around (possibly) along with the UI (specially covered through D’305) so as develop a non-infringing method of implementing the same features.

Breaking: EBC granted injunction against Westlaw for Infringement of Copyright

The District Judge of Lucknow has passed an interim injunction against Thomson Reuters and its Indian operations Westlaw and Indlaw – Defendants, for infringing the copyright of Eastern Book Company’s (EBC)-Plaintiffs, law report, Supreme Court Cases (SCC). 

The order restrains them from infringing copyright in the SCC law reports and from selling and distributing or making available to the public either through CDs or the internet copies of the databases which infringe the copyrights in SCC during the pendency of the suit.

The court held based on an illustration submitted by the Plaintiffs, that the editorial notes of law books, journals, online journals of the Plaintiffs publishing SCC exactly matched the editorial notes of the Defendants online journals. On this basis the court held that a prima facie case had been established and granted an injunction to the Plaintiffs. The order was granted on 22 August 2012.

14th September 2012 has been set as the date for filing the written statement and framing issues. 

The Supreme Court had earlier in the landmark decision of EBC v. D.B. Modak (2008) 1 SCC 1, recognised the copyright of the Plaintiffs law reports. We had covered the judgment in our previous posts available here and here.

We would like to thank Sumeet Malik for bringing this order to our attention.

Apple v. Samsung - An 'innovative' decision?

" For us this lawsuit has always been about something much more important than patents or money. It’s about values. We value originality and innovation and pour our lives into making the best products on earth." 

- Tim Cook, in his memo to Apple's corporate employees after the $1.049 billion dollar verdict that went Apple's way in it's smartphone patent battle with Samsung, in US District Court, Northern District of California.   

 "Good artists copy. Great artists steal" 

- Steve Jobs, 1994 

This post was meant to review the implications that this decision would have on innovative activity, however I came across some very interesting bits while I was looking deeper into the decision. As far as my take goes on it, the short version is that while Apple is no saint, Samsung did willingly copy certain features and designs. And Samsungs 141 pages of internal documents pretty much admitting the same certainly helped their decision. However, the jury did a very suspect job in deciding the verdict here and there are certainly shoddy aspects that went into the decision. In any case, this is not over yet and this will almost certainly go into appeal. Having said that, at least on first look, it appears that this is good for innovative activity. For the long version and the implications and explanations, read on.

Apple started off by claiming almost everything they could think of - a huge list of trademarks, trade dress registrations (including on the packaging boxes!), design patents and utility patents. Frankly, some of their claims just seem ridiculous to me - take a look at the analysis of the claims in this link here. Judge Koh got the list trimmed down substantially and the trial started with one registered trade dress claim, limited unregistered trade dress claims, 4 design patents and 3 utility patents - by Apple. The 3 utility patents were the 'pinch to zoom', the 'bounceback to signify no more scrolling space' and the 'tapping to zoom' patents. These claims were to be examined against about 25 Samsung products each. And 5 counter patent claims by Samsung including the 2 FRAND patents regarding 3g technology. These 2 patents cover industry standard technologies so it should've been a given that Apple was using them. There were settlement talks which failed which could only mean that Apple and Samsung could not agree on settlement terms. Apparently Apple had asked Samsung for $30 per phone. If this is true, I think I can understand why Samsung refused to settle this and may have even come out better with the $1 billion in damages. 

A 9 member jury decided the verdict after being given a 100 page jury instruction document and a 20 page verdict form with about 700 questions and came back in less than 22 hours of deliberation! That is to say, 9 ordinary members of society unanimously decided a complicated and nuanced suit, which also happens to set precedence for this issue, in 22 hours. I frankly think a panel of well read IP scholars would've had trouble deciding and agreeing on all these issues in such a short period. That is, not to say that the jury was malicious, but it does seem quite likely that with a weekend ahead of them and with their mindset already favouring Apple after Samsung clearly infringed upon some of the patents at least, the jury went ahead and hurried through the process. And unsurprisingly, there is proof that the jury was not as thorough as it could've been.

Inconsistencies: 

In one instance, the jury said that Samsung did not infringe, but then assigned about $2million in damages for inducement. When there is no infringement, proving inducement to infringe seems a bit of a stretch. In another instance, they ruled no infringement at all but still had damages for a few hundred thousand dollars. It makes one wonder then, one what basis they handed out any of their damages. Judge Koh sent these inconsistencies back to the jury and the jury asked the judge what the inconsistencies were. These were then sorted out and Samsung had ~$2million removed to bring the total damages down to $1.049 billion.

There are some other aspects which I haven't quite understood about the verdict yet. Apple went into the case with an injunction against the Galaxy Tab for infringement of design patent, yet amongst the devices that the jury decided on, the iPad was the only clear loss for Apple with the jury stating there had been no infringement. 

More confusingly, with respect to some of the software patents, some devices were found to be not infringing. Given that Samsung's phones all run the same Touchwiz interface on Android 2.2 or 2.3, how is it that most Galaxy devices were found to infringe upon the 'bounceback' patent for instance, but not the Ace or the Intercept. I'm really curious as to what was different about the few devices they found non-infringing when all the others were found to be infringing. 

To be perfectly honest, it almost seems like the jury was randomly throwing in a few questions in Samsung's favour so as to not appear like they've gone all out in Apple's favour. 

Added to this: Samsung's 2 FRAND patents (patents which are required to be licensed on Fair, Reasonable and Non-Discriminatory terms as they are necessary to comply with standard setting bodies) were being used by Apple. What's important here is that Samsung offered Apple these licenses at a 2.4% rate or at $14.40 / iPhone or iPad and Apple claimed that this was unreasonable. The infringement seems a given in this case and the question seems to be more surrounding FRAND terms. Instead the jury just found non-infringement in this case. Presumably, they were convinced by Apple's argument in court that Apple bought the parts from Intel, and Intel had valid licenses from Samsung and that patent exhaustion would apply in this case. Personally, I am confused why Apple negotiated (and disagreed with) licensing terms with Samsung if it did not need to at all. 

                                                

Statements from the jury:

A few statements from the jurors with added emphasis by me: 

Most tellingly, the statement from the jury foreman Velvin Hogan, that the jury had reached the decision without needing the instructions. 

In an interview after the trial, he also then said "We wanted to make sure the message we sent was not just a slap on the wrist," We wanted to make sure it was sufficiently high to be painful, but not unreasonable." 

Unfortunately, not just one but two of the rules that the jury didn't read (as mentioned above), specifically say that the damages were not to penalize but merely to compensate. 'Jury'-activism much?

After the trial, CNET spoke to a another juror. 

"It didn't dawn on us [that we agreed that Samsung had infringed] on the first day," Ilagan said. "We were debating heavily, especially about the patents on bounce-back and pinch-to-zoom. Apple said they owned patents, but we were debating about the prior art [about similar technology that Samsung said existed before the iPhone debuted]. [Velvin] Hogan was jury foreman. He had experience. He owned patents himself...so he took us through his experience. After that it was easier. After we debated that first patent -- what was prior art --because we had a hard time believing there was no prior art."

"In fact we skipped that one," Ilagan continued, "so we could go on faster. It was bogging us down."

He continued on to state that they were not impatient through the process though. 

It may be too late for Apple to start hoping that the jurors stop speaking out about their jury duty as these statements are probably already cause enough for Samsung to take up with the court. 

Conclusions and Implications:

As for this case, the only conclusion seems to be that this is far from concluded. There seem to be enough grounds for Samsung to appeal and in the meanwhile Apple is sure to go in for stronger claims as well. This is a battle that will probably go on to the Supreme Court. 

The big question is what the implications to innovation are and what the effect this will have on consumers - and I agree largely with what the team at Verge seems to think about this. The implications to Samsung beyond the money in damages will not be much. Apple does not have any injunctions against Samsung. It certainly is a possibility that Apple will now ask for these injunctions, but it is too early to tell which way that will go and if it'll matter at all. Most of these phones are being phased out and the new line have either worked around Apple's patents already or are not endangered by them.  The Android OS development will no doubt have a huge role to play in this but one can rest assured that Google is observing and making notes from all these developments. The software developments here have been proven against Samsung's Touchwiz interface and claiming them against HTC or Motorola or any other company would probably not be bolstered too much by this decision. I could be wrong however and I think Rajiv will be following up on with a post on the impact this will have on the Android ecosystem.

Given that Samsung already has such a large section of the smartphone market, this decision will certainly not throw them off completely, if at all. But they will be more wary of their competitors' patents. Microsoft with their new Windows phones will probably be very happy with this decision as this might help boost their products. 

However, given that patents are here, whether they like them or not, companies will be more likely to (a) be more wary of them and (b) cross-license and settle. Apple was able to wield such power this time because they had a huge advantage coming in strong with patents. This is not likely to happen again since eyes are always following patent filings nowadays. One can also hope that weak patents (such as 'rectangle with rounded edges') will be challenged before they can be used as offensive patents. Software workarounds will probably become the norm - so there will be plenty of duplicative work but given  the three factors which somehow combine here - (a) that companies will be more wary of patents and (b) at the same time want to increase their market share, while (c) software workarounds are relatively easy to do, I would guess that innovative activity is likely to increase. Unfortuntely, more immediately, all the litigation expenses that companies are all going through with these patent wars, will probably translate into higher costs for the consumer. 

I'm less sure what this means for Apple though. Apple has been very trigger happy in these patent wars so far and I'm really not sure what they're so worried about to be filing suits all over the world at the rate they are. Apple makes beautiful, easy to use products and frankly, Apple consumers generally already know what they're buying when they buy Apple products. 

But these court cases represent huge litigation costs for them and one that they are apparently willing to make. It does also seem to appear that their product improvements have not been as large in the past year or so and Steve Jobs' demise is probably a factor in this. Are they worried that they can't keep up with product development and hence are trying to stop their competitors? Because if this is the reason, they may have unknowingly triggered faster improvements from their competitors by being so over-zealous with their patent rights. But then again, Apple has given surprises to the market before - perhaps they can still continue to surprise. In any case, these patent wars certainly do represent a huge waste in resources and it is very very unfortunate that it seems to be leading to companies wasting resources duplicating efforts with workarounds rather than forging straight on. The only clear winners here seem to be the patent lawyers and it is certainly a good time to be one. 

--

For this post I collated data from several websites and news sources across the internet. However much of my information came from several pages within the very informative Groklaw and The Verge. 

SpicyIP's Weekly Review

A new feature that our SpicyIP team will be serving you is a weekly roundup of notable IP developments both in and out of India.

Image from NYtimes

The highlight of the week is undoubtedly the huge Apple-Samsung verdict announced late Friday evening. In an extraordinarily short period of time (3 days) the federal jury in a Californian court came to its conclusion and awarded $1.051 billion to Apple in damages while finding Samsung guilty on most counts of infringement. A few of us at SpicyIP will be writing follow up pieces this coming week on what impact this decision may have. Earlier the same day, in another battle of the Apple-Samsung patent war, a South Korean court held that both companies infringed each others patents and injunctions were passed both ways.

What's been happening in India: 

'Radio and Music' covers the musical gratitude here. 

The Copyright (Amendment) Act, 2012 is rightfully garnering lots of excitement with our copyright scholars. While ILS, Pune is hosting a 2 day national seminar (25, 26th August, with SpicyIP's Amlan Mohanty speaking as well), the NUJS Law Review is featuring a special edition on "Copyright (Amendment) Act, 2012 - Welcome Change or Missed Opportunity". (Interested contributors should submit their entries by Nov 15th, 2012). However, it's not only the IP world that's interested in the new amendments, the Parliament was treated to a musical 'thank you' on 23rd August for the new clauses which enable artistes, song writers and performers to now collect royalties.

The other reported developments this week also seem to be mostly Delhi High Court and copyright related.
The Delhi High Court upheld the moral rights of authors under Section 57 of the Copyright Act in a case where the defendant failed to give credit to the author while also falsely attributing authorship to another person.

Shan Kohli covered another Delhi High Court judgement which dealt with the copyright-ability of advertising slogans. While finding that the slogan 'Shauq Badi Cheez Hai'  was not copyrightable, the Court also held that the plaintiff's unregistered trademark was not entitled to any damages; and that there was no case for Passing off as the plaintiffs had not been able to show reasonable ground for apprehending deception, nor had they proven acquired reputation of the slogan.

Prashant's persistent efforts at finding out the details of CSIR's patent licensing finally bore fruit as they sent across a comprehensive list of all the patents it has licensed out in the last 10 years showing that more than 400 licensing deals had been made!

In an important development in Indian copyright jurisprudence, Amlan takes us through another recently decided Delhi High Court judgement which looks into the possibility of using the De Minimis principle in conjunction with Fair use in copyright law. While it becomes clear that this principle can be used as a valid defence in infringement cases, it's nature and application are still uncertain. (post 1) (post 2)



Notable international developments: 

The Court of Appeals for the Federal Circuit (USA) released the newest addition to the Gene Patent debate - stating that isolated DNA is patentable in AMP v. USPTO. The decision also stated that method claims for screening potential cancer therapeutics via in vitro changes are patentable, but method claims for comparing or analyzing gene sequences were not patentable. (Patently-O) (IP-Watch)

Patent wars in the mobile sector continue. While Apple and Samsung are at each other's throats in many forums, they have also gotten together along with Google to try to buy Kodak's patent portfolio for a little less than what Kodak seems to think they're worth. Somewhere in between, Google has also released a statement saying that patent wars are not helpful to innovation. In the mean time, Motorola Mobility, a new Google subsidiary has brought a suit against Apple to the International Trade Commission for infringement of 7 non-FRAND patents.

In the area of media piracy, a UK court found SurfTheChannel's operator Anton Vickerman guilty of "conspiracy to defraud" for hosting a site which indexed but didn't host links that included infringing content and sentenced him to 4 years in prison. Techdirt certainly doesn't seem to happy about the decision. In the meanwhile, a New Zealand court reaffirmed that Kim Dotcom (founder of Mega Upload, a file sharing site) should be allowed to see some evidence to justify the extradition that the US is trying to do in order to charge him with copyright infringement.

Copyright trolls have found some interest this week too. Mike Masnick highlights a recently appointed judge Beryl Howell whose position immediately prior to appointment was an industry lobbyist (RIAA) ! He writes that she seems to be a lot friendlier to copyright trolls (non practising entities - NPEs) that most other courts. David Schwartz and Jay Kesan have also written an incisive paper on the role of NPEs in patent litigation. A summary of the article is available here with a link to the whole article at the end.

Finally, several top and leading IP scholars recently convened at Stanford for the IPSC and Gigaom covers the top 8 highlights of the conference. Definitely some very interesting pieces in there.




And that's it for this week's IP highlights! If there's something notable that's been missed out, please drop in a line about it in the comments section.

SCP's Questionnaire on Exceptions and Limitations to Patents

Recently WIPO's Standing Committee on the Law of Patents (SCP) sent out a questionnaire to member states regarding member state's exceptions and limitations to patent rights. The responses have come in and inadvertently a terrific resource for comparing and contrasting different nuances of patent laws in various countries has been formed. For instance, the public policy objectives of each exception and limitation that a state has are now conveniently listed and displayed; as well as whether the state has concluded that such exception or limitation has served it's purpose (though these seem to be mostly 'still under observation' reports). 

As I was scrolling through the different country reports I was disappointed to see that India did not bother to send in a response to the questionnaire. Now I'm not entirely sure what the purpose of this questionnaire was intended to be. But the last session of the SCP in May, 2012 was ended with most countries upset by the lack of being able to find common ground to proceed talks on. Many developing countries had taken issue with the lack of examples of patents hindering access while other countries said that there was a lack of flexibility by countries. The executive summary of the last meet is available here. The next session is to be in November this year. With the current discussion including patents and public health, exceptions and limitations to patent law, and reports on the international patent system; India's silence seems to be a notable one. If any of our readers have more information regarding this, it would be welcome. 

The responses to the Questionnaire are available here. 

How Trivial is 'Kajra Re' and can Vasundhra Das' Life Help Indian Copyright Law Progress?

In my previous post I examined the possibility of using the maxim of de minimis non curat lex (which translates to the law will not resolve petty or unimportant disputes) in the context of Indian copyright law. I concluded that yes, in fact, one might rely on this doctrine to fight a claim for copyright infringement under the Indian Copyright Act. To do this, I relied on the decision in the case of India TV v. Yashraj Films (Delhi High Court, August 2012). In this post, I will briefly set out the case facts and the reasoning of the court. 

I. FIRST CASE: SAB GOLMAAL HAI ADVERTISEMENT 

The first case involves the use of a copyright protected sound recording in an advertisement. 

a) Issue: 

The issue at hand was whether the physical lifting and the use of half a line from the popular song 'Kajra Re Kajra Re Tere Kare Kare Naina' from the film Bunty and Babli constitutes copyright infringement. 

b) Analysis:

It must be mentioned that only the lyrics "Mera Chain – Vain Sab Ujhda‟ and the accompanying musical score were used in the advertisement. This amounts to a total of 3 seconds only. The advertisement is set in a small shop where the shopkeeper and the attendant are listening to the radio. It is here that the single line is reproduced along with the musical score. The ad goes on to show the shopkeeper struggling to maintain his business and depicts the plight of those of resort to adulteration. It ends with the line - "Milaawat karne waalon ka yehi hoga haal. Aap dekhte rahiye "Sab Golmaal Hai‟, har Shanivaar sham 7 baje".

Having already examined the idea of the de minimis in the previous post, I will restrict myself to the application of the de minimis factors to the present case facts. 

c) Application of the de minimis factors 

(i) the size and type of the harm: 

It was found that only 5 words had been physically lifted and the judges considered this to be too trivial and insignificant to warrant an actionable claim. It is also useful to refer to the judges' criticism of the Bridgeport decision wherein the physical lifting of a mere two seconds of a rap song was held to be infringement on the reasoning that the lifting lacked intellectual input. Thus it is clear that the judges did not consider the lifting of a single line to cause sufficient harm to the copyright owners. 

(ii) the cost of adjudication 

To answer this point, the judges actually asked the counsel for the plaintiffs, Mr. Pravin Anand, what the copyright owners would charge the defendants if they had actually approached them for a license to use the line in the ad. Mr. Anand responded that they would probably not charge them if it was a socially relevant ad, but if it was for a commercial purpose, then it would cost about Rs. 10,000. The judges thus found that it was too trivial a sum compared to cost of adjudication. 

(iii) the purpose of the violated legal obligation 

This is perhaps the most important factor in the determination of whether the de minimis maxim applies or not. The court reasoned on the following grounds: 

First, it was a consumer awareness ad and hence lacking any profit making objective. As such, the intention was merely to educate the masses about the scourge of adulterated products and not to appropriate the goodwill or efforts of the copyright owner. Neither was there any actual personal monetary gain flowing to the advertisers. Lastly, it was possible that the ad was a part of the CSR plans of the company and hence the purpose is undeniably socially relevant.

(iv) the effect on the legal rights of third parties 

To answer this point, one may refer to the second factor. However, this factor was not discussed by the court. 

(v) the intent of the wrongdoer 

An analysis of this factor will draw from the 'purpose' test and whether there was an intention to commercially exploit the owner's work. It was found that there was no intention to violate/steal (the emphasis was on the kirana shop and how a radio is common in such a shop) and merely to educate the public. Thus, it would appear that the judges wished to look at the ad in totality, without focusing on the mere act of infringement to determine the intention of the defendants. In their analysis, there was no dishonest motive and being a consumer awareness ad, this particular case also passes the fourth de minimis test. 

Thus, in the first case, applying the maxim of de minimis , the court found that there was no case of copyright infringement under the Indian Copyright Act. 

II. SECOND CASE: VASUNDHRA DAS ON 'INDIA BEATS' TALK SHOW 

In this case, the celebrated Bollywood singer Vasundhra Das was invited to a talk show 'India Beats',  broadcast on India TV. During the course of the show, she sang small bits of nine songs (previously performed by her for different Bollywood films), based on request. A live orchestra was also present to provide the backing musical score as she song. Additionally, video clips from the respective movies were also played for some of the songs. 

a) Issue: 

The counsel for the defendants conceded that authorisation from the copyright owners should have been sought for the reproduction of the video clips. However, it was argued that there is no copyright infringement in the public performance of the sound recordings as performed by Vasundhra Das on the talk show. 

b) Analysis: 

For starters, I am a little unsure why a concession was made with respect to the video clips. If fair use principles can be applied for the reproduction of the sound recordings, I see no reason why the same could not have been argued for the video clips (of obviously short duration) that were also displayed as part of the program. Given that the issue of substantiality/amount is not a factor, I don't see a distinction being made between copyright protection for sound recording and audio-visual works under Indian copyright law in this context at least. I have made several videos using short 10 second clips of different videos/movies and considered the mash-up to be perfectly fair use under copyright law. But perhaps I am missing something here. 

A brief round up of the songs performed on the show is provided below. Keep in mind only parts of the song were performed and not the entire song: 

1) "Shakalaka Baby‟ from the movie Nayak. She sings a stanza for 1 minute and 33 seconds. 

2) The English bits of the song "O Ri Chori‟, from the movie Lagaan. No video clips of the movie were shown. 

3) "Rabba Rabba‟ from the movie Aks. The live orchestra provided the musical score, and a 17 second clip from the movie was also shown in the background. 

4) "Soni Soni‟ from her album 'Meri Jaan' 

5) "Chaleyan Jaise Hawaein‟ from the movie Main Hoon Na, with the orchestra giving the musical score and four short durations clippings from the movie being broadcasted. 

6) "Salam Namaste‟ from the movie with short video clips from the movie displayed as well. 

7) "Salaamey‟ from the movie Dhoom, without any movie clips. 

8) "It‟s the time to disco‟ from the movie Kal Ho Na Ho with the movie clipping shown in the backdrop. 

The plaintiffs claimed copyright in 7 of these songs. 

c) Fair Use argument 

The defence counsel tried to argue that the fair use provision under S.52(b) relating to 'reporting of current events' was applicable here. But the court very curtly rejected this argument and rightly so, holding that the program clearly did not report current events, although it may have done so in an ancillary manner. 

d) De minimis factors analysed 

In this case, the court did not analyse each of the factors separately. It however focussed on the fifth factor - the intent of the wrongdoer. Here, the judges observed that the underlying intention was only to inform viewers of the life of the famous singer Vasundhra Das and since the her past performances were the only way to show the milestones in her career, it cannot be accurately stated that there was a dishonest intention to appropriate the plaintiff's works. 

The judges also focussed on the fact that the guest being a famous Bollywood singer, the show would obviously focus concern itself with singing only and it is impossible to separate her life from her past performances. It also made the relevant observation that the outcome might have been different if there was less chatting and only performance of songs during the entire show. However, the total airtime was 45 minutes and the singing lasted a sum total of less than 10 minutes, and hence the de minimis claim is greatly strengthened. This would, in my opinion, also relate to the first de minimis factor of the size/harm caused to the plaintiff and given that the amount of infringing content is exceedingly song, it is a fit case for the de minimis maxim to be applied. 

There is always the likelihood that the first factor in de minimis analysis and the third factor in the fair use analysis (amount and substantiality) will be conflated, but that is an inherent defect in the copyright law system as such, as I had observed in my previous post, and is not open to remedy. 

Thus, overall it is amply clear that this decision of the Delhi High Court has paved the way for the de minimis maxim to not only apply in copyright law cases in India, but also to successfully dispute a copyright infringement claim; and successfully at that.

Is the Delhi High Court the Fairest of Them All? Fair Use & De Minimis Examined

I recently attended a roundtable conference on Patents and Copyright where Professor Shyamkrishna Balganesh, noted copyright scholar from the University of Pennsylvania, was talking about the development of the fair use doctrine in a U.S. context and how there is an unstated dependence on institutions (the judiciary/ U.S. Copyright Office) to do this task. I was concerned that India might have to suffer the burden of such institutional dependence, given the slow pace of case law development and the relative ineptness of the Indian Judiciary in understanding technological advances and its impact on copyright law.

In my view, the courts in India just don't do enough (and can't, given the long & protracted litigation trends in India) to advance the fair use doctrine in India and I had suggested that this institutional burden be shifted to the Indian Copyright Office, to resolve fair use issues (for example whether 'jailbreaking' in India is legal or not) quickly without having to go to courts. 

But a recent decision of the Delhi High Court (August, 2012) has all but changed my mind, given the level of detail with which they have treated this matter. I will discuss the case facts and operative parts of the judgement in the following post, but for now, I will analyse the important issues to emerge from this judgement on the development of the fair use defence under Indian law. 

I consider this to be not only an important academic issue that scholars and students can examine in depth, but also important for practitioners who might have to rely on alternative defences where Section 52 of the Indian Copyright Act seems insufficient. 

ISSUE: 

The fundamental issue at hand is whether the legal doctrine of de minimis non curat lex can be used in a copyright law context to fight a claim for infringement in India. The associated issues revolve around whether de minimis constitutes a defence separate from the fair use defence provided under S.52 of the Indian Copyright Act, or it is to be used in conjunction with the latter. 

DE MINIMIS IN COPYRIGHT LAW 

The judges in this case focussed their attention, and in my view, have made very relevant observations on the application of the de minimis non curat lex maxim in copyright law. So what does this doctrine mean? De minimis is translated as 'the law does not concern itself with trifles'. Thus, simply put, the maxim basically means that law will not resolve petty or unimportant disputes. 

It is obvious that this maxim has important implications for copyright law, given the massive volume of petty copyright 'infringements' that take place on a daily basis without us even realising it. 

- Have you ever printed a poster of your favourite band to hang in your room? Infringement. 

- Have you ever sung Happy Birthday out loud ('publicly performed') at a birthday party? Infringement.

- Have you taken a picture of a copyrightable work on your smartphone? Infringement. 

But you, the courts and I will agree that such cases should not be adjudicated in a court of law. They're just too trivial to waste the time of the courts to resolve the dispute. 

THREE PATHS OF DE MINIMIS IN COPYRIGHT LAW 

The judges (Justice Pradeep Nandrajog and Justice Manmohan Singh) after scrutinising available literature and case law, identify three distinct paths in the field of copyright law in relation to the maxim of de minimis.

1) SUBSTANTIAL SIMILARITY 

It is found that the doctrine of de minimis has an important impact on the question of 'substantial similarity'. So to say that the impugned use is 'de minimis' is to say that the alleged infringing work is not substantially similar to the original, and therefore one can escape liability on this ground. 

So from a practitioner's perspective, this would be useful to argue in cases where there is a dispute involving portions of copyrightable works being copied literally, although it differs in structure/form. But for example, the case recently reported by Shan involving the television show 24 and the allegedly infringing Indian version 'Time Bomb', will not be a fit case to argue the de minimis factors since the 'structure/format' itself was alleged to have been copied (besides the fact that the commercial nature of this venture will weaken the argument considerably). It is perhaps also important to keep in mind that 'observability' is an important aspect of the test of substantial similarity (basically, 'what would the audience think?') and hence the application in audio-visual works might be considerably different. 

The judges observe that there have been conflicting decisions on when copying of literal/non-literal expressions have been held to be more than de minimis, thus giving rise to an actionable claim - and this is a continuing source of concern on establishing the application of de minimis in cases involving 'substantial similarity'. But to my mind, this is only a question of degree, and practitioners can take solace in the fact that in cases where there is a distinct structure with only small bits of literal expressions being lifted, the de minimis maxim should certainly apply.

2) OTHER AREAS OF LAW 

In declaring the need to apply the de minimis doctrine as applied in other areas of law to the law of copyright as well, the judges relied on the decision Davis v. Gap. It becomes quite clear that copyright law is a field that witnesses the most cases of trivial violations, and if it is applied to other areas, then why not copyright law? I have elaborated upon this point in greater detail below. 

3) FAIR USE ANALYSIS 

Another path chartered by the Courts, is to apply de minimis to the fourth factor of the fair use test - the effect of the use upon the potential market for or value of the copyrighted work. To put this another way, one could state that de minims will apply if it shown that it will only cause trivial (insignificant) harm to the copyright owner. I found this to be the most interesting and a a very keen observation on the part of our Indian judges. 

The issue that then arises is this: is this a distinct defence or is it to be used in conjunction with the fair use defence under Section 52 of the Copyright Act? From a reading of some cases that deal with this issue, it is discerned that there are two distinct theories applicable here: 

Firstly, the maxim can be used as an alternative to fair use in cases where the damage done is trifling. Secondly, as a help to describe the conclusion with respect to a factor of fair use. 

Thus, it is inconclusive whether a new substantive right has been created to rebut an infringement claim, by use of the de minims maxim, or if it is merely of persuasive value in arguing a Section 52 defence. But it is fairly clear from this decision that de minimis can be used in copyright law as well. 

JUDGES ARGUE WHY DE MINIMIS SHOULD BE USED IN COPYRIGHT LAW AS WELL

The judges provide three main reasons: 

1) Firstly, they say that the fair use concept is a bad theoretical fit for trivial violations. I do not entirely agree with this sentiment since certain fair use defences such as 'for personal/private use' are conceptually based on the de minimis doctrine. However, it is still a valid assertion. 

2) Secondly, they say that de minimis analysis is much easier. This is very persuasive given David Nimmer's extensive analysis of over 60 fair use cases, which shows that there is no discernible test in determining what constitutes fair use and what persuades a judge to decide a fair use case either way. A de minimis analysis on the other hand, is less subjective in my opinion. 

3) Thirdly, they say that a de minimis determination is the least time consuming and it is in the interest of the parties and the courts to use it. Again this is a valid point since litigation involving fair use have dragged on for ages in the past. 

It is perhaps also important to reference the objections raised by Pravin Anand in the course of this hearing to this point. Mr. Anand relied on the treatise of the renowned copyright scholar Professor David Nimmer where he says that de minimis is not a viable copyright infringement defence. However, the judges rejected this argument stating that the mere lack of consistency in judicial opinions on this point is no ground to conclude that de minimis is not a viable copyright infringement defence. 

DE MINIMIS FACTORS 

Given that de minimis has been held to be a valid defence to a copyright infringement claim, it is useful to set out the factors in such an analysis: 

(i) the size and type of the harm, 

(ii) the cost of adjudication, 

(iii) the purpose of the violated legal obligation, 

(iv) the effect on the legal rights of third parties, and 

(v) the intent of the wrongdoer 

CONCLUSION 

Thus, it is fairly clear from this decision that despite the relative uncertainty about its nature and application, it is clear de minimis can be used in copyright law as a valid defence to a claim for copyright infringement. Aside from the recent decision in the MySpace case which I have covered here and here, I find this to be one of the most significant Indian copyright law cases this year - if not for the simply fact that it explains the concept in detail, it is also useful to practitioners in providing an alternative defensive path, where S.52 of the Indian Copyright Act falls short. And in a world where copyright 'violations' in the strictest sense of the law occur left, right and center, I think this is an invaluable decision for Indian copyright law. 

I will be examining the application of this maxim to case facts in my next post.

CSIR finally discloses details of patent licensing: More than 400 patents licensed over last ten years!

Finally, after almost 6 months of RTI applications, appeals and reminders, the Council for Scientific & Industrial Research (CSIR) has provided me with a comprehensive, lab-wise, list of all the patents that it has licenced in the last 10 years. The only information not provided was royalty figures but CSIR has promised to disclose even these figures in the not so distant future. The entire reply from CSIR can be accessed over here. (The print was small and hence a little unclear after the scan - I'll try and get a soft copy of the list)

I’m glad to note that, contrary to popular opinion, CSIR has actually been quite successful in licencing of its patents. It was a pleasant surprise to browse through the list of over 454 patent licencing deals. Please note that this does not mean that 454 patents were licensed since the list repeats certain patents, since they were licensed to different parties in different years. For instance, the patent, or rather the patent application, for ‘Virgin Coconut Oil’ has been licensed to multiple parties at different instances. I’ve not yet had the time to scrutinize the entire list but I’m estimating that at least 400 individual patents have been licensed to individual parties. In one of its earlier replies, CSIR had disclosed that it had 1,872 active patents in India. This means that 400 out of 1,872 patents have been licensed i.e. 21.3% of patents are commercialized. [Update: In a press release dated 26th September, 2012 a Minister has stated that CSIR has licensed only 9% of its patents. The press release can be accessed over here] Again, this figure may not be completely accurate since a lot of the patents in the list are at still at the stage of patent applications and at least a few of them are US patents but nevertheless it is an indicator of the impressive potential of CSIR. 

The range of technologies licensed by CSIR labs is diverse and covers several areas including pharmaceutical inventions, medical diagnostics, water filtration, food technology, mining and construction technologies, chemical technologies etc. Similarly, the range of commercial entities to which these technologies have been licensed to is equally diverse and includes companies and small business across India to multi-national companies based out of the U.S., Malaysia, Tanzania and Italy. 

Some of the licensees include Cadila Pharmaceuticals, Nicholas Piramal, General Electric, Nostrum Pharmaceuticals, DRDO, HAL, Assignee-Signal Stop LLC, USV Ltd., Pepsi, Cocoa-Cola, NMDC. Rajasthan Mines & Minerals Ltd., Tata Chemicals, Ranbaxy, Shreya Life Sciences, Emcure Pharmaceuticals. Apart from these entities, several patents have been licensed to what I presume are smaller companies and in some cases individuals or generic categories such as ‘farmers’. 

The information disclosed in response to my RTI application reveals that CSIR does seem to have an active network to licence its patents. It would be interesting to study how CSIR has been marketing its patents so far – do they outsource this work or do they have their own technology transfer offices? The only problem seems to be that there is little co-ordination at the national level since each CSIR lab seems to act in isolation from the larger CSIR network. This is precisely the idea behind CSIR-Tech Ltd. which company would act as a single stop selling point for all CSIR patents but as we’ve discussed earlier on this blog, the idea of CSIR-Tech appears to have been wasted by the top leadership at CSIR. 

Another point that needs to be relooked is whether CSIR should continue to aggressively continue with it foreign patenting strategy. In the list provided by CSIR it appears that only a handful of its US patents are being licensed. Of course, if CSIR was to tie-up with ‘invention capital’ companies like Intellectual Ventures in order to exploit its patents in the developed markets of the U.S. and the E.U. it may improve its track record with its foreign patents. CSIR clearly has great potential, provided its top leadership can get its act together.

Copyright in Advertising Slogans?: Godfrey Phillips India Ltd. v Dharampal Satyapal Ltd. & Another

This case dealt with the question of copyrightability of advertising slogans. We had earlier blogged on this issue over here. It was decided in early July this year by the Delhi High court. The full judgment is available here.




Facts

The parties in this case are both pan masala manufacturers. Plaintiffs alleged that the Defendants had copied their advertising slogan, Shauq Badi Cheez Hai and brought the suit against them alleging infringement of copyright, passing off, unfair competition and dilution. The case was brought against the Defendants slogan Swaad Badi Cheez Hain.  Plaintiffs stated that they had spent more than Rs. 25 crores on this advertising campaign. It was highly successful with the customers and they had also applied for registration of the slogan with the Trade Marks Registry. On that basis they stated that they are entitled to copyright protection on their original literary work, statutory trade mark rights and common law rights.

Infringement of copyright

The court held that the slogan Shauq Badi Cheez Hai does not fall within the scope of artistic or literary work under the Copyright Act. The slogan was a combination of common words. It was not an outcome of great skill. It was a commonly used sentence in Hindi and used in day to day life. In coming to this decision the court mentioned the position in Nimmer on Copyright, which states that words and phrases such as slogans are not subject to copyright.

Infringement of Trade Mark

The court held that since the Plaintiffs had only applied for registration of the trade mark and the mark had not yet been registered the Plaintiffs would not be entitled to any statutory remedy. It was further held that both advertisements were very different and were not likely to cause any confusion in the minds of unwary customers. The products of both the Plaintiffs and Defendants were clearly visible and noticeable in the advertisements. 

Passing Off

The law relating to passing off was discussed at some length by Pathak. J who emphasised that the gist of a passing off action is deceit. For succeeding in a passing off action, Plaintiffs would have to prove that their slogan had acquired reputation sufficient enough to connect the product of the Plaintiff with the slogan by the consumers.

Further it has to be shown that the use of such slogan or deceptively similar slogan would be sufficient to deceive the customers into thinking that the Defendant’s goods are that of the Plaintiff.  Actual deception need not be proved but reasonable ground for apprehending deception must exist.

The court held that the Defendants had neither copied the idea nor theme of the Plaintiff’s advertisement. Both the slogans convey different meanings. There was no chance of any confusion or the consumers getting deceived by the slogans. Both the advertisements and slogans were distinct making no possibility of confusion in the minds of the consumers to accept the product of the defendant as that of the Plaintiff.

However this does not mark the end of the case, the Plaintiffs have decided to appeal this decision.

On the decision...

Having had a look at both ads, I agree with the judgment in this case. The advertisements don’t resemble one another and apart from a few words in the slogan being similar, they come across as two different products. Further, the Defendants prominently display their product in their advertisement leaving no room for intended deceit. Take a look at the videos of both ads available here and here to make up your own mind about them and let us know what you think.

Finally though the Plaintiffs alleged unfair competition and dilution by the Defendants, these aspects were not discussed in the judgment.

SpicyIP Announcement: NUJS Law Review Special Issue on the Copyright (Amendment) Act, 2012

SpicyIP is glad to announce that the NUJS Law Review is inviting submissions for its special issue on ‘The Copyright Amendment Act, 2012: Welcome Change or Missed Opportunity?’. The flagship journal of the National University of Juridical Sciences (NUJS) was launched in 2008 under the aegis of its Founding Editor-in-Chief, Professor Mahendra P. Singh. 

Below is a call put out by the Editorial Board: 

The Copyright Amendment Act, 2012 recently passed by both houses of parliament promises to thoroughly revise the laws currently governing the Indian Copyright regime. This legislative moment, provides an appropriate opportunity for academic reflection on the proposed changes, their probable impact and a holistic appraisal of the provisions as they now stand. The Editorial Board of the NUJS Law Review invites contributions for its forthcoming special issue on “The Copyright Amendment Act, 2012: Welcome change or missed opportunity?”. 

Interested contributors should submit their respective entries no later than 15 November, 2012 to nujslr@gmail.com

Miscredited authorship violates moral rights of authors says Delhi High Court

In a recent decision, the Delhi High Court on July 5, 2012 granted a permanent injunction against OCA Productions Pvt. Ltd restraining them from broadcasting ‘Ek Kadam Aur’, a TV serial based on Indian novelist Maitreyi Pushpa’s autobiographical work ‘Kasturi Kundal Basey’. Acclaimed documentary filmmaker and National Award winner Arun Chadha filed the suit [CS (OS) No. 1096/2009] claiming authorship over the TV serial and sought damages for breach of special rights under Section 57 of the Copyright Act, 1957. 

(Image from here)

On January 1, 2007, the Plaintiff entered into an agreement with Ms. Pushpa to obtain exclusive rights to produce TV serial based on the book with the same title. Consequently, the Plaintiff entered into another agreement on January 9, 2007 with the Directorate of Adult Education (DAE) assigning copyrights in the proposed serial in return for funds. Sometime around March 2008, the Plaintiff sought services from Optimum studios owned by one the defendants for editing the serial. Upon completion of the work, the Plaintiff stated to have requested the defendants to delete any copies of the work. 

Close to a year later, the Plaintiff was informed that certain episodes from his TV serial have been broadcasted in Doordarshan Kendra of Bhopal as part of ‘Ek Kadam Aur’. After making enquiries with Doordarshan, the Plaintiff and the DAE found out that the defendants made false representations about the authorship of the TV serial. The Plaintiff averred that Defendants’ serial was an exact reproduction of his work, except that credits for direction and production were not given to the Plaintiff. Furthermore, certain members of the cast testified to have neither worked nor were aware of any TV serial of the Defendants. The Plaintiff contended that the Defendants’ actions were prejudicial to his honour and has affected his reputation with DAE which threatened to cancel the agreement for funds consequent to the telecast. 

The Learned Judge faced no difficulty in accepting Plaintiff’s contention considering that the Defendants did not adduce any evidence in their defense. Section 57 of the Copyright Act codifies the right to integrity of the author in a work. Irrespective of assignment of copyrights in any work, the author has (i) a right to claim authorship of work and (ii) a right to restrain or claim damages in event the work is distorted, mutilated or modified in a manner prejudicial to the honour or reputation of the author. In the instant case, the Defendants not only failed to credit the Plaintiff for the work but falsely attributed authorship to another person. For this reason, the Learned Judge held that the Defendants’ actions amounted to unauthorized modification of work causing injury to Plaintiff’s reputation. 

What about damages? 

Instead of imposing exemplary damages for stealing credit for the work, it is unfortunate that the Defendants were let off for a paltry sum of Rs. 1 lakh towards costs. The Learned Judge dismissed Plaintiff’s claim for punitive damages and rendition of accounts for lack of evidence. This is strange because, Section 57(1)(b) confers a right to claim damages upon authors for violation of author’s special rights. When a claim for infringement of such rights has been made out, the fact that TV serial was telecasted should suffice to grant damages.

Copyright Act Amendments of 2012: National Seminar at ILS, Pune

SpicyIP is pleased to announce that ILS, Pune will be hosting a 2 day national seminar on the recently notified Copyright (Amendment) Act, 2012. 

Our previous posts on the amendments can be found here. 

The seminar promises to provide an exciting opportunity for students, academics, practitioners and professors to engage in discussions on the impact of the amendments on various industries and stakeholders.  Over 250 participants are expected at the seminar. The schedule for the conference is available below. You can register to participate in the conference over here. 

For any queries, you may contact Ms. Nilima Bhadbhade at: nilima.bhadbhade@ilslaw.in