SpicyIP Weekly Review (August 17 – 23)

Topical Highlights

Lootcase, Copyright and Last Minute Injunctions: A Failed Attempt towards Overprotection

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Nikhil discussed the recent case of Vinay Vats v. Fox Star Studios India, wherein the Delhi HC rejected the plaintiff’s request for interim injunction a day before the release of the defendants’ movie ‘Lootcase’, which was alleged to be infringing the copyright in the plaintiff’s movie, ‘Tukkaa Fitt’. He agrees with the court’s reasoning, explaining that the two movies are only similar so far as they revolve around a stolen bag full of money, but since no copyright subsists over themes, plots and ideas, there is no infringement. Nikhil explores the hypothetical question of whether an infringement claim would be sustained if the copyright in Tukkaa Fitt’s trailer had been argued to be infringed rather than the whole movie, but concludes that the result would have been the same as there are far too many differences apparent from the two trailers. He then discusses the disturbing trend of seeking last moment injunctions against movie releases in an attempt to misuse intellectual property as a weapon to stifle free speech, especially when it comes from powerful players in the industry against those with fewer resources at their disposal.

Nokia Gets Injunction against Mercedes Maker Daimler for Infringement of its SEP in Europe

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In a guest post, our former blogger Rajiv Choudhary analysed the recent decision by a German court granting an injunction restraining Mercedes maker Daimler from infringing Nokia’s SEP relating to Zadoff-Chu sequences (basic access signals in LTE). He discusses how the Nokia-Daimler judgment was given despite the fact that Daimler’s component manufacturers had approached Nokia to get a FRAND license but were turned down. He points out that in restraining a willing licensee, the Court failed to follow the injunction roadmap previously laid down in Huawei v. ZTE. Rajiv relies on this case to argue against the legality of portfolio licenses, explaining that had this SEP been registered in India, this being a key patent for Nokia pertaining to the very basic structure of the LTE uplink signal, all devices using LTE would have been infringing the patent. He concludes with the speculation that this patent was probably not filed in India because it is hit by Sections 3(m), 3(n) and 3(k) of the Patents Act, but cautions that that Indian patent law has changed in the light of recent Ferid Allani judgement.

Thematic Highlights

Of Paper Tigers and English: WTO Appellate Body Report in Tobacco Plain Packaging Dispute

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In this post, Adarsh deconstructed the WTO Appellate Body Report in the set of disputes concerning Australia’s legislative measures to impose plain packaging norms on tobacco products. He specifically criticises the Appellate Body’s interpretation of issues concerning the TRIPS Agreement. The Complainant had argued that by prohibiting the use of the registered trademark, the TPP measures, over time, would make it impossible for the right-holder to demonstrate a “likelihood of confusion” in an infringement proceeding, thus violating Article 16.1 of TRIPs. The Appellate Body rejected this by stating that the creation or maintenance of the factual circumstances that would result in such “likelihood of confusion” is not an obligation under the TRIPs Agreement. According to Adarsh this interpretation supports an indirect violation of the treaty. He further argues that the Appellate Body’s statement that Article 20 does not confer a “right” on the trademark holder but only imposes an “obligation” on the member country from unjustifiably encumbering the use of the trademark is simply a play of words that is logically unsound as the presence of a duty in one indicates the presence of right in another.

A New IPAB Chairperson? Maybe, Maybe Not

In a guest post, Praharsh Gour wrote about the worrying state of the position of IPAB Chairperson, which is set to go vacant after the expiration of Justice Manmohan Singh’s extension on 21st September. He pointed out that the recent Call for Applications for the position released by DPIIT has a deadline of 18th September, meaning that the IPAB is likely to go through another spell without a Chairperson. He contextualizes this in the background of the possibility of another term extension for Justice Singh, for which an application has been filed by the International Association for the Protection of Intellectual Property (AIPPI) and is set to be heard by the Supreme Court. He concludes by reminding the readers that the Supreme Court has reiterated previously that the position of IPAB Chairman cannot be allowed to remain vacant and that this is one of the many issues plaguing the IPAB today, among other vacancy issues, lack of technical members on the bench, appointment issues and overall functional problems.

Other Posts

Call for Applications: CUSAT’s Minor IP Research Project for Teachers 2020-21 [Apply by Sep 25]

We announced the Inter-University Centre for IPR Studies (IUCIPRS), Cochin University of Science and Technology (CUSAT)’s Minor IP Research Project 2020-21. CUSAT is inviting applications from teachers across Kerala and the rest of India. All the applications completed in the specified format along with the research proposal must be submitted by 25th September 2020. The format and other details on the Research Project are available on the post.

Call for Papers: The Philosophy and Law of Information Regulation in India

We informed our readers that the Centre for Law and Policy Research is inviting papers to be published as a volume of inter-disciplinary studies for their project on ‘The Philosophy and Law of Information Regulation in India’. They are looking for multi-disciplinary submissions from fields of law, history of science, science and technology studies, informatics and information sciences, political and economic philosophy, design studies, and other related fields to reflect on the relationship between law, technology and information, with specific reference to the institutions of public law in India. Abstracts have to be submitted in the specified format by 10th September 2020. The format and submission guidelines are available on the post.

LexisNexis’s Virtual Conference on ‘Be The Game Changer: IP Drives Business Growth’ [Sep 16 – 18]

We notified our readers of LexisNexis’s virtual conference on ‘Be The Game Changer: IP Drives Business Growth’ on 16th – 18th September, 2020. The conference will be led by renowned IP experts from corporate law firms and government offices in Asia and the United States who will be sharing their views on how IP contributes towards driving business growth. Details about the conference and registration procedure are available on the post.

Other Developments

Decisions from Indian Courts

  • Delhi High Court, in Hari Chand Shri Gopal v. Evergreen International, passed an ad-interim injunction restraining the defendants from using KRISHNA 100, KRISHNA 355 and KRISHNA 351 trademarks and packaging deceptively similar to plaintiff’s registered GOPAL trademarks trade dress and Lord Krishna logo [August 13, 2020].
  • Delhi High Court in Peps Industries Private Limited v. Kurlon Limited directed the parties to settle their dispute regarding the use of NO-TURN trademark [August 14, 2020].

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  • Delhi High Court , in McDonalds Corporation & Anr v. National Internet Exchange of India & Ors., passed an interim injunction restraining several corporate entities from infringing McDonalds’ registered family of trademarks and  copyright in the artistic work of its Golden Arches logo [17 August 2020].
  • Delhi High Court, in Audioplus v. Manoj Nagar,called for further evidence in a passing off action against use of STUDIOMIN trademark [18 August 2020].
    • Bombay High Court, in Hindustan Unilever Ltd. v. Emami Ltd.,passed an interim injunction restraining Emami from using the ‘Glow and Handsome’ mark as it found HUL to be the prima facie prior user of the mark [19 August 2020].

Other News from around the Country

  • The National Digital Library of India has launched the Draft of India’s first Copyright Guide for Indian Libraries for public consultation. The deadline for submitting comments/feedback is September 30, 2020.
  • Ministry of Education is conceptualizing a National Intellectual Property Literacy initiative as part of the new National Education Policy 2020.
  • KVIC has issued legal ­­­notices to two firms, Khadi Essentials and Khadi global, alleging unauthorised and fraudulent use the brand name ‘Khadi’, seeking damages from these firms for causing harm to its reputation and loss of wages to Khadi artisans due to the sale of fake Khadi fabric.

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  • SaReGaMa has claimed copyright violation by Doordarshan’s YouTube telecast of musical band performance of Saare Jahan Se Achha by members of Armed Forces on the occasion of 74th Independence Day.
  • Solan-based Shoolini University has been ranked 3rd in the country for the number of patents filed and 4th in the country for the number of patents granted.
  • ITI Berhampur has filed patents for 3 innovative products, i.e., Robo warrior, UVC Sole Sanitizer, and mobile swab collection kiosk developed to fight COVID-19.
  • WIPO data has shown that Huawei, Mitsubishi Electric, Samsung and Qualcomm have filed more international patent applications each than the 2053 applications by the whole of India in 2019, accounting for only 1% of global filings.
  • Rajiv Gandhi National Institute of IP Management has proposed to conduct online training workshops on IPR in collaboration with other organisations upon request.
  • A piece carried by MediaNama discussed the intellectual property implications of the draft report released by the Committee of Experts on Non-Personal Data Governance Framework (formed by MEITY) last month.
  • A piece on Analytics India Magazine discussed the benefits and considerations involving AI patenting in India.

News from around the World

  • China has granted the first COVID-19 vaccine patent to a vaccine co-developed by biopharmaceutical firm CanSino Biologics Inc.
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    The High Court of Justice of England and Wales has held that the shapes of the Jaguar Land Rover Defender cars are not eligible for trade mark registration.

  • The US Court of Appeals for the 7th Circuit held that punitive damages award of $280 million against Tata Consultancy Services in a trade secrets suit filed by software firm Epic Systems was ‘constitutionally excessive’, and reduced damages to $140 million.
  • A new US Copyright rule on Group Registration of Short Online Literary Works allows single or joint authors to register the copyrights in online written content, easing registration for bloggers.
  • The US Court of Appeals for the 2nd Circuit has vacated the district court’s summary judgment holding Costco liable to Tiffany for willful trademark infringement and counterfeiting of ‘Tiffany rings’.

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  • The US District Court for Northern California has denied Amazon’s motion to dismiss Williams-Sonoma’s infringement claim over WSI’s copyrighted images on Amazon’s marketplace sellers’ listings, finding that Amazon acted with volition based on Amazon’s algorithms.
  • Bangladeshi Nobel laureate Muhammad Yunus has called for COVID-19 vaccine to be made accessible to all and not be restricted by patents rights.
  • A piece carried by The Guardian discussed the entanglement of copyright laws and licensing rules surrounding the Australian Aboriginal flag.

For regular updates on IP news and opinions related to COVID-19, please visit our COVID-19 & IP Updates page (also accessible from the Resources section on our website).

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