SPICY IP

Dr. Wobben loses appeal - Revocation proceedings to continue before both IPAB and HC

2012-01-28T16:19:00.003+05:30

In a recent 26 pages, well-reasoned judgment a Division Bench of the Delhi High Court consisting of Justice Sanjay Kaul and Justice Rajiv Shakhder dismissed an appeal by Dr. Wobben against an order of Justice Ravindra Bhat, dated 6th December, 2010. We had earlier covered Justice Bhat’s order over here. The DB's order is available over here.

This order is the latest in the series of legal defeats suffered by Dr. Wobben and his company Enercon GmBH in their four year legal battle against their Indian subsidiary, Enercon India Ltd. The present round of litigation pertains to the 23 revocation petitions filed by Enercon India, before the IPAB, seeking the revocation of 23 patents belonging to Dr. Wobben. In late 2010, the IPAB heard 12 of these petitions and ended up revoking all the patents challenged in these petitions. The remaining 9 petitions are scheduled to be heard before the IPAB in February, 2012. (Image from here)

Sometime after these revocation petitions had initially been filed in 2009, Dr. Wobben and his company Enercon GmBH filed a series of patent infringement suits before the Delhi High Court. In the course of defending these suits, Enercon India Ltd. filed several counter-claims, in the infringement suits, seeking revocation of the patents that were claimed to be infringed. This is permissible under Section 64. It however turned out that the same patents were the subject of revocation proceedings before the Delhi High Court and the IPAB. This would mean that both forums would be deciding similar questions of law and fact.

In late 2010, Dr. Wobben had moved the Delhi High Court seeking a stay of the proceedings before the IPAB until the Delhi High Court had disposed the infringement suits and the counter-claim for revocation. This request was denied by Justice Ravindra Bhat via an order dated the 6th December, 2010 on the grounds that both the remedies before the IPAB and the High Court could proceed concurrently under the law. This decision was appealed to the Division Bench, which delivered its judgment on the 20th of January, 2012.

Justice Shakhder, who authored this judgment on behalf of the Division Bench, rejected Dr. Wobben’s plea that the ‘Doctrine of Election’ precluded Enercon India from maintaining similar remedies in different forums when it had actively chosen/elected to proceed before one forum. Justice Shakhder notes the following as one of the basic requirements to invoke the ‘Doctrine of Election’:

(i) The existence of two or more remedies;

(ii) Inconsistencies between the two remedies;

(iii) A choice between two of them.

In the present case, the Court reasoned that the nature of both the remedies was essentially different since the IPAB could be approached for revocation only by ‘interested persons’ while the counter-claim for revocation in the infringement suit could proceed only in cases where the defendant had been sued for infringement. Further the Court also pointed out that both these remedies were not inconsistent with each other since they could proceed simultaneously. The final nail however appeared to be the fact that Dr. Wobben had requested for a stay on the proceedings before the IPAB only several months after it had knowledge of both the revocation petitions before the IPAB and the counter-claims for revocation before the Delhi High Court. This delay was despite the fact that Enercon India was pushing for both remedies equally hard without committing itself to any single forum.

Interestingly the Division Bench seemed to have been more inclined to stay the infringement suit before the Delhi High Court itself. The High Court stated this in response to Dr. Wobben’s argument that Section 10 of the CPC allowed the stay of civil suits on the grounds of res-subjudice. This doctrine however can be applied only in civil suits that are governed by the CPC and the IPAB is not governed by the CPC.

Guest Post: Website Blocking to Prevent Copyright Infringement: A Comparison of the Indian and UK Approaches Part 3

2012-01-23T11:38:00.003+05:30

For the readers of Spicy IP, Ms. Neeti Jain, an Indian lawyer specializing in media and entertainment laws, as well as issues involving copyright law and technology, Internet regulation and digital media, brings as follows the 3rd and final part of her incisive guest post series on website blocking to prevent copyright infringement. The earlier 2 parts of the series are available here and here.

Part 3 – Never Say Die

A statement by the UK’s Foreign Secretary, William Hague, in his closing remarks at the London Conference on Cyberspace, on 2 November 2011, reiterated an important message, aimed at governments the world over. He said,

“Do not treat cyberspace as if it belongs to you….You should not imagine for an instant that you can resist the growing force of the tide now flowing for transparency, open information and the free exchange of ideas.”

A UN report also declared recently that access to the Internet is a human right.

I feel that these two statements must be kept in mind by governments and courts when they meddle with the Internet.

An encouraging response to demands for blocking has been that of Virgin Media, another major ISP in the UK, who at least seems to think that a part of the problem is that content is not always affordably priced. When Virgin was asked for its response to the BT judgment and whether they would block Newzbin2 as well, a spokesperson for virgin Media said to the BBC, that it would obey the law, but would not take action over the matter until it had received a court order of its own.

“As a responsible ISP, we will comply with any court order addressed to us but strongly believe such deterrents need to be accompanied by compelling legal alternatives such as our agreement with Spotify, which gives consumers access to content at the right price," a spokesman told the BBC.” (Emphasis added).

I turn now finally to look at the civil society movement against website blocking, particularly the work done by the Open Rights Group.

The Open Rights Group, other organizations and freedom of expression experts in the UK have joined together to persuade rights-owners and the Foreign Secretary that website blocking will do more harm than good. Consumer Focus have argued that because the demand for movies is huge, the solution lies not in blocking but in providing affordable, legal choices for consumers. There has been a proposal by a rightsholders’ group in the UK that sets out a voluntary website blocking scheme, with judicial oversight, providing for expedited court procedures. If this were to come through, consumers would stand to lose any control they have over the way they use the Internet. Copyright owners and ISPs would get to decide what content we see online and courts could become puppets granting ex parte injunctions for the blocking of websites without having an opportunity to defend themselves in court. This would threaten legitimate uses of copyrighted material as well, since big rights-holders are notorious for often being touchy even about fair uses of their works and demanding their removal (See, http://www.guardian.co.uk/media/pda/2010/aug/10/newport-state-of-mind-youtube?intcmp=239). Lastly, there is a whole lot of common law that has led to the development of the remedy of injunctions. Expedited court proceedings that do not take the interests of the defendant (unnamed in case of John Doe orders) into account, would run the risk of being unfair to defendants that have not had a chance to present their case at all– and a discussion on this could be the subject of a whole other post.

This is one battle that is clearly not over. The studios have found their foothold in Section 97A injunctions (discussed in part 2) and have obtained a precedent. Website blocking is bound to increase, with more copyright owners taking this route, unless there is a strong argument against it which forces the government to stop and consider the interests of those other than copyright owners, as well as the effect of website blocking on the nature of the Internet itself.

In conclusion, I think that while the approach to website blocking in the UK suffers from serious flaws when looked at from the perspective of consumers and even ISPs, it is at this stage still a process that requires more than just a knock on the door by a copyright owner. In India, a knock on the door of Delhi High Court seems to be all they need. It seems unlikely that ISPs in India will stand up to rightsholders like BT did. Therefore, if there is no concerted action by Internet users and civil society groups objecting to the setting of precedent such as the John Doe orders for Singham and Bodyguard, it won’t be long before any website with a whiff of infringement, never mind its legitimate uses, will be blocked at the behest of the Indian film industry. If one were to consider the Internet’s indispensability and growing relevance in development and commerce, especially in India, it could be argued that the government has an obligation to equally protect the rights of consumers to a free Internet and access to content at affordable prices, as it seems to be doing for copyright owners and those with religious, moral and political sensibilities.

The Spicy IP team thanks Ms. Jain for this series of comprehensive and analytical overview of this contentious controversy. We hope that she would continue her association with us for the benefit of the readers, who have undoubtedly enjoyed her writing and her expertise.

Guest Post: Website Blocking to Prevent Copyright Infringement: A Comparison of the Indian and UK Approaches Part 2

2012-01-23T11:26:00.004+05:30

Ms. Neeti Jain, an Indian lawyer specializing in media and entertainment laws, as well as issues involving copyright law and technology, Internet regulation and digital media, continues as follows the 2nd part of her guest post series on website blocking to prevent copyright infringement. The 1st part of the series is available here.

Part 2 – the UK Situation

There have been proposals in the UK, primarily from the media industry, to block websites that host unlawful content. Website blocking was proposed as a means to implement the provisions of the reviled Digital Economy Act, 2010. However, following a series of consultations and submissions from ISPs, copyright owners, consumers and civil society groups, the Government appointed agency, Ofcom, came to the conclusion that website blocking, while effective, was a measure that could not be resorted to, owing to the ease with which it can be circumvented.

The Motion Pictures Association of America (“the MPAA”) approached te UK courts to seek blocking, by ISPs, of a Usenet website (discussed below) that facilitates access to material that infringes their copyright. The key difference between this case and the John Doe orders is the manner in which the blocking order was sought and obtained.

Newzbin2: An action was brought by members of the Motion Picture Association of America (“MPAA”) against British Telecom (BT), UK’s largest ISP, Twentieth Century Fox Film Corporation and Others v British Telecommunications Plc, [2011] EWHC 1981 (Ch), commonly referred to as the Newzbin2 case.

Prior to this case, the studios had also brought another case against Newzbin. In Twentieth Century Fox Film Corporation and Others v Newzbin Ltd. [2010] EWHC 608 (Ch), Mr Justice Kitchin had ruled that Newzbin had infringed the MPAA's copyrights in some of their films. He ordered Newzbin to ensure that its users did not infringe the copyright of the plaintiffs in the works identified by the plaintiffs in lists provided to Newzbin. Shortly after this injunction, Newzbin went into voluntary liquidation and the website, hosted in the UK, disappeared. It later re-appeared as Newzbin2, hosted on Swedish servers. This re-appearance led to the studios asking BT to block the new website or not oppose an application to block it under section 97A. BT refused both requests.

The application for an injunction to block access to Newzbin2 was made by the MPAA under section 97A of the UK Copyright, Designs and Patents Act 1988 (“CDPA 1988”) which provides that a High Court has the power to grant an injunction against a service provider, “where that service provider has actual knowledge of another person using their service to infringe copyright.” For actual knowledge to be shown, the service provider should have received a notice with the details of the infringement in question.

Mr Justice Arnold, in his judgment, said that,

“In my judgment it follows that BT has actual knowledge of other persons using its service to infringe copyright: it knows that the users and operators of Newzbin2 infringe copyright on a large scale, and in particular infringe the copyrights of the studios in large numbers of their films and television programmes,…”

Even though BT successfully proved that 30% of the material on the Newzbin2 website was not content owned by the plaintiffs, it was held that the studios’ rights were being infringed on a “massive scale” and even though the order would benefit other rightsholders in addition to the studios, it was not a reason to refuse making the order but in fact was a reason to support it.

The most interesting part of this case, for the present analysis, was when BT raised a concern that if the Court used its discretion and granted the plaintiffs’ application, it would lead to a flood of applications by rightsholders for the blocking of other websites as well. Mr Justice Arnold accepted that it is likely that orders would be sought by rightsholders to prevent access to other websites and would therefore lead to them demanding the blocking of more websites by ISPs. He held that,

“It should be borne in mind, however, that in this case the Studios started from the point that they had already obtained judgment against Newzbin Ltd. Even so, the Studios have had to obtain and put before the Court a substantial quantity of evidence in support of the present application. In addition, the application involved the preparation by counsel for the Studios of a lengthy and detailed skeleton argument, a two-day hearing and written submissions following the hearing. Thus this will have been a costly application for the Studios to bring. I recognise, of course, that some of this effort and expenditure is attributable to the present application being a test case, and that subsequent applications ought to require less effort and less expenditure, but on the other hand subsequent applicants will have to prove things that the Studios had already established in 20C Fox v Newzbin.”

Despite the precedent set by Newzbin2 in providing excessive powers to copyright owners to seek blocking, it has at least acknowledged that copyright owners cannot just walk into court seeking an injunction to have an ISP block a website and have it granted overnight – unlike a John Doe order – and that rightholders need to argue on the basis of copyright law to prove infringement, including the presentation of adequate evidence.

In Newzbin2, July 2011, Mr Justice Arnold had delayed deciding the exact form of the order and was supposed to decide later what exactly BT would need to do. This order was passed on 26 October 2011. One of the key defects in the order is that BT is not required to carry out deep packet inspection (DPI), except to the extent that its existing filtering system, CleanFeed (aimed at filtering child pornography) already does. The studios will provide BT with a list of IP addresses and URLs which includes Newzbin2 and “any other IP address or URL whose sole or predominant purpose is to enable or facilitate access to the Newzbin2 website”. There seems to be a terrific amount of faith being placed in the studios to act fairly. The order does not mention any penalties on the studios for blocking websites wrongly and website owners and operators do not need to be informed that they might be on BT’s blacklist.

Following from the Newzbin2 injunction, the MPAA has also managed to get a court order against Sky, another major UK ISP, to block access to Newzbin2, which Sky has done.

My next and final post in this series will look at the UK civil society movement’s battle against website blocking and conclude this comparative discussion.

Guest Post: Website Blocking to Prevent Copyright Infringement: A Comparison of the Indian and UK Approaches Part 1

2012-01-23T11:16:00.006+05:30

Majority of the Spicy IP readers are no doubt already aware of the hornet’s nest that promises to be stirred in the debate between freedom of expression of thought and belief, especially via cyber media, and reasonable restrictions imposed to prevent publication of objectionable and copyrighted content. In the relating ongoing controversy involving Website moguls like Facebook and Google (India), the Delhi High Court has recently even mooted options of blocking the offending websites, as has been seen in the petition filed by the journalist Vinay Rai. For the readers, the Spicy IP team brings a series of guest posts reflecting the comparative analysis of the Indian and the U.K. scenario regarding website blocking to prevent copyright infringement. These posts have been authored by Ms. Neeti Jain, an Indian freelance lawyer with experience in IP/IT and corporate law in India and abroad. Ms. Jain, who has complete her LL.M. from the Columbia Law School, professes a keen interest in the fields of media and entertainment laws, as well as issues involving copyright law and technology, Internet regulation and digital media.

Part 1 - Website Blocking in India

Website blocking has been resorted to by the Indian government and media companies to prevent alleged copyright infringement, obscenity and defamation by making ISPs block access to offending websites by Internet users. I have been looking specifically at website blocking as a means of preventing online copyright infringement and the debates around it in the UK. Having sifted through existing legislation, rules and judicial precedent in India, I failed to find any consistency in the approach to website blocking in India for the purpose of prevention of copyright infringement. This post does not go into the issues of intermediary liability and immunity under the (Indian) Information Technology Act, 2000 (the “IT Act”) in much detail. Rather, it is an attempt to illustrate the point that website blocking is resorted to in an ad hoc manner by Indian copyright owners, setting judicial precedents that are dangerous to the freedom of the Internet, due process and consumer rights. As a comparison, I have explored the instances of website blocking in the UK and the judicial procedure followed, as also the reaction of civil society groups when faced with the prospect of legislative action sanctioning the blocking of websites by ISPs at the behest of copyright owners. This series of three posts covers the Indian and UK approach to website blocking for copyright protection purposes. This Part 1 is a brief review of the current position in India.
Blocking and content removal: To state the obvious, website blocking is not the same as the removal of content from websites. Website blocking is addressed by the Information Technology (Procedure and Safeguards for Blocking for Access of Information by Public) Rules, 2009 (the “Blocking Rules”), published by the Central Government (Ministry of Communications and Information Technology, Department of Information Technology). Blocking is only available under the Blocking Rules for those instances covered under Section 69A of the IT Act, which does not cover copyright infringement. Therefore, if a copyright owner has to have a website blocked, they cannot seek recourse under the Blocking Rules. Requests to block websites or specific content have to be made to the Department of Information Technology (“DIT”), through designated “nodal officers”.

Content removal, on the other hand, is addressed by the Information Technology (Intermediaries guidelines) Rules, 2011, notified on 11 April 2011 (the “Intermediary Rules”). These rules require intermediaries to remove information that “belongs to another person” within 36 hours of receiving an e-mail communication from an “affected person” (Rule 3, sub-rule 2(a), read with Rule 4). However, exercising the right to have infringing content removed under these rules would involve being able to give notice of such infringement to an entity that would actually remove the content – which in the case of websites is impractical because often the identify of the website owners is not known or they are based outside Indian jurisdiction and can ignore requests to comply. ISPs and operators of social network sites such as Facebook and Google claim technical inability to monitor and remove content, or simply refuse to do it if it does not violate their usage policies.

John Doe Orders: An alternative method, exercised of late by copyright owners, is to file for a John Doe court order claiming that the applicant copyright owners anticipate infringing activity that could cause financial loss to them. A John Doe order passed by Justice A.K. Pathak of the Delhi High Court on 20 July 2011 was exercisable by the producer of the film Singham against anyone playing unauthorised copies of the film on cable TV, the Internet or through the sale of CDs and DVDs. Reliance Entertainment reportedly also obtained a similar order prior to the release of the film Bodyguard. When ISPs such as Airtel, MTNL and BSNL were presented with the order, asking them to prevent unauthorized access to Singham by users of their service, they reacted by blocking entire file-sharing websites. ISPs are clearly not equipped to monitor the activities of each user and block access to particular content being streamed by users from file-sharing services. Section 79 of the IT Act provides intermediaries with a safe-harbour against liability for copyright infringement if certain conditions are met. However, various provisions in the Indian Copyright Act, 1957 and the IT Act may strip intermediaries of this safe harbour (See here for a robust analysis of these provisions).

In the absence of clarity regarding the rules on ISP liability versus their safe harbour, ISPs would seemingly rather err on the side of blocking websites, than not. Therefore, in most cases, copyright owners do not need to go through the DIT route for website blocking at all. As has been demonstrated by the Singham court order, unidentified defendants are restrained from displaying or making available copyrighted work. These defendants include ISPs and cable operators. The width of the order is clearly enough to scare the ISPs into blocking entire websites that are used widely by users to share content, both legal and infringing. These injunctions imply that copyright owners, in the future, do not need to pursue lengthy litigation to prove infringement, but can merely seek John Doe orders and compel ISPs to block websites. ISPs are not yet challenging the producers’ instructions to block websites; even though the John Doe orders do not name the ISPs, do not point to specific demonstrated instances of infringement and do not even identify by name the websites or services that are being made the target of these blocking instructions, nor the percentage of infringing content on these websites as compared to legitimate content.

My next post on this subject will look at the UK statutory provisions and legal precedents relating to the blocking of websites for the purpose of prevention of copyright infringement.

Yahoo v. Controller, and Rediff: Business Methods are not patentable.

2012-01-22T15:45:00.000+05:30

In one of its first major decisions involving patentability of business method patents (available here), the Intellectual Property Appellate Board (IPAB) has ruled (December 8, 2011) that pure business methods are not patentable in India. This post provides an overview of the decision and its implications for the patent community: (1) Business methods are not patentable in India; and (2) Any refusal of a patent under section 25(1) of the Act may be appealed to the IPAB as it relates to an order passed under section 15 of the Act, which in effect, may be appealed against under section 117-A of the Act. Shamnad has discussed the issue of patentability of business methods here, and here. Warning: Long post follows.

As a further practice pointer, this case is also important because Yahoo overcame all other objections relating to novelty, and obviousness except the most important one, invention (section 3(k)). Practitioners may want to cite this case to the Examiners while replying to examiners reports as appropriate.

Quotable Quote: Justice Prabha Sridevan and D.P.S. Parmar: "...[W]e must place ourselves in 1998, to decide the patentability and what appears so easy and familiar today was new then. Even if we go back in time to 1998 the nature of invention is still a method of doing business. That does not change. There are huge innovations in the computers themselves, but the invention claimed is not for the machine but for the method. From whichever point of time we look at it, it still looks to be a business method."

Background:

Overture Services Inc. filed a patent application titled “System and method for influencing a position on a search result listing generated by a computer network search engine”, and the title was later amended to “A method of operating a computer network search apparatus.” This application claimed priority to a US application 09/322677 dated 28.05.1999. Yahoo acquired Overture sometime in 2003.

While undergoing examination at the Indian patent office, the examiner raised 17 objections against the application in the First Examination Report (FER). These objections were made under section 3(k), and against novelty. In it's reply, Yahoo submitted new claims to include technical subject matter so as to overcome the 3(k) objection, and that the new claims were novel. The Examiner again, in reply to the new claims, rejected claims as they fell under section 3(k). The claims were further amended to remove apparatus claims. (The first independent claim is reproduced at the end of this post.) In responsive to the last amendment, the patent office informed Yahoo that the application had been found in order for grant, but it would be granted only after the disposal of pre-grant opposition, if any.

On 20.04.2007, Rediff.com India Ltd. ("Rediff"), filed a pre-grant opposition against the application, under section 25(1). The Controller informed Yahoo that the the invention did not pass the novelty and patentability test in late March 2009.

Procedural issues: The decision of the Controller was appealed before the IPAB. The IPAB at that time passed an order holding that the Controller's decision could not be treated as a refusal order under section 15 of the Act and therefore, the appeal was not maintainable. This IPAB decision was further appealed in a writ petition 4462 of 2010 before the Chennai High Court. A division bench (DB) of the Chennai High Court held that the appeal was maintainable against the refusal of a patent under section 25(1) of the Act as it relates to an order passed under section 15 of the Act, which in effect, may be appealed against under section 117-A of the Act. The DB also held that the Rediff was entitled to be heard and issued a direction to the IPAB to number the appeal and to decide the matter on merits after giving an opportunity to Rediff to be heard and consider its submissions made in the opposition.

Before moving to the detailed reasoning adopted by the IPAB to reject the claims, section 3(k) of the Indian patents act is reproduced below:

“3. What are not inventions

The following are not inventions within the meaning of this Act, —

…(k) a mathematical or business method or a computer programme per se or algorithms;”

The IPAB referred to the Manual of Patent Procedures 2008 relating to business methods and considered the definition provided therein. ““Business Methods” claimed in any form are not patentable subject matter. The term ‘Business Methods’ involves whole gamut of activities in a commercial or industrial enterprise relating to transaction of goods or services. With the development of Internet Technologies, business activities have grown tremendously through e-commerce and related B2B and B2C business. The claims are at times drafted not directly as business method but apparently with hitherto available technical features such as internet, networks, satellites, telecommunications, etc. The exclusions are carved out for all business methods and, therefore, if in substance the claims relate to business methods, even with the help of technology, they are not considered to be patentable.”

Reasoning of the IPAB: The Board considered the law relating to business methods in advanced patent jurisdictions including United Kingdom (section 2 of the U.K. patents act); Article 52(2) of the European Patent Convention; and United States, 35 USC 101. After considering the position in these jurisdictions, the IPAB concluded that in contrast to the foreign jurisdictions, in India, the law specifically excluded business methods with clear statutory language excluding business method patents.

Yahoo also raised the issue that Google Inc. had been granted several of "business method" patents. However the IPAB held that the issue was the claims for the application under consideration and not the ones granted to any other party. The IPAB, however, agreed that there should be uniform practice adopted at the Indian patent offices.

The IPAB, therefore dismissed Yahoo Inc.'s appeal with costs.

First independent claim:

A method of operating a computer network search apparatus for generating a result list (710) of items representing a match with information entered by a user through an input device connected to the computer network (20), the search apparatus comprising a computer system (22, 24) operatively connected to the computer network and the method comprising:

storing a plurality of items (344) in a database (38, 40), each item comprising information to be communicated to a user and having associated with it at least one keyword (352), an information provided (302) and a bid amount (358); receiving a keyword entered by a user though an input device (12);

searching the stored items (344) and identifying items representing a match with the key word entered by the user; ordering the identified items using the bid amounts (358) for the identified items, and generating a result list (710) including the ordered, identified items; providing the result list (710) to the user;

receiving a request from the user for information regarding an item selected from the result list (710);

charging to an account of the information provider (302) associated with the selected item the bid amount (358) associated with the selected item; and providing information providers (302) with authenticated login access to permit an information provider to modify at least the bid amount (358) associated with the information provider’s listing (344); wherein the computer system (22, 24) sends an indication of the status of the information provider’s account to the information provider (302) in response to the occurrence of a predetermined condition.

Think Library-catalog books before the coming of computers

A secretive search for prior art

2012-01-22T13:01:00.005+05:30

The agreement between the Intellectual Property Office (IPO) and the Council of Scientific and Industrial Research (CSIR) to outsource prior art searchesare the IPO's "confidential documents", according to CSIR, and it is for the IPO to decide "how much information it wishes to put in the public domain". CSIR also believes that this information is exempt from being put out in the public domain as it is lying in their possession by virtue of fiduciary relationship with the IPO.

This was in response to our query to CSIR under the Right to Information (RTI) Act, 2005, on the Memorandum of Understanding (MoU) between itself and the IPO on the outsourcing of prior art searches.(Image from here)

It also appears that CSIR may not have sought or received any legal advice on its own part before entering into this MoU. According to CSIR, the decision to outsource prior art searches was taken by the Department of Industrial Policy and Promotion (DIPP). And it was (only) the DIPP's responsibility to consider the legality of such outsourcing.

What started this thread was a series of posts on the quality of the prior art searches being conducted under this MoU, and heated discussions, speculations, and clarifications that followed in that context in posts here, here and here. As neither organisation had made the MoU public, and all we had access to was a news report and a handful of emails, we thought it made sense to directly request the CSIR for the following:

A copy of the MoU for outsourcing prior art searches
A copy of the entire official file pertaining to the MoU, including details of the scope and format of search reports to be provided by CSIR to the IPO in pursuit of the MoU
Copies of details of any meetings held in pursuit of the MoU, including minutes or records of discussion
Copies of any independent legal advice, if any, that may have sought/received on the legality of the MoU and related projects

CSIR quickly forwarded the RTI application to its Pune-based Unit of Research and Development of Information Products (URDIP), which is handling the work under this MoU. I've uploaded the reply that was sent by CSIR, which you can read here.

There are several questions that stare one in the face --

Why is an MoU between two public bodies (CSIR and DIPP) regarded as a private and confidential document?
Why are details of the outsourcing of the service of searching for prior art (which directly affect publicly enforceable patent rights) not deemed to be in larger public interest?
Why has CSIR not attempted to seek legal advice on this MoU?, particularly in the light of speculation that the service may be in direct conflict with the CSIR's own mandate of IP protection and patent filing?

Questions surrounding the legality and quality of prior art searches emerged after DIPP released a discussion paper a few months ago inviting comments and feedback on service delivery and administrative reforms at the IPO.

In response to the discussion paper, a group claiming to be 'Officials of the Delhi Patent Office' had questioned this outsourcing agreement, and criticized the quality of reports produced by CSIR. Subsequently, the URDIP had clarified to the blog on aspects of the MoU which was published in this post here. For reference, I reproduce the clarification in part here:

"CSIR-URDIP is not conducting the examination of patent applications. The scope of our services is to search for prior art.... The scope of services and format of report was discussed and finalised in consultation with the office of CGPDTM.

We further wish to state that up till now no feedback has ever been received from Delhi patent office on any of the search reports submitted by us in spite of our repeated requests. If they had any comments or feedback (positive or negative), they could have communicated the same to us in the first instance. Without knowing the background and context of the whole matter, it is unfair on the part of commentator to question the quality of work done by us or highlight only a particular portion of certain document."

CSIR/URDIP continues to remain tight-lipped about the contents of its understanding with the IPO, and the scope and format of the search reports they were expected to deliver under the MoU. In which case, surely, they cannot expect a fair critical analysis of the quality of their work?

IP in a song: Poplaw and theatre

2012-01-20T13:49:00.004+05:30

(Warning: Long post)

Earlier this week, I was at Kamani Auditorium in New Delhi, which was packed to full capacity and then some, watching a play called 'Stories in a Song'. The play itself was a montage of stories which told of how different forms of music of the north Indian tradition had evolved in response to their ages. The music for the play was selected from traditional repertoire and set by Shubha Mudgal and Aneesh Pradhan (they are the brains behind this awesome pro-musicians website which you must check out). (Image from here)

About half-way through the performance, a guru's composition of a khayal in raga Malkauns was brutally transfigured into a remixed track by a wily Bollywood/film music "composer". With the press of a button on the synthesizer, the stage transformed from being a space for musical contemplation to a dance floor filled with teenyboppers banging their heads all over the place. (Watch this clip, from 5.08 to 6.40, for a glimpse into this story.)

The composer rhetorically asks, "what is a song worth anyway? No one has a copyright over the seven swaras"; while the guru's disciple plaintively pleads that "artists must get their due". Words like copyright and royalty were freely bandied about. I'm not sure the audience paid much attention, because they were too preoccupied in their cheering, hooting and whistling. The scene quickly descended into propaganda for the royalties debate that has captured the imagination of the Indian copyright world for these past several months.

There's a context to the story -- Shubha Mudgal (see posts about her on the blog here) has been part of the group of artists, singers, composers, who have led the debate to grant stronger protection to performers' rights in India. It was appropriate that she should have woven this story into a play such as this. (image from here)

Predictably, this set off a thread in my head on IP in popular culture in India. I was excited that this production tried to bring together my two grande passions (music and theatre) into a creative conversation with IP. But I was disappointed that the discussion was too shallow in its telling. It sidetracked into the demerits of the commercialisation of classical music, which could have been handled more dynamically, but ended up being a flat, one-sided presentation.

The story suggested that classical music is pure, untouchable and a true musician would never try to make money out of it and that those who tried to make money out of art by "playing to the gallery" effectively betrayed the art form, and could no longer be considered true musicians.

This may well have been different a few generations ago, when patronage kept artistes alive (even there, the form was kept alive because artistes had a source of income coming through). Today, however, the pursuit of art for art's sake can truly be regarded only as the preserve of the well-heeled. For the rest, for people who have to survive solely on their music or any other art form, it can be a difficult and sometimes unrewarding existence. That calls for a larger debate -- about how society has come to define art and aesthetics today, about what is now considered beauty and what is not, but a blogpost on IP is not the space to ruminate upon such grave matters. :)

The good thing about this theatrical story about the Malkauns khayal was that it added a new dimension to the IP debate, moving it out of newspaper columns and drawing room conversations and primetime television banter to an artistic representation that responds to, and evolves with, its audience. Surely we need more such public dialogues in the country, at the very least to ensure that intellectual thought around law and policy reforms is not hijacked by a handful of interest groups who may end up doing some major damage to the way Indian law changes.

And when it comes to IP in theatre or cinema -- Abhishek Bachchan's bit-part role as a patent attorney doesn't quite make the cut. I have also heard of a play produced by a Delhi-based law firm on IP some years ago, but have never seen it, and so cannot comment. 'Stories in a Song', on the other hand, may be a more successful and longer-running production - it premiered at Prithvi theatre in Mumbai sometime last year, and had a run at the Baajaa Gaajaa festival in Pune before coming to Delhi for the Bharat Rang Mahotsav. When was the last time you saw an IP debate being presented to popular appeal on film or in theatre in India?

John Doe orders for Blocking of Websites: Mad Dog without a Leash?

2012-01-19T21:18:00.009+05:30

Of late increasing number of Bollywood filmmakers are seeking relief in terms of a John Doe order for blocking websites in anticipation of piracy before a movie release. Last month Megaupload and Filesonic were blocked by Reliance Communications (RCOM) pursuant to a John Doe order of the Delhi High Court prior to the latest release of its sister company, Don 2 (Kartik recently blogged on this here & here). The point enquiry in this post is three fold:

(i) Whether the reach of the John Doe order extends to Internet Access Providers (IAPs) such as the RCOM, AirTel?

(ii) Whether blocking of websites by IAPs suo moto violates the due procedure required to be followed? and

(iii) Whether IAPs can abuse their ‘dominant position’ if vested with powers to block websites?

Who is this 'John Doe'?

The producers rely heavily on movie openings and fear that online piracy would dent theatre-goers. To plug any irreparable loss, they seek a relief of temporary injunction under Order 39 R1 & 2 read with Section 151 of CPC. In terms of these provisions, a John Doe order presupposes (a) an imminent possibility of leakage of the copyrighted material (b) causing huge financial losses (c) and hence an injunction against John Doe to restore balance of convenience. Bottom-line, there has to be a strong presumption that the unnamed person would cause losses unless injuncted. So far, the practice seems to be that the producer upon obtaining the injunction serves a notice to the IAPs directing them to block any website.

It is valid to argue that previous instances provide a clear indication of possible infringement from an internet source, thus justifying denial of access in anticipation. Moreover, the location of website outside India requires swift action instead of waiting for the ISP to respond. A file sharing website does provide the ‘means’ for infringement by allowing dissemination of content uploaded by users. The IAPs on the other hand are technologically capable of denying access to any website. Does this mean, ‘John Doe’ is someone providing access to infringing material? To my mind, it would be inequitable if the order were to be blindly directed at every entity with the means to or the capability to avoid infringement. Injunction against every ISP is tantamount to authorizing shutdown of the entire internet infrastructure. In other words, every producer can direct the IAPs to block any website pursuant a John Doe order.

Earlier this year, ESPN obtained a similar order injuncting ‘unnamed’ cable operators from indulging in unauthorized telecast of World Cup matches. Does this mean, any cable operator who does not have the necessary license becomes a party to the suit? Instead the Court gave ESPN the right to request local police authorities to inspect premises of any cable operator and equipment can be seized and attached if found accessing unauthorized feed. This further indicates that the remedy is primarily for one to iron out any suspicions and cause of action arises when any material fact is discovered in the course. Therefore, the yardstick for determining the class of John Doe should not be anyone who has the capacity to cause infringement but such entities with the infringing content and the intention to commit an unlawful act.

Undoubtedly the ISPs are profiting by allowing users to surf errant file sharing sites. In such a situation, it has to be seen if such persons owe any duty to the copyright owner. On this point, the Australian Federal Court in AFACT v. iiNet stated that ‘the law recognizes no positive obligation on any person to protect the copyright of another’. The copyright owner in this case argued that allowing P2Ps to commit infringement is tantamount to ‘authorization’ of an unlawful act. In response to whether IAPs are liable to block P2Ps, the Court drew a distinction between provision of ‘access’ to internet and actual ‘means’ of infringement through P2Ps and held that the access providers neither have control or connection with the latter.

If IAPs were to be liable, as was rightly argued elsewhere, then libellous and pornographic content should be weeded out too. It is if the reach of John Doe order extends to all IAPs without any evidence. Besides that, failure to detect particular source of infringement (i.e. a particular user of an internet service) does not justify blocking the entire website affecting innocent users. In essence, the access providers do not have any obligation to monitor the web without any notice of infringement.

What is it the due procedure for blocking websites?

Under the IT Act, however as the TOI report rightly points out, the appropriate authority for blocking websites is the Department of Information & Technology (DIT). The IT Rules, 2009(relating to ‘Procedure and Safeguards for Blocking for Access of Information by Public’) authorize the DIT to block websites and confers investigation powers for reasons connected with national security or public order or incitement of any unlawful activity as laid down in Section 69A of the IT Act. Additionally, the court exercising its ‘inherent powers’ under Section 151 CPC may grant any relief it deems fit in order to protect proprietary interests of plaintiffs from any irreparable harm, including blocking of websites.

Blocking of sites directly affects individual’s right to freedom of speech and expression under Article 19(1)(a). Logical corollary would mean that any denial of access should fall within the reasonable restrictions specified under Article 19(2). A John Doe order to block a website does fall within reasonable restrictions because refusal to do would be ‘contempt of court’, a ground under Article 19(2). Caveat here is that the right can be taken away only under the authority of and procedure established by the law.

In terms of above, an injunction against unnamed persons is not sufficient for the IAPs to block any internet source. It is also illegal for IAPs to block websites upon a notice from the filmmakers irrespective of any evidence of infringing activity. This is so because any allegation of any copyright infringement is purely a question of law and hence IAPs are not capable of determining the culpability of the errant website. It follows that the evidence has to be judicially examined before blocking any website. Therefore, unless there is an express direction from the Court or the DIT, the IAPs are not bound to block any internet source. A John Doe order only permits a copyright owner to seek action against any errant website by the IAPs upon authorization of the DIT and not to bypass the authority under the law. Clearly, RCOM wrongly assumed the authority to block websites based on the injunction order.

Take-down orders have an effect of curtailing fundamental rights. Therefore, ideally a judicial (or a quasi-judicial) body should determine the culpability of ISPs. Even the draconic anti-piracy measures such as the Three Strikes Policy provide for a mechanism of judicial redressal. In France for instance, the HADOPI, the government agency implementing the policy has three members of judiciary in the 9 member panel. The HADOPI is also vested with powers to investigate and it is the only authority to an ISP/IAP to remove any objectionable content. It appears that the present mechanism of blocking of websites fall short of constitutional standards.

Immunity to ISPs for Blocking Sites: Flood Gates to Anti-Competitive Behaviour?

A concern brewing in the U.S.’s Stop Online Piracy Act (SOPA) relevant here is the possibility of ISPs/IAPs manipulating their ‘dominant position’ to further own business interests. The growing convergence of media and telecom industries (in India too) can pose a threat in the context of blocking websites. Section 4(2)(b) of the Competition Act, 2002 prohibits dominant entities in indulging in practices which result in denial of market access ‘in any manner’ or using their position in ‘one market to enter into, or protect, other relevant market’. The phrase ‘in any manner’ has a wide connotation and could encompass any measure which unfairly affects the competitive position of any other person (not just its immediate competitors). Hence, it would not be naïve to allege that RCOM could use the tool of blocking websites to provide a competitive edge to its sister, the Big Cinemas.

Moving Forward

J. K. Rowling started this trend in 2002 seeking a John Doe order to protect the confidentiality of her book, the Harry Potter and the Half Blood Prince before its release. The Indian film industry is toeing the same line and this will soon go viral when all regional film industries approach High Courts for similar reliefs. This means a perpetual injunction against the internet if IAPs are allowed to shut down websites! The point I want to drive home is that the John Doe order is an ill-suited remedy for online piracy and censorship in this manner is inequitable.

Website Blocking and John Doe orders: Barking up the wrong tree? (Part II)

2012-01-14T08:05:00.000+05:30

by Kartik Khanna. Part I is available here.

I had discussed inPart I of this post that Reliance Communication’s [‘RCOM’] initiative inblocking websites on the basis of the John Doe order has no legal basis in IPLaw. RCOM has relied on Section 79 of the Information Technology Act [‘IT Act’]to claim that they are bound by the order. I will discuss the relevantprovisions to see the veracity of this statement.

ITAct

Section 79 providesfor exceptional cases when intermediaries will not be held liable under the ITAct, notwithstanding any other law.

An intermediary underSection 2(1)(w) of the Act includes “anyperson who on behalf of another person receives, stores or transmits thatrecord or provides any service with respect to that record and includes telecomservice providers, network service providers, internet service providers, webhosting, service providers, search engines, online payment sites,online-auction sites, online market places and cyber cafes.” Websites likeMegaupload are clearly included in this ambit.

Sub-section (2) of Section79 provides that intermediaries will be absolved of liability if theinformation provided is third-party information. Alternatively, theintermediary should not initiate the transmission, select the receiver of, ormodify the information in the transmission. Sub-section (3) in turn, providesan exception to the same, when the intermediary receives notice that theinformation is being used to commit an unlawful act or aids the commission ofthe unlawful act. In such an eventuality, the intermediary must remove theinformation and prevent its access.

The blocking of websitesfor copyright claims, on the basis of Section 79, is a misinterpretation of theIT Act. Super CassettesIndustries v. Myspace Inc. & Anr. discussed the effectof a conjoint reading of Section 79 and 81 of the Act. Section 81 reads:

The provisions of this Act shall have effectnotwithstanding anything inconsistent therewith contained in any other law forthe time being in force.

Provided that nothing contained in this Act shallrestrict any person from exercising any right conferred under the Copyright Act1957 or thePatents Act 1970

By virtue of theproviso, an intermediary cannot invoke Section 79 as a safe-harbour provision.This in turn means that the exceptions to Section 79 cannot be used against thewebsites to hold them liable. Therefore, Reliance’s claim of being bound by theorder under the Act is clearly wrong.

Even if thisinterpretation is ignored, I believe that file-sharing websites will qualifyunder Section 79(2). Arguably, these websites are used to transmit or storeinformation (the temporariness of storage is questionable). Undoubtedly, theydo not initiate the transmission, select the receiver of, or modify theinformation transmitted. Therefore, the question of intermediary liability doesnot arise when considering this sub-section. In other words, these websiteswill not be liable until sub-section (3) comes into play.

An intermediary can atthe most, violate Section 79 if he failsto remove the source of infringement after being served notice. In theinstant case however, the website itself has been blocked and not the pagehosting the content or the content itself, which is clearly the ‘source ofinfringement’. Clearly, a much wider step than that envisaged under the sectionhas been taken. This observation is cemented by a perusal of the rules framedunder the said section.

ITRules

Assuming RCOM’sadherence to Section 79 to be correct, it means the Information Technology(Intermediaries guidelines) Rules, 2011 [‘IT Rules’] that have been laiddown under the section must also apply. It specifies the due diligence to becarried out by each website operator. It mandates in Rule 3(2) that due noticebe given to users that no content should be shared that infringes copyright.Sub-Rule (3) mandates that the website operator should not knowingly hostinfringing information or select the receiver of transmission, and select or modifythe infringing information contained in the transmission. As was the case withSection 79 itself, the websites like Megaupload comply with these requirementsand hence, there is no violation of the IT Rules.

Rule 4 provides that “the intermediary, on whose computer systemthe information is stored or hosted or published, upon obtaining knowledge byitself or been brought to actual knowledge by an affected person in writing orthrough email signed with electronic signature about any such information asmentioned in sub-rule (2) above, shall act within thirty six hours and whereapplicable, work with user or owner of such information to disable suchinformation that is in contravention of sub-rule (2).”

The Rules mandate thatonce the intermediary is aware of infringing information, it must take down thesaid information. The implication ofthis requirement is that the intermediary can be obligated to disable access toinformation that is mentioned in Rule 3(2). In the case of websites such asMegaupload where a host of information is shared, it is illegal to disableaccess to the entire website. It isakin to blocking all of Youtube if it hosts a video that amounts to a copyrightinfringement. The action by RCOM ignores the fact that Megaupload hostsperfectly legal information as well.

Conclusion

Under IP Law as I havealready mentioned, RCOM could be held to be secondarily liable. However, Ibelieve that no liability can be imposed on RCOM till they are aware ofinfringement. Two implications flow from this. Firstly, that RCOM must be madeaware of the infringement. It cannot be expected to do by screening contentacross the web. There must be a specific direction given to them to act on thelines of blocking content. Secondly, the act of infringement must take place.It is unlawful to start blocking websites pre-emptively before the infringementtakes place to try and escape liability under IP law.

Further, Reliance’sclaim of being bound under Section 79 of the IT Act by the order ismisdirected. As I have shown already, Section 81 of the IT Act makes it clearthat all rights under the Copyright Act will apply irrespective of what isgiven in the IT Act. This means that the burden of liability to be imposed onRCOM will stem from the Copyright Act. It need not rely on Section 79 to defineits liability. Clearly then, RCOM has reacted without reason to block thesewebsites. Its actions are not predicated on any legal liability, whether underIP or IT law.

I do believe that incase of websites containing scores of files, blocking the entire website forinfringement of a single work would amount to restricting access to even workthat is not infringing copyright. Website blocking in such cases, besides beinga ridiculously disproportional response, amounts to throwing the baby out withthe bathwater. Additionally, there is no compulsion for ISPs to startregulating content under the IT laws cited by RCOM. The only obligation onwebsites is to ensure that no infringing work continues to be hosted afternotice of the same.

Instead of websiteblocking, one should aim for content removal by placing reliance on the Termsof Content [‘TOC’] of file-sharing websites. These usually provide for cases ofcopyright infringement. For instance, clause 7.4 of Megaupload’sTOCprovides that the user represents that he/she is the owner of the informationstored and that there is no violation of copyright law. Any violation can be aground for termination of transmission by the user. This is similar to thepractice adopted by Youtube when it displays a message that reads “This video has been removedbecause its content violated YouTube's Terms of Service. Sorry about that.” Such websites can be compelled to removethe infringing content by a John Doe. It cannot however, be the ground ofblocking a website as doing so would amount to a violation of the IT Act andits allied rules. This flagrant misinterpretation of the law must cease.Otherwise, every release of a marquee film will see the suspension of the netcitizenry’s right to store/access information on file-sharing websites.

Website blocking and John Doe orders: Barking up the wrong tree? (Part I)

2012-01-12T22:14:00.000+05:30

by Kartik Khanna

Kartik Khanna is a fourth year student of NUJS, Kolkata. He blogged very recently here.

Bollywood has seen a growing number of John Doe orders over the past year. Spicy IP covered this trend here and here. While the previous posts discussed the advent of the tool in India, I will touch upon a substantial case of misuse of the same.

Facts

The Times of India, in a report dated December 24, 2011 (available here) states that Reliance Communications [‘RCOM’] has blocked file-sharing websites such as Megaupload and Filesonic. The reason for doing so was a John Doe order obtained by Reliance Entertainment, the producers of the Hindi film, Don 2, against any possible piracy of the film. In a communication received by TOI, RCOM claims that the action was justified and it stated,"Under Section 79 of the IT Act, an ISP has to adhere to any copyright infringement notice and court orders. Given that Reliance Entertainment has obtained a specific copyright protection online piracy related Delhi High Court order for Don-2, we are in full compliance of law(sic)."[Find a copy of the said order here].

It is pertinent to note that the order recognizes the threat that the movie can be uploaded on the Internet, thus, infringing Reliance’s copyright. It does not mention any remedy under the IT Act for the same and clearly, only those under the Copyright Act, 1957 are implicitly referred to. I will touch upon the implication of the same later.

IP Law

A John Doe Order, as discussed in Tania’s guest post, is a protection in the form of an injunction sought by the owner of copyright. The injunction allows the owner to take action against anyone who is found to be infringing copyright. The element of ‘John Doe’ implies that the person against whom the order is enforced is unknown and may apply to anybody indulging in the said act. The order does not specify any one defendant in particular.

Now, the order states “defendants and other unnamed and undisclosed persons are restrained from copying, recording or allowing camcording or communicating or making available or distributing, or duplicating, or displaying, or releasing, or showing, or uploading, or downloading or exhibiting, or playing, and/or defraying the movie DON2 in any manner without a proper license from the plaintiff or in any other manner which would violate/infringe the plaintiff’s copyright in the said cinematograph film DON2 through different mediums like CD, DVD, Blue- ray disc, VCD, Cable TV, DTH, Internet services, MMS, Pen drives, Hard drives, Tapes, CAS or in any other like manner.”

It is arguable that ISPs can be held liable under such a widely phrased John Doe order for infringing copyrighted content. In other words, these intermediaries can be secondarily liable under the Copyright Act, as was held in Super Cassettes Industries v. Myspace Inc. &Anr [MIPR2011(2)303]. This liability could possibly stem from Section 51(a)(ii) of the Copyright Act for permitting for profit, any place for communication of a work. However, the intermediary can only be liable if he is aware of infringement. An ISP like RCOM cannot be aware of any copyright infringement unless brought to its notice. It cannot claim to be bound by the order as it must first be made aware of any infringement and only then, move to prevent the infringement.

Further, the remedy possible under the order is wide enough to allow website blocking if the entire website amounts to an infringement of copyrighted content. In case a specific part or page is infringing copyright, the page or content therein may be removed. Website blocking however, an extreme remedy in itself, is possible only when the infringement takes place and NOT before that. It has not been showed in this case that infringing content was uploaded on these websites. If RCOM has pre-empted copyright infringement, their act of blocking the website may amount to a misinterpretation of the order and hence, be illegal.

Strangely, RCOM has relied on Section 79 of the Information Technology Act, 2000 [IT Act] to claim that it is bound by the John Doe order to block the said websites. This mandates a look at the said provision. Watch this space for more on the same in Part II of this post.

P.S-Are ISPs the right intermediaries at all?

Admittedly, by definition in the IT Act, ‘intermediary’ would cover ISPs such as RCOM. There seems to be a lack of clarity however, with respect to what kind of intermediary can prevent infringement in such cases. I believe the intermediary concerned differs from case to case. In the instant case, the websites have hosted the information and hence, they have the primary liability of removing such content seeing as could be expected to be aware of the same [Arguable in case of a file-sharing website]. ISPs on the other hand, provide access to the Internet. Surely, providing access cannot mean the same as providing a means of infringement. That logic would extend to cyber cafes (also intermediaries) as well. That would mean that cyber cafes would have to close their shops each time such an order is passed to prevent infringement.

An ISP like RCOM is not the concerned intermediary in this case as it not the entity hosting the content. Otherwise, every time a John Doe order is granted, all ISPs will compulsorily need to start scouring the Internet to hunt for infringing works, which is clearly not envisaged.

The order affirms that Don 2 enjoys copyright and that no infringing act concerning the same can be taken. This means that if someone notifies Filestube that it has hosted an infringing work, then Filestube, which is an intermediary as well, will be bound by the order and its IT Act obligations.

Call for Papers: School of Law, Christ University Inaugural Law Journal

2012-01-11T11:36:00.003+05:30

The Journals and Publications Society, School of Law, Christ University, invites contributions on current or contemporary issues of law for the inaugural peer-reviewed edition of its Law Journal to be published in March, 2012. The Journal is an effort by the Journals and Publications Society to promote and encourage legal research and writing in the legal community. The School of law, Christ University welcomes original and well researched submissions from legal professionals, activists, academics and students.

Submission Guidelines:

Submissions entertained would be under the following heads:

Articles: 4000-8000 words;
Comments and Book Reviews: 1500-4000 words;
Notes: 2500-5000 words.

Method of submission:
Submission to the Journal can be made by e-mailing a copy of the manuscript or by posting the hard copy of the same. All submissions should be double-spaced in font size 12 following the Times New Roman format. One-inch margins should be left on both sides of the text and at the top and bottom. Authors are encouraged to submit their manuscripts in Microsoft Word Format and to use gender neutral language. The manuscript must not bear identification of any kind.

References and Citation:
The use of footnotes rather than endnotes is preferred, in size 10 following a line spacing of 1.5. The style of citation should conform to the 19th edition of The Bluebook.

Abstract:
The manuscript must be accompanied by an abstract, not exceeding 300 words.

Book Review:
All Book Reviews must embody all relevant information pertaining to the book being reviewed. The Review must include: title of the book; name(s) of editor(s), author(s); place of publication; name of the publisher; year of publication; number of pages of the book; and price of the book.

Procedure for submission:

The submissions to the Journal can be made through e-mail or sending by post. In case of post or courier, all manuscripts must be addressed to: Journals and Publications Society, School of Law Christ University, Hosur Road, Bangalore – 560029, Karnataka, India. In case of submission through e-mail, a copy of the manuscript should be mailed to journals@law.christuniversity.in

Covering Letter:
All submissions, both hard and electronic copies, must be attached with a covering letter mentioning the name of the author, occupation, title of the manuscript and contact address, for future reference.

Date of Submission: The last date for submission is 20th February, 2012.

For further details regarding the Journal, the readers are requested to contact the following:
Chahat Chawla: +91 8105003327; Sarah M. Mattew: +91 9008960788; Rohan Virdi: +91 8951461334; Abhishek Sharma: +91 8147387119

The Spicy IP team thanks Mr. Abhishek Tripathi on behalf of the readers for bringing this call for papers to notice.

A Distinct IP Domain for India?

2012-01-10T17:44:00.019+05:30

When a Scandinavian colleague of mine recently opined that Indian IP was "interesting", I thought it a gross understatement and a rather mild label. For Indian IP is not just interesting: it is highly entertaining, exotic, spicy, quirky, you name it! With each species of IP that we touch upon, we somehow manage to carve out a distinct identity and draw international attention.

Think patents and you have the mysterious section 3(d) that continues to be mired in controversy. With copyrights, we have version recordings and the like. And if the copyright amendment bill finally goes through, we'll have some unique royalty sharing provisions to contend with...clearly, Indian IP lawyers are blessed with enough intellectual excitement, thanks to these distinctively desi provisions.

The recent addition to the basket is from a rather under-theorised and under-discussed IP species, namely "domain names" (which many see as a subset of "trademark" law). Amlan had already blogged on this curious decision from the Delhi High Court that effectively forced a certain Stephen Koenig to part with his registration of the domain name "internet.in".

The "internet.in" decision

The courts' reasoning was that since the complainant had a registered trademark covering the term "internet" and Koenig had no such trademark registration, he ought to be divested of it.

What this decision does is to effectively plunge the threshold for retrieving a domain name to abysmally low levels. Put another way, it converts India's domain name dispute resolution policy (INDRP) into one of the most "liberal" and trademark owner friendly ones ever known. Let me explain:

Most domain name dispute resolution policies embody norms that are quite distinct from standard trademark jurisprudence in that they redress only a select category of cases that go by the wide epithet of "abusive registrations" i.e. cases representing an intentional use of a domain name with a view to profit from its "trademarked" status, to the detriment of the trademark owner.

WIPO's pioneering UDRP (uniform domain name dispute resolution policy) set the benchmark in this regard and since then, several national policies have followed suit and crafted abusive registration policies on similar grounds. At its core, a policy meant to curb abusive registrations mandates that the trademark owner must necessarily prove that:

1. the registered domain name embodies a mark, over which he/she has a valid trademark right.
2. the domain name registrant has no legitimate interest in that name.
3. the name has been registered and is being used in bad faith

These 3 pre-requisites are spelt out in ICANN's UDRP (in paragraph 4 (a)) and explicated in innumerable decisions that have issued forth since the advent of this policy in 1999. While the precise import of each of these criteria is subject to intense debate (eg. binary vs unitary concept of abusive registration), it is widely accepted that all of the 3 pre-requisites have to be shown to exist before a trademark owner can retrieve his/her name from an alleged cyber-squatter.

A trademark dispute policy on the other hand merely requires (for the most part) that the trademark owner establish that he/she has better rights in the name than does the alleged infringer. In other words, in many jurisdictions, the infringer may have no prior notice of the registered trademark, and may have adopted it innocently, but could still be prevented from using it. However, in a domain name dispute, the innocent adoption of a name for a legitimate purpose would create a valid defence in favour of the domain name registrant.

The Delhi High Court has effectively eviscerated this distinction between standard trademark disputes and domain name disputes by holding that all of the 3 pre-requisites need not be shown to exist. Rather any one or more of the criteria is sufficient. Before I extract the courts' ruling in this regard, it is important to reproduce both the policies here:

UDRP

Para 4(a) of the UDRP reads thus:

"You (the domain name registrant) are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which
the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present."

INDRP

Para 4 of the INDRP which corresponds to Para 4 (a) of the UDRP reads as under:

"Any person who considers that a registered domain name conflicts with his legitimate rights or interests may file a complaint to the .IN Registry on the following premises:

(i) the Registrant's domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights;

(ii) the Registrant has no rights or legitimate interests in respect of the domain name; and

(iii) the Registrant's domain name has been registered or is being used in bad faith."

And now for the courts' problematic extract which effectively places India's policy on a separate pedestal than most other domain name dispute resolution policies, most notably that of WIPO's UDRP. In the courts words:

"Para 4 INDRP is different from Para 4 (a) UNDRP in a significant way. While each of the sub-paras (i) to (iii) of Para 4 (a) of UNDRP are required to be 'proved' by the complainant cumulatively, as far as Para 4 INDRP is concerned the complainant can file a complaint on the 'premises' outlined in sub-paras (i) to (iii) of Para 4. There is no requirement that "each of the three elements" are shown to exist. If this is understood in light of the fact that the conjoint "and" is missing at the end of sub-para (i) of Para 4 INDRP, then it is possible to interpret Para 4 INDRP to mean that a complainant can succeed if he proves that the ground in sub-para (i) exists by itself. Alternatively he can succeed if he proves that the grounds in sub-paras (ii) and (iii) exist."

The net impact of the courts' jurisprudence is this:

Imagine a doctor who registers the domain name "apple.in" to showcase her personal orchard where she grows apples and dispenses them for therapeutic properties (in keeping with the age old wisdom that an "an apple a day keeps the doctor away"). Under this ruling, Apple computers, the makers of ipad, ipod and several other i-candy gizmos can wrest away the domain from the poor doctor on the ground that the company has a trademark registration in its favour (and the doctor does not). It does not matter that the good doctor has a legitimate interest in the name or that she has not registered it or used it in bad faith.

The result is truly astounding and once again puts India on the IP map, for having struck a different chord, albeit a highly discordant one!

ICICI Bank Domain Name Dispute

2012-01-10T00:30:00.000+05:30

There seems to be an increasing trend towards cybersquatting in recent times, particularly by parties in foreign jurisdictions, who register domain names that are strikingly similar to well known trademarks in India. In this post I will cover a recent domain name dispute decision delivered by Justice Sistani of the Delhi High Court, involving ICICI Bank Ltd. (The decision can be found here)

Background to the Case

In this case, ICICI Bank filed a suit for permanent injunction to restrain the defendants from operating the domain name www.icicigroup.com. Interestingly, the domain name was registered by a Chinese entity based in Beijing on the ground of trademark infringement of the ‘ICICI’ mark.

Establishing Global Reputation and Goodwill of the ‘ICICI’ mark

This was perhaps the easiest task and counsel for ICICI was successful in establishing the fact that ‘ICICI’ has become a famous/well known trade mark within the purview of a well-known trade mark as defined under Section 2 (1) (zg) of the Trade Marks Act, 1999.

It was submitted that the mark "ICICI" was first adopted and incorporated by it (its predecessors in business) in the year 1955 and has since then acquired necessary reputation and goodwill. Moreover, ICICI" stands registered in many jurisdictions, such as, Hong Kong, Japan, Korea, Russia, Saudi Arabia, Singapore, Switzerland, China etc.

An important point with specific reference to this case and given the impugned domain name is the fact that a series of companies and subsidiaries of ICICI, together with the parent company, constitute the ‘ICICI Group’, all of whom use the ‘ICICI’ trademark.

Establishing Internet Presence

Further, given the nature of the dispute, it was important to demonstrate that there is a likelihood of confusion on the part of an unknowing individual, looking to access the bank’s website, based on striking similarity of the impugned domain name and the ‘ICICI’ trademark.

It was submitted that the ‘ICICI’ mark is featured prominently on the website (www.icicibank.com) and that there is uniformity in the use of the mark online as well as in the physical world. It was also explained that the website received hundreds of thousands of hits from consumers of its banking and financial products and services. Lastly, it was also shown that the plaintiffs had taken precaution to prevent misuse of its mark online by registering several domain names containing the said mark such as <icicilife.org>, <iciciprulife.org>,<iciciprulife.net>, <icicibima.org>, <icicilife.net>,<icicibank.com.sg>, <icicicaps.com>,,<iciciresearchcentre.org>, <icicibankuk.co.uk>, <icici.biz>,<icicibankchina.cn>, <icicibankchina.org.cn>,<icicibankchina.net.cn>, <icicibankchina.com.cn>.

Failure of Defendants to Appear before the Court

As explained earlier, there have been quite a few cases off late where individuals/entities based in foreign countries have registered domain names that are strikingly similar to trademarks registered in India and have acquired global reputation.

In this case too, the defendants are a Chinese entity, based in Beijing. However, even the plaintiffs’ attorneys were unable to extract more details about the defendants, outside of a basic WHOIS search. Perhaps unsurprisingly, the defendants failed to show up for any of the hearings and all the orders of the court were passed ex-parte.

Bad Faith Registration

In order to demonstrate the mala fide intent of the defendants in registering the domain www.icicigroup.com it was explained that the domain www.icicibank.com along with all the other domain name that were registered as a precautionary measure and controlled by ICICI Bank Ltd. was registered on 16th July, 1996. The impugned domain name on the other hand, was only registered on 23 rd September, 2004.

The submission appears to be that before registering the domain, the defendants should have conducted a preliminary check ensure that they were not infringing any intellectual property rights, particularly since several domain names with the ‘ICICI’ mark were already registered.

The plaintiff’s counsel emphasised that the registration was purely to encash upon the goodwill and reputation so associated with the plaintiff‟s trademark and was done in bad faith and without authorisation. To support this contention, a series of e-mail communications between the plaintiffs and defendants was also submitted to the court wherein the latter asked for a payment of a ridiculous sum of $800,000.

Likelihood of Confusion

To establish that there was a likelihood of confusion in the mind of a user who wished to visit the ICICI website and for this reason the domain should not be in the control of the defendants, the counsel for the plaintiff explained that the impugned domain:

(i) wholly incorporates the word "ICICI"

(ii) is identical to the Plaintiff‟s trademark "ICICI", and

(iii) the Defendant No.1 has no right or justification in the impugned domain name

Further, it was elaborated that and that an Internet user who wishes to visit the plaintiff‟s site, www.icicibank.com for information regarding its services, but not being completely familiar with the exact web address, might mistakenly enter into the address toolbar of his Internet browser, the URL "www.icicigroup.com" and therefore be taken to the website of the defendant. Additionally, it was possible that on using the search term ‘ICICI’, an unsuspecting user may click on a result that direct him or her to the defendant’s page, assuming it to be affiliated to the ICICI banking group.As such, the plaintiff contended that there was a clear case of trademark infringement, arising from the act of the defendant in registering a domain name , which is identical and deceptively / or confusingly similar to that of the plaintiff‟s domain name www.icicibank.com

Curious Decision of the WIPO Arbitral Tribunal

While the sole panellist of the WIPO held that a fit case of likelihood of confusion was made out by the plaintiffs, the Arbitral Tribunal on the other hand made some curious observations. It held that though it is confusingly similar, the domain name www.icicigroup.com as registered by the defendants is one in which the defendant has rights since "icicigroup" means a community of like-minded netizens with common interests and the "i" denotes "love" . As such, it held that it would be incorrect to say that ICICI always refers to the plaintiff’s business and since they are not in the same competing business of providing banking and financial services, there can be no confusion between the websites.

Decision of the Delhi High Court

In taking cognizance of the evidence submitted by the plaintiffs in the form of registration certificates and other documents, the judge was convinced of the reputation of the ICICI mark worldwide and the goodwill attached to the mark. Additionally, the evidence of email communications between the two parties where a claim for 800,000 USD was made for transfer of the domain, together with the fact that the ICICI mark was already registered in China prior to the domain being registered, convinced the judge of the bad faith registration on the part of the defendants. In doing so, the judge decreed the suit in favour of the plaintiff, with costs.

Cross-border enforcement

A word must be said for the issues that may arise in terms of actual enforcement of the award. The domain continues to be registered with the Chinese entity as we speak and there is no order for either cancellation of the domain or transfer, with the burden being placed on the registrar. Given that the defendants failed to show up for any of the hearings, it is unclear what their position on this matter is and one must seriously question the wisdom in imitating such a costly litigation when enforcement is such a big issue although it is expected that eventually the registrar will be made to cancel the registration.

Contrasting international opinion on file-sharing!

2012-01-07T23:58:00.001+05:30

Image from here

Big Bully is watching your Government

It's no surprise to anyone that countries with means do what they can do 'negotiate' with other countries to have them see their way. While the US places not so subtle pressure on several countries through their annual Special 301 Reports, a recent wikileaks cable between US and Spain has shown that the US may have stepped over the 'pressure' line and moved into the 'threatening' zone. Part of the message that the US embassy sent the Spanish Government in Feb, 2008:

"We propose to tell the new government that Spain will appear on the Watch List if it does not do three things by October 2008. First, issue a [Government of Spain] announcement stating that Internet piracy is illegal, and that the copyright levy system does not compensate creators for copyrighted material acquired through peer-to-peer file sharing. Second, amend the 2006 “circular” that is widely interpreted in Spain as saying that peer-to-peer file sharing is legal. Third, announce that the GoS [Government of Spain] will adopt measures along the lines of the French and/or UK proposals aimed at curbing Internet piracy by the summer of 2009."

These refer to the ISPs having to suspend/take down websites on complaints received, along with certain other new measures. Incidentally, these measures have not been passed even by the US's own legislation so far. While there is a lot of pressure for the PIPA and SOPA acts to be passed after similar acts have already been blocked, US has not actually had these measures passed within their own country, and yet they've severely pressurized at least one other country to do so, most probably at the demand of the usual suspects - the big IP-holder lobbyists. The Spanish government at that time did not heed to these warnings and Spain was duly put on the watchlist. However, US's pressure did not stop there. In 2009, they were in touch with the Minister of Culture who proposed the "Sinde" Act. As ArsTechnica reports, in 2010 Sinde told the US ambassador not to worry about the legislation being watered down. Spain also happened to have the Presidency of the Council of the EU at this time. However, after great opposition from activists and the opposition party, the Bill was not passed, and instead was left for the new government, which came in a a couple of months ago, to handle. With the arrival of the new government came demands from the US that they immediately see the Bill through and after slightly modifying the Bill, the government has followed instructions this time with the Bill being effective from March 2012 onwards.

The whole process and ugly confidence with which US kept pressuring Spain till it got it's (big corporates') wishes leaves one wondering what other due process mechanisms have been violated world over. Meanwhile in Europe....

File-sharing is Holy!

While certain corporates may be insisting that file-sharing is evil, a group in Sweden has gone in the exact opposite direction and said it is holy! The group, estimated at 3000 strong and growing, has gotten itself registered as a religious organisation which believes that information is holy and for whom file-sharing is a central tenet. I'm wondering if the Church of Kopimism, as it calls itself, recognizes that this (probably?) does not make illegal activities legal. As the 1709 blog reports:

"Being recognised by the state of Sweden is a large step for all of kopimi. Hopefully, this is one step towards the day when we can live out our faith without fear of persecution", said 19-year-old philosophy student and spiritual leader of the Church, Isak Gerson." I assume "kopimi" translates to copying / sharing. I also assume that being a 19 year old spiritual leader of a religion is something only one person can currently claim to be.

They go on to say: "We challenge all copyright believers - most of which have a great deal of influence in politics, and who derive their power by limiting people's lives and freedom. What they most of all want [is] to limit the knowledge. We need to steel ourselves for their hatred and aggression."

Something tells me that aside from being in a nation drenched in religion, many Indians may find another reason to take special interest in this 'religion'!

Their website: http://kopimistsamfundet.se/

Edit: BBC writes more here.

CGPDTM announces impressive training syllabus for new patent examiners

2012-01-05T22:18:00.000+05:30

It appears that 2012 is going to be a good year for Indian IP.

The very first announcement published on the IPO's website this new year, is an impressive training syllabus for the newly appointed patent examiners. As blogged earlier, the IPO has appointed the first batch of 94 patent examiners last month, followed by another 8 appointments recently. All the newly appointed patent examiners have to undergo a three months residential training program at the National Institute for Intellectual Property Management (NIIPM) at Nagpur. (Image from here)

The training syllabus for this three months program is available on the website over here and it appears to have been meticulously drafted. As per this syllabus, the training will be spread over 6 modules, which are as follows:

(i) Module 1 - Introduction to Intellectual Property Rights

(ii) Module 2 - Invention and Patentability

(iii) Module 3 - Examinations of Patent Applications

(iv) Module 4 - Oppositions, revocation and appeals

(v) Module 5 - Important proceedings related to patents

(vi) Module 6 - Administrative and Service Matters which includes a component on the Right to Information Act, 2005.

Each of the modules is explained in greater detail on the website. At the risk of repetition I have to say that the course curriculum for the three month program is extremely well balanced, covering the subjects of 'general IP', patent drafting, patent examination, oppositions, revocations, administrative, constitutional law, basic principles of natural justice and the Right to Information Act, 2005. The training also seems to focus on practical skills such as the use of electronic databases to conduct prior art searches, search strategies and several case-studies on each of the theoretical components. At the risk of sounding terrible geeky, the 3 month training course at NIIPM sounds extremely exciting and I hope the new appointees enjoy their training.

India yet to notify a list of ‘International Non-Proprietary Names’

2011-12-31T12:00:00.000+05:30

In a reply to a recent RTI application, the Trade Marks Registry has informed us that it is yet to notify a list of ‘International Non-Proprietary Names’ (INNs) under S. 13 of Trade Marks Act, 1999.

(Image from here)

Section 13 of the Trade Marks Act, 1999 prohibits the registration of names of chemical elements or INNs which have been declared by the World Health Organization (WHO) and notified by the Registrar of Trade Marks.

INNs are particularly relevant in the field of pharmaceutical trademarks. In most instances INNs refer to the generic name of a pharmaceutical drug. However INNs can also refer to the common ‘functional group’ or ‘active ingredient’ of a particular class of pharmaceutical drugs. The website of the WHO describes the relevance of INNs as follows:

“The INN system as it exists today was initiated in 1950 by a World Health Assembly resolution WHA3.11 and began operating in 1953, when the first list of International Nonproprietary Names for pharmaceutical substances was published. The cumulative list of INN now stands at some 7000 names designated since that time, and this number is growing every year by some 120-150 new INN.

Since its inception, the aim of the INN system has been to provide health professionals with a unique and universally available designated name to identify each pharmaceutical substance. The existence of an international nomenclature for pharmaceutical substances, in the form of INN, is important for the clear identification, safe prescription and dispensing of medicines to patients, and for communication and exchange of information among health professionals and scientists worldwide.

As unique names, INN have to be distinctive in sound and spelling, and should not be liable to confusion with other names in common use. To make INN universally available they are formally placed by WHO in the public domain, hence their designation as "nonproprietary". They can be used without any restriction whatsoever to identify pharmaceutical substances.

Another important feature of the INN system is that the names of pharmacologically-related substances demonstrate their relationship by using a common "stem". By the use of common stems the medical practitioner, the pharmacist, or anyone dealing with pharmaceutical products can recognize that the substance belongs to a group of substances having similar pharmacological activity.”

Notifying a list of INNs is particularly relevant in India given the sheer volume of litigation in the segment of pharmaceutical trademarks. According to the last annual report of the IPO, pharmaceutical trademarks account for 15% of all trademark registrations, making this class of trademarks the single largest category of trademarks.

Hopefully, the notification of a list of INNs should help in improving the quality of pharmaceutical trademarks and hopefully lead to a reduction in the volume of trademark litigation clogging the judicial system. For those of you interested in reading more on this please do read this study by K.M. Gopakumar on the use of INNs in India.

PPL registers annual revenues of Rs. 229.95 crores for FY 2010-11;

2011-12-30T18:48:00.000+05:30

The latest filings of Phonographic Performance Ltd. (PPL) with the Registrar of Companies, has revealed the annual revenues of the copyright society to be at a healthy Rs. 229.95 crores (US $ 45 million) for the financial year 2010-2011. In comparison, the revenues for the previous financial year were at Rs. 203.40 crores.

(Image from here)

The break-up of the annual revenues for 2010-11 is as follows:

(i) Broadcasting: Rs. 31 crores;

(ii) Public Performance: Rs. 31.64 crores;

(iii) Mobile Ringtones/Digital Streaming: Rs. 165.18 crores;

As usual the biggest growth has been registered in the mobile ring-tones & digital streaming segment. The revenues in this segment for the last financial year were in the neighbour-hood of Rs. 137.8 crores. Unlike PPL’s earlier annual reports, for example 2008-9 (available over here), which clearly mentions that PPL is collecting mobile ringtone royalties on behalf of IPRS, the present annual report is completely silent on this crucial fact. Earlier on this blog, we had pointed out how IPRS had itself contradicted this claim when it informed the Registrar of Copyright that it had not authorized PPL to collect revenues on its behalf.

The mystery over the royalty sharing agreement between PPL & IPRS continues to be a mystery. I for one am extremely curious to know the exact nature of royalty distribution between members of PPL. Is the Board of PPL cornering a fair share of royalties for itself?