Banyan Tree spreading its roots: Karnataka High Court on Jurisdiction

A recent order passed by a Single Judge Bench of the Karnataka High Court has reinforced and strengthened the Banyan Tree ruling pertaining to jurisdictional issues in matters of trademark infringement. We are lucky to have a guest post on the subject by Nidhishree B.V., who was had worked on the matter and was able to give us some useful insights.

Nidhishree graduated from University Law College, Bangalore University in the year 2005 as a gold medallist and rank student. Working with Aditya Sondhi’s Law Chambers, she is a practicing Advocate in the High Court of Karnataka and was fortunate to assist the lead counsel, Aditya Sondhi, in the present appeal. She also makes regular appearances at the Trial Courts in Bangalore, the Trade Marks Registry, IPAB and the Company Law Board.

This order is exciting for us here at SpicyIP, since as our guest poster has also pointed out, this judgment from the High Court of Karnataka seems like the “first of its kind ruling… under the Trade Marks Act, 1999. The Court has clearly pointed out the.. rather misguided application of Section 134 (2) of the Trade Marks Act, 1999, ignoring the fact that neither of the Plaintiffs had registered marks. The Trial Court’s enthusiasm in invoking jurisdiction under Section 134 (2) of the Act with respect to unregistered marks, while giving a go-by to the traditional yet elementary tenet of jurisdiction under Section 20 of the Civil Procedure Code, is a disturbing yet recurring trend with the lower judiciary which seems to get befuddled with fundamental concepts such as jurisdiction, in the face of novel ‘special’ jurisdiction created under the Trademarks Act, 1999 or the Copyrights Act, 1957. In both the cases, the Trial Court had proceeded to grant an injunction in favour of the Plaintiff which the Defendants appealed against in the subject Appeals.”

With that promising beginning, we bring you an analysis of this judgment. The order clubs two separate appeals against interim injunctions awarded by the City Civil Court of Bangalore, owing to their similar facts. As brief as possible, these are the important facts that Nidhi has highlighted for our readers--

"In the first appeal, the Respondent-Plaintiff had filed a suit seeking an injunction restraining the Appellant-Defendant from infringing the trade mark, ‘Prestige’ by using the allegedly offending mark, ‘Presteege’. The mark “Prestige” had allegedly been used by the Plaintiffs in the construction and building business for over two decades in Bangalore, with pending trademark applications for the same by the Plaintiffs in Class 37 were pending before the Trade Marks Registry.

Interestingly, the cause of action here was claimed by the Plaintiffs on the basis of the Defendants’ advertisement that appeared in an edition of the ‘Malayalam Manorama’ as well as the use of the website ‘www.presteege.com’, by the Defendants.

The Defendants inter alia contended that the suit was not maintainable as they were based in the State of Kerala and had no business in Bangalore. Furthermore they brought to the notice of the court that they were allegedly the prior user of the mark ‘Presteege’ by virtue of a trademark registration by the Defendants’ sister concern in Class 24 since 1982. Additionally, a pending application in Class 37 was also claimed by the Defendants.

In the second appeal, the Respondent-Plaintiff was using the mark ‘Soukya’ in connection with a holistic medical centre in Bangalore and had registered the mark in Class 16 (for printed matter, photograph, stationery etc), while having applied for registration of mark in Class 5 (for pharmaceutical dietic substances etc) and Class 42 (for medical, hygienic and beauty care)

Seeking an injunction to restrain the Defendants from using the mark ‘Sowkhya Ayurvedic Centre’, the Plaintiffs claimed cause of action through an article appearing in ‘Deccan Herald’, a news daily which had covered the Defendants’ establishment based in Kodaikanal.

The Defendants contended that the word ‘Soukya’ was common to the trade and open to the trade to use, while also contending that the Court in Bangalore lacked territorial jurisdiction to entertain the suit as the Defendants were not residing/carrying out business within the jurisdiction of the Bangalore Court."

In the High Court, three issues were addressed, namely:
(i) Whether the subsequent registration of a trade mark during the pendency of the case would date back and be relatable to the cause of action and conferment of jurisdiction?
(ii) Whether the existing registration in a different Class would inure to the benefits of maintaining such a suit as a registered trademark?
(iii) If the suit is ultimately considered as one for passing off and not infringement, whether part of the cause of action can be held to have arisen within the jurisdiction of the Court of Bangalore in view of the advertisement and accessibility on the website?

In reference to the first issue, the Court held that since the neither plaint mentioned a trademark registration by the Plaintiffs and only indicated a pending application, the Supreme Court decision in Dhodha House and the Premier Distilleries Case would apply i.e. “the cause must precede the action and not follow it...there is no right in the person to assert infringement before registration is granted”.

The second issue addressed by the Court was in respect to whether a suit for infringement could be filed in respect of the business falling under a different class from the existing registration. Interpreting Section 28 of the Trademark Act, the Court opined that if goods & services mentioned in a particular class to the schedule are registered, protection and relief from an infringement would be available to only that class. However, the Court reiterated that while the benefits under Section 134(2) will not be available to a party in such a situation, action for passing-off is still maintainable. As Nidhi points out to our readers, since the question of well known marks did not arise here, the Court has rightly held that protection against infringement would be available only against the class in which it is registered. Any interpretation to the contrary would defeat the purpose of class-wise registration.

This brings us to the all important issue of whether in an action of passing-off, any part of the cause of action has arisen within the jurisdiction of the Court in Bangalore, where the suits have been instituted. The plaintiffs argued even if the suit is construed as one of passing-off, a part of the cause of action can be shown to have arisen in Bangalore as the websites of the defendants is accessible from anywhere, including Bangalore, therefore providing jurisdiction to the Court at Bangalore. The defendants, on the other hand, used the Delhi HC ruling in Pfizer Enterprises & Anr. v. H.R. Manchanda & Anr. to contend that mere existence of a website does not amount to advertisement in a different jurisdiction or give rise to part of the cause of action. The plaintiffs countered this argument by relying on the same case to state that where the websites are interactive in nature, the same would provide cause of action and jurisdiction at that place. In relation to this, the plaintiffs directed the Court’s attention to the homepage of the defendants, referring to an enquiry form and provisions for online booking, indicating the interactive nature of the website which was likely to mislead customers.

In its analysis of the ratio in the Pfizer Enterprises Case, the Court mentioned Pfizer’s reference to the India TV Case, which in turn had relied on the judgment of the US Court of Appeals in Cybersell Inc. v. Cybersell Inc. & Ors. Examining the ratio of both the Pfizer Case and the Cybersell Case, the Court came to the conclusion that web activities of the defendant should be directed to the concerned geographical locale for cause of action to arise in that location. Relying on the Cybersell Case ratio, the Court stated that commercial transactions with “sufficient minimum contacts” should be shown to establish cause of action in a particular location. Therefore, since no evidence to satisfy the said test of a concluding commercial transaction in Bangalore, no cause of action had arisen in Bangalore to provide the Court at Bangalore jurisdiction to hear the matters.

The Court, in providing its judgment, stated how its opinion is fortified by the views expressed in the Banyan Tree Case. From the point of view of the practitioner, Nidhi has very usefully pointed out to us, that within the factual matrix of the present case, the ratio of the Banyan Tree case in terms of “Purposeful availment” did not arise... However, the Court has dealt with this aspect- See page 39 of the judgement. The scope of Banyan tree was restricted to jurisdiction relating to website advertisements, however, the Presteege Judgment deals with several other issues, including effect of registration in another class, effect of subsequent registration on an infringement suit.

Further, while Banyan Tree has been hailed as an all important decision, Nidhi also pointed out to me that “Banyan Tree was helpful in so far as overruling Casio India's case. We had referred to Pfizer Enterprises v. Dr. Manchanda, (MANU/DE/1999/2008) which held that mere existence of a website does not amount to advertisement and would not give rise to cause of action. Pfizer in turn relied on India TV's case and Cybersell's case.”

An interesting guest post with an even more exciting application of the Banyan Tree judgment in Courts besides Delhi- all in all, we hope this is the beginning of the broadening interest of courts in Intellectual Property matters and exciting times up ahead for us here at the blog.

Indigenous Research In india: Where Do We Stand?

I was reading this informative article titled “The Missing Scientists” by Shyamal Majumdar, former resident editor of the Financial Express, in the Business Standard which restates what has been said in the relevant circles for a very long time now- India needs to buck up on the research front and we need an integrated approach with specific objectives outlined. (Majumdar has earlier written on related issues such as employability of Indian engineering graduates and the adequacy of their skill set for research, applied or basic)

The article is to a large extent China-centric, so it goes without saying that Indian figures kind of convey the now clichéd message that India can’t cut the mustard with China when it comes to indigenous research. (The figures cited are not mine, they are “secondary propositions” or even "tertiary propositions", so if they are to be challenged, please feel free to get in touch with Mr.Majumdar and please do not hesitate to share with us corrections, if any...)

Majumdar points out that Indian research spending has never exceeded 1% of its GDP and over 80% of Indian firms do not spend much (in fact he says “nothing”) on R&D, making us the world’s ninth largest spender on R&D. In comparison, China spends 3 times the same number with a plan in the pipeline to increase it to 4% by 2025.

Again, 75-80% of India’s research expenditure comes from public enterprises and 65% of China’s R&D expenditure comes from private enterprises. In a way, Indian R&D figures justify the need for a framework for accountability and commercialization of all this research, which is where one could say the PFIP Bill (earlier known as the PFRD Bill) comes into picture.

It’s ironic that we have a requirement of working of patented inventions since commercialization is one of the cornerstones of our patent policy (as reflected in the General principles in Section 83 of the Act), but commercialization of public research, where the bulk of the amount comes from the taxpayer, hasn’t received much attention.

But, this in a way hands us a counterview to the need for the PFIP Bill; if working of patented inventions is a requirement under the Patents Act, would it not be sufficient to require public-funded research to be patented so that they may be worked and commercialized? Probably not, because not all public funded research is patentable in nature, but that need not translate to the research being unfit for commercialization. Further, the Bill emphasises on a uniform framework to account for every penny received by recipient institutions.

Coming back to Majumdar’s article, he states that the figures suggest poor R&D expenditure by private firms, which he supports citing the results of a study undertaken by Administrative Staff College of India. Most of India’s R&D expenditure, according to the report, is in areas such as space, ocean development, atomic energy and defence. However, industrial competitiveness vis-a-vis countries like Taiwan, Korea, Israel and Singapore leaves much to be desired.

Another important statistic that Majumdar cites is the number of papers published by Indian scientists in International journals which used to be close to 11,000 with China producing a thousand shy of that number. Now, it’s an incomparable reversal of roles with India producing 19,000 papers and China...50,000. So not just in industrial research, even in academic research such as mathematics, physics and chemistry, India lags behind. (This was something I had suggested in a comment on a post on the PFIP Bill to make a case for the Bill)

As for scientific talent, according to Dr.CNR Rao, chairman of the Scientific Advisory Council to the PM, of the 6,50,000 engineering graduates that India produces in a year (which is eight times the number in the US), about 60% are not well-trained and not fit for employment. This dearth of quality engineering talent has forced the Defence Research and Development Organisation (DRDO) to put pause to its plans for setting up centres of excellence.

The former Chairman of Indian Space Research Organization, Dr.Madhavan Nair, has said that despite ISRO receiving 1,35,000 applications for 300 posts, the quality of the majority of the applicants was not enough for developing instrumentation for astronomical observation, which is essential for the future of India’s space programme.

Paucity of quality faculty is another sore area, which has been discussed time and again. One could go on with these figures, but if merely articulating on problems could solve them, utopia wouldn’t just be a figment of imagination or a literary motif. Sometimes reading these articles one wonders if we are beating a dead horse, because if the issue is relevant and of critical importance, there have to be visible signs of change in the right direction...

Fortunately, there seems to be light at the end of the tunnel; the setting up of Indian Institutes of Science Education and Research (IISER) to bridge the divide between undergraduate scientific education and research is a welcome step. The proposed National Foundation for Science and Engineering on the lines of the National Science Foundation in the US, with the objective of attracting Indian scientists from abroad is another step in this direction.

The larger idea has to be to invest in long-term integrated initiatives which acknowledge ground economic realities and that patriotism in scientific research will help go only this far (unfortunately). It must be clarified that we are not belittling any committed Indian scientist’s efforts who has sacrificed greener pastures, within and outside India, to serve India, but it cannot be denied that talent, these days, needs a bit of mollycoddling if goods have to be delivered (again, another lesson from China).

Importation and Local Working of Patents

In one of our last posts, we had blogged on the public notice issued by the Patent Office on working of patents (For those who want a crisp and clear picture on working of patents, please read this article by Sumathi and Aparna Kareer). A couple of days back, a dear friend of mine asked me something which piqued my interest. He drew my attention to Section 83 of the Act whose title reads “General Principles Applicable to Working of Patented Inventions” and then it states:

“Without prejudice to the other provisions contained in this Act, in exercising the powers conferred by this Chapter, regard shall be had to the following general considerations, namely:
(a) That patents are granted to encourage inventions and to secure that the inventions are worked in India on a commercial scale and to the fullest extent that is reasonably practicable without undue delay;
(b) That they are not granted to enable patentees to enjoy a monopoly for the importation of the patented article;...."

And as we proceed to clause (g) of the Section, it further states that “patents are granted to make the benefit of the patented invention available at reasonably affordable prices to the public”.

My friend asked if it was right to conclude, based on the "soft" and normative wording of this Section, that a patented invention need not be deemed as not worked in India if it was merely imported, and not manufactured. Simply put, his question was if mere importation of the patented invention too could constitute local working of the patented invention under the Act.

Since the Section speaks of general principles and considerations, can they be termed as mandatory condition precedents? I would think that since these are general principles which form the underpinnings of Indian legislative intent on grant of patents, they may not be as normative as they sound or look.

But why is the answer to this question important? I think the answer to this has practical implications because the arguments supporting mandatory local manufacture for working seem to revolve around the assumptions that local manufacture would help make the product available at cheaper prices and would also lead to technology transfer.

However, atleast in a theoretical realm, there could be situations where the local manufacture of the patented invention could prove to be more expensive and financially unviable an option as opposed to importation of the product from another country by the patentee.

If clause (g) of the Section requires the patented invention to be made available to the Indian public at reasonable prices, can it not be said that availability of the patented invention at reasonable prices could prevail over the requirement of local manufacture of the invention? Is it necessary that the patented invention must satisfy both local manufacture and affordability? If yes, where does it say so in TRIPS?

The concluding portions of Article 27.1 of TRIPS state thus:

“Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced”

The Article does not allow for discrimination based on local manufacture of the invention or importation. So how is Section 83 of the Act to be interpreted to ensure that we are not at loggerheads with TRIPS? From the literature, that is available on the topic, it becomes evident that this is not the first time this question is being raised.

The Brazilian patent law too seems to have a mandatory local manufacture requirement, the non-compliance of which could set the compulsory licensing mechanism in motion. This was challenged by the US in a WTO dispute in 2000, but the issue was never addressed conclusively since the US withdrew the complaint with Brazil assuring the US that it would consult the latter in case it chose to invoke compulsory licensing on such grounds.

Proponents of local manufacture requirement point out that Article 27.1 bars discrimination, but not differentiation for a bonafide purpose such as kick starting a particular sector of vital interest to a nation, such as public health and nutrition. If no such sectors are identified, does a broad-based local manufacture requirement derogate from Article 27.1? (UK and Ireland too have local manufacture requirements for working of the invention)

We welcome the opinion of readers on this issue.

CSIR and GIIP to host Advanced Workshop on Patent Strategies

The Council of Scientific and Industrial Research (CSIR), in collaboration with the Global Institute of Intellectual Property (GIIP), are scheduled to host an Advanced Workshop on Patent Strategies from February 1 to February 4, 2010 (Time: 9:30 a.m. to 5:30 p.m.). The workshop will focus, among others, on matters involving freedom to operate, patent analysis, landscaping, drafting, prosecution, valuation and portfolio management. It will take place at the Human Resource Development Centre (HRDC) of CSIR at 19, Kamla Nehru Nagar, CGO Complex, Ghaziabad-200002.

CSIR is at present India’s premier, publicly funded largest industrial R&D organization engaged in creation of knowledge through its cutting-edge research in different sectors. GIIP (refer to previous post on the organization here), on the other hand, is a leading IP service company, co-headquartered at New Delhi, India and San Jose, USA. A brainchild of the legendary Silicon Valley entrepreneur and TIE founder, Kailash Joshi, GIIP is led by a team of successful entrepreneurs, US lawyers and IP practitioners and is engaged in providing consulting, technical and training services covering IP generation, protection, commercialization and management.

Intended to serve as an exclusive and focused initiative to enhance the IP Skills of the professionals of the industry, the workshop seeks to attain such goals through comprehensive case study presentations & practical experience-sharing by IP practitioners and experts. All the participants will be awarded a Certificate of Participation at the conclusion of the workshop.

From scientists engaged in R&D to IP Managers, IP Professionals & Consultants, Patent Agents & IP Attorneys and even professionals in Technical Domain related to Pharma, Biotech, Electronics, Telecommunication, Software, Electrical, and Mechanical Fields –the workshop promises to be of significant value to a wide range of professionals. It is desirable for the participants to have a prior knowledge of the process of obtaining patents and a demonstrable need to learn the art of patent analysis, prosecution, drafting patent specifications and claims. Moreover, participants should be competent to work in English.

The fees for participation are Rs. 15,750 per delegate for non-residential category, while for the purposes of accommodation, an additional Rs. 500 per day (for twin-sharing, furnished A/C accommodation) or Rs. 1000 per day (for single, furnished A/C accommodation) have to be paid. The participation fee covers the cost of the program, one set of study material, lunch and tea (and dinner for residential participants). Travel and other related cost, personal expenses etc. are to be borne by the participants.

Nominations for participation, along with the fee have to be sent latest by 25th January 2010, to GIIP by cheque/demand draft drawn in favour of “Global Institute of Intellectual Property Pvt. Ltd.”, payable at Delhi. Advanced information about the nominations can be e-mailed to vinaykumar@csirhrdc.res.in or manish@giipinfo.com. However, nominations will be accepted only after the participation fee has been received.

For other details and the entire programme schedule pertaining to the Workshop, please download brochure here.

SpicyIP Discount: The SpicyIP readers are requested to take note of the fact they can choose to avail of a 10% discount on the registration fees, for which they have to specifically mention that they have come to know of this workshop through SpicyIP.

3 Idiots and the Morality of Numbers

The Indian Express carried an editorial of mine summarising the main arguments that I'd advanced earlier in relation to the unfortunate copyright imbroglio between Chetan Bhagat and the makers of "3 Idiots".

Before I reproduce the editorial below, I want to flag up an excellent article by a film maker, Rohit Batra, assessing the similarities and differences between the book ("Five Point Someone") and the movie ("3 Idiots"). Such an assessment is tremendously valuable in that it is critical to the main issue of whether or not Bhagat's book has been "substantially" copied in the movie.

3 Idiots and the Morality of Numbers

Bollywood’s latest “message laden” script is certainly big on numbers. Within the first week alone, it grossed 175 crores! I speak of 3 Idiots, a brilliantly entertaining movie that captures the decay of the Indian educational system, where rote learning is often preferred over critical thinking; pragmatism over principles and convention over creativity. The success of the movie owes to an intelligent script that celebrates the innovator, the maverick and anyone else bold enough to pursue their passions against all odds. But I digress from my numbers’ thesis.

Note that the movies’ title contains the number “3”. And the book on which it is based (“5 Point Someone”) sports the number “5”. Most interestingly perhaps, the producers of the movie claim that the book contributes no more than 5 per cent to the movie. The author, Chetan Bhagat disagrees, claiming his contribution to be 70 per cent. If only judges were this masterful at numbers and percentages, copyright disputes might have been far easier to crack. But first, a bit of background:

1. Bhagat entered into a contract with the production house (Vinod Chopra Films Pvt Ltd), under which he assigned all rights in any film adaptation to them.

2. As consideration, Bhagat received a certain sum of money, which he admits. In any case, the dispute is not about the money.

3. Although, as contractually promised, the credits right at the end of the film do mention the fact that the movie is based on the book by Bhagat, it crams up the attribution (“Based on The Novel Five Point Someone By Chetan Bhagat”) in one line, whereas the contract stretches out the entire attribution to 3 lines.

Bhagat could therefore argue that even contractually, the form of placement was not complied with. This is buttressed by the fact that the credit at the end of the movie was so fleeting that even his mother missed it. Contrast this with the fact that the script writer, Abhijat Joshi was credited right at the start of the movie.

Anyway, what Bhagat appears to be really “hurt” about is the producers’ claim that the movie contained no more than 5 per cent of his book. Fortunately, this unfair treatment meted out to him is not just objectionable from a moral standpoint, but is actionable under the law.

Having read the book and watched the movie, my view is that the script borrows significant amounts of copyrightable elements from the book, including the main theme, the various plots and most of the characters therein, including some dialogues. The fact that some new scenes and sub plots were added afresh to the movie does not detract from the fact that significant portions of the book were copied onto the script in the first place.

Therefore, Bhagat is legitimately entitled to be treated as a joint author of this script. Section 57 of the Indian copyright act deals with what are commonly termed as “moral rights” and vests every author with the right to insist that their works be attributed to them. And this right exists independent of the “economic” right to exploit the work. In other words, even if the economic rights are assigned away (as was the case here), the moral right of attribution continues to vest with the author.

One might even argue that such rights were brought into our copyright regime to prevent precisely the kind of harm that this case throws up i.e. a wily production house that buys out an author economically and then attempts to obliterate his status as author altogether!

Bhagat must therefore take a principled stand on this issue and pursue the matter without backing down, not just for himself, but for every small artist who end up getting a raw deal from crafty producers. It could end up cleansing some of the sharp practices that Bollywood has become culturally attuned to now.

Bhagat must sue in a court of law, demanding rightful attribution and appropriate damages. It helps his case that Indian courts have traditionally been very supportive of the moral rights of authors (Amar Nath Sehgal vs UOI).

Of course, it would be far better if the film-makers apologise to Bhagat and settle the matter in a fair manner. After all, even they understand that morality is not really about numbers.

ps: image from here.

Fair comments on "Fake Drugs" ?

Recently, two analysts from International Policy Network, London wrote a piece entitled "Fake scare about Fake drugs" alleging that claims of 'over-protection of intellectual property rights' and at the same time, 'not protecting patients interests', which are being used by developmental NGOs (in their words, "Oxfam and other activist NGOs"), are false as well as dangerous. I would like to take this chance to react to their article, published by IP-Watch, as it contains a number of disputable, if not plainly misleading statements. Readers can access their article here.

Firstly, while striking an emotional chord with their readers by insisting that poor patients around the world are dying due to these medicines, they fail to deal with the crux of the matter at hand. They disregard the main issues which Oxfam and HAI had put forward in their recent report on the drug seizures and EU policies. Ironically, they use the same method they accuse the activists of using, i.e., of claiming to be protecting poor dying patients interests so as to manipulate policy in one particular direction, while ignoring the actual issues that the policy matters deal with. The main problem at hand is that the mere suspicion of infringement is sufficient for the customs officials to seize goods, regardless of a rational due process clause. The intent to delay drug shipments, whatever the means to this be, be it through alleging trademark infringement or patent infringement, is what is troubling 'activist NGOs'. Delays of this kind are doubly problematic. Firstly, because it increases barriers to medicines and thereby reduces consumers' supply; and secondly, generic pharmaceuticals cannot always bear the cost of delay, sometimes even leading to abandoning of consignments.

The authors seem to be justifying EU's policing actions by stating that they are doing the developing world a 'vital public service'. Are they implying that a self-appointed pharma police is a good thing? The authors also keep equating 'suspected' infringement with 'actual' infringement. However, even looking at past seizures that we have reported on, we see many instances where suspected infringement has included transfer of generic drugs legit in both the sending and receiving country as well as cases where drugs with International Non-Proprietary Names were stopped for 'suspected trademark infringement'. This shows the ease with which a case can become a 'suspected' infringement one.

No doubt there are cases of fakes originating from India, and these are probably not isolated instances either, but its difficult to get to any real information or even numbers or statistics with obscure data and elastic, changing, and often intermingling definitions of fakes, counterfeits, substandard drugs and generic products. To add further confusion to it all, as pointed out on SpicyIP earlier, even all the so called fakes made in India, may not actually be made in India, with China even issuing an apology for having exported fake drugs improperly labelled "Made in India".

The often-raised point on the legality of regulation 1383/2003, which empowers the EU to make these seizures, hasn't been discussed in the article either. The recent Nokia Customs case shows that there is some ambiguity in the interpretation of the regulation as well. While the Nokia decision has caused some shifting of standpoints, it would be interesting to see how it would affect the seizures of in-transit drugs, since the case deemed such seizure not to be necessary.

Finally, with respect to the Free Trade Agreements, the authors state that a probable cause for these 'allegations' are to derail the EU-India FTAs. In this, though more appreciative of it than they, I may agree with them. The draft EU-India FTA sets a higher standard than TRIPS for IPR protection, and would severely and adversely affect India's strong generic pharmaceutical companies, as well as large populations who aren't able to afford expensive medicines, by introducing measures such as extending patent terms and delaying generic entry. Thus, a more balanced set of negotiated terms and conditions in an FTA would be more beneficial, and therefore some sort of (though not total) 'derailment' may actually be helpful. TWN provides a more detailed analysis of the EU-India FTA here.

Job Openings for IP Professionals in Mumbai

Two job openings for IP Professionals in Mumbai, as described below.

If interested, please write with a copy of your CV to spicyipjob[at]gmail.com

(I) POSITION: Senior Manager Legal - IP Enforcement

Required Qualification: 5-8 years of IP infringement experience in a reputable law firm and/or multi-national corporation, including substantial work in copyright and/or trademark law

Salary: Commensurate with the best in the industry

Roles and Responsibilities:

i) Involves working closely with outside counsels, law enforcement agencies including customs and police, as well as corporate client representatives and trade associations

ii) Manage IP enforcement programs to ensure an integrated approach to worldwide issues while serving local needs and accommodating local conditions

iii) Supervise investigations, preparation and oversight of copyright and trademark infringement actions, in cooperation with colleagues in the U.S., China, and UK

(II) POSITION: Senior Manager Legal - IP (Advisory and Transactional)

Required Qualification: 5-10 years of IP advisory and transactional experience in a reputable law firm and/or media & entertainment company.

Salary: Commensurate with the best in the industry

Roles and Responsibilities:

i) Required for the company's film & television production, marketing, distribution and allied businesses

ii) Work closely with the business teams in the Indian office, understand their legal needs and manage the same

iii) Deal negotiations, contract drafting, advice on intellectual property laws, contract law and other areas of law, rights management

iv) Supervise investigations, preparation and oversight of copyright and trademark infringement actions, in cooperation with colleagues in the U.S., China, and UK

NUJS hosts the 1st Subrata Roy Chowdhury Memorial Essay Writing Competition

National University of Juridical Sciences, the Society of International Law and Practice (SILP: a student-run academic society within the university) and the NUJS-ILSA Chapter (the network of NUJS students who are also a part of the International Law Students’ Association) are set to organize The 1st Subrata Roy Chowdhury Memorial Essay Writing Competition, together with the Indian Yearbook of International Law and Policy. The competition professes the aim to promote research and writing in the discipline of international law and also seeks, inter alia, to encourage creative thinking. In pursuance of such goals, the themes chosen focus on issues of contemporary relevance to the field of international law and related legal policy matters.

Details about the competition are available here. All undergraduate and post-graduate law students enrolled in any Indian institution are eligible to participate in this competition.
Following are the themes for the competition:

• Is India ready for Sovereign Wealth Funds?
• Exo-politics and the emergence of a New World Order
• Non state actors, transnational armed groups and the regulation of hostilities in India: Should International Humanitarian Law recognize a hybrid category of armed conflict?
• Does Climate Change have an impact on National Security? An Indian perspective.
• Can the principles of Insurance Law be applied to the Law of Outer Space?

The panel of judges for the competition include names such as Prof. (Dr.) Manoj Kr. Sinha (Professor of Law at NUJS and the former Director of the Indian Society of International Law, New Delhi), Professor Vivek Kanwar (Assistant Professor of Law at Jindal Global Law School (J.G.L.S.) and the Assistant Director of the Centre on Public Law and Jurisprudence (CPLJ), J.G.L.S.) and Mr. Nikhil K. Dutta, (Editor-in-Chief of the N.Y.U. Journal of International Law and Politics).

Following are the submission guidelines for the entries for the competition:

• The essays must be between 4500-6500 words inclusive of all footnotes.
• The entries should be accompanied by a 200 word abstract (The abstract is not counted towards the word limit).
• All entries should be in Times New Roman, size 12, 1.5 line spacing.
• The footnotes used should be in Times New Roman, size 10, single line spacing. Substantive footnoting is not encouraged. The use of endnotes or other citation methods is not permitted.
• Plagiarism will result in immediate disqualification.
• The footnotes used should follow a uniform and complete system of citation.
• The use of the Harvard Blue Book (18th edition) system of citation is encouraged.
• The entries must be submitted in the Microsoft Word (.doc) format.
• All identifying information should be removed from the text of the entries and the file properties and another document containing the name, e-mail address, postal address, institution, course and year of study of the author must be submitted along with the entry.
• The entries must be submitted via e-mail to silp@nujs.edu and nujs.ilsa@gmail.com.
• The deadline for the submission of entries is 11:59 P.M., February 10, 2010.
• The organizers will check all entries to ensure that they conform to the submission guidelines. The organizers reserve the right to reject entries that do not conform to these guidelines.

First Prize: Rs. 8000 [In addition, the winning entry will also be considered for publication in the forthcoming issue of the Indian Yearbook of International Law and Policy, in accordance with the Editorial Policy of the Yearbook.] Second Prize: Rs. 6500
Third Prize: Rs. 5000
For any queries regarding the competition, please send an e-mail to silp@nujs.edu or nujs.ilsa@gmail.com.

Working of Patents: Public Notice Issued by Patent Office to Patentees and Licensees

The Controller General of Patents has issued a notice under Section 146 of the Patents Act, 1970 which empowers the Controller to issue a notice in writing requiring patentees or licensees (both exclusive and non-exclusive) to furnish information about commercial working of the invention within 2 months from the date of the notice or within such further time as the Controller may allow.

SpicyIP thanks Suresh Gupta for drawing our attention to this notice!

In the instant notice, the Controller has given time upto March 31, 2010. The information has to be submitted in accordance with Rule 131 which prescribes the appropriate form – Form 27.

This information is critical since it affects compulsory licensing provisions. Under Section 84(1)(c) of the Act, any person interested may apply to the Controller for grant of a compulsory license if the patented invention has not been worked in the territory of India.

Such representation under Section 84 may be made any time after the expiration of 3 years from the date of the grant of the patent. So the information under Section 146 has a public interest angle to it.

Earlier, Mr.Basheer had submitted a petition to the Controller General for greater transparency in the working of the Patent Office and increased accessibility to patent information, which touched on making public, information on working of the invention.

Since this notice revolves around working of the invention, it is important that we understand what constitutes working under the Act. Section 83 of the Act lists the general principles applicable to working of patented invention. The provision states that the powers conferred by Chapter XVI, which deals with working of patents and compulsory licenses, the following considerations shall be taken into account:

1.Patents are granted to encourage inventions and to secure their working in India on a commercial scale to the fullest extent reasonably practicable without undue delay; and
2.Patents are not granted merely to enable patentees to enjoy a monopoly for importation of the patented article.

The second point was further clarified by the Delhi High Court in Strix v. Maharaja Appliances.

Further, under Section 68 of the Act, a licensee must ensure that his interest in the patent has been duly given to him pursuant to an agreement of license in writing and duly executed. This is important because such licence is not valid unless it complies with Section 68. Mr.Basheer had earlier discussed this point with respect to the Roche v. Cipla case concerning the anti-cancer drug Tarceva.

There seems to be some ambiguity about Sections 68 and 69, and here we welcome the opinion of practitioners to help us understand the import of a combined reading of the two.

The title to Section 68 reads thus: Assignments, etc, not to be valid unless in writing and duly executed. The essence of this provision is that, any form of interest creation in a patent, be it an assignment or mortgage or licence, shall not be valid unless it is in writing and has been reduced to a document containing all the terms and conditions of the interest creation and has been duly executed.

It is important to note that the provision as it stands today is an amended one under the 2005 Amendment Act. Prior to the amendment, the Section read thus:

“68. Assignments, etc, not to be valid unless in writing and registered
An assignment of a patent or of a share in a patent, a mortgage, license or the creation of any other interest in a patent shall not be valid unless the same were in writing and the agreement between the parties concerned is reduced to the form of a document embodying all the terms and conditions governing their rights and obligations and the application for registration of such document is filed in the prescribed manner with the Controller within six months from the commencement of this Act or the execution of the document, whichever is later or within such further period not exceeding six months in the aggregate as the Controller on application made in the prescribed manner allows: Provided that the document shall, when registered, have effect from the date of its execution.”

The above unamended version was the subject matter of a judgment delivered by the Delhi High Court in NRDC v. ABS Plastics where the Court categorically held that unless the license agreement had been reduced to writing and registered, it was not enforceable. Section 69, prior to the amendment provided for the procedure of registration of the license agreement and this provision remains unamended till date.

The short question is, since after the 2005 amendment, Section 68 requires the license agreement to be reduced to writing and duly executed, but not registered, can we safely conclude that non-registration of the written and duly executed agreement does not affect its enforceability?

Section 69 which deals with registration of such agreements requires the assignee or licensee to apply in writing for registration. In fact, sub-section (1) states, he shall apply in writing. Sub-section (2) permits the assignor or the licensor to also apply for the same. Sub-section (3) speaks of registration of the agreement by the Controller upon an application made under sub-section (1) or (2). However, sub-section (5) is is of interest to us since it states thus:

“Except for the purposes of an application under sub- section (1) or of an application to rectify the register, a document in respect of which no entry has been made in the register under sub- section (3) shall not be admitted by the Controller or by any court as evidence of the title of any person to a patent or to a share or interest therein unless the Controller or the court, for reasons to be recorded in writing, otherwise directs.”

What this could mean is that a license agreement which is written and duly executed under Section 68 is rendered inadmissible owing to non-registration as per Section 69(5). But, does inadmissibility due to non-registration necessarily translate to invalidity, and hence unenforceability of the license agreement?

In other words, can it be said that the combined import of Section 68 and 69 remains the same despite the 2005 amendment to Section 68? If so, why was registration removed from Section 68 and replaced with duly executed?

Dr.Gopakumar Nair directed us to the "Notes on Clauses" and the "Clauses" in the Patents (Amendment) Act, 2005 (15 of 2005). Clause 49 of the Amendment Act specifically pertains to Section 68 and reads thus:

"This clause seeks to substitute section 68 of the Act, which relates to assignments, etc., not to be valid unless in writing and duly registered. The amendment is being proposed with a view to avoid repetition of the procedure for registration of assignment, which is already contained in section 69."

It is clear from the above clause that the amendment to Section 68 was merely to remove repetition of the procedure of registration and does not in anyway affect the mandatory requirement of registration of the license agreement. Therefore, the position under Section 68 after the amendment is the same as before. In hindsight, this may be supported from Section 69(1) which states that the assignee or licensee shall apply for registration.

SpicyIP thanks Dr.Nair for promptly pointing us in the right direction.

SpicyIP Tidbit: Innovation Universities to Be Set up in India

According to news reports, some of the best known Ivy League universities – MIT, Yale, Harvard and Princeton have approached the MHRD (Ministry of Human Resource and Development) to collaborate in the proposed setting up of 14 Innovation Universities across India as part of the 11^th Five Year Plan (2007-12). (MIT apparently is not a part of the Ivy League according to Wikipedia)

This is a continuation of Mr.Kapil Sibal’s visit to these universities last October. Reportedly, Satyanarayan Gangaram Pitroda (better known as Sam Pitroda) is drafting the details for the establishment of these universities.

Let’s hope these universities help in streamlining and institutionalising innovation...

SpicyIP Tidbit: Latest on the 3 Idiots Controversy

In two posts earlier, we have blogged on the 3 Idiots controversy between Chetan Bhagat on the one hand, and Rajkumar Hirani, Vidhu Vinod Chopra and Aamir Khan on the other, which has grabbed the attention of the mainstream media thanks to Chopra’s outburst at a press conference at the Radisson in Noida yesterday.

Earlier in the day today, after Chopra apologised to the media for his appalling behaviour, Rajkumar Hirani held a press conference citing the credits clause in the contract between Chetan and Chopra and said the movie makers had fulfilled their obligations under the contract. Hirani reiterated his stance that not more than 5% of the movie is based on Chetan's book. Now that this appears to be the formal position of the makers of the movie, and not something said in the heat of the moment, Chetan can decide on his formal course of action in the matter.

We would like to remind our readers to take part in the opinion poll we have put up on this controversy.

SpicyIP Tidbit: Music Artistes in tune with the Copyright Amendment Bill

Lyricists, composers and singers are beginning the year with a bang owing to the proposed amendments to the Copyright Act. The Copyright Amendment Bill recently received Cabinet approval (detailed posts can be found here and here). Information and Broadcasting Minister Ambika Soni has stated that the amendments will give independent rights to authors of literary and musical works in cinematograph films. The Bill will be tabled before the Parliament in the Budget Session in February.

As reported here in the Indian Express, a delegation of artistes assembled in New Delhi to lend their support. The group included the Javed Akhtar, sitar maestro Pandit Ravi Shankar and singers Shankar Mahadevan and Shubha Mudgal. Javed Akhtar pointed out that the amendments will prevent exploitation of lyricists, composers and singers by producers and music companies. Shankar Mahadevan added that all the rights are more than often signed over to music companies. The music companies and producers possessed with the ‘moral rights, title and interest’ market them as mobile downloads, ringtones and for use in commercials. Shankar Mahadevan also pointed out that musicians and composers are the worst affected as sales of music CDs and cassettes are minimal owing to other modes of distribution.

Image from here.

The "3 Idiots" Copyright Controversy: Will All End Well?

Sai Deepak did a wonderful post highlighting a key controversy that recently broke out between the makers of India's most entertaining, yet thoughtful Bollywood flick of 2009 and the author from whose book the central plot was allegedly lifted; a movie that goes by the name of "3 Idiots", but does not have the faintest trace of idiocy in either its script or execution.

Clearly one of the best movies to have been released this year, it demonstrates yet again that meaningful "message laden" scripts sans any mind numbing dance, song or fight sequences have a fair shot at tasting box office success! Needless to state, a lot of the success of this particular movie owed itself to a brilliantly conceptualised storyline and an amazingly punchy script.

As Sai points out in his post, the author Chetan Bhagat claims that the attribution (or rather the lack of it) to his book in the movie has been rather "unfair". Having seen the movie ("3 Idiots") and the book ("5 Point Someone"), I'm quite sympathetic to Chetan's claims that he's been "unfairly" treated. And I also think he may have an arguable case under Indian copyright law, since his book input has not been adequately "attributed", but rather reduced to a paltry amount of 3-5%. Bhagat writes in his blog:

"Pre-release, the makers made press statements like the movie is only ‘very loosely’, ‘2%-5% inspired by the book’. After release, those who have read the book and seen the movie (and frankly, I think those are the only people who have the right to comment) find the film to be an adaptation of Five Point Someone. The setting, characters, plotline, dramatic twists and turns, one-liners, theme, message – almost all aspects that make up the story are from FPS. Yes, there are some changes, any adaptation requires that – but it is no way an original story.”

Examining the Key Facts/Issues

Let's examine the specific facts (some of them appear well established; others contentious) and the various issues (both legal and moral) that they give rise to:

1. Bhagat entered into a contract with the production house (Vinod Chopra Films Pvt Ltd), under which he assigned all rights in any audio visual format of the book or its adaptation to the production house.

2. As consideration, Bhagat was to be paid a certain sum of money (totaling about Rs 11 lakhs or so). The facts appear to indicate that he was paid this sum in full and Bhagat does not contest this in his blog post either. So this is not really about the money.

3. Bhagat was also promised credit in the film. Since this clause (Clause 4) is critical, I reproduce it below:

"It shall be obligatory on the part of the Producer to accord credit to the author in the rolling credits of any audio-visual moving image software (of any format or form in any media or medium) produced by the Producer in terms of the exercise and execution of the Rights granted as under:

“Based on The Novel

Five Point Someone

By

Chetan Bhagat”

Although, as contractually promised, the credits right at the end of the film do mention the fact that the movie is based on the book by Bhagat, it crams up the attribution (“Based on The Novel Five Point Someone By Chetan Bhagat”) in one line, whereas the contract stretches out the entire attribution to 3 lines. Bhagat could therefore argue that even contractually, the form of placement was not complied with. This is buttressed by the fact that the credit at the end of the movie was so fleeting that even his mother missed it. Contrast this with the fact that the script writer, Abhijit Joshi was credited right at the start of the movie.

(nb: this point about the placement of the credit in the movie was brought to my attention by one of our readers, Sneha)

Of course, one might argue that Bhagat ought to have bargained for better placement of his "credit" in the movie; rather than as a mere rolling credit. But recall that at the time of negotiation of this contract, Bhagat was not as popular a writer. In any case, there is much to be said for the bargaining asymmetries between an individual author and a production powerhouse with ample financial and political muscle. So much for the freedom of contract.

Moral Rights and Lack of Attribution

4. Bhagat claims that in the pre-release publicity and even post the movie, the makers of the movie made statements to the effect that the movie was not really based on the book and that it was "original". Most damagingly perhaps, the makers claim that the movie was only based on the book to a paltry extent of 3-5% .

If what Bhagat states is true, he has a decent case on moral rights against the makers of the movie. Section 57 of the Indian copyright act vests every author with the right to insist that their works be attributed to them. And this right exists independent of the "economic" right to exploit the work. In essence, the section states that "..independently of the author's copyright and even after the assignment either wholly or partially of the said copyright, the author of a work shall have the right to claim the authorship of the work ... "

In other words, even if the economic rights are assigned away (and in this case, Bhagat assigned away his rights to any movie based on the book), the moral rights continue to vest in the author. The question now is: is it true that Bhagat's book only contributed 3-5% to the movie. Or was the movie based substantially on the book?

Having read the book (that has now reached some sort of a cult status in certain circles) and watched the movie, I personally think the copying has been rather significant. And not a mere 3-5%! However, I must also state that Abhijit Joshi, the script writer (along with Hirani) packed in some brilliant new scenes and subplots whilst adapting the book theme. Therefore, what they created is also "original", unlike what Chetan claims. However, their originality does not detract from the fact that they have also, in the process, lifted a significant portion of the plot, characters etc from the book. Therefore, the end product (movie script) could be rightfully said to be a product of joint authorship, involving Chetan Bhagat, Abhijit and Rajkumar Hirani.

Let's examine the movie and book in closer detail.

Five Point Someone vs 3 Idiots (A Factual Comparison)

Based on my rather imperfect recollection, I've tried to highlight the key similarities and differences between the movie (3 Idiots) and the Book (Five Point Someone) below:

i) The setting for the story is a premier engineering college in New Delhi. While in the book, it is the world renowned Indian Institute of Technology (IIT), in the movie, it is titled the "Imperial College of Engineering".

ii) The story revolves around 3 friends who make it to the Imperial College of engineering and their various trials and tribulations, starting with their initiation ceremony (referred to as "ragging" in India) by their seniors.

iii) The smartest of the lot is an "out of the box" non conformist thinker, who goes by the name of "Rancho" (played by the legendary Aamir Khan, a leading Bollywood star). Illustratively, he refuses to go by the bookish definition of "machine" and defines it loosely as anything that makes life easier for humans.

iv) The second of the three musketeers (Raju) is really poor and his parents have just about scraped together all their earnings to put him through engineering school. His father is paralyzed and requires hospital attention. He is therefore under tremendous pressure to score well in college, find a good job, and earn enough to get his sister married off etc.

v) The third friend is a very talented photographer (Farhan) but is in the wrong place (engineering college). I don't recollect finding any references to this photography talent of Farhan in the book.

vi) In both the book and the movie, Farhan is the narrator of the story.

vii) On one particular occasion, the three musketeers go up to the terrace of their college (near a water tank) to elevate their spirits and end up thoroughly inebriated.

viii) The entire educational set up is geared towards rewarding students who learn by rote i.e those that do not question their professors or teaching methodologies, but blindly spew out class notes for their exams, something that most Indian institutions encourage even today. Rancho strikes a different chord and in the process incurs the wrath of the institutional powers that be. I personally felt that the movie highlights this aspect with greater impact than does the book.

ix) The head of the institution, whose rather long name is shortened to 'Virus" deals mercilessly with what he perceives to be student infractions or weaknesses. His Hitler like attitude in foisting his rather conservative and austere value system on his children and students leads to his son committing suicide.

x) During the course of their studies, Raju cracks under pressure and tries to commit suicide.

xi) Rancho and friends steal the exam question paper from the Directors' room and face the prospect of rustication. Luckily, they come away unscathed, since it turns out that Rancho got the keys from Virus' daughter, with whom he shares a romantic relationship (jaise filmo main hota hain).

The differences between the movie and the book are:

i) While the book appears to center around Farhan (the 5 pointer, a reference to his rather average grades), the movie focuses more on the unconventional Rancho. Having said this, the book does glorify Rancho's maverick nature and one could say that he is made out to be a hero of sorts.

ii) While the film has Rancho romancing the Director's daughter (Piya), the book has Farhan doing so.

iii) The film portrays Rancho as generous boy who loves learning for the sake of learning and enters engineering college only to acquire a degree and hand it over (fraudulently) to the son of his dad's boss. The book avoids this fraudulent act.

iv) The film shows Rancho turning out to become a world famous inventor at the end of the movie, with over 400 patents to his name. However, he is more of an informal innovator, and some of the inventions depicted in his remote and rather picturesque Ladakh open air lab were borrowed from NIF innovators. The book does not contain this inspiring ending.

v) The movie also ends with Pia finding Rancho in his innovation friendly Shangrila and slapping him for deserting her. The book misses out on this resounding ending.

vi) One of the funniest moments in the movie is a speech read out by Chatur Ramalingam, the polar opposite of Rancho, in that he is the typical conformist who cosies up to his professors and crams too hard. Rancho switches the speech and has Chatur spouting out nasty adjectives for the Director in his Hindi speech (a langauge he is not familiar with since he is born to expat parents). I can't remember any references to such a speech in the book.

vii) Chatur vows to avenge his humiliation and wagers that in 10 years, he would have become highly succesful, while Rancho would be rotting in hell. The movie begins with Chatur returning from the US (where he leads a successful career, with beautiful apartment, voluptuous wife and Lambhorgini) and attempting to locate Rancho and his friends to demonstrate that he has indeed won the wager. He manages to locate the friends and get them to the college terrace,,but Rancho is nowhere in sight. In fact, even Rancho's closest friends have lost touch with him after college as he gave them the slip. The hunt begins and Rancho is found...not rotting away but flourishing in the beautiful Ladakh as a world class inventor, with whom Chatur's US company wishes to collaborate. The book does not contain any of these Bollywoody references.

viii) And lastly, though perhaps insignificantly, the names of all the characters in the book have been changed in the movie.

Given the space of his blog post, I've not listed out each and every similarity or difference between the book and the movie, but merely jotted down what i think to be the critical ones. I'm hoping that some of you reading this might offer to help out in the coming days by listing more such differences and similarities in the comments section.

Dishonesty?

I personally think its highly misleading and downright dishonest to claim that only 3-5% of the movie was taken, if at all it is possible to precisely quantify such factors. The net implication is that the rest of the movie script really originated from other authors, a proposition rather difficult to digest. To me, it appears that a significant portion of the book's storyline, most of its characters and sub plots, including some dialogues were all reproduced in the movie. The fact that some new scenes and sub plots were added afresh to the movie does not detract from the fact that significant portions of the book were copied onto the movie in the first place. Therefore, the claim that the book only contributed 3-5% of the movie is blatantly false. On the contrary, Chetan could claim that the script borrows significant amounts of copyrightable elements from his book and he is therefore legitimately entitled to be treated as a joint author of this script. Consequently, the lack of appropriate attribution in favour of Chetan amounts to a violation of his rights to authorship guaranteed by section 57 of the Indian copyright act.

Even otherwise, by crediting the movie to the book as per clause 4 outlined above (albeit a fleeting credit right at the end of the movie that one was likely to miss), couldn't one argue that the movie makers impliedly accepted that a significant portion of the movie was based on the book? Else, why would they need to credit at all? (though technically, one might argue that the contract demanded it, irrespective of whether or not significant book portions were taken).

The Public Vote on This?

Interestingly, there are a number of blog posts and other articles, where numerous commentators have expressed their disgust at such forthright copying of a substantial chunk of the book without due attribution. Some others have expressed the opposite view.

In that vein, we've also put up a poll on our blog to test what our readers (who've been lukcy enough to savour the movie and the book) think. As many of you may know, the key test in many IP cases hinges on the perception of the "reasonable" man or woman: do they think that the movie contains substantial portions of the book? If you have a view on this, do vote on our poll section (see top left hand corner of the blog home page).

Big vs Small: A Matter of Justice for All

Chetan should pursue this matter, not just for himself, but for every small artist or writer who ends up getting a raw deal from wily producers/publishers. Chetan notes in his blog:

"Soon, they started doing media promotions for the film, and kept me completely out of it (you’ll never find me in an interview with them). Crores was poured into publicity on shutting me out and cementing the fact that 3 Idiots is not based on Five Point Someone. However, the book had been read by millions of people and the FPS buzz just did not die down.

Ten days before the release, I was called into their office. They said ‘we should be friends now’. I said I am always up for friendship, and the success of the film is good for me as well. They also said, and I quote verbatim ‘even though this is an original film, we have given you a great credit, right upfront. After all, we love writers and a king should treat another king with respect. You are family’. I believed them."

If what he claims is true, this is nothing short of treachery. And he must fight to vindicate his stand. If the haughty film makers fail to make amends and settle this matter in a fair manner, he should send out a legal notice to them demanding rightful attribution, failing which he must sue them in an Indian court. Indian courts have been very "activist" in their stand on moral rights, extending the scope of it to even works that were hidden away from the public eye (Amar Nath Sehgal vs UOI).

If perchance this matter reaches court and Chetan gets a judge sympathetic to the cause of authors and concerned about high handed treacherous practices of producers with a deep stranglehold on the industry, he could walk away with a robust order mandating appropriate attribution and heavy damages too.

But lets hope that better sense prevails over the film makers and that they turn out to be as principled as the hero that they fleshed out so inspiringly in the movie. And that this bitter fiasco end well. For, as the age old aphorism goes: "All's well that ends well".

And on that parting note, may I once again wish all our readers a terrific New Year ahead.

ps: Disclosure of Potential Conflicts of Interest

I am a die hard fan of Aamir Khan, having watched most of his movies since "Qayamat se Qayamat Tak". Since he blazes the screen with his presence only once a year, its far easier to keep up with this star than the others in Bollywood who belt out a dime a dozen each year. My admiration for this fabulously innovative method actor stems not just from his emoting skills, but also his public persona which appears to depict an intelligent and socially sensitive human being. It therefore comes as a surprise to me that he would go out of his way to lash out at Chetan Bhagat, without so much as even having read the book! For an actor known for his perfectionist streak and eye for detail, this is rather startling.

Eeej Aal Well?

(Disclaimer: The first 6 paras (about 422 words) are off-topic)

Imagine the plight of a 6 year old having to suffer a burly guy sitting next to him in a movie hall who's laughing his head off, stopping embarrassingly short of rolling in the aisles. To add to the kid’s woes, his parents care a hoot about his plight and it’s dark all around except for the light from the movie screen and mobile phones.

I don’t know who the kid is and probably he will never ever want to know the burly guy, but I just hope I didn’t give the poor kid a life-long phobia of cinema halls (is there a term for this? Oh yes- Theatrophobia)

The reason for my unintentionally deplorable behaviour was the movie which is obviously the toast of the season- 3 Idiots, reminding each one of us of those notorious days back in college, not too far in the past and yet seemingly distant enough to use the clichéd phrase good ‘ol days. The movie’s so infectious that not a single soul in my circle could resist discussing it for the last week; so much so that I felt like the only idiot who hadn’t seen 3 Idiots.

So yesterday i.e. on New Year's Eve, I made up my mind and told myself that come what may, Mission 3 Idiots had to be accomplished by the end of the day even if it meant I had to go through hell and high water (which for most people living in the National Capital Region is synonymous with traffic!) to cover a distance of hardly a mile.

And, my friend was late (as usual!), but then this day I was driven by a sense of purpose and the end, on this day of all the days, certainly seemed to justify the means, so I just collected my ticket without a smidgen of compunction (my friend had informed me as I was on my way, that he had booked e-tickets for both of us...) and bull dozed my way into the movie hall.

And then, for the next 3 hours, the poor kid next to me had to sit through a non-stop laugh riot and even if he had been wailing, his desperate cries for help were lost in the all-engulfing din that the audience created. After the movie, I patted myself and said the day was well spent, promising a revisit soon enough. Once back home, I turned on the Idiot box to find almost every channel running news about the movie- needless to say, statistics and plaudits galore. Kudos to the makers of the film for helping us end the year on a cheerful note and for making a fleeting mention of patents in the movie (Spoiler Alert: A character in the movie Phunsuk Wangdu holds 400 patents, ahem...what about commercialization?)

But somewhere in all this celebration, no one had seen the inevitable pinch of hemlock on its way to spoil the film's party...

Within a matter of hours, from the success of the movie, the attention had dramatically shifted to something much more salivating for the media- public accusations of non-attribution or atleast innocuous attribution hurled by Chetan Bhagat (the author of Five Point Someone, the book on which the movie is allegedly based) at the makers of the movie and ugly scenes of confrontation between Vidhu Vinod Chopra (the producer of the movie) and a journalist at a press conference. Naysayers might say that IP has reared its ugly head once again.

Nay! Lack of awareness and respect, and disdain for IP have reared their grotesque heads is what we would say.

But before we jump to conclusions or prejudge anyone, let’s take a look at the facts:
1. Chetan Bhagat’s Five Point Someone is arguably one of the most popular books written in English by an Indian author and enjoys a cult status among its readers.

2. Though written after Sandipan Deb’s The IITians and the Dilbert series on IITians in the US, Bhagat’s book, although fictionalised, can be credited for single-handedly making the campus life of students at IITs familiar to and popular among the public.

3. Those who have read the book and watched the movie will certainly relate to the setting, specific instances from the book, the characters and the pranks- the standard of the common reader comes into picture.

4. The makers admitted having read the book- access comes in here

5. The director of the movie has reportedly stated that the book could not be replicated in toto in the movie and so the screenplay had to be adapted to suit cinematic and thematic imperatives- adaptation of a copyrighted work/derivative works

In light of these facts, it is strange that some members of the lead cast in the movie have gone to the extent of stating in public that the author’s allegations are mere publicity stunts and there is no truth in his statement about 60-70% of the movie being based on the book.

On the face of it, it seems that lack of prominent credits is the primary issue. But this cannot be seen in isolation because for a work to qualify as a derivative work, it must be substantially based on the original copyrighted work. Prof.Nimmer explains it beautifully where he broadly defines derivative works to include adaptations of the copyrighted work. According to him, if the subsequent work is not substantially based on the original work, then it is not a derivative work.

A test may be applied here: if the subsequent work cannot stand on its own in the absence of the original and it has to necessarily develop on the substratum in the original, then it must be treated as a derivative work.

Creation of a derivative work, as we know, too falls within the bundle of rights vested in the copyright holder. Why is this so? This is because if the derivative work were to be created without the consent of the copyright owner of the original, the derivative could be accused of substantial infringement.

Further, for vestation of copyright in the derivative, it too must satisfy the criterion of originality. Therefore, in addition to consent, the derivative work must be original as well. Absence of even one of these criteria deprives it of a copyright.

Quite a few cases hold that in the absence of consent, the creator of the derivative work is guilty of infringement, however he may prevent others from copying his original contribution to the work.

Consent does not seem to be an issue in the 3 Idiots controversy, but can 3 Idiots be called a derivative of Five Point Someone? Stated otherwise, is the movie substantially based on the book?

We'll wait for the plot to unravel...(or as Aamir's chaddi buddy SRK would say "Picture Ab Baaki Hai Mere Dost")

and by the way, Happy New Year MMX!!!

(Image from here)

Happy New Year from the SpicyIP team

The SpicyIP team wishes all of you a very warm and pleasant year ahead.

IP in India has seen an exciting year go past, and if December signs are anything to go by, there is plenty more coming ahead, be it in the form of legislative changes, or cases waiting to be decided by the courts, or administrative transformations that will make the Indian system at par with the best in the world.

As in the past, we hope to continue to bring you news and information about these changes, and along the way, learn and understand how these developments will impact the larger system, whether domestic or international.

On the website front, we would like to remind you of an exciting new initiative launched recently called CLam, or Collaborative Law Making, which attempts to create an online space for public participation in law making, analogous to the open source and open access initiatives that are already popular in other domains.

In the months to come, the team will try to broaden its coverage on IP, including reportage on relevant issues that are increasingly becoming mainstream, such as innovation and traditional knowledge. We will also try to bring you an increasing number of guest posts by authorities in the field -- not just because we note that several of you enjoy the 'break' from the monotony of the team's drone (!), but also because the experts bring exciting new perspectives to the table, which invigorate our virtual conversations that much more!

For all of this and more, we are continually grateful to you for actively engaging us in conversation, whether in person, on email, or through comments on the blog, and for helping to critically explore and analyse the evolutions that are taking place in Indian IP. We do hope you will continue to do so in the times to come, and that together we shall be able to make the Indian IP world as interesting as the proverbial cookie portends!

Thank you again, and greetings once more. We'll be seeing you!

(Images from here and here)

Court gives Nod to Patent for Image on Flowers

A few years ago, the Bombay High Court had reversed an order of rejection of a patent by the Controller-General of Patents. It is this case, titled Speaking Roses International Inc. vs Controller-General Of Patents And Anr. [citations: 2007 (109) Bom LR 630, MIPR 2007 (2) 75; full judgment available here], that forms of the subject of this post.

The Petitioners, viz. Speaking Roses international Inc., had on September 19, 2002, applied for a patent for “providing an image on an Organic Product, being flowers”. Subsequently, they were given the First Examination Report (FER) as well as the Second Examination Report (SER), both of which they had replied to and complied with.

However, by an order dated April 19, 2006, the Respondent had rejected said application on the following 5 major grounds.

The first ground of rejection consisted of the allegation that the application was in contravention of Section 3(j) of the Patents Act, 1970.

The aforesaid section, in its sub-clauses (a) to (p), enumerates what cannot be considered as inventions and as per sub-clause (j), such exclusion extends to “Plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.” This sub-clause thus does not allow grant of patent for plants or for any biological processes for production or propagation of plants.

However, Dalvi, J., who was presiding over the case, held that from the very application of the Petitioners, it became apparent that the patent sought was not for any flowers or organic products, but for providing an Image on an organic product. Hence it was not a plant that was being sought to be patented. Furthermore, such image was to be created by a mechanical process and not a biological one. Therefore, the claim did not fall within the scope of the aforesaid Section 3(j).

The second ground of objection was that 3 other inventors, viz. Skonecki, Croner and Jones, had been previously granted patents for identical purpose and in light of that fact, the Petitioners’ claim lacked the necessary inventive step to qualify for a patent.

The Petitioners, however, argued that their product was substantially different from those of the aforesaid patentees. For example, Skonecki used the method of putting a message or a drawing by means of applicator such as a pen containing a pigmented oil-based paint and required pressure to be put on the flowers causing an indentation of the flowers and cellular damage. The Petitioners, on the other hand, had been using a pad/roller as a transfer medium, which resulted in no such damage. Again, Jones marked the image by cutting and altering over the surface of the flower by a computer-controlled laser beam, which caused alterations of the material of the organic product and subsequent quick deterioration. However, the Petitioners' process of pad printing did not cause any such alteration.

Having considered the aforesaid arguments, the Court held that the Petitioners were the first to have applied for the process they have claimed a patent for and hence the requirements of inventive step and novelty stood satisfied.

The remaining 3 grounds of objection included the allegations that the Petitioners' claim does not sufficiently define the invention, lack of clarity of the title of the patented product and the inconsistency of the title with the claims made by the Petitioners. Regarding these, the Court was of the opinion that the Petitioners intended to obtain a patent on the mechanical process of imprinting the message by way of pad printing on an organic product and the hence the title of their application, being for “Providing an image on an Organic Product”, appeared to be precise, concise and definite.

Any objection on the Respondent’s part of the patent being sought on the organic product was overruled by the judiciary and it was opined that Respondent had unfortunately fallen victim to a complete misunderstanding of the nature of the Petitioners’ claim. The objection of the Respondent of the title’s inconsistency with the claims also met with a similar fate. The Court went on to comment that the Petitioners’ illustrative explanation of the method appeared to be in perfect consistency with their claim for a method patent as against a product patent. Moreover, the summary of the invention, provided by the Petitioners in the application, renders the invention well-defined, by way of clarifying the methods involved, the type of images to be imprinted upon specifically illustrated organic products and a clear object of the exercise in its entirety. The objection of the claims providing insufficient definition of the invention, too therefore, falls short.

The Court also held that the Petitioners need not amend their claims under such circumstances and refused to consider further objections of the Respondent regarding the feasibility of expanding the scope of the claim.

Another interesting, albeit technical, observation of the Court in this case was that a patent application could not be rejected merely on the ground that only one of the assignees of the patent had filed the application.

Finally, after consideration of all the aforementioned arguments, the Court decided to accept the Petitioners’ contentions, set aside the Respondent’s order of rejection of the patent application and granted the patent to the Petitioners.