SpicyIP Weekly Review (June 1 – 7)

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[This post has been authored by our intern, Bhavik Shukla, a 5th year student at NLIU, Bhopal]

Topical Highlight

Bombay High Court Finds Web Series ‘Singardaan’ Prima Facie Infringing: Does Copyright Law Protect Themes of Stories?

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Arun covered the decision of the Bombay HC in Shamoil Ahmad Khan v. Falguni Shah, wherein the Defendants were temporarily restrained from making further adaptations or using their web series. He notes that the Court applied a distinct ‘abstraction’ process to compare the Parties’ works through which it extended copyrightability to the theme of the Plaintiff’s work. He states that the court concluded on the similarity between the works based on the later half of the Defendant’s work, and that this produces a varied approach as compared to the court’s previous approach. He claims that the case considers a ‘theme’ to be a mode of expression, thereby significantly expanding the scope of protectable subject matter. He observes that there is a requirement for definitive parameters to deal with such commonplace disputes, and suggests that the American standard of ‘total concept and feel’ may provide a viable solution.

Thematic Highlight

Masakali 2.0: Unconsented Song Remakes and Ownership of Copyright

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In a guest post, Akshat discussed the issues relating to first ownership of copyright in musical works in light of the recent controversy over the Masakali 2.0 remake. He argues that under section 17 of the Copyright Act, a composer is the first owner of a musical work (whether created before or after the 2012 amendment) and thus without a license or assignment from him, the producers cannot remake a song incorporated in their film or sound recording. He claims that even if the work was commissioned by producers, they cannot claim ownership under proviso (b) as it doesn’t apply to musical works and the IPRS decision that held otherwise is per incuriam. Noting that the composer-producer relationship is usually not an employer-employee relationship, he states that even under proviso (c) producers cannot claim ownership unless such a relationship between the two can be proved. Further, he argues that the the second proviso to section 17, that was inserted by the 2012 amendment to clarify the ownership of composers in their works included in a film, cannot be contracted out and also has a retrospective application. Furthermore, he notes that even by the virtue of their copyright in the sound recording/film, producers do not have the right to create a remake of the musical works incorporated therein.

Other Posts

The Frequently Overlooked Corollaries of Academic Patenting

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In a guest post, Vedangini Bisht wrote about the points to be considered while framing a patent policy for academic institutions. First, she states that an academic patenting policy may lead to the creation of patent thickets, thereby making licensing an expensive affair. Second, she notes that granting patents to publicly-funded research shall result in double taxation for taxpayers. Third, she observes that the research exemptions in IP statutes may lead to universities getting sued more often, especially when there is no judicial clarity on the terms ‘experiment’ or ‘research’. Fourth, she states that academic patenting is highly susceptible to interference from industries, thereby translating an academic effort into a commercial affair. Fifth, she indicates that the patenting culture will hinder free sharing of research and dissemination of knowledge in universities. Further, she observes that the policy of academic patenting has its own advantages, but the aims to be attained through a country’s IP laws should be well delineated before configuring such a policy.

Real-Time Piracy Concerns Emerge as Live Music Streaming Goes Mainstream in Wake of COVID-19

In another guest post, Simrat Kaur discussed the piracy challenges which may emerge when live music streaming becomes a norm after the COVID-19 pandemic. She notes that the most formidable piracy challenges to live streaming may be presented by infringing live streams, unauthorized uploads of recorded live streams and stream ripping of live streams. She states that the digital rights management technologies are inept to offer reliable protection to copyrighted works as they are eventually circumvented by pirates. Considering that live streaming requires a time-sensitive notice and take-down mechanism, she states that forensic watermarking provides a satisfactory solution to trace illegal streams. Further, she suggests that the introduction of an AI-backed moderation system and shared-blocking ability model may prove effective in disruption of illegal streams. In conclusion, she suggests that piracy needs to be checked for live music streaming to flourish and generate revenue.

Bombay HC Denies Interim Injunction in ‘Betaal’ Web Series Copyright Infringement Case

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Namratha wrote about the Bombay HC’s decision in Sameer Wadekar v. Netflix Entertainment Services Pvt. Ltd., wherein the Court refused an interim injunction to prevent the release of the web series ‘BETAAL’. She notes that the decision in favour of the Defendant was influenced by three factors namely, the Plaintiff’s lack of proving a conclusive link through which the Defendant got hold of his story (i); Plaintiff’s delay in filing the case (ii), and finally the judge’s observation that ‘BETAAL’ is a common Hindu mythology story (iii). She notes that the final reason for refusal of an injunction should have been detailed, considering that original expressions of a work in the public domain may make it eligible for copyright protection. She suggests that the American doctrine of scenes a faire could have been applied to examine if the similarities between the works were incidental or material and substantial. Further, she observes that the Court turns a blind eye to the idea/ expression test, contrarily suggesting that the same could have been used to compare the works.

I-WIN’s First Virtual National IPR Moot Court Competition 2020 [July 4 – 6]

Last week, we informed readers about I-Win IP Services’ first virtual national IPR moot court competition to be organized in association with CIPAM. The moot court is open to law, science and engineering students for participation and shall be held from 4th to 6th July, 2020. The deadline for registration has been set at 15th June, 2020. For the moot problem, the moot rules, information on prizes and registration details, please see the detailed post.

Other Developments

Decisions from Indian Courts

Delhi HC restrains the use of the mark ‘DEVTOL’ for hand sanitizer [May 28, 2020]

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In Reckitt Benckiser (India) Pvt. Ltd. v. Mohit Petrochemicals Pvt. Ltd., the Delhi HC directed the Defendants to refrain from infringing the Plaintiff’s mark “DETTOL”. The dispute between the Parties arose on account of the Defendants’ alleged infringement of the Plaintiff’s mark “DETTOL” by using the mark “DEVTOL” in respect of manufacturing and selling hand sanitizer. In arriving at this decision, the Court noted that the Defendants had already instructed their dealers to withdraw infringing products from the market, and had confirmed that they would no longer manufacture or sell the infringing product. Moreover, the Court directed the Defendants to deposit Rupees 1 lakh in the fund for Juvenile Justice.

Delhi HC grants an interim injunction restraining Barcodes SL from issuing fake barcodes under the ‘890’ series [May 29, 2020]

 

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In GS1 India v. Barcodes SL & Ors., the Delhi HC restrained the Defendants from issuing illegal bar codes through its web portal. The dispute between the Parties arose on account of the Defendant’s alleged infringement of the Plaintiff’s certification mark ‘890’, by issuing barcodes beginning with identical numbers. The Plaintiff noted that it was the only authorized issuer of barcodes beginning with ‘890’ in India, which were compliant with the standard set by GS1. Accordingly, the Court observed that the Plaintiff had made out a prima facie case and the non-grant of an interim injunction would lead to irreparable loss even to customers who were being cheated through the issuance of fake barcodes.

Delhi HC grants a permanent injunction restraining BDR Pharma from using the mark ‘LULIBET’ [June 5, 2020]

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In Sun Pharma Laboratories Ltd. v. BDR Pharmaceuticals Int’l Pvt. Ltd. & Anr., the Delhi HC granted a permanent injunction restraining the Defendants from dealing in the mark ‘LULIBET’. The dispute between the Parties arose on account of the Defendants’ alleged infringement and passing off of the Plaintiff’s mark ‘LABEBET’ by using a deceptively similar mark ‘LULIBET’ in respect of medical preparations. The Court observed that the Defendants’ mark was phonetically, visually and structurally similar to that of the Plaintiff, so as to result in confusion amongst the general public. The Court also stated that the test to be applied to medicinal products is stricter than other products, as administering of a different medicinal product may have adverse consequences on the health and life of a person.

Other News from around the Country

  • IP Office informs that a Twitter account has been created under the id RGNIIPM_Nagpur and the same will be used to post details on IP training and other updates.
  • India grants marketing authorization to Gilead’s remdesivir for ‘restricted emergency use’ in patients with severe symptoms.
  • A team of researchers at the Indian Institute of Technology, Hyderabad file for a patent for a cheap rapid coronavirus detection kit which can detect the virus within 20 minutes.

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  • Sanjay Gandhi Post Graduate Institute of Medical Sciences files a patent for a cheap rapid COVID-19 detection kit which is capable of giving results within 30 minutes.
  • A team led by Dr. Brijesh Rathi files for a patent for a novel molecule believed to have high potency against COVID-19.
  • NASSCOM report states that over 5,000 IoT patent applications were filed in India over the last five years.
  • Honda sues Hero Electric for design infringement of its Moove electric scooter.
  • A piece in the Economic Times argues that the implementation of AI and blockchain in management of IP protection will result in higher efficiency.
  • A piece in the Times of India discusses that patients in India have no access to the two drugs touted to be ‘life-saving’, namely remdesivir and tocilizumab due to lack of marketing approvals in their respect.
  • A piece on Bar and Bench argues that the Indian government may need to frame new regulations and review existing ones in relation to IP in wake of the coronavirus.

News from around the World

  • Campaigners urge AstraZeneca to make its COVID-19 vaccine patent-free to ensure better access.
  • Penguin Random House, Hachette, HarperCollins and Wiley sue Internet Archive for its Open Library project on grounds of copyright infringement.

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  • The China National Intellectual Property Administration publishes the first patent application covering a vaccine for COVID-19.
  • Kalytera Therapeutics Inc. announces filing of a provisional patent application for its liquid nitric oxide donor, believed to be effective against COVID-19 associated pneumonia.
  • USPTO launches the COVID-19 Response Resource Center in order to facilitate better access to IP information, programs and initiatives.
  • Twitter, Instagram and Facebook disables Trump’s tribute video to George Floyd due to a copyright-related complaint.
  • A piece in The Mandarin argues that the Australian government should commit towards collaborative research to fight COVID-19, while ensuring that it uses regulatory tools whenever required.
  • A piece in the Journal of Global Health argues that compulsory licensing can be a possible solution in the times of the COVID-19 pandemic, and governments should not hesitate in issuing them.