PowerPoint Presentation

IP Litigation in India

ITECH LawInternational India ConferenceJanuary 31st 2014Saikrishna Rajagopal

A Few Quick Thoughts ..Formal / conventional IP now jostles with non-conventional / spin off IP;Indian Courts more willing to protect non-conventional IP forms;Trend of sector specific legislation exerting limitations on IP: Examples: TRAI must provide provisions/ interconnect regulations;Sports Mandatory Sharing Law- Prasar Bharati- Writ Growing trend of statutory and other limitations on IP will likely bring the focus on valuation of IP: Statutory licenses, Copyright Act, 1957Compulsory license , Copyright Act, 1957

The Hot News Doctrine, Unfair Competition and Unjust Enrichment

Suits filed by Star India [Broadcaster] against Mobile VAS Cos., & Telecom OperatorsClaim against commercial exploitation of contemporaneous ball-by-ball commentary, scores, score updates, match updates, match alerts, etc. in relation to cricket matches.Action based on unfair competition, unjust enrichment and commercial misappropriationA civil right having a pecuniary valueSingle Judge upheld Plaintiffs claim inter alia on the basis of the hot news doctrine.

The Hot News Doctrine & Pre-emption The INS Doctrine - Acts of taking material acquired by the skill, organization and money of the complainant and appropriating it and selling it as its own, is trying to reap where it has not sown and would thus constitute unfair competition.

Primary Questions before the Court:Whether common law claim barred under Section 16 of the Copyright Act, 1957 ?Whether it was appropriate for courts to create new property rights?Even if such a right existed, did it get exhausted upon broadcast of the scores on television/radio?

Single Judge ruled that the significance of the scores lay in their contemporaneity, and allowed third parties to use the scores ONLY after a fifteen minute time lag.

The Hot News Doctrine - contd. Division Bench setting aside Single Judge order, held:Rights asserted not recognised under statutory law; Claims pre-empted by virtue of the bar contained in Sec.16 of the Indian Copyright Act, 1957; Scores flow out of the Broadcast which is protected under the Copyright Act, 1957 Where Parliament has stepped in to create a statutory regime, creating supplementary rights in common law would result in obstructing the legislative scheme

The Hot News Doctrine - contd. that Courts must be cautious in creating doctrines and rights that have such clear implications for constitutional rights.

On Appeal, the Supreme Court of India by an interim order directed a return to the status quo existing on the day of the single judges order.

Educational Exceptions to Copyright

Oxford University Press, Cambridge University Press, Francis & Taylor v. Delhi University & Ors.

Injunction and damages sought for infringement of copyright in Plaintiffs academic publications.

The suit seeks to draw the line between:

The exception in Section 52(i) of the Copyright Act, 1957 for face-to-face teaching, in which teachers might be able to avail themselves of appropriate narrowly tailored exceptions to provide materials to students, and the commercial production of course packs which Delhi University has outsourced to a commercial, for-profit, copy shop.

Exceptions- Contd. Plaintiffs urge a major difference between the two activities, with the former falling within the scope of what may be permissible under global norms, and the latter falling squarely outside those stricturesCase raises several interesting questions:Is there a limit to photocopying for educational purposes?Public interest as an exception to infringementFuture of educational publishingIs the Indian Reprographic Rights Organisation license the right balance?

Defendants urge that course packs comes within the exceptions provisions of the Copyright Act, 1957

An interim injunction granted restraining the photocopying business from doing such acts with an undertaking by Delhi University to not engage in such activities. Matter is being adjudicated presently.

SLAPP SUITSTata Sons Ltd. v. Greenpeace A Funny Game

SLAPP Suits- Contd.Facts:Greenpeace accused by Tata Sons Ltd., of trademark infringement and defamation Use of TATA logo in video game a la PAC-MANGame aimed at protesting against port construction at Dhamra, Orissa and [what Greenpeace] alleges is harming Oliver Ridely turtles;Tata claimed that distinctive identity of its trademark was being tarnished; Greenpeace claimed that the suit was a SLAPP Suit [Strategic Lawsuit Against Public Participation]

Questions before courtImpact of Section 29(4) of Trade Marks Act, 1999 - use of a trademark for criticism, fair comment with due cause allowed?Denominative use to focus public attention on proprietorGranting an injunction would freeze public debateUse of Trademark for Parody/ hyperbolic statements allowed?Fair Comment on a matter of public interest without maliceExaggeration possible

Differing standards for online libel v. libel in other media?Applied the Rule in Bonard Vs PerrymanNo injunction in the interest of freedom of speech

Standard Essential PatentsEricsson v. Micromax[Technology] Standard Essential Patents [SEP] asserted in an infringement suit. Issues:FRAND licensing in the context of the ability of an SEP owner being able to secure coercive orders which would potentially impact and contradict FRAND commitments.Royalty stacking / valuation issues - handsets v. componentsPotential exclusionary conduct (interim injunctions/ custom seizures) in context of SEPsCompetition law issues/ impact in the context of SEPsConflict of Jurisdiction- WP before Delhi High Court

Thank you!Saikrishna Rajagopalsai@saikrishnaassociates.com