Off-Topic: Call for Papers from the Journal of Telecommunication and Broadcasting Law

The Journal of Telecommunication and Broadcasting Law (JTBL) is an international peer-reviewed, student-edited journal of National University of Juridical Sciences, India. Dedicated to pioneer legal scholarship in the field of telecommunication and broadcasting laws and addressing a global scholarly community, JTBL strives to publish relevant research on said disciplines. The Journal encourages deliberations on subjects of interdisciplinary nature and would include review of laws and policies involved in the field. The journal accepts submissions on a rolling basis. Interested contributors are requested to send their submissions under the categories mentioned below. For general queries relating to your submissions, kindly write to us at  jtbl@nujs.edu. The last day to submit for consideration for Vol. II is March 18, 2013. 

Nature of Submissions

1. Articles (6000-10000 words, inclusive of footnotes) 
2. Notes including Policy Notes (4000-6000 words, inclusive of footnotes) 
3. Book Reviews (2000-3000 words, inclusive of footnotes) Please note: Book Review should specify all relevant information relating to the book reviewed such as the name(s) of the author(s) and editor(s), edition of the book reviewed, year of publication, name of publisher and place of publication. 
4. Case Notes (2500-4000 words, inclusive of footnotes) Submissions in this category would include a comprehensive analysis of any judicial pronouncement relevant to contemporary developments in relation with telecommunication and broadcasting industry. It should provide an analysis of the law prior to the ruling as well as subsequent to it. Any inconsistencies with the ruling should be highlighted. 
5. Legislative Comments (2000 – 3000 words, inclusive of footnotes) The legislation should be analyzed with a view to provide the background, objectives and main provisions of the legislation to the readers. The comments must be objective in reporting facts and provisions. A section may be devoted to list down possible problems with the legislation or inconsistencies with other laws for further debate. Government surveys, committee reports and data from national and international organisations should be sourced for facts and figures. 

Style Guidelines 

1. Format of Submission: Submissions must be in electronic form only. All submissions must be MS-Word-processed. Main text should be in Times New Roman, font size 12 with double line spacing. The footnotes should be in Times New Roman, font size 10 with line spacing 1.15. All pages must be numbered. Endnotes are not allowed. 
2. Abstract: All submissions must contain an abstract of about 250 to 500 words describing the relevant points of discussion attempted in the paper and the relevant conclusions drawn. 
3. Headings: The main title should be centred, typed in small capitals and emphasised in bold with font size 14. The sub-titles must be left indented, emphasized in bold with font size 12. 
4. Citation: The Rules of Citation as prescribed by Oxford University Standard for Citation Of Legal Authorities (OSCOLA), 4th edition are to be followed for references and citations. 

Submission Guidelines 

1. Co-authoring: is permitted. 
2. Cover Letter: The cover letter shall contain the name of the author, institutional affiliation, title and category of the submission. Submissions should be sent as attachments (.doc format only) with the title of the write-up as the file name. 
3. Contact Address: The Journal accepts only electronic form of submissions which must be mailed to . 
4. Identification Details: The body of the write-up must not contain any identification of the author(s) or their institutional affiliation. For further details, please see our website, www.jtbl.org

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Budget 2013-14: What’s in stock for IP and innovation?

Yesterday, the Finance Minister P. Chidambaram presented the budget before the Lok Sabha for the eighth time, only two short of equaling Morarji Desai’s record for the highest number of Union Budgets presented till date. Although the budget speech isn’t something IP practitioners look forward to each year, it is still disappointing to see no reference to the Science Technology and Innovation Policy announced earlier this year which would require a great deal of funds for its successful implementation. Nonetheless, here are a few interesting aspects of the budget that could have long term implications on IP and innovation in India. 

(a) Financial Boost for Business Incubators: Henceforth, all donations made by big corporates to business incubators will be deemed as part of their Corporate Social Responsibility (CSR). For those uninitiated, business incubators provide assistance to startups to tide over initial tough phase including office space, networking and other management assistance. The proposed Companies Bill imposes an obligation on companies (with more than Rs. 500 crores net worth or with an annual turnover of Rs. 1,000 crores or earning net profit of Rs. 5 crores) to spend 2% of their profits on CSR. This also gives an indication on how the government intends to promote development through CSR in the future. 

(b) Smaller Cities to get private FM radio services: To the much delight of radio broadcasters, the Finance Minister announced expansion of private FM radio services to cities with a population of more than 1 lakh. Pursuant to this I&B Ministry will auction 839 new FM radio channels this year.

(c) Proposals to attract investment in electronics: In a move to promote electronic gadgets and devices, the Government announced zero custom duty for chip manufactures willing to start operations in India. For the next two years, custom duty for plant and machinery for manufacturing of semiconductors has been waived. As an aside, the Cabinet last year approved the National Policy on Electronics of 2012 which aims to ‘to create an eco-system for a globally competitive ESDM (Electronic System and Design and Manufacturing) sector in the country to achieve a turnover of about USD 400 billion by 2020 involving investment of about USD 100 billion and employment to around 28 million people at various levels.’

(d) Boost for alternative healing methods: The budget speech placed heavy emphasis on healthcare and infrastructure in healthcare. Henceforth, all contributions towards government run health schemes will be eligible for tax benefits. Furthermore, the Department of Ayurveda, Yoga & Naturopathy, Unani, Siddha and Homoeopathy (AYUSH) has been allocated Rs. 1,061 crores and the expenditure for National Health Mission (NHM) has been increased by 24%. Additionally, the Finance Minister has commissioned setting up of six AIIMS-like institutions with a budget of Rs. 1,650 and one Indian Institute of Biotechnology at Ranchi.   

(e) Apart from this, the budget allocation for the HRD Ministry, of which the Copyright Office falls under, has been increased by a tune of 17%.

P.S. Earlier draft of the post stated that P. Chidambaram with this year's budget speech equaled Morarji Desai's record number of Union Budgets presented till date. It is clarified that Desai presented the budget on ten occasions and Chidambaram is second with eight. I would like to thank one of our readers, Vibhooti Malhotra for pointing this out. 

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LDCs seek indefinite extension of transition period for TRIPS compliance

East African countries and other least developed countries (LDCs) are lobbying for an extension of transition period beyond the current date of July 1, 2013 to become TRIPS compliant. The LDC groups’ request for extension of transition period will be discussed in the WTO council meet scheduled to be held next week. This proposal for extension has garnered support from more than 300 civil society organizations. 

The WTO recognizes least developed countries as those comprising more than 880 million people (approximately 12% of the world population) but accounting for less than 2 % of world GDP and about 1 % of global trade in goods. The LDCs are a particularly vulnerable group and face a host of problems stemming from extreme poverty. A complete list of LDCs can be found here. Patent protection increases costs and renders many essential medicines inaccessible to the LDCs. 

Brief history 

The WTO agreement on Trade related aspects of intellectual property rights (TRIPS) was signed in 1995 and set global minimum protection standards for almost all forms of Intellectual Property (IP) including patents. The member countries were required to implement TRIPS provisions before prescribed dates depending upon their developmental status. Developed countries had to become TRIPS compliant by Jan 1, 1996. Developing countries which did not have product patent regime were given 10 years’ time until Jan 1, 2005 to implement TRIPS provisions. While the initial time frame given to LDCs for TRIPS compliance was until 1st January 2006, Article 66 provides that “Council for TRIPS shall, upon duly motivated request by a least-developed country member, accord extensions of this period.” Subsequently, two extensions have been granted to LDCs. 

The DOHA declaration extended the transition period for LDCs up to January 1, 2016 but only for TRIPS obligations related to pharmaceutical product patents and test data. 

The second extension granted by TRIPS council in 2005 provided that LDCs could take time until 1st July 2013 to implement TRIPS provisions (all provisions in general not just pharmaceutical obligations). The second extension was subject to the clause that once LDCs have implemented laws as a part of TRIPS compliance, they cannot retract those laws (“no-roll back” clause).

Image from here

Proposal by LDCs 

Recently, Haiti on behalf of other LDCs submitted a proposal to extend this the transition period for implementing all TRIPS provisions. This proposal would not be subject to any clause requiring the LDCs to preserve their existing IP laws (“no-roll back” clause). Also, this time the LDCs seek an indefinite transition period. Given that developing a viable technological base is a long term process and it is impossible to determine when the individual members will overcome constraints and achieve that goal, the LDCs have requested that the transition period should remain in force until the member is "no longer considered a LDC." 

This proposal was met with reluctance by developed countries who believe that a blanket extension for all LDCs might not be appropriate. Also they are not in favor of an infinite extension period. 

In spite of being a developing country with reasonable infrastructure and technological base, India was grappling with the product patent regime enforced by TRIPS so one can imagine the problems these LDCs would face!! 

Also it is extremely important that LDCs have the flexibility to independently manufacture affordable essential medicines (without IP hindrance) or able to import medicines without requiring to apply for a compulsory license every time. Extending the transition period will make the LDCs (especially East Africa) particularly attractive to generic drug makers from India and this will facilitate adequate supply of affordable medicare. In fact generics like Cipla have set up their plants in Africa and extending the transition period would attract investments from even more generic companies. 

Fire in the blood, writer-director Dylan Mohan Gray’s touching documentary shows how millions of people die in AIDS afflicted-Africa because they lack access to essential anti-retro-viral therapy. Swaraj is going to post on this topic shortly. 

LDCs represent weakest and poorest segment of the international community and considering the huge disease burden (HIV, Hepatitis) on LDCs, adequate measures should be adopted for protecting health of people in the LDC community.

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Madras High Court judgment gives a boost to unauthorized biopics and biographies

Tamil Nadu has always had a passion for movies and it should come as no surprise that movies are often the centrepiece of controversies in this ‘Republic of the Outraged’. The latest is the case of Akshaya Creations & Anr. v. Muthulakshmi before the Madras High Court which is a cocktail of two very interesting areas of law: the right to free speech and the right to privacy, which is in a way related to publicity rights of celebrities and is therefore an IP issue. 

As will be explained in this post, the intersection of these two areas of law has important ramifications for unauthorized biographies or biopics of public personalities. We hardly have any precedents on this point and hence it was interesting to read this very well-reasoned judgment by Justice R.S. Ramanathan of the Madras High Court, in this case filed by Veerappan’s widow – Muthu Lakshmi. For those of you unaware about Veerappan, he was one of India’s most infamous bandit/sandalwood-smuggler/elephant-killer/abducter-of-famous-film-stars. This is not the first time the Madras High Court has been faced with the very same issue. In an earlier case, filed by Veerappan’s widow, to restrain a T.V. serial from being broadcast because it was based on the life of her husband and her family, the Madras High Court did allow the T.V. serial to go ahead but with directions that it should be based only on information available in the public domain and not private information. 

The movie at issue, titled “Vana Udham”, directed and produced by A.M.R. Ramesh, is based on the life, exploits and death of Veerappan. He was killed in 2004 after evading the joint police forces of Tamil Nadu and Karnataka for several decades in the forests of Tamil Nadu and Karnataka. The director of “Vana Udham” claimed to have researched for this movie over a period of several years and compiled all his information from publicly available sources like police reports & F.I.Rs. 

Image of Veerappan, from here

This present lawsuit was filed by Veerappan’s widow – Muthu Lakshmi before the Court of the Asst. City Civil Judge, Madras on the grounds that the movie would violate the privacy rights of her family, dead husband and daughter included. The trial court granted an interim injunction and there was an appeal to the City Civil Judge before a revision petition was filed with the Madras High Court. 

In a concise and clear judgment, Justice Ramanathan ruled in favour of the movie director and allowed for the release of the movie. In pertinent part the Madras High Court placed reliance on the following three precedents, which had interpreted privacy rights: 

(i) R.Rajagopal & Anr. v. the State of T.N. (1994) 6 SCC 632: This was a case involving the infamous ‘Auto-Shankar’, not to be confused with the movie having the same name. ‘Auto-Shankar’ was probably the first serial killer to have achieved infamy in the Indian media. He was found guilty and hanged till death in Salem Central Jail in the mid-nineties. How did this become a privacy case? Well, like all good serial killers, ‘Auto Shankar’ was keen to publish a tell-all autobiography which was going to detail his relationship with police officials and bureaucrats, some of whom were apparently present at this house-warming ceremony. The State of Tamil Nadu tried to ban the publication of the autobiography in a weekly magazine, whose editor moved the Supreme Court. In its judgment, the Supreme Court made it very clear that although every citizen had right to privacy under Article 21 of the Constitution, any information based on public records could be published by the press. The Court also makes it clear that the State and its officials did not have any privacy rights. 

(ii) R.Rajagopal & Anr. v. Jayalalitha & Sasikala (2006) 2 CTC 353: This was a case filed by the same newspaper editor, who had fought the Auto-Shankar case against Tamil Nadu in the Supreme Court. This time around, his newspaper was dishing out dirt on Jayalalitha’s personal life and in an excellent judgment Justice A.P. Shah allowed the editor to keep doing so provided he made reasonable efforts to verify the facts with Jayalalitha before publishing it. The Court had held that public personalities cannot expect the same degree of privacy as ordinary people. 

(iii) C.B.F.C. v. Yadavalaya Films 2007 (1) CTC 1: This was another excellent judgment by Justice A.P. Shah, where he set aside the objections of the Censor Board to the release of a movie depicting the assassination of Rajiv Gandhi. 

Relying on these three precedents, Justice Ramanathan applies the three-factor test for deciding interim injunctions to allow for the release of the movie. The petitioner himself agreed to delete the marriage scenes between Veerappan and his wife. In pertinent part, the Court concludes: 

“Therefore, having regard to the law laid down by the Hon'ble Supreme Court in the aforesaid judgment, and having regard to the undertaking given by the learned Senior Counsel for the revision petitioners, that the revision petitioners would delete those scenes, as stated above, I am of the opinion that the right of privacy of the first respondent is in no way affected and there is no right of privacy available to the first respondent, as the Film is taken on the basis of the Police records and the first respondent has no cause of action, restraining the revision petitioners from exhibiting, exploiting the said Film.” 

After this order of the Madras High Court, Veerappan’s widow filed an appeal before the Supreme Court and I’m not quite sure what happened over there because I can’t find the order but according to some reports the Supreme Court asked the parties to compromise after which the producer agreed to pay the widow Rs. 25 lakhs as settlement. I’m not sure why the Supreme Court would do something like this especially when the Madras High Court’s decision was crystal clear on the law. Notwithstanding the final outcome at the Supreme Court, the judgment of the Madras High Court is an important precedent for the producers of unauthorized biopics or for that matter unauthorized autobiographies.

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SpicyIP Event: MIP India IP and Innovation Forum

The MIP India IP and Innovation Forum 2013 will be held on March 7th at Le Meridien, New Delhi.   With several notable speakers and topics which are particularly pertinent to IP matters in India currently, the forum looks to be an exciting one. To see the agenda, please click here. Please see below for a note from MIP on the event. 

‘Technical legal advice, reflections on the Indian patent system and insider guidance on monetizing IP come together at next week’s MIP India Forum’

‘‘Companies need to learn that IP is extremely important and without it survival may be impossible.’’ So says Munish Sudan, Senior Manager of IP & Innovation at Tata Steel. Munish, who will be speaking at next week’s MIP India IP and Innovation Forum, will be telling delegates that many corporations in India are not aware of how IP can be a significant asset and a valuable driver of profits. In a pre conference interview for MIP he said ‘There is a lot of interest in India’s growing economy so we need to be fully aware of the other players in order to compete’. Next week Munish will be speaking alongside several of those other key players, each of them revealing their expertise and sharing their experiences. One question which will be tackled is: ‘What does open innovation mean to you?’  Heads of IP from various industries will tackle this question head on and reveal that ‘Open Innovation’ cannot be used as an umbrella term but must be tailored and made to work for your company’s aims and strategy. Thus the vital matter of IP Monetization in India will show itself to be a nuanced issue requiring careful thought and strategic planning made in the specific context of your corporation’s aims and requirements. Heads of IP from corporations such as Emerson, Philips Electronics, Havells India Ltd, Samsung, Infosys, Microsoft and Cognizant will all be contributing their unique perspectives to the discussions.

Of course all of these ambitions are well and good- but if India’s IP system is to keep pace with its economic progress and appetite then processes and infrastructures must be ever improved also. Justice Prabha Sridevan will be delivering a keynote address entitled The life of P.I. (Public Interest) laying the ground for various conversations regarding India’s progress in terms of its patent cases, compulsory licensing and the role of India’s tribunals both within and across its borders. She can of course also be expected to provide a lively and interesting start to the day.

The India IP & Innovation Forum will be held at Le Meridien in New Delhi on March 7^th. It is free to in-house counsel, R&D professionals and to academics. To register please click here

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National Innovation Foundation: Boosting Frugal Technology

Source

In the recent past, there has been a spurt in grassroots innovation utilising the traditional knowledge bank. Grassroots innovation is ideation and development with only frugal resources at the innovator’s disposal. India has a distinctive expertise in developing and marketing frugal innovations to the world. An outstanding example of frugal innovation would be Dr. Devi Shetty who made cardiac surgeries extremely affordable by applying mass production techniques without compromising on the standard of healthcare. A more endearing term used by us Indians is jugaad innovation.

Most recently, BBC documented the success story of a farmer in rural Haryana who on an average used to lose 30-40% of his produce owing to its perishable nature. To counter this problem he developed a machine to process the produce in his backyard and market it immediately – a cost-effective local solution using frugal resources to solve a local problem. With the help of National Innovation Foundation (NIF) the farmer patented his innovation and now markets it in Africa and Latin America. Such innovations may occur at a farm, in a manufacturing unit, or any such environment with a scope to creatively alter a product or service to increase its efficacy i.e creation of value added technologies. NIF operates across a diverse set- from the farmer to young inventors innovating gadgets for women’s safety. To accelerate such innovations, the Foundation runs a Grassroots to Global program. Facilitating the use of our indigenous knowledge bank i.e. identifying, nurturing, sustaining and scaling up such innovations are NIF’s driving principles. More specifically, it helps innovators get due rewards, in the diffusion of existing technologies through various channels, and providing innovators with risk capital for incubation (Micro Venture Innovation Fund at NIF has provided risk capital for 178 projects). NIF was launched in 2000 with the aim to develop, nurture, and protect emerging innovations at the grassroots level in India. It has assisted in filing more than 555 patents, out of which 39 have been granted in India and four in the USA, which is a commendable figure. Prof. Anil Gupta of IIM-A, a prolific figure in the grassroots innovation field heads the Foundation.

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SpicyIP Weekly Review (February Week 4)

SpicyIP Posts 

 Image from here.

SpicyIP saw a truly ‘global’ week with posts covering deeply Indian issues like Ayurveda and modern drugs, trademarks on Indian Gods, poorly written decisions of the Indian Patent Office to international issues like the Trans Pacific Partnership Agreement and alleged DCMA violations.

The week started off with an informative and comprehensive guest post by Priyanka Pulla on problems that arise in developing modern drugs from Ayurveda (here). The fact that only few modern medicines have emerged from Ayurveda, spurred her into investigating the matter in detail. Her article in Open Magazine (here) as well as the post cites three main reasons for the same. In addition to these reasons, she opines that the USFDA’s long time requirement of herbal drugs undergoing the same tests as synthetic drugs has placed the odds against development of traditional medicines. She then goes on to highlight how and why Indian herbal-drug development has been slow, small and repetitive with not much coming out of research. Thereafter, the post emphasizes on the need to look at Ayurveda as an entire system of medicine that entails lifestyle changes and non-drug interventions. After this, Priyanka discusses a debatable point on whether herbal drugs should be subject to clinical trials despite them having hundreds of years of safety data. She concludes by raising another pertinent problem of lack of communication between Ayurvedic doctors and how they are slowly starting to communicate and form a network which is a step forward for herbal drug development. 

After this wonderfully researched and written post, Mathews brought to the notice of our readers (here) another extremely interesting issue. His post dealt with the legality of trademark protection for deities in the context of a trademark granted to Attukal Bhagawathy Temple Trust for a picture of its deity and for the title ‘Sabarimala of the Women’. The trademark was granted to the Trust in this case which leads Mathews to raise two pertinent issues challenging the validity of such a trademark. The first is in relation to the Trademark Act, 1999 and second in relation to Article 25 of the Constitution of India. With regard to the first challenge, he convincingly argues that the scheme of the Trademark Act does not contemplate such a trademark. Under Section 2(zb) of the Act, the mark should indicate a connection in the course of trade between the services and the proprietor. Through this argument Mathews establishes that a Trust is not the exclusive proprietor of temple and other religious services as devotees have as much stake in the said activities as the Trust. His second argument is with regard to Freedom of Religion guaranteed under Article 25 of the Constitution. He points out that if the Trust is given the said trademark, it would violate Article 25 as devotees would be precluded from using the picture and title thereby interfering with their fundamental right to profess, practice and propagate their religion. 

Image from here

After this ‘divine intervention’, we saw another absorbing post by Prashant (here) highlighting the consistency with which the Indian Patent Office comes out with poorly written and reasoned judgments. He examines the decision of the Controller in the Sugen v Cipla’s post-grant opposition and points out several junctures at which the Controller has failed to provide necessary authority and has almost as if sworn not to use precedents set by the IPAB to back its conclusions. With regard to Section 8 and non-disclosure of foreign patent-fillings, one of the main grounds of opposition, the Controller merely stated that the patentee has complied with Section 8 requirements as the WIPO website contains all the information and is freely accessible to the Controller. However, this reasoning is not backed by any precedent and is in patent violation of existing precedents which have mandated filling of documents by the patentee regardless of whether the controller or examiner has independent access to such documents (the Tata Chemicals case). Further, on its analysis of obviousness and lack of inventive step, the Controller stretches far and wide by citing European and American judgments and not a single Indian case law despite the standards of obviousness being different in different jurisdictions. With regard to inventive step, the decision disregards the importance of ‘economic significance’ in the definition without backing its reasoning with appropriate judicial authority. Thus, Prashant concludes by expressing his disdain not with this particular Controller but with the IPO in general due to the poor quality of decisions rendered by them. 

By mid-week SpicyIP brought to its readers interesting international developments, with Madhulika examining certain provisions of the Trans Pacific Partnership Agreement (here). The post highlights certain important provisions of this agreement such as – Article 1 which mandates each party to, at minimum, give effect to the chapter; Article 8.2 which requires inventions pertaining to plants, animals, therapeutic, diagnostics and surgical methods of treatment to be patent eligible; Article 8.1 which requires new forms, uses, or methods of using a known product to be patentable even if the invention does not result in enhancement of known efficacy. She speculates that such a provision was incorporated keeping in mind India’s controversial Section 3(d). The post then examines Article 8.10, TRIPS plus provisions included in the US IP Chapter of the TPP, Article 13.1 which deals with injunctions and Article 10 which deals with access to medicine. Madhulika points out that though India is not part of the negotiations, this TPP may well affect India’s interests as it may be coerced into becoming a member if TPP nations start imposing membership as a precondition to bilateral trade agreements. 

After this insightful post, the week ended with Anubha’s tidbit (here) on Dr. Anil Potti’s posts being restored on Retraction Watch. Retraction Watch a website dedicated to publishing academic paper retractions had received a DCMA takedown notice for apparently 10 copied posts. Dr. Potti contacted Retraction Watch and expressed his helplessness and innocence in the alleged copyright violations. Though his posts have been successfully restored, these incidents show the ease with which DCMA procedures can be abused.

International Developments

Image from here

Bowman v Monsanto in the US Supreme Court – how far can patents reach? The US Supreme Court is hearing an interesting case pertaining to a soybean farmer, Bowman, and Monsanto who owns a patent over a particular variety of soybean seeds. As with all living things, seeds grow into plants which in turn produce new seeds. Can Monsanto’s patent extend to these newly and naturally produced seeds? Can it make farmers sign a contract promising that they will not replant any of the soybeans that they harvest? Monsanto clearly thinks so as it wants farmers to buy a fresh batch of seeds every time they plant a crop – and not grow their own. Is planting a seed equal to copying and to what extent can the doctrine of ‘patent exhaustion’ be pushed? 

Boundless challenges book publishers – in another step towards free and accessible content, Boundless a start up that recreates expensive college textbooks using free content from Creative Commons and Open Educational Resources(OER) has fought back against a copyright infringement suit brought against it by three major publishers – Macmillan, Pearson and Cengage. Boundless denies copyright infringement and argues that all the content of its textbooks is in the public domain hence not protected by copyright. They allege that this suit is a tactic employed by publishers to stifle initiatives like theirs. The result of the trial will be huge for OER. 

Twitter’s new Innovator’s Patent Agreement (IPA) seeks to transform typical assignment agreements between engineers and the company. Employees generally sign agreements whereby they agree to sell, assign and transfer all rights, interests and titles in their inventions to the company. This gives the company full control over all patents. Companies use patents as tools to offensively restrict market activity and also as a monetization strategy. All these decisions are out of the control of the original inventors due to the contract signed by them. However, Twitter has claimed that through the IPA though the inventor still assigns his rights to the company, the company also makes some promises in return. These promises include – a promise not to sue anyone unless for a defensive purpose, patents cannot be used offensively without the prior permission of the inventor, patents can only be used as the original inventor intended and inventors are empowered to enforce promises made by the company. This they claim will ensure that patents will be used only as a shield and not as a weapon. 

Ashby Donald and othrs. v. France – Copyright v Freedom of speech and expression – Ashby Donald and the other applicants in the present case were fashion photographers. They took pictures at fashion shows in Paris in 2003 and published the same on a website Viewfinder. They were sued for copyright infringement by fashion houses for publication without prior permission. The Court of Appeal of Paris ordered them to pay fines and awarded damages to the fashion houses. The Supreme Court dismissed the applicants arguments based on Article 10 of the European Convention (freedom of speech and expression) and was of the opinion that the Court of Appeals had justified its reasoning sufficiently. So, the applicants could not rely on the exceptions carved out in French Copyright Law regarding publication of works exclusively for news reporting and information purposes. In the European Court, the challenge with regard to violation of Article 10 of the European Convention was held maintainable. However, on merits the Court found no violation of Article 10. It is interesting to note that conviction for breach of copyright could be considered an interference with Article 10 unless it satisfies the three conditions of – ‘necessary in a democratic society, being prescribed by law and pursuing a legitimate aim’. 

Germany facing YouTube problems – according to OpenDataCity more than 60% of the top 1,000 YouTube videos are unavailable in Germany because Google finds it legally and financially risky to allow the same as it assumes music rights might be owned by GEMA (Germany’s primary performing rights organization).The disputes between GEMA and Google are ongoing and pertains mainly to rights represented by GEMA and to the royalty fee structure demanded by GEMA. Talks between both the parties have ‘broken off’ and GEMA has taken the dispute to the Arbitration Board of the German Patent and Trademark Office.

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SpicyIP Tidbit: Retraction Watch posts restored

As hoped, Retraction Watch posts regarding Dr. Anil Potti have been restored. Retraction Watch is a website solely dedicated to publishing academic paper retractions in the scientific-medical research community. Dr. Anil Potti had nineteen retractions which were duly reported by Retraction Watch. We covered the incident about an Indian plagiarizing website [Newsbulet.in] reporting against Retraction Watch for copyright violations here. Retraction Watch received a DMCA takedown notice on account of apparently ten ‘copied’ posts. The issue evoked strong responses from free speech activists and the scientific fraternity alike.

While Retraction Watch sent a reply to the DMCA notices and awaited restoration of their original works, another website Nanopolitan has received takedown notices for posts on Dr. Anil Potti. Now, Nanopolitan has replied to the notice and is waiting for restoration of that post [Nanopolitan claims that the post only had links to blogs about Potti]. 

Further, earlier this week Dr. Anil Potti contacted Retraction Watch and expressed innocence regarding his suspected involvement in these malicious copyright violation claims. He also informed Retraction Watch about the termination of his association with an 'online reputation management agency’ a year ago, which was initiated in the first place by a “well-wisher”. He said that the person behind the DMCA takedown notices may be :
“ someone who has an agenda and just wants to keep my name in the limelight, or some “well wisher” who thinks he/she is helping me by doing this…”

While the "well-wisher" acting in support of Dr. Potti is untraceable, such incidents highlight the ease by which the DMCA procedure can be abused, which are increasingly on the rise.

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Revisiting the Trans Pacific partnership agreement

Last week’s State of the Union address highlighted important aspects of President Obama’s second term agenda. President Obama identified Trans Pacific Partnership(TPP) agreement as a top trade priority and reaffirmed his commitment to conclude negotiations on the Trans Pacific Partnership agreement. To quote, “To boost American exports, support American jobs, and level the playing field in the growing markets of Asia, we intend to complete negotiations on a Trans-Pacific Partnership.”

Image from here

In an earlier article Swaraj had elucidated five major areas of concern in the TPP. The Trans Pacific partnership agreement started out as a four nation agreement between Brunei, Chile, New Zealand, and Singapore and gradually expanded to include Australia, Peru, Vietnam, United States,  Malaysia, Mexico and Canada. Japan was expected to join TPP negotiations, however as reported here, Japan may consider dropping support for TPP.If the ongoing negotiations between the member nations are successful, then the TPP would encompass USD 21 trillion in economic activity.

Some intellectual property provisions as detailed in leaked draft US IP chapter of TPP agreement can be found here and here. Readers may remember that Swaraj had posted a detailed analysis of the various provisions of TPP, which can be accessed here and here. I have only analyzed the provisions which were not discussed earlier.

Article 1 of TPP requires that “Each Party shall, at a minimum, give effect to this Chapter.”

Article 8.2 of TPP requires that patents for inventions pertaining to plants and animals should be made patent eligible. The TPP agreement also requires that therapeutic, diagnostic and surgical methods for treatment of humans and animals should be eligible for patent protection.

In addition TPP article 8.1 requires that new forms, uses, or methods of using a known product; may satisfy the criteria for patentability, even if such invention does not result in the enhancement of the known efficacy of that product. I believe this provision was incorporated keeping in mind India’s controversial Section 3(d).

It should be noted that Article 8.10 of TPP states that “disclosure of a claimed invention shall be considered to be sufficiently clear and complete if it provides information that allows the invention to be made and used by a person skilled in the art, without undue experimentation, as of the filing date.” However this provision does not expressly mandate disclosure of best mode, thus leaving open the possibility that an inventor may withhold the best mode for himself and subsequently patent the best mode as a distinct invention altogether.

Other TRIPS plus provisions included in the text of US IP chapter of TPP include:

• Patent linkage provisions, thus allowing presumption of validity of patent (article 9.5) 

• Elimination pre-grant opposition of patents (article 8.7) 

• Patent term extensions and /or adjustments: Extension of patent terms beyond 20 years to compensate for delays in regulatory approval and/or delays on the part of patent office [Articles 8.6(b) and article 8.6(c)] 

• Data exclusivity provisions: Five-year data exclusivity for a new chemical entity (never registered before) and three years data exclusivity provisions for new indications of pharmaceutical drugs whenever new clinical trial data is submitted [Articles 9.2(b) and 9.2(c)] 

Furthermore, Article 13.1 expressly mandates expedited grant of preliminary injunctions and specifies a time period of ten days to execute such requests barring exceptional cases.

Although Article 10 of TPP agreement states that, “In recognition of the commitment to access to medicines that are supplied in accordance DOHA declaration this Chapter does not and should not prevent the effective utilization of the TRIPS/health” , the TRIPS plus provisions and directive text of TPP and might hinder effective implementation of DOHA declaration.

Why should we bother? It is highly likely that TPP will affect other countries apart from those currently involved in negotiations. Countries that are not parties may be coerced into becoming members by imposing TPP agreement as a precondition for other bilateral trade agreements .Alternatively countries that are not members may be evaluated against TPP standards in the annual Special 301 process administered by the USTR.

The next round of negotiations i.e. the sixteenth round is scheduled to be held In Singapore from March 4th -13th and will play a major role in determining the pace and direction for future negotiations.

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The Sugen v. Cipla post-grant opposition: The lost art of legal writing in the Patent Office

As Madhulika earlier blogged, the Patent Office after a circus of appeals filed by Sugen, once again revoked Sugen’s patent no. 2092951 on the grounds that it would be obvious, to a person skilled in the art, in light of the prior art produced by the opponent. Be that as it may, I would like to comment on the manner in which the opinion was written by the Controller and the deference or lack thereof to the precedents of higher judicial forums like the IPAB or the High Courts. The decision itself can be accessed over here.

(i) Section 8 – Non-disclosure of foreign patent filings: One of the main grounds of opposition raised by Cipla was the violation the requirements of Section 8 by Sugen since the latter had not filed all the corresponding foreign patent documents with the Indian Patent Office. Cipla produced a long list of documents which had not been submitted to the Patent Office under Section 8 of the Patent Act and the Patentee argued against this proposition by relying on an interpretation of various precedents of the IPAB and the High Courts. 

The Controller ultimately disposes this issue in favour of the patentee in merely 5 lines which I reproduce as follows “I opine that the objection of the opponent that patentee have not complied with the requirement of Section 8 is not agreeable. I observe that the patentee has fulfilled its duty to furnish all the information’s required u/s 8. The details cited by the opponent are from the WIPO website and espacenet which is freely available to the controller and examiner. Therefore the ground of section 8 is not maintainable.” 

The first problem with this conclusion is that the Controller does not cite any authority or precedent to back up his/her conclusion. The only difference between creative writing and legal writing is that the latter requires to be backed by authority not personal opinions or imagination. When both sides have discussed precedents on Section 8, the Controller has no choice but to provide reasons on why those precedents are either relevant or not. In this case, there were several relevant precedents like the Chemtura decision, the Tata Chemicals decision. Yet, the Controller simply ignores all precedents. 

The second problem with this conclusion is the fact that the Controller came to the wrong conclusion with regard to Section 8. The IPAB decision in the Tata Chemicals case was quite clear on the fact that whether or not the examiner had independent access to the document was irrelevant since the test under Section 8 was whether or not the patentee had filed the document with the patent office. The Controller has no option but to follow the precedents of the IPAB, which is a superior judicial forum. 

(ii) American, European or Indian law? 

In the final analysis, on obviousness and lack of inventive step, the Controller cites three authorities: (i) A European judgment (ii) an American judgment and a (iii) P. Narayana on Patent Law. Once again, why is there no reference to the recent precedents of the IPAB? The Indian Patent Office is not bound by European or American case law but it is bound by the decisions of the IPAB. At the most European and American case-law can only have persuasive value on the Indian Patent Office. More importantly, should the Patent Office actually be citing American and European case law indiscriminately, when the concepts of obviousness are different in both jurisdictions? 

Also please note that the Controller does not cite a single precedent of either the IPAB or any other Indian forum. How can this be? After 6 years of hearing patent cases, the IPAB surely has provided the patent office with at least a few good precedents on the point. 

Why does the Controller have this ‘devil-may-care’ attitude about the precedents laid down by the IPAB? 

(iii) Inventive step and the apparent irrelevance of ‘commercial success’: In a decision, where the Controller revoked a patent for the lack of an inventive step, one would actually expected the Controller to make reference to the definition of ‘inventive step’ in Section 2(1)(j) of the Patents Act, 1970. I take the liberty of reproducing the provision as following “"inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art”. 

Please note the use of the phrase “economic significance” as a standalone ground to establish the inventive step in an invention. Yet, the Controller, without even referring to the wording of Section 2(1)(j) comes to the conclusion that “I observe that when as the instant claims are clearly obvious to a skilled artisan, so, the commercial success of the instant product (Sunitinib) as submitted by the patentee cannot be considered as an evidence of a patentable invention.” The Controller does cite Narayan on Patent Law to establish this point but an excerpt from Narayan is of no relevance unless it is backed by judicial precedent. 

Conclusion: Controllers need basic training in legal writing 

This is not the first time that we have pointed out to the extremely poor quality of decisions coming from the Patent Office. Shamnad and Rajiv have made similar points on this blog over here. The problem thus is not with this particular Controller but the entire IPO. These officers, performing quasi-judicial need specific workshops or classes in legal writing. As I had mentioned in one of my earlier posts, “Legal writing and reasoning are not the toughest of skills to acquire but they are still skills that are required to be taught and learnt.” The Controller General should seriously think of organizing some kind of training for his officers with either a University or a Judicial Academy to ensure we have orders that are better reasoned.

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Legality of trademark protection for deities in the context of Attukal deity trademark

We reportedthat the Attukal Bhagawathy Temple Trust (“Trust”) in Kerala had secured trademark protection for the picture of its deity (Trademark No. 1420800) and the title ‘Sabarimala of Women’ (Trademark No. 1420799) under Class 42 – a residuary clause (for temple Services, social services, welfare services and cultural activities). The Division Bench of the Kerala High Court initiated suo moto case against the aforesaid registrations in early 2009 based on a petition faxed by Mr. Praveen Raj. The matter is still pending before the High Court.[For 'The Hindu' report, see here.] 

In this post, I shall address the issue of legality of such trademarks. As a positivist, I shall resist myself venturing into the unchartered territory of morality. I shall argue that the grant of such trademarks a) are not envisaged by the Trademarks Act, 1999 and b) violate Article 25 of the Constitution of India.

At the outset, I agree that trademarks have been granted to companies for marks involving Gods and Goddesses. The instant case, however, is different. In the instant case, trademark protection is granted to a religious trust for services which are carried out pursuant to religious beliefs or carried out in the name of the Goddess.

Before addressing the issue at length, I shall briefly introduce the Attukal Bhagawathy Temple. The Attukal Bhagavathy Temple in Thiruvananthapuram, one of the ancient temples of South India, is popularly described as the ‘Sabarimala of the Women’. According to the official website of the Trust, the Goddess in the temple of Attukal is worshipped as the supreme mother, creator of all living beings, the mighty preserver and the destroyer. The temple is renowned for the annual Attukal Pongala festival. The festival is scheduled to be held on 26^th February this year.

Violate Trademarks Act, 1999 (“TM Act”)

TM Act is “an Act to amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks.” A trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. Further, it indicates the connection in the course of trade between the goods or services and some person having the right as proprietor/permitted user, as the case may be (Section 2(zb) of TM Act). A service means service of any description which is made available to potential users. The registration gives the registered proprietor of the trademark the exclusive right to the use of the trademark in relation to the goods or services in respect of which the trademark is registered (Section 28(1) of TM Act).

As stated earlier, the Trust obtained trademark registration for the picture of the deity and the title ‘Sabarimala of Women’. According to Section 2(zb) of the TM Act, the mark should indicate connection in the course of trade between the services and the proprietor. The expression “proprietor”is not defined under the TM Act. As per the canons of interpretation, it is permissible to peruse the dictionarymeaning of the term in the absence of any definition thereof in the relevant statutes. A “proprietor” is one who owns something or one who has theexclusive rightor title to something. As stated earlier, the Trust obtained registration for temple services, social services, welfare services and cultural activities. Is considering a Trust as the proprietor of temple services, social services, welfare services and cultural activities a legally feasible proposition? In other words, can a Trust be considered as one which has exclusive right or title over the said services? Legally speaking, it cannot be. The Supreme Court in Ratilal Panachand Gandhi v. State of Bombay (AIR 1954 SC 388) held that “religious practices or performances of acts in pursuance of religious belief are as much a part of religion as faith or belief in particular doctrines.” A Trust cannot claim exclusive title over temple services, social services, welfare services and cultural activities carried out pursuant to the religious faith. The devotees have as much stake as the Trust has in the said services. Therefore, the Trust is not a proprietor of the said services and therefore, cannot claim exclusive right over the picture of the deity and the title for the said services.

Moreover, the Division Bench of the Delhi High Court, in Bhole Baba Milk Food Industries Ltd. v. Parul Food Specialities (P) Ltd, agreed with the Single Bench judgment that the name of a deity, which is in the public domain, cannot be monopolized. [We blogged on the judgments here and here.] Following the rationale, the picture of the deity and the title 'Sabarimala of Women'cannot be granted trademark protection especially when the Goddess is worshipped as the supreme mother and creator of all living beings!! The picture of the deity and the related title are very much in public domain. I shall make my argument clearer with an example. There are various denominations within Christianity – Catholics, Protestants, Orthodox etc. It defies trademark law principles if say, Catholic Church claims exclusive right over the picture of Jesus Christ for church services, social services, welfare services and cultural activities. The followers of Catholic Church have as much stake as the Catholic Church has. So do other Churches and their followers. So do the non-Christians as Jesus was sent to redeem the entire humanity!! Undoubtedly, Jesus Christ falls in the public domain and therefore, his picture cannot be granted trademark protection. Same is the case with trademark registrations obtained by the Trust. Further, it can be argued that the grant of such trademarks hurts the religious susceptibilities of a class or section of the citizens of India (which is one of the absolute grounds for refusal of registration under Section 9 of TM Act) as it involves objectifying religious symbols and titles. 

Violate Constitution of India

Article 25 of the Constitution grants “freedom of conscience and free profession, practice and propagation of religion”. As stated earlier, religious practices or performances of acts in pursuance of religious belief is as much a part of religion as faith or belief in particular doctrines. When registered, the State bestows the registered proprietor of the trademark with the exclusive right to the use of the trademark in relation to the goods or services in respect of which the trademark is registered.

Perceived in the extant context, a disciple of Attukal Devi enjoys the same right as that of the Trust for initiating inter alia social services, welfare services and cultural activities carrying the deity’s name, picture and the related title. In the light of grant of trademark protection, the Trust enjoys the exclusive right to use the deity’s picture and the title for the aforesaid activities. In other words, the devotees can be precluded from using the picture of the deity and the related title in the said services initiated by them. This vitiates Article 25 of the Constitution and is, therefore, unconstitutional.

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