SpicyIP Tidbit: ALCS August Distribution

In the UK, the Authors' Licensing and Collecting Society is an organization run and owned by writers that collects money due to its members from the use of their works, distributes the money collected, organizes campaigns and raises awareness about issues that affect writers. It has a membership of over 85,000 writers and has so far paid out £300 million to writers. 

Distribution of collections takes place twice a year. Recently, as IP Finance reports, the ALCS announced its ‘August Distribution’ where the Society is distributing £7.5 million to more than 21,000 Members. This works out to £370 per member. Though this is far from the earnings of the world’s commercially successful writers, the ability to track and collect money for use of copyrighted works is an added benefit for writers who may not have the capacity to monitor such transactions. 

The Society takes a commission of 9.5% plus an additional 0.25% which goes towards the ALCS 'Support and Sponsorship' Fund. The 9.5% commission is used for the day to day operations of the organization. The August Distribution also has details of type of work, where the work has been used and how the work has been used. 

The recent unionizing of singers, authors and composers in India blogged about here and here, could ensure not only better bargaining capacity but also efficient collection and distribution of royalties, as well as better representation and awareness building.

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PIP Essay Competition Results Announced: Meet the Winners

Last year, we'd announced a new IP writing competition for law students called PIP (Pondering Intellectual Property). This competition was jointly organised by SpicyIP, the MHRD IP Chair at the National University of Juridical Sciences (NUJS) and the Intellectual Property and Technology Law Society (IPTLS). 

We'd asked law students from around the world to vent their creative musings on the following theme: 

"Should the process of creating an invention or work determine its protectability as an intellectual property? " 

We received a good number of entries and had a tough time picking the winners. Keeping in mind the rather hectic schedule of our judges, we shortlisted 5 of the top entries and sent it across for their assessment. Without much ado, here are the winners....let the drum rolls begin!

Winners:

1. First place goes to Pervin Rusi Taleyarkhan (3rd year US JD student, Indiana University Robert H. McKinney School of Law) for a thought provoking essay titled: “Intellectual Property – Protecting the Intellect or the Property?” 

2. Second place goes to Priya Giyarpuram Prasad, (3rd year US JD student, University of Houston Law Center) & Polly Beth Sims (3rd year JD student, SMU Dedman School of Law) for their wonderful essay titled: "Who is Entitled to the Antelope First: a Lioness or a Vulture? – U.S. IP Law’s Implict Recognition of Labor Answers the Lioness." 

3. Third place goes to Karan Talwar & Karthik Khanna (5th year law students, National University of Juridical Sciences (WB NUJS, Kolkata) for their creative take on the theme.

We've kept up our side of the bargain and transferred the cash awards that we promised them. They've kept their side of the bargain by permitting us to carry their entries open access style on the SpicyIP website. Here are the links to their wonderful essays and I would encourage you to read them:

1. Essay by Pervin Rusi Taleyarkhan

2. Essay by Priya Giyarpuram Prasad & Polly Beth Sims

3. Essay by Karan Talwar & Karthik Khanna

Our Cross Border Judges: 

I want to really thank our wonderful panel of judges for taking time out from their busy schedules and doing a stellar job of assessing these entries. As I'd noted in an earlier post: 

"We've been very fortunate to line up an incredible array of judges representing a multitude of jurisdictions including the UK, US, New Zealand, Canada and Scotland. In case you're wondering how the multi-jurisdictional numbers add up, you have to dig a bit into the backgrounds of this stellar panel. 

Professor David Vaver, perhaps the most cited IP scholar in Canada is originally from New Zealand. He moved to Canada, then to the UK (where he served as the Director of the Oxford IP Research Center for a good number of years and helped it gain international recognition through several innovative initiatives) and back again to Canada where the folks at Osgoode refuse to let him retire--after all, with him around, its Osgoode as it gets. 

Professor Lionel Bently, one of Europe's leading IP scholars and author of several books and articles including a classic treatise on intellectual property law (which is now the standard IP text book in many jurisdictions, including India) is of English vintage but spent a considerable amount of time in Australia. 

Professor Graeme Dinwoodie is of Scottish heritage and spent a large part of his career teaching in the United States, where, among other things he ran a very reputed IP programe out of Chicago Kent law school, wrote a stream of high impact scholarly pieces on various facets of intellectual property law and was conferred with one of the highest teaching awards (the Pattishall Medal for Teaching Excellence) before he moved to the UK to take over as the Director of the Oxford IP Research Centre (OIPRC). 

As for Judge Rader, although he has not switched borders yet, his reputation is by all accounts very "trans-border" in scope. Many would agree that he qualifies as a well known mark in several jurisdictions, where he routinely visits and speaks, leaving one to ponder the source of his indefatigable energy, good cheer and occasional creative outpourings on the non IP side, which have rightly earned him the sobriquet,the Rock Star of IP." 

Judicial Assessments:

For those interested, here is a link to a document capturing the core essence of the judges' assessments/rankings (anonymised of course), so you get a snapshot view of what each of them felt about the essays. 

A Special Thank You: 

Before I end, I really want to thank the following people who played a significant role in seeing this competition to fruition:

i) Sai Vinod (ex student, NUJS) for intiating this competition and seeing it all the way through till the end. But for his insistence, this would have never happened. 

ii) Shan Kohli (ex student, NUJS and Trainee Solicitor, Linklaters) for being very generous with her time and helping us with the internal shortlisting process. 

iii) Nayantara Ranganathan (IV Yr. NUJS) for designing the poster for the competition. 

iv) Professor Ishwara Bhat, Vice Chancellor, NUJS for encouraging these activities aimed at encouraging students to exercise their creative faculties. 

And last, but certainly not the least, I really want to thank the Ministry of HRD for setting up these IP chairs and providing us excellent support to create more IP awareness around the country. And in particular to Mr Ashok Thakur, (Secretary, MHRD), Ms Veena Ish (Joint Secretary) and Mr Raghavender (Copyright Registrar) for going out of their way to encourage our activities. 

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Now Showing: Satyagraha: Bom HC denies an Injunction to Restrain its Release

I recently blogged about the dispute between Narayani Productions and Prakash Jha Productions over the movie title Satyagraha. Yesterday, the Bombay HC denied Narayani Productions an interim injunction to restrain the defendants from releasing Satyagraha. We have a copy of the order passed by Justice Kathawala, thanks to a SpicyIP reader.

The Plaintiff, Narayani Productions submitted that the Defendants used their power and influence in the industry to manipulate the records of the Association of Motion Pictures & T.V. Programme Producers(AMPTPP), and have deprived the Plaintiff of its legitimate right to use the title Satyagraha.  The  title was registered by the plaintiff with the AMPTPP since 2005. The registration of the title was thereafter renewed by the Plaintiffs on a yearly basis. The Plaintiffs admittedly failed to renew the said registration after 29th January, 2011. In fact, on 16th February, 2012, the Plaintiffs filed an application before the Trade Mark Registry seeking registration of the trademark Satyagraha under class 41, which is still pending. In the meantime on 15th June, 2011, the Defendant filed an Application seeking registration of Satyagraha for its film with another Association viz. Indian Motion Picture Producers' Association (IMPPA).

Realising the lapse, the Plaintiffs applied for registration of the title with AMPTPP on 25th August,2011, which was subject to approval of the Title Registration Committee. The AMPTPP and IMPPA are two Associations with whom its members are allowed to file applications seeking registration of the title proposed to be used by the members for their proposed Hindi feature films. Over a series of decisions taken by the two associations, the title was finally registered for the Defendants, because the registration of the Plaintiffs lapsed in January 2011, and the Defendants' application was prior in time after the lapse. 

The Court put the blame squarely on the plaintiffs for losing rights over the title due to their delay in re-applying for the same. It dismissed the allegations of manipulation made against the defendants. Further the Court held that no copyright can be claimed in the title. Since the trademark Satyagraha was not registered till date in favour of the Plaintiffs, the Plaintiffs cannot claim any statutory rights in that regard. The Plaintiffs also cannot claim any common law rights in the admitted absence of any plea of existence of any reputation and goodwill in the mark. The Plaintiffs therefore failed to make out any prima facie case in their favour. The application for injunction to restrain the release of Satyagraha was accordingly dismissed.

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Patenting food: Plumpy’ Nut and more?

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Peanut paste sold as ‘Plumpy’Nut’, a patented concoction consisting of skimmed milk powder, sugar, vegetable fat, vitamins and minerals, has worked wonders for children suffering from malnutrition. This paste was invented by a French paediatrician and has radically changed the way malnutrition is treated in developing countries. This life saving peanut paste facilitates treatment at home, does not need to be refrigerated and can be administered by anyone, anywhere! It is so effective that it can revive malnourished children in a matter of days. This paste was first used eight years ago during the famine in Nigeria. Its success has lead to a huge increase in its demand with UNICEF increasing its purchases by 15%. 

Plumpy’ Nut has been categorized as a ‘Ready to Use Therapeutic Food’. The patent is owned by a France based company Nutriset. Reportedly, the product is patented in 38 countries across the world. Two American NGOs have unsuccessfully fought for invalidating the company's patent in 2010, arguing that it hindered them from making a similar and cheaper paste.

Interestingly, the Indian Government as blocked the import of Plumpy’ Nut into India. As reports show, Indians are producing this paste with local ingredients at much cheaper prices. Also, though Plumpy’ Nut is an efficacious solution, it undermines self reliance in food security of nation. A search on the IPO website did not reveal a patent or application for a patent filed by Nutriset for Plumpy’ Nut in India. 

Swaraj’s succinct post on the implications of patenting foodstuff, like Plumpy’ Nut, brings out important questions such as: Can patents be extended to something as basic as food? Can Ready to Use Therapeutic Food qualify as essential medicines? And how does the patent system balance profits of manufacturers with existential needs of society? 

A preliminary search on the IPO website, has revealed some interesting patents that have been granted to food related subject matter: 

Applicant: Council of Scientific and Industrial Research, Patent No: 231016, Granted: 28/02/2009: “The present invention relates to a drink mix comprising as many as ten ingredients having health benefit, comprising of dry fruits such as date, apricot, fig, raisins, pistachio and almond, oil seeds like peanuts, legumes such as soybean, rice products like puffed rice, sugar, goose berry etc., which are dried and powdered which can be made into drink by dispersing with milk or water or juice at ambient or at hot conditions and consists of essential nutrients, vitamins, minerals and provide about 400 Kcal 7100 g.” 

Applicant: Council of Scientific and Industrial Research, Patent No. 241409, Granted: 01/07/2010: “The present invention relates to a formulation for dietary fiber enriched cereal bar. Cereal bars are known in different names including energy bars, granola bars, food bars, meal replacement bars, etc. Fortified with proteins vitamins, dehydrated fruits, nuts, dietary fiber, etc., they are capable of being vehicles for supplying nutraceuticals. The present invention relates to food products supplemented with dietary fiber. The term dietary fiber defined as the components of plant materials which are resistant to human digestive enzymes, such as celluloses, lignin, gums, etc. In recent years, the physiological benefits of adequate levels of dietary fiber in the diet have become more and more evident. Such benefits include the normalization of the bowel function and reduction of the occurrence of certain coloic diseases. Increased dietary fiber intake has been used in the treatment for diabetes, hypoglycemia, hypercholesterolemia, hypertriglyceridmedia. Dietary fiber has also been used as a control for metabolic rates to help prevent obesity. In view of these benefits, health authorities in US have recommended a daily consumption of 20-35 g of dietary fiber. Due to increased health consciousness and awareness of the consumers, the demand for health foods in soaring throughout the world. Snack foods have been known in India from time immemorial. All over the world, several ready to eat cereal products are prepared conventionally by puffing or expanding the cereals. Puffed rice is extensively used in the preparation of various products in most parts of South Asia. Puffed paddy, unlike puffed rice is not crisp, but more chewy and used in the preparation of savory. These two cereal products, preferably puffed rice, are used in the present invention to prepare crunchy cereal bar with added fiber. The product is a stable, convenient and ready-to-eat sweet confection, which provides energy and nutrition and could be consumed as sweet or snack in between the meals…” 

This is a published application: 

Applicant: Council of Scientific and Industrial Research, Application No: 505/DELNP/2004: “The present invention provides a novel cereal bar formulation comprising Jaggery or sugar in an amount of 30-50%; Glucose syrup in an amount of 25-45%; Fat in an amount of 0-15%; Puffed and expanded rice products in an amount of 8-20%; Modified starches in an amount of 0.5-5.0%; Roasted peanuts in an amount of 0-15%; and Moisture in an amount of 5-12%, all percentages being expressed in terms of weight.” 

Healthy food and adequate nutrition are the catchwords of today. People are striving to develop healthy foods and formulations the world over. Rob Rhinehart, a software engineer based in San Francisco, has research and developed ‘Soylent’, a mixture of minerals including calcium, potassium, zinc, vitamins A, B, C, D, E and K. He says it contains all that the human body needs and believes it will change the way we eat. He has also published the ingredient list on his blog.

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Bollywood flick Satyagraha faces dispute over its Movie Title

Soon to be released Bollywood flick Satyagraha starring Amitabh Bachhan and Ajay Devgn has run into troubled waters due to dispute regarding ownership of the film title. Usually, any producer may register a title with various film associations which function as registered societies. The registration is valid for a two year period, after which the owner has to forego the registration and the title may be used by someone else. In the present case, the plaintiff, Rajesh Mishra of Narayani Productions has claimed that he had registered the movie title Satyagraha with the Indian film and TV Producers Council. Yet the defendant, Prakash Jha Productions went ahead and used the title without obtaining permission from the plaintffs. It was submitted that this unauthorised use would cause the plaintiff irreparable harm unless the plaintiff's were suitably compensated. The Indian film and TV Producers Council has also been made a respondent to the suit.

As per news reports, the plaintiff has claimed copyright in the title. However, movie titles have been registered in India since long as trademarks only. One of the most settled principles of Indian copyright jurisprudence is that there is "no copyright in film titles". Therefore, a production house actually claiming copyright over a film title strikes to me as rather odd. The present story carried by Outlook India has most likely been misreported, and it wouldn't be the first time the media has gotten its concepts of trademarks and copyrights wrong. We carried a post on this menace some time ago.

Regarding copyrightability of movie titles, the Delhi HC previously held that title of any copyrighted work cannot enjoy protection under the Copyright Act. It was observed that in case of a single copyrighted work, the title must have acquired a secondary meaning to qualify as registrable trademark; and titles of series of films enjoy standard trademark protection. Shamnad Basheer in this post brought to us an analysis by Manisha Singh of LexOrbis on the issue of copyrightability of film titles with respect to the same decision. 

Furthermore, the plaintiifs allege that the title had been snatched by resorting to cheating and criminal breach of trust and reserved their rights to also file criminal cases against both respondents. Justice Kathawala of the Bombay HC heard the matter and asked the Council to appear before the Court.

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Leading IP Academics Fired: Protest Petition Against Unfair Dismissals

As many of you now know, two leading figures in Indian IP academia were axed by their whimsical bosses, sending shockwaves across the Indian acadmic community. Swaraj's earlier post on this notes:

"In a shocking development, LiveLaw reports that as of last month, Professor N.S.Gopalakrishnan (NSG) has been removed as Ministry of Human Resource Development (MHRD) Chair Professor at Cochin University of Science and Technology (CUSAT) without any reason being disclosed. 

As those in the IP community would know, Prof Gopalakrishnan is one of the foremost authorities and an internationally recognized expert in the field. And it appears that the MHRD Chair coordinator on IP at NLU-Jodhput too has been victim to an arbitrary removal notice. On August 19th, Asst Prof Yogesh Pai received a one line notice that the Vice Chancellor of NLU-Jodhpur had announced his replacement with immediate effect, with no reason given." 

I've had the great privilege of being taught by Professor NS Gopalakrishnan (fondly known as NSG), by far one of the finest academics I've known, not just in terms of subject matter expertise, but the passion and conviction with which he teaches and the zealousness with which he refuses to compromise on principles dear to his heart; a rare gem in today's world where political expedience trumps all else. 

I've also had the great honour of working closely with Prof Yogesh Pai, a rising star in the global IP firmament and one of the most decent human beings I've ever known. Like Prof NSG, he is extremely devoted to his craft, obsessive about protecting national interest and supremely selfless when it comes to mentoring and guiding his students. 

The reactions to these firings are testament to the enormous love and respect with which these IP academics are held. I extract some of them below:

Madhukar sinha (Professor at Center for WTO law and former Registrar of Copyrights, India) comments on Livelaw, a leading law blog that broke this story, as below:

"I have had official and personal interactions with Prof. Gopalakrishnan over the last almost 10 years. He is amongst the foremost authorities on IPRs in the world. He has been the key negotiator for India at the WIPO on many of its platforms. The HRD Chair for IPRs was located at CUSAT only because the Government of India wanted to continue to gain from his expertise ever since he moved to CUSAT from NLSIU Bangalore."

A student of Prof Yogesh Pai emails us as below:

"The events that have unfolded over the last week culminating in the arbitrary removal of Professor Gopalakrishnan and Mr. Yogesh Pai (both highly distinguished academicians) in the field of IP Law has left many of us disillusioned and disgruntled.

I write to you expressing my complete support and cooperation in any which way possible in your fight against institutional autocracy. I can personally vouch for Mr.Pai's stellar record as the Head of the IPR Chair. He was absolutely instrumental in organizing various Roundtables, Seminars, Conferences etc. under the aegis of the MHRD IPR Chair which apart from imparting knowledge provided a great platform for students and practitioners alike to the field of IP Law. The manner of his removal is highly appalling and I would like to convey my absolute solidarity with his cause."

Both Prof NSG and Pai are rare national assets and we simply cannot afford to take this lying down. "Vice" chancellors and their "vicious" ilk have gone too far with treating institutions as their personal fiefdoms. The tipping point is near and we must send out a clear message that enough is enough! So if you care about justice, fairness, institutional growth and nurturing talent in this country, then please append your signatures to the protest petitions below.

1. Protest against dismissal of Prof NSG (addressed to the Chief Minister of Kerala): Link available here.

2. Protest against dismissal of Prof Pai (addressed to the Chancellor of NLU Jodhpur): Link available here. 

These are quick drafts, and we'll add some finishing touches soon; if you spot any obvious errors, please let us know.

Please use this online form to indicate your interest in supporting the petitions. Please note that you have the option of supporting either petition or both (we do hope many of you will support both). 

Please do not email me or Swaraj directly on this, since we've already received a great number of emails and are struggling to keep up. Please click on this online form (link available here), as it  makes our lives infinitely easier! (Many thanks to the IT wizard, Sai Vinod for crafting this online form for us). 

Given that these firings are a huge affront to academic freedom and integrity and represent institutional autocracy of the worst sort, we hope many of you will join cause and send out a clear message that enough is enough! Thank you.

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Two MHRD IP Chair Professors axed; Reasons unknown

In a shocking development, Livelaw reports that as of last month, Professor N.S.Gopalakrishnan has been removed as Ministry of Human Resource Development (MHRD) Chair Professor at Cochin University of Science and Technology (CUSAT) without any reason being disclosed. 

As those in the IP community would know, Prof Gopalakrishnan is one of the foremost authorities and an internationally recognized expert in the field. One would be hard-pressed to convincingly argue that the Chair position would have even existed at CUSAT had Prof Gopalakrishnan not moved there from NLSIU. And it appears that the MHRD Chair coordinator on IP at NLU-Jodhput too has been victim to an arbitrary removal notice. On August 19th, Asst Prof Yogesh Pai received a one line notice that the Vice Chancellor of NLU-Jodhpur had announced his replacement with immediate effect, with no reason given. Two days later, he received his termination notice. Pai has clarified in a letter to the MHRD that he was given no reason for this termination. 

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As per Livelaw's report, a senior official in the MHRD had this to say regarding Prof Gopalakrishnan's termination: 

“We are shocked. He is an international expert. He has been helping the Ministry in various matters including policy making, international negotiations and legislative drafting. He has been helping other Ministries also on Intellectual Property law related issues. These Chairs are set up by the Central Government and they have been grooming these Professors, there should be continuity. It’s not like any other subject. If Universities according to their whims and fancies, go on removing the Chairs and Coordinators without informing the Central Government which has set up the Chairs, it would not help in policy making for which the Chairs were established.”

The official added, “Prof. Gopalakrishnan was removed in an arbitrary manner without informing us. We give the grants, salary and all other necessary expenditure for the Chair; they should show the courtesy to inform us in advance. The same thing has been done by National Law University, Jodhpur. They have removed Yogesh A Pai (who was the MHRD Chair Coordinator) without informing us. They are not supposed to do like this. We will take up the issue with the Universities directly; we are writing a strong letter to them. Either they will have to reinstate these people or we will remove the Chairs. We don’t want to give Chairs to those Universities who behave in such arbitrary manner.”

This is hardly the first time that higher ups in University administrations have made such arbitrary decisions and it is high time that such actions are resisted. Legal education in India has so much to be desired and yet certain administrative personnel believe they can treat universities as their personal fiefdom - rendering it even more difficult for the few who persevere through such difficulties. When even the most meritorious are facing such dangers, it is a clear and present sign of things having gone too far. It is high time that all those who are in a position to protest such actions, do so. It is good to see that the Ministry of HRD has said that they will take up the issue. 

Prof Shamnad Basheer is organizing a protest petition regarding the above dismissals. For all those interested in signing up, please contact us at shamnad@gmail.com or swaraj.barooah@gmail.com Please click here to go to the online petition. [Those who have already emailed us do not need to resubmit their signature]. 

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FICCI and The George Washington University, Washington DC announce Certificate Course on US Patent Law and Practice

Federation of Indian Chambers of Commerce and Industry (FICCI) and George Washington University, Washington D.C., US are jointly conducting the Certificate course on "United States (US) Patent Law & Practice".

The course is of 13 weeks duration.

Start of Course                                       :     First Week of September 2013

Last Date of Receipt of Applications    :     5^th September 2013

The course would cover US patent law and practice, infringement aspects and remedies to infringement available in the US.

Key Features of the Course:

• Participants from India to get recorded versions of the sessions by Chief Judge Randall R. Rader,  U.S. Court of Appeals for the Federal Circuit (CAFC) to view at their convenience;

• State of Art Course Material been prepared by Domain Experts in US; 

• Interaction with the Hon'ble Chief Judge Randall R. Rader, CAFC in January 2014 at FICCI, New Delhi; 

• Online Chat Session once in a week for 2 hours with expert from US;

• FORUM to enable participants to raise queries to Patent Law Experts from US and also to interact with other participants;

• Participants from Industry could participate in FICCI-IPR division events free of cost; 

The Course may be pursued by students of law, science, engineering and related disciplines, lawyers,  scientists, engineers, and professionals from disciplines related to patents, academicians, patent agents, entrepreneurs, aspirants for IP career, MSMEs.

Interested participants may fill up registration form available on FICCI’s website www.ficciipcourse.in and send it to FICCI addressed to Ms. Sheetal Chopra, Head, IPR Division, FICCI, Federation House, Tansen Marg, New Delhi – 110001.

For any query, Ms. Sheetal Chopra, Head, IPR Division or Mr. Abhishek Bajaj, Course Coordinator, may be contacted at e-mail ipcourse@ficci.com or phone +91-11-23487477 or at 011 – 23487477 (if calling from India).

NB: This would be a great event for anyone interested - and available seats are likely to be filled early - readers should contact FICCI (details mentioned above) to confirm their attendance.  

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SpicyIP Tidbit: IPA continues communication with Pfizer over pharma innovation policy disputes

Readers may remember the posts we did on Pfizer's testimony before the US House of Representatives and the ensuing series of correspondence regarding it. (See here, here and here). While that was part of the larger issue of US putting pressure on India to change its pharma patent policies, it has been useful in that the exchange of communication has resulted in an actual articulation of reasons behind allegations, rather than mere unilateral claims and allegations (eg: The Special 301 Report) that have otherwise been present. I believe this is useful (despite the hostility seen in some of the letters), as articulating these claims requires putting forward facts, rather than moving forward on assumptions and rhetoric. And regardless of which 'side' one may be on, getting the facts straight is the first step to fact-based policy making. By the same token, understanding that the 'facts' are not as straightforward as a party may claim is similarly as important, in order to ensure that questionable assumptions don't form the basis of 'fact' based policy. 

As mentioned in one of those earlier posts, Pfizer had responded to Indian Pharmaceutical Alliance's (IPA) criticism on May 23rd with their 5 page letter here. Last week, on 19th August, the IPA responded with an 8 page letter of their own. We have made the letter available here. 

The letter discusses several points that Pfizer had alleged and provides counters to them. In particular, it discusses whether there is discrimination against US companies, India's "hostile" innovation and investment environment, Section 3(d) and compulsory licenses. It also referred to US' own patent system, problems that they are facing and actions that they are still taking to improve their patent system - thus calling into question any 'absolute truth' about any system that Pfizer sought to contrast India's patent system against. Strangely though, the letter seems to end abruptly while discussing the recent USITC veto of the ban against Apple imports when it certainly could've pointed out the double standards that such a move follows. I'm also a little confused by what seems to be a concession of sorts towards the end of the letter stating that US is the knowledge industry leader of the world and that its IP legislation is arguabley the highest standard of the world. 

In any case though, what could've ended up as a unilateral allegation of questionable substance before the US House of Representatives, has instead been used by the IPA to create a platform for voicing an alternative view. If nothing else, this helps further the debate for the number of parties watching this dispute. 

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SpicyIP Tidbit: GI for Pedana Kalamkari Art Form

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Recently, as The Hindu reports, Pedana Kalamkari art form received GI protection. Members of Vegetable Dye Hand Block Kalamkari Printers’ Welfare Association, Pedana received the registration certificate from the Geographical Indications Registry (GIR), Chennai. Also, in the GI Registration, this art form has, been recognised as ‘Machilipatnam Kalamkari’. According to GIR’s authorised user no – AU/396/GI/19/12, production of Machilipatnam Kalamkari is geographically limited to Pedana town and its neighbouring villages including Machilipatnam, Polavaram and Kappaladoddi in Guduru Mandal of Krishna district. Protection has been limited to certain areas of production such as textiles and textile goods, bed and table covers, clothing, carpets, rugs, linoleum and other materials for covering existing floors and embroidery. Additionally, the recipe for making the vegetable dyes and information regarding the stages of its application has also been submitted. 

The Machilipatnam Kalamkari craft is made at Pedana near Machilipatnam in Krishna district, Andhra Pradesh. Through this art form cotton fabrics are painted, either free hand or with the help of blocks, using vegetable dyes. It is said that this art form evolved under the patronage of the Mughals (or even earlier). Since the 17th century, traders have preferred Kalamkari works from Machilipatam as they are finer and more elaborate. 

We blogged about other recent GI approvals here.

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Colgate v Pepsodent: Comparative Advertising

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Recently, in a case of comparative advertising, the Delhi High Court denied granting an interim injunction against Hindustan Unilever Ltd (HUL) (here). Colgate Palmolive (India) Ltd. brought an action against HUL for its ads relating to its product ‘Pepsodent GermiCheck Superior Power’ as these ads allegedly disparaged Colgate’s toothpaste ‘Colgate Dental Cream Strong Teeth’. 

We have blogged about comparative advertising here, here, here, here and here.

Colgate made the following submissions: 

First, it was contended that the claim made by HUL that Pepsodent GermiCheck had ‘130% attack power’ was blatantly false. This false statement violated several provisions of the Advertising Councils Code as well as The Drugs and Cosmetics Act, as it amounted to ‘misbranding’. 

Second, the print and TV commercial portrayed Colgate’s product in bad light and falsely depicted that the use of Colgate could cause cavities. The advertisements were analyzed frame by frame and the following observations were made: 

The TV commercial depicts that Triclosan an ingredient in Pepsodent stays in the mouth four hours after brushing and qualifies a ‘preventive cavity test’. But Colgate contended that no such test exists in the world. Also, while the Pepsodent Boy passed this test, the Colgate Boy was shown to have failed. In another frame, the Colgate Boy was shown brushing his teeth in an improper manner, whose teeth had gaps (indicating cavities) and whose mother seemed very unhappy. All this implied, as per the plaintiff, that Colgate’s toothpaste could cause cavities and was therefore disparaging of their product. 

The Print Ad: It was argued that the words ‘Pepsodent now better than Colgate Strong Teeth’ were meant to convey that Colgate Strong Teeth was no longer a good product. Also, the word ‘Attaaaack’ used in the ad was an attack on Colgate and not on the cavity causing germs. 

Thirdly, HUL’s past record showed that it had a history of making false claims in respect of its products. Cases such as: Hindustan Unilever Ltd v Colgate Pamolive Ltd, 1998 SC 526 and Reckitt Benckiser (India) Ltd. v. Hindustan Unilever Ltd. 200 (2013) DLT 563 (Dettol v. Lifebuoy case) were cited. 

Colgate apprehended a loss of market share if the HUL was not restrained from circulating these ads. 

HUL responded: 

HUL asked the court not to adopt a hyper technical view and not to analyse an advertisement like a statute or a clause of an agreement. Taken as a whole, neither the TV commercial nor the print advertisement denigrates the product or the brand of Colgate. 

On the claim that Pepsodent GSP was a better product, it was argued that there was no denigration of Colgate Strong Teeth. In this regard, the decision in Dabur Colortek was cited to show that courts have allowed comparative advertising and have allowed manufacturers to claim superiority over their competitor’s products, so long as there is no denigration of the other product. The results of the in vivo and in vitro tests supported the statements of HUL (that Pepsodent GSP actually had a 130% germ attack power) were also relied on. 

Court 

The court first examined the law concerning comparative advertisements. The first principles developed in Dabur Colortek were “for a Plaintiff to succeed in an action based on malicious falsehood, the necessary ingredients are that (i) a false statement was made which is calculated to cause financial damage (ii) that it was made maliciously with an intention to cause injury and (iii) the impugned statement has resulted in a special damage. The law in England was referred to as laying down that: (i) a trader is entitled to say that his goods were the best; in doing so he could compare his goods with another (ii) say that his goods are better than that of the rival trader in this or that respect (iii) whether the statement made was disparaging of his rival’s product depended on whether it would be taken ‘seriously’ by a ‘reasonable man’; an alternative test would be whether the trader had in fact highlighted any specific defect in his rival’s goods and (iv) a statement made by a trader puffing his own goods was not actionable.” 

Thereafter Division Bench in the Dabur Colortek case, emphasized the importance of keeping in mind the medium of the advertisement and its story line and further developed the law on comparative advertising: “A plaintiff (such as the Appellant before us) ought not to be hypersensitive as brought out in Dabur India v. Wipro Limited 2006 (32) PTC 677 (Del).”… “Finally, we may mention that Reckitt and Colman of India Ltd. v. M.P. Ramchandran and Anr. 1999 (19) PTC 741 was referred to for the following propositions relating to comparative advertising: (a) A tradesman is entitled to declare his goods to be best in the world, even though the declaration is untrue. (b) He can also say that his goods are better than his competitors', even though such statement is untrue. C S (OS) No. 1588 of 2013 Page 12 of 22 (c) For the purpose of saying that his goods are the best in the world or his goods are better than his competitors' he can even compare the advantages of his goods over the goods of others. (d) He however, cannot, while saying that his goods are better than his competitors', say that his competitors' goods are bad. If he says so, he really slanders the goods of his competitors. In other words, he defames his competitors and their goods, which is not permissible. (e) If there is no defamation to the goods or to the manufacturer of such goods no action lies, but if there is such defamation an action lies and if an action lies for recovery of damages for defamation, then the Court is also competent to grant an order of injunction restraining repetition of such defamation.” 

Applying these principles to the present case, the Court came to a prima facie conclusion that the ads were not disparaging. 

TV and Print ads: According to the court too much could not be read into the ads and to expressions of each individual character. Also, the court noticed that the teeth of the Colgate Boy had not been zoomed into and no gaps or cavities could be seen. The expressions and effects used in the ad, only showed that Pepsodent was a better product but did not disparage Colgate’s product. In this regard, the court observed “If there is a comparison of products and an attempt to show that one is better than the other, then obviously both boys cannot have happy faces.”Also, the court held that the word ‘attack’ in the print ad was related to Pepsodent’s germ fighting capability and was not an attack on Colgate. 

The court denied going into the questions of truthfulness of the ‘130% germ attack’ capability of Pepsodent GSP and the allegation of HUL being in the habit of making misleading claims, at the stage of interim injunction.

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SpicyIP Tidbit: Justice KN Basha to be new IPAB chairman

Justice KN Basha, a recently retired judge from the Madras High Court has been appointed as the new IPAB Chairman, according to the order issued on August 23 by Chandni Raina, the director of the department of industrial policy and promotion (IPR section) under the Union ministry of commerce and industry.

Justice Basha replaces Jusice Prabha Sridevan, who retired a few weeks back. In the interim period, Ms. S Usha had been the acting Chairman. The appointment order issued on August 23 stated that Justice Basha's conditions of service and salaries and allowances payable to him will be in accordance with the IPAB (salaries and allowances payable to, and other terms and conditions of service of chairman, vice-chairman and members), Rules, 2003.  A RTI filed by Prasanth regarding the same can be found here.

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IPRS complies with new copyright law & decides to collect ringtone royalties – no news about its re-registration from the Copyright Office

More than a year after the new copyright law came into force we have no news from the Copyright Office on the status of the registration or re-registration of the Indian Performing Rights Society (IPRS) as a copyright society. Emails to the Registrar of Copyright remain unanswered – given the concerns and public interest involved in the registration of IPRS as a copyright society we were expecting the Registrar of Copyrights to set new benchmarks for transparency in the re-registration process. I will be filing RTIs soon with the Copyright Office for details of the same. 

Ironically, it is IPRS which is now the more transparent body – all documents relating to the IPRS EGM in which new bye-laws were passed to comply with the Copyright (Amendment) Act, 2012 are now available on the website of IPRS. The application made to the Copyright Office by IPRS for re-registration is unfortunately inaccessible. However I did have a look at the new Articles of Association (AoA) and tariff scheme – everything seems to be in order. 

One of the long-standing complaints against IPRS was that it had stopped collecting royalty ringtones and that it had given away these rights to PPL – however the new tariff scheme authorized by IPRS expressly includes a category to collect ringtone royalties. 

Similarly the new AoA have been amended to ensure that IPRS is now under the control of both authors and copyright owners. Both authors and copyright owners have been given equal voting rights and representation on the Board of Directors. These amendments give authors an equal stake in IPRS. With these amendments one would have expected the re-registration of IPRS to have been completed without delay. 

In a previous post of mine I had discussed the problems that arose in the last time IPRS was registered by a copyright society. As I had stated earlier, the ‘Register of Owners’ of IPRS was never submitted to the Copyright Office in 1996 during the first phase of registration. The Register has to list the name of the owners, along with the rights owned. Hopefully the Registrar of Copyrights will not repeat this mistake of his predecessors.

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Re-imposing curbs on royalty payments to foreigners

Background

We had earlier reported that the Indian government, in 2009, waived the requirement of prior government

approval in case of payment of royalty by Indian companies to multinational corporations and allowed such payments through the automatic route. Later, we also carried a Business Standard report which stated that the aforesaid relaxation is being used by the MNCs to divert a major portion of the profits made by their Indian arms in the form of royalty payments and technology transfer fees. This deprives the minority investors in those Indian concerns of their rightful dividends. 

Re-imposing curbs on royalty payments to foreigners

                                                                                                                                    [Image from here]

According to Economic Times report dated 8 August 2013, the GoI is considering the re-imposition of restrictions on royalty payments in the light of sudden surge in outflows post-relaxation. The royalty payments in 2012-13 was to the tune of $4.4 billion, nearly 20% of the $22.4 billion in foreign direct investment received by the country in that year.

The report points out that most MNCs have increased the rate of royalty payments after the liberalization of the policy. For instance, Hindustan Unilever had last year increased the royalty payment to its parent Unilever in phased manner from 1.4% of turnover to 3.15% of turnover by the financial year ending 31st March 2018. DIPP is concerned over the higher percentage of royalty payments sans any transfer of technology or critical components and designs.

Fix the leaking tap

The outflow is, of course, worrisome considering the rising current account deficit and the consequent disastrous results.  The Indian rupee is depreciating at an alarming level.  Further, the rate of inflation is not anywhere near the comfort zone. In this context, outflows in the form of royalty payments (devoid of any major addition to technical know-how) is worrisome especially when experts are suggesting proactive steps  such as issuing NRI bonds, sovereign debt offers, raising FII debt limits, FDI limits etc to recoup foreign exchange reserves. In other words, it is quite imperative to fix the leaking tap!! According to news reports dated 23 August 2013, the Finance Minister noted that the government and the RBI do not intend to impose capital controls [see here]. This stance of the government contradicts the Economic Times report dated 8 August 2013. I am not getting into the merits of this stance of government. But I do hold the view that royalty payments, which do not result in any major addition to technical know-how, is detrimental to the economy. Any outflow from the nation must bring in commensurate benefits. Else, it is a drain on the economy - a drain which denudes the nation of its productive capital. [Curiously, it sounds more like the economic drain theory put forward by Dadabhai Naoroji against British colonialism!!] Of course, imposing absolute capital controls may dent the investor confidence. We cannot afford it at this juncture. But imposing restrictions on royalty payments, which do not bring in commensurate benefits, is within the best interests of the nation. Therefore, I suggest a closer look at the policy. 

Even otherwise, the royalty payments also raise some pertinent issues on corporate governance. I wonder whether the decision to relax norms was taken after due consideration and consultation. Prof. Umakanth succinctly and incisively analysed the issue [‘Royalty payments and Corporate governance’] and noted as follows: “Such royalty payments are a classic case of related party transactions (RPTs) between the company and a controlling shareholder. As we have previously lamented, the regulation of RPTs in India is far from the desirable. Current corporate governance norms only require appropriate disclosure in the financial statements, a responsibility imposed on the auditors and the audit committee. One way of approaching the issue is to consider disclosure as fulfilling an important function because investors can then decide their further course of action depending on the nature of disclosures. However, there are problems with disclosure as the sole option. First, disclosures can sometimes lack meaning if they are not appropriately and accurately made. Second, disclosures tend to acquire an element of standardization over a period of time thereby leaving investors with little information to distinguish among companies that make the royalty payments.

Due to the failure of disclosure as an adequate option, it is necessary to consider other possibilities through amendment to corporate governance norms. Essential among them is the need for a committee of independent directors to specifically consider and approve such royalty payments (or any other material RPTs for that matter) after specifically expressing their views on the impact of such transaction on the interest of minority shareholders. Another option would be to mandate shareholder approval for such royalty payments (or other RPTs), wherein the recipient of the royalty payment (i.e. the parent company) must be required to abstain from voting in view of the conflict of interest.

Unless such checks and balances are introduced, the minority shareholders in such MNC subsidiaries will be exposed to considerable risk that the parent companies will likely treat the Indian listed companies as if they are merely arms of themselves.”

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Debating the CIS Draft Bill on Privacy: Should this be the way forward for a privacy law in India?

Forbes India has published this interesting article by Sunil Abraham from the Centre for Internet & Society (CIS) at Bangalore on the need for private industry to push for strong privacy laws in India. Sunil’s piece is part of a larger effort by CIS to draft a privacy law for India which will discussed and debated through a series of roundtable conferences. The law is based on the recommendations of the Justice Shah Committee Report on the need for privacy laws in India and CIS was a member of that committee. In the interests of full disclosure, I too was on the committee, although not as a member and I disagree with most of the report, as a result of which I disagree with most of the bill drafted by CIS, although that does not take away from the tremendous effort that must have gone into drafting the bill. 

Image from here

Below is a brief summary of the main issues I identified in the Bill. 

A copy of the Bill and the discussions at CIS can be accessed over here. 

1. Regulating the government and the private sector under one legislation: My main objection to the CIS draft is that it seeks to cover both the government and private sector under one legislation. In countries like the U.S. , there is one privacy legislation controlling the manner in which the Federal Government collects and uses the data of its citizens. Then there are sector wise legislations governing how the private sector and state governments use and share data in the sectors of health, banking etc. 

This approach makes a lot of sense because the fundamental nature of the relationship between the state and the citizen is very different from the private sector and the consumer. For example if I want to drive my car on a public road I have to give the State my information to qualify for a licence or if I want to access subsidized rations, I have to give my information to qualify for a ration card. I don’t have a choice in these circumstances since the State has a monopoly over these issues. However, the same is not true for the private sector. Most data intensive private sector businesses like Google or Gmail, are providing me services in exchange for me sharing my data with them. Our relationship is defined by a contract which can be enforced only in California. If I don’t like Google’s contract, I can skip along to the next best thing on the market. I can’t skip along to a different government for a drivers licence or a ration card. 

Given the fundamental difference in the nature of the relationship between citizen-state and market-consumer, it does not make sense to place the same responsibilities on both sectors.. 

2. Sidelining an independent judiciary in favour of a centralized Privacy Commission: One of the longstanding complaints against the current surveillance regime is the fact that all authorizations for surveillance are given by the Executive - mostly home secretaries. In fact, one of the main demands made by PUCL in its famous ‘privacy rights’ PIL before the Supreme Court in 1996, was for all phone-tapping requests to be sanctioned by the judiciary rather than the executive. The Supreme Court turned down the prayer but did direct the Government to install more safeguards. 

The CIS Bill does seek to address this concern by requiring all requests for “interception of communications” or “surveillance” to be made to a Privacy Commission which is proposed to be constituted under the legislation. 

The first problem with this setup is purely logistical: How does a Privacy Commission of just 7 commissioners handle all “interception” and surveillance” requests from across the country? Right now interception requests for communications are handled at the level of both the Central Government and individual state governments. “Surveillance” is defined in the Bill as “means any activity intended to watch, monitor, record or collect, or to enhance the ability to watch, record or collect, any images, signals, data, movement, behaviour or actions, of a person, a group of persons, a place or an object, for the purpose of obtaining information of a person.” In other words it would cover something as simple as a constable tailing a potential goonda. How are seven privacy commissioners sitting in Delhi going to deal with all such requests for a country of billion people? Is a police officer from Mizoram supposed to send a request all the way to Delhi for his constable to tail a local goonda? 

The second problem is with the Privacy Commission itself - it is not an independent judicial body. Apart from the Chairperson who is appointed in consultation with the Chief Justice of India, none of the other Commissioners are required to be appointed in consultation with the judiciary. In other words the Government is going to pack these tribunals with its chosen people. 

Instead, does it not make sense to vest this task with District Judges? After all if we trust these judges to pass death sentences, why can’t we trust them with granting permission for interception or surveillance? We already have District Judges around the country and these are judges with substantial experience under their belt. Why create a new body for the purpose? 

3. Citizen v. Person: The Bill describes the “privacy” right as follows “means any activity intended to watch, monitor, record or collect, or to enhance the ability to watch, record or collect, any images, signals, data, movement, behaviour or actions, of a person, a group of persons, a place or an object, for the purpose of obtaining information of a person.” Under the Bill, all Indian security agencies are restrained from violating this right without the prior permission of the Privacy Commissioner. (Intelligence agencies have some limited exception when it comes to collecting information) The issue over here is that the Bill uses the word “Person” instead of “Citizen”. Should this Bill really be controlling what Indian agencies can do with a communications between two foreign citizens or surveillance of a foreign citizen? Personally, I don’t think Indian agencies need to be caught in such red-tape when it comes to foreigners - we should stick to protecting Indian citizens. 

4. The blanket bar against surveillance and the exceptions: Clause 22 of the Bill prohibits the State from conducting any kind of surveillance unless the relevant agency makes an application to the Privacy Commissioner. The definition of surveillance, as reproduced above is quite broad. Going by this definition even a simple task like installing a CCTV on the premises of a public building will require an application to be made to the Privacy Commission. In a country of a billion people, that would be a lot of requests. Does that make sense? 

5. Criminalization of vague offences: Chapter VII of the Bill criminalizes a whole series of offences with delightfully vague wording. For example Clause 43 reads as follows 

“43. Punishment for offences related to personal data. – (1) Whoever, except in conformity with the provisions of this Act, collects, receives, stores, processes or otherwise handles any personal data shall be punishable with imprisonment for a term which may extend to [___] years and may also be liable to fine which may extend to [___] rupees.

(2) Whoever attempts to commit any offence under sub section (1) shall be punishable with the punishment provided for such offence under that sub-section.” 

As you can see the clause does not refer to any provision in the Bill while defining the offence. If you look at Clause 6, there are a whole series of notice conditions imposed on anybody collecting information. Going by the CIS draft, a person violating even one of those notice conditions is looking at a prison term. It may sound ridiculous when I put it forth as a hypothesis but let’s not forget just how stupidly the Government has behaved with the IT Act. Drafters of potential legislations cannot become lazy when it comes to drafting the clauses on offences and penalties. 

The above are only some of the potential problems that I see in the Bill - there is a whole bunch more but I’ll leave that for another day. 

Until then, TGIF! Phew!

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The BDR compulsory licensing application and the BMS ‘Statements of Working’

It has been almost 6 months since BDR Pharmaceuticals filed a compulsory licensing application for the Dastinib patent owned by BMS. We had written about it over here. There has been little news about this CL and so we did a bit of prodding around. And as always the online records of the patent office are incomplete – so we do the next best thing – speculate! 

As per the documents we found on the Patent Office’s website, it appears that BDR Pharmaceutical’s application for a CL was in serious jeopardy, a few months ago. As per this petition for condonation of delay filed by BDR, four months, after the initial application for the CL was filed in March. Apparently, in May, the CG had issued a notice to BDR informing it that it had not made out a prima facie case for grant of a CL – if a prima facie case is not made the CG can reject the CL application. I’m not quite clear on what happened next but BDR appears to have tried re-negotiating a voluntary licence with BMS, after which it submitted more information and a request for the Controller to find a prima facie case for grant of compulsory licence. This last request appears to have been made after some deadline because of which it was accompanied by an application for condonation of delay. We don’t know what happened after this petition. 

While we are on the topic of Dastinib, we might itself point out the manner in which BMS has been filing its Form 27 or statement of workings. Here’s an affidavit from BMS explaining the delay in filing a Form 27 for the year 2008, four years later in 2012. If that delay was not enough, BMS filed the Form 27 for 2012 on July 31, 2013 i.e. four months after the March 31, 2013 deadline. 

May I add that we had mailed the Patent Office on 30th July, 2013 asking for a copy of the Form 27 and voila – the very next day BMS files a Form 27 with a bland Rule 137 petition without any reasons for the delay in filing the same. Why is the Patent Office allowing these Rule 137 petitions without passing any reasoned orders?

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Satyajit Ray's sketches and copyright controversies

A copyright row appears to have started between the Satyajit Ray Society and the Delhi Art Gallery, that is organising a countrywide exhibition, which is currently at Kolkata. A catalogue of the exhibition, named Satyajit Ray and Beyond which contains more than 200 images of Satyajit Ray's life and work is at the heart of this controversy. Most of the photographs are those that have been taken by the prominent photographer, Nemai Ghosh who is believed to have the largest collection of Ray photographs. The copyright dispute is not connected to Mr. Ghosh's photographs at all. The controversy revolves around 13 photographs in the catalogue- photographs of sketches of set designs and costumes that were done by Satyajit Ray himself and the copyright for which is vested with the Ray Estate, which is held jointly by Bijaya Ray and Sandip Ray, the widow and son of Satyajit Ray.

After this catalogue came to the knowledge of the Satyajit Ray Society in March, the Society CEO has written to the Delhi Art Gallery, protesting against this violation of the copyrights. As per the current position, written permission of the copyright holder is required for the publication of even the reproductions of the sketches. In such a scenario, the fact that the permission of the copyright holder was not sought by the Delhi Arts Gallery becomes prominent.

As a result of the protest raised by the Society, the Delhi Art Gallery has expressed interest to attribute credit to the Society and the Ray Estate. However, the Society insisted that those 13 photographs should be removed from the catalogue and the exhibition. Consequently, they have been removed from the exhibition. However, they remain in the catalogue as of now. Nemai Ghosh has however, stated that they would be removed from the catalogue also in future.

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Rihanna's victory in the Topshop T-shirt case

On the 31st of July, 2013, the Chancery Division of the England and Wales High Court decided the dispute between Rihanna and Topshop's parent company Arcadia, regarding the use of the singer's image on their T-shirts. Rihanna's claim was based on the tort of passing off.

Rihanna's claim of passing off, to be successful, requires satisfaction of three conditions- firstly, Rihanna must have goodwill and reputation among the relevant members of the public, secondly, there must have been a misrepresentation to the extent that would deceive the public into thinking that the T-shirts were authorised by Rihanna and thirdly, the misrepresentation should cause damage to Rihanna's goodwill.

On the first ground, the Court held that Rihanna had goodwill and a reputation not just as a pop star but also as a style icon especially among females in the age group of 13 and 30.  Rihanna had announced in 2012 that she was going to be designing clothes for the company River Island. Her name was a registered trademark and she had a brand logo known as the R slash logo. While the presence of the R slash logo and her name on a merchandise clearly indicates that such merchandise is endorsed by Rihanna, its absence, the Court held, could not conclusively establish that the goods were not endorsed by her.Therefore, the Court held that the Rihanna had sufficient goodwill to satisfy the first test under the claim of passing off.

With respect to the second test of misrepresentation, the issue revolved around whether the public would understand these T-shirts as having been endorsed/authorised by her or  whether they would view the T-shirts as "merchandising", where the goods are not usually considered to be authorised by the artist concerned. As this is an issue that has to be primarily decided on the facts and circumstances of the case, the Court looked at the image on the T-shirts in question. The image on the T-shirts had been taken during a famous video shoot of Rihanna in Northern Island for her single "We Found Love" from her 2011 album "Talk that Talk". The Court on the facts held that the image on the T-shirts could be understood by her fans as  a "publicity shot for a then recent musical release". The Court stated that it was extremely likely that this image would be understood by her fans as a part of the marketing campaign for her music release. Therefore, the Court concluded that  "a substantial portion of those considering the product will be induced to think it is a garment authorised by the artist." Such persons would buy the T-shirts, according to the Court because they either consider the garment to have been approved of by Rihanna or for the perceived value of her authorisation. In both these instances, the consumers would have been deceived and the second prong under the claim of passing off is satisfied.

The Court then stated that if a substantial number of people are deceived into buying the Topshop T-shirts under the mistaken belief that they were endorsed by Rihanna, then this would be damaging to the claimant's goodwill. This is because it would result in losses of two kinds to them, a loss of sales to Rihanna's merchandising business and a loss of control of her reputation in the fashion sphere. The Court rightly noted that it did not make a difference to the damage caused whether the T-shirts were of high quality or not as it was the claimants' right to decide what garments the public must view as endorsed by Rihanna.

Therefore, the Court noted that, in light of the facts and circumstances of the present case, Topshop's sale of the T-shirts with Rihanna's image without her approval amounted to passing off. However, the Court warned that the mere sale by a trader of a garment with the image of a famous person would not by itself amount to passing off. In the instant case, it amounted to passing off because of the specific facts and circumstances therein.

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