Mr. O.P. Gupta has been appointed as the new Controller General of Patents, Designs and Trade Marks. In the past Mr. Gupta has been associated with Maharashtra State Electricity Distribution Co. Ltd. as their Chairman and Managing Director.

Mr. O.P. Gupta is an Indian Administrative Service (IAS) officer of the 1992 batch and in his twenty three years of service he has held varied responsibilities in the capacity of ‘Inspector General of Registration & Controller of Stamps – Maharashtra’, ‘General Manager – BEST’, ‘Vice Chairman and Managing Director of MSRTC’, ‘Collector of Amravati & Satara’ and ‘Chief Executive Officer of Akola Zila Parishad’. Interestingly, immediately on appointment Mr. Gupta has issued an order of placing on the Guidelines for Examination of Computer Related Inventions in abeyance. We can hope that considering his diversified experience the Indian Patent & Trademark office can expect some much needed reforms in the coming few months.

The Navi Mumbai police department organized the ‘Cyber Safety Week’ from December 14-19 where they had invited experts in the field of cyber laws to educate students and netizens on various aspects of cyber-crimes. R.K. Dewan & Co.’s principal Dr. Mohan Dewan was invited to deliver a special lecture on combating Digital Piracy.

The menace of digital piracy has been on a rise; there is a surge in the cases filed for software counterfeiting, movie and music piracy. It is of utmost importance to educate people about such activities since many people are still unaware of the fact that downloading music/movies from websites, free of cost is an infringement of copyright. The event was a success in terms of creating awareness among the audience and there is a need for more such events to be organized in the future

Jay Walker is the 11th most patented living inventor in the world and this year was awarded as the ‘Inventor of the year’ by the Intellectual Property Owners Educational Foundation. His speech on the occasion drew attention on the core issues effecting the Patent Laws in the United States, we have analyzed his comments as applicable to Indian Patent regime as well; some of the key takeaways of his speech are:

— Trolls vs. Non-Practicing Entities: Mr. Walker in his speech stated that a troll cannot be equated with a Non-Practicing Entity (NPE); an NPE can include research and development companies, institutions, independent inventors etc. A major reason for patent trolls to flourish is the high costs involved in litigation and the smaller entities prefer to avoid litigation hence, end up making payments to the troll.

— Complicated Patent Systems: Mr. Walker in his speech stated that following the Supreme Court’s decision in Alice Corp. v CLS Bank the patentability of software in U.S.A. has fallen into a grey area. In India guidelines were issued to clarify when software can be patented but due to certain conflicting provisions between the guidelines and the Patent Act, the guidelines have been withdrawn. There is still a level of uncertainty when examining software for being granted patent. It is hoped that the revised guidelines will make it simpler for patent examiners to determine patentability of software.

— Positive Impact of Patent Laws: Mr. Walker in his speech stated that there is a notion that patents are money making tools alone. This applies to India as well, there is a notion that a patent right automatically refers to less accessibility particularly for pharmaceuticals. It is necessary for the industry players to educate the public that patents are intended to incentivize innovation and research which will further benefit the society.

The Indian authorities need to take note of Mr. Walker’s speech.

The online streaming of one’s favorite TV shows is one of the simple pleasures in life. The online streaming service technology works on the principle that while transmitting the information (digital content) the information is stored for infinitesimal period therefore; there is no unauthorized storing of information by the streaming service provider. This however does not mean that such service provider has steered clear from any possibility of copyright infringement; the U.S. District Curt of Colombia was faced with such issue in the case of Fox Television Stations Inc. v FilmOn X LLC.

This suit was filed by producers of TV shows against FilmOn X LLC an online TV show streaming service. It was claimed that the Defendant was infringing the copyrights of the Plaintiffs by unauthorized streaming of the shows. The U.S. Supreme Court in the case of Am Broad. Inc. v Areo, Inc. held that the Copyright Act forbids unauthorized retransmission of copyrighted programs over the internet even if such transmissions rely upon the use of separate antennas and data streams. S.111 in the U.S. Copyright Act provides for ‘compulsory copyright licensing’ for the cable systems since it is impractical to expect that every cable operator would contact the copyright owner for the license for TV shows. In light of this provision and the Areo decision the Defendants argued that they were eligible for applying for compulsory licensing as a cable company. The Court held that the defendant did not fall in the category of cable system since a cable system comprises of physical facilities that ‘receive and retransmit broadcast signals to paying subscribers through wires, cables, microwave, and other types of communication channels.’ It was quite evident that FilmOn X did not qualify under this definition of cable services because it relied on the internet, which is neither a tangible nor physical entity. Further, it was held that FilmOn X had also infringed the right of public performance of the Copyright owners by such unauthorized transmission.

This decision throws light on the stringent application of Copyright laws by the courts in U.S. The practice of illegal streaming affects the revenues of the entertainment industry and reduces the financial incentive to create new contents therefore, it is necessary for the courts to step in time and again and prevent such infringements.

In a bold and courageous move the newly appointed Controller General, Mr O.P. Gupta, has issued an order on 14th December 2015 stating that the guidelines for ‘Examination of Computer Related Inventions (CRIs)’, which was released in August 2015, are to be kept in abeyance until the discussion with the stakeholders is complete. The guidelines were released with the intent of removing any doubts over patentability of software in India but they left a grey area. Some contestable issues in the new guidelines were as follows:

— Mathematical Formula: S. 3(k) of the Indian Patent Act, 1970 expressly excludes mathematical formulas from being patentable invention. The guidelines side steps from this stance and allows room for patenting of mathematical formulas in the form of encoding/decoding, encryption and decryption. Thereby creating confusion between the Patent Act and the guidelines on CRI’s.

— Broad criteria’s of Patentability: The guidelines prescribe broad criteria for determining the patentability of computer programs these are:

• Novel hardware;

• Novel hardware with a novel computer programme, or

• A novel computer programme with a known hardware which goes beyond normal interaction with such hardware and affects a change in the functionality and/or performance of the existing hardware.

This issue has not been adequately explained in the guidelines and there is room for clarification.

— Example 8.4 in the guidelines cites an example of Computer related invention that can be patentable “a computer implemented method comprising: identifying one or more person names in a set of one or more documents, with each identified person name more likely to refer to a single person in a profession than other person names in the document: identifying descriptive language from one or more documents, based on the identified names; and identifying within one or more documents other person names that refer to persons in the profession, based on one or more portions of the identified descriptive language.” This example is arguably a business method and according to the Patent Act it cannot be eligible for a patent.

After their release the Controller received objections from some stakeholders following which the order for staying the application of the guidelines was issued. This is a welcome move since it gives the stakeholders an opportunity to get their concerns heard and resolved by the Concerned Authority. Also, a further revision will enable Patent Examiners to determine the patentability of Computer related inventions without any ambiguity; a uniform examination process will lead to more certainty for the Applicants of Computer Related Inventions.

Time is of the essence is not a mere boiler plate clause in a contract, it communicates a very important principle in the legal world –slightest delay can incur extra-legal expenditures. A recent example of this is the case of Colgate Palmolive Company and Anr. v Anchor Health and Beauty Case.

In 2007 Anchor filed a suit against Colgate alleging that Colgate had started selling its product in a new carton using a tooth device and using the phrase “White Allround Protection” similar to Anchor’s cartons consisting of the phrase “All Around Decay Protection”. The suit was titled for “restraining tortious acts of unlawful interference” against Colgate. In 2008, the mark “Allround” was registered in the name of Anchor with the trademark registry but this was not mentioned in the suit until 2011 when Anchor sought to amend the application and changed the nature of the suit to one for “restraining infringement of registered trademark/passing off….” This amendment application was allowed by the Hon’ble Single Judge at the Delhi High Court and this order was contested by Colgate before the Division Bench.

The Division Bench reversed the decision of the Single Judge. The suit was initially filed for similarity in trade dress but if the amendment was allowed it would escalate to a suit for infringement of trademark. The Court held that the Plaintiff had let 3 years pass before applying for the impugned amendment and this was seen as a clear case of sleeping over one’s rights. The effect of allowing the amendment would mean that the Respondent would be charged for infringing the Plaintiff’s rights since 2005 which was unacceptable. There have been various Supreme Court judgments rejecting such material alteration and this decision correctly applies these precedents.

Mimicry is the best form of flattery but mimicry in trademark laws comes with a heavy price. The Law of Trademarks extends to the digital space as well in the form of domain names. Recently the renowned TATA group found itself embroiled in a suit with such a cyber-squatter. In 2011 the Defendant created domain names http://www.cyrusmistry.co.uk and http://www.cyrusmistry.com . Mr Cyrus Mistry is the present Chairman of the TATA Group. In February 2012, the Defendant contacted the Plaintiffs for the purchase of the aforementioned domain names from him, lest it be sold to parties that could disparage the reputation of the Plaintiffs. The parties agreed to settle the issue amicably. The talks failed when the Defendant did not co-operate and cited frivolous technical issues involved in transferring the domain name to the Plaintiffs. The Plaintiffs filed a suit against the Defendant pursuant to which the Defendant again proposed to sell the domain names to the Plaintiffs for a considerable sum; this offer was not considered by the Plaintiffs. The matter was brought before the Delhi High Court for consideration.

The Court considered this act of cyber-squatting by the Defendant as an infringement of personality rights of Mr. Mistry. It was held that personality rights are recognized in India as a part of right to privacy. The Defendant was held to be guilty of the tort of passing off. The Court took a stringent view of the fact that the Defendant was fully aware that should the domain name be misused it would tarnish the reputation of the individual as well as the organization represented by him. The Plaintiff demanded that punitive damages be paid to them in this case since the Defendant continued to infringe Mr Mistry’s personality rights and would have put the TATA group in to peril if the domain name would have been misused. The Court was satisfied with the Plaintiff’s arguments and ordered for INR 5 lacs to be paid as punitive damages to the Plaintiff. Further, the domain name was ordered to be transferred to the Plaintiff.

Wise people learn from the mistakes of others, to repeat the same means to invite trouble. Recently, Parle Products filed a suit against Central Burner Industries for:

1. Trademark infringement;

2. Infringement of artistic work under Copyright Act; and

3. Passing off

The Defendants were using the mark ‘Parle’ and Parle (logo) for selling their gas burners. R.K. Dewan and Co. was arguing on behalf of the Plaintiff in the present case and the Court agreed with the Plaintiff’s contention that the Defendants were encashing on the reputation of the Plaintiff for selling their products and therefore, an order was passed restraining the Defendants from using the marks Parle and Parle (logo) for their goods and packaging materials. An Anton Piller order was also passed in favor of the Plaintiff and two Local Commissioners were appointed for seizure of infringing goods from the premises of the Defendants. The Local Commissioners upon the orders of the Court visited the premises of the Defendants and seized 80 boxes and one piece of Parle Burner, each box contained 10 pieces of burners therefore in total 801 pieces of Parle Burner were seized. These products are to be produced as evidence as and when required by the Court.

The District Court’s willingness to issue an Anton Piller order in this case shows that the Indian judiciary is willing to send out a strong message to infringers and the public at large to not take liberties with the existing law.

While it is seemingly easy to copy works from another, in the long run it is always better to create your own work. Originality of content is the prima-facie requirement of copyright law; it respects the creativity involved in creating a work. It has been an established principle since EBC v DB Modak that ‘sweat of the brow’ doctrine is no longer the criteria to claim copyright; the work has to qualify for the ‘skill and judgment’ test as well i.e. there must be certain amount of skill and judgment involved in creating a work, it cannot be a mechanical process. Also, it was held that the additional comments like head notes or summary of a judgment will qualify as a copyrightable work under the ‘skill and judgment’ test. In spite of this clear decision of the Indian Supreme Court, history repeated itself when www.casansaar.com was alleged to be copying editorial comments and headnotes to cases from Taxmann’s publications.

The Editorial comments and case headnotes are considered as ‘literary works’ under Section 2(o) of the Copyright Act, 1957. It was claimed by Taxmann that the works were a result of the skill and judgment exercised by their team/staff and hence, liable to be protected under S. 13(a) and 14 of the Act. Further, Taxmann submitted as evidence, two case laws where the editorial comments and headnotes had been allegedly copied by the Defendants. On examination of the evidence the Delhi High Court reached the conclusion that there was a prima facie case of copyright infringement and the defendants were restrained from infringing the copyright of the Plaintiffs and the infringing content was ordered to be removed from their website.

It has recently been reported that Director Ashutosh Gowariker’s upcoming movie ‘Mohenjodaro’ has found itself in a plagiarism controversy. Filmmaker Akshadatiya Lama has sent a legal notice to Director Ashutosh Gowariker. He has alleged that the script of the movie Mohenjodaro is similar to his script with the same name which he had completed in 1995 and discussed with his friend Jaswinder Saluja, an associate of Ashutosh Gowariker, who had shared the story with Mr. Gowariker.

Akshaditya Lama has claimed that his script has been registered online with the Ministry of Human Resources and Department of Higher Education under the Copyright Act. He claims that he has also registered his script with the Film Writers Association. These allegations have been refuted by the lawyers of the reputed director. The outcome of this allegation remains to be seen.