From the desk of Dr. Mohan Dewan | Assisted by: Adv. Aboli Kherde, Adv. Sachi Kapoor & Adv. Shubham Borkar
In order to encourage small and medium enterprises (SMEs) to protect their rights in their inventions, the Australian Government had introduced “innovation patents” in 2001. However, the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill, 2019 (the Bill) aimed at abolishing the “innovation patents” system in Australia. The aforementioned bill has been passed through both houses of the Australian Parliament and is now enacted into legislation from 26 February 2020 by Royal Assent1.
Australia has 2 types of patents which can be registered: a standard patent and an innovation patent. a standard patent and an innovation patent.
However, the government recorded that the innovation patent system did not have as many takers as was anticipated. People started preferring standard patents for their longer patent term: the term of a standard patent is 20 years and that for innovation patents is a mere 8 years. Further, for enforcing an innovation patent after being granted, it must clear the post grant certification examination process.
The amendment has been brought into effect to phase out and subsequently abolish Australia’s “innovation patent’s” system. Various sources report that there was strong opposition against the passing of this Bill, especially by small and medium sized entities. It is anticipated that the abolition of innovation patent will restrict patentable subject matter.
1Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020
It is without doubt that trademark attorneys provide a yeoman service in society, in assisting trademark owners in the protection of their trademarks.
Whilst providing this service, the attorney must ensure that on the one hand he or she protects the interest of the client but on the other hand the society casts a duty upon the attorney, that the practice of the attorney is ethical and does not hurt the sentiment of any section of the society. Sometimes attorneys forget this duty in the zeal of an opportunity and act unethically on behalf of a client.
The recent spate of filings after the COVID 19 pandemic is an example. It is a startling fact that the Chinese Trademark Office (CTO) has received around 1,000 applications for registration of COVID-19 related words which includes
1. Vulcan Mountain the name of the Wuhan’s first COVID-19 Specialist Hospital)
2. Thunder Mountain the name of the Wuhan’s other COVID-19 Specialist Hospital)
3. Remdesivir the name of an antiviral drug.
4. Li Wen Liang the name of the (whistle blower) ophthalmologist working for Wuhan Central Hospital who died due to COVID-19 infection.
5. Xin Guan, Xin in Chinese means New, Guan means Coronavirus.
As a result of this the CTO screened the trademark agencies which were involved in the filings.
A Trademark agency represented its clients and facilitated the application for the trademarks Vulcan Mountain and Thunder Mountain. Consequentially, the Chaoyang District Market Supervision Bureau started investigation on the agency and on 11th march 2020 it ordered the agency to stop their illegal acts immediately. A fine of 100,000 RMB (approx. 10, 55,320 INR) was also imposed on the trademark agency under Articles 19 and 68 of the Chinese Trademark Law.
Importance of these two hospital names
These are not ordinary hospitals. These hospitals were built in just ten days during the peak of the Wuhan corona virus outbreak. Millions of people around the world have witnessed their construction live. Everybody is startled with the speed of Chinese engineers. These names had a symbolic significance for the people of China. Tradeamark Application for these names were considered intolerable
Provisions of Chinese Trademark Law
Relevant paragraph 3 of the Article 19
“A trademark agency shall not accept the entrustment of a principal if it knows or should have known that the trademark entrusted by the principal for registration application falls under any of the circumstances prescribed by Article 15 and Article 32 of this Law.”
A trademark agency that commits any of the following acts shall be ordered to make correction within the prescribed time period by the relevant administration for industry and commerce, be given a warning, and be subject to a fine of not less than RMB 10,000 but not more than RMB 100,000; its primary person-in-charge subject to direct liabilities and other personnel subject to direct liabilities shall be given a warning and be subject to a fine of not less than RMB 5,000 but not more than RMB 50,000; where criminal offenses are constituted, criminal liabilities shall be investigated for in accordance with the law:
Fabricating or altering legal instruments, seals or signatures, or using fabricated or altered legal instruments, seals or signatures during the handling of trademark-related matters;
Soliciting trademark agency business by defaming other trademark agencies, or disrupting the order of the trademark agency market by improper means; or
3) Violating Paragraph 3 or Paragraph 4 of Article 19 of this Law.
Any acts under the preceding Paragraph as committed by the trademark agency shall be recorded in its credit files by the administration for industry and commerce; under grave circumstances, the Trademark Office or the Trademark Review and Adjudication Board may concurrently decide to stop accepting the trademark agency business handled by the trademark agency, and shall make an announcement thereon.
The trademark agency shall bear civil liabilities in accordance with the law if it violates the principle of good faith to the detriment of the legitimate rights and interests of a principal, and shall be given disciplinary sanctions by the trademark agency industry association pursuant to its articles of association.
As per the above provisions of the Chinese Trademark law the trademark agency should have ideally advised the applicants to not file the above trademarks or should have refused to represent the applicants. On the contrary, it facilitated in applying trademark applications in classes 1, 2, 3, 5, 16, 19, etc.
Liability of the Applicants
Applicants won’t be spared and shall also be punished in a separate procedure by the District administrations of their respective jurisdictions in the forms of warning, fine, and/or credit penalty.
Incidentally Mediart Lifesciences Pvt. Ltd. applied for a trademark for the word COVID in 2015, this trademark was accepted and published by the Indian Trademark Registry and the trademark is presently opposed by Neon Laboratories.
Indian Record Manufacturing Co. Ltd. (IRM) filed a suit to refrain Ilaiyaraaja from selling his musical works for all his songs in various films produced prior to 2000 by IRM to Agi Music Sdn Bhd.
IRM is a music company engaged in production, distribution and sales of music albums in various forms. IRM acquired the copyright with respect to 30 feature films from its producer directly under an agreement with the producers which entitled IRM for production, reproduction, sale, use and performance including broadcasting throughout the world by any means. IRM was exploiting the right so acquired by making copies of the work in various forms. Ilaiyaraaja is the composer of the songs which are a part of the 30 feature films mentioned above and hence claimed copyright over the musical work being the composer/creator of the work. Ilaiyaraaja contended that in the absence of the agreement between him and the producers of the films, he cannot be injuncted from selling the rights of his musical works.
IRM as an assignee has the exclusive right to exploit the work as it has been assigned the copyright of the musical work by its producers. As per provisions of the Copyright Act, 1957 (the Act) producer is the first owner of the copyright if there is no agreement to the contrary, as it is the producer, at whose instance the cinematograph film is made. The right of publication or reproduction of the work for publication vests only with the employer (producer). IRM being rightful assignee of the copyright shall be treated as the owner of copyrighted work.
In his response, Ilaiyaraaja denied (as the other two defendants remained ex-parte) that the producers of the films are the first owners of the musical compositions and the sound recording which have been composed by him. He further contended that IRM being a third party to the contract between him and the producer and such third party cannot impeach his copyrights as author. His main contention was that the film producer although has right under Section 14(1) (c) of the Act in the cinematograph film, however, the producer cannot violate the copyright of the composers in the song.
Important Questions of Law that were answered in this case
1. Who is the author and the owner of the musical work and sound recording contained in the Cinematograph Films under dispute?
The Hon’ble Court explained that it is the producer who is the first owner of the cinematograph film; however, in case of musical work in isolation the composer being the author would be the owner of the work. However, this situation changes when the song becomes a part of a cinematograph film as a sound recording. Sound recording is a composite work and the author is the producer of the cinematograph film as per provisions of Section 2(d) (v) of the Act. The Hon’ble Court further held that prior to amendment Act 38 of 1994; the inclusive definition of cinematograph film includes the sound track, if any. Thus, the first ownership of the musical work in a cinematograph film vests with the producer, in the absence of any agreement to contrary.
The Court then went on to explain the logic behind vesting of first ownership of the copyright of a Cinematograph film with the producer. It explained:
“Cinema is a blending of multiple intellectual work like script, music, lyric etc., with the contribution of the performers like actors, singers etc. The producer is the person who takes the initiative and responsibility of lending several intellectual works and performing artists. For the said purpose, the producer invests and engages the authors of the intellectual work as well the performers. On blending several intellectual works and the performance, he becomes the first owner of the cinematograph film. It is he who can desegregate the blending, if necessary to assign the copyright to others under Section 19 of the Act.”
With respect to audio rights in a particular song it was held that “the music as well as the lyrics are two distinct intellectual works. The music composer cannot have any right over the lyrics and vice versa.” Hence it is the producer who has the rights over the song used in a cinematograph film.
Burden of Proof: The Hon’ble Court held that the Burden of proof is on Ilaiyaraaja to show that he had any contract with the producer by which composer he has retained the copy right of the Sound Recordings, in absence of which Producer will be the owner of the copyright.
2. What rights does the Composer retain?
Upholding the verdict of Agi Music Case2 , the Hon’ble Court held that the composer only has special rights of protection from distortion, provided in Section 57 of the Act and none else.
3. Will the right of the Producer of the film override the right of the Composer?
The Hon’ble court upheld the judgement on identical issue by Hon'ble Supreme Court judgment in Indian Performing Right Society Ltd Case wherein it was held that “the right of the composer or the lyricist can be defeated by the producer of a cinematograph film in view of proviso (b) to section 17 of the Act.”
In absence of any agreement to the contrary between the producer and Ilaiyaraaja, the producers of the respective films are the first owners of the copyright in the musical works and sound recordings. Through an assignment deed, IRM has obtained the copyright by assignment, being a written document signed by the assignor. Thereby, IRM has become the owner of the said copyright and have the right to exploit the same.
In the Copyrights Act, the meaning of the word ‘owner’ and the word ‘author’ are neither interchangeable nor synonyms. They connote different meaning and different persons. A music composer is the author of the work, but not the owner of the work unless the producer who employs the composer expressly gives up his right of ownership in favour of the Composer. IRM is the holder of the agreements assigning the copyright to exploit and is hence entitled for the injunction relief prayed for.
22019 SCC Online Madras 1960
With the advancement of technology, websites can be hosted on servers which are located and controlled from outside the country. In such cases, it becomes difficult to track down such servers or website owners if they are involved in unlawful activities. The swift summary rulings of the Delhi High Court have encouraged entities such as Disney, Hindustan Times, Star India, etc. to take action against copyright infringers for broadcasting infringing content on their websites. The Court has been passing back to back orders declaring various websites, streaming content without the permission of the copyright owner as “Rogue Websites”.
The Delhi High Court’s recent judgment in Star India Pvt. Ltd. vs. Moviestrunk.com & Ors. dealt concerned with the copyright infringement of the cinematograph film ‘Mission Mangal’. Star India, the owner of the copyright in the film ‘Mission Mangal’, has alleged that the defendant-websites were hosting, streaming and broadcasting films and series without proper authorization from the copyright owners and making it freely available for users to download. Star India filed a suit for copyright infringement and prayed that the infringing websites be declared as “rogue websites”. Websites which operate primarily with the purpose of committing or facilitating copyright infringement by broadcasting content without the consent of its owners are rogue websites. These websites almost never display the details of the persons owning the domain name. Generally, these websites also do not respond to take down notices given by the courts directing them to remove infringing content.
The Court observed that the film streaming on these websites was Star India’s copyrighted film. It also observed that neither had the owners of infringing websites responded to Star India’s take down notices, nor had they appeared before the court when it issued summons. On 05.08.2019, an ex-parte ad interim order was granted against the rogue websites. Star India also prayed for summary disposal of the suit, based on the evidence it submitted to the court, as the identity of the website owners could not be found.
In February 2020, the Court granted an ex-parte decree of permanent injunction restraining these rogue websites from publishing any infringing material and awarded actual costs of suit to Star India. The Court also mandated the Internet Service Providers (who were made party to the suit), to suspend the domain name registration of domain names and ensure that access to these rogue websites is blocked.
National Geographic, the renowned channel for nature and wildlife content is famous for its magazines, breath-taking photographs from wilderness and their patiently shot video series giving us a sneak-peak into the lives of various organisms. Have you ever thought why such a wilderness loving television channel have a simplistic yellow rectangle as its logo? Well, the logo signifies the start of the venture. National Geographic started off as a magazine. The first issue of National Geographic was in October 1888. The magazine cover had a specific yellow rectangular border. As the magazine gained popularity, the public associated National Geographic/ Nat Geo with this peculiar yellow border. Now, why we found this interesting is because, this is a classic example of how trade dress or product design became so popular that it was adopted as a trade mark!
Images sourced from:
We do not claim any copyright in the images. They have been used for representational purposes only.
With the onslaught of the COVID-19 and the requests, mandates, directives and government initiatives to adopt Social Distancing and self-quarantine, the word “Quarantine” has become the most spoken word, after Corona, of course. One must understand that the origin and essence of the word “Quarantine” and implement it sincerely. The word originated somewhere in the 14-15 Century in the Venetian language in Europe. The original word was ‘quarantena’, meaning "forty days". In those days, when ships came ashore after a long voyage, the people on board would remain in isolation for 40 days, i.e. Quarantine. This was to avoid bringing any communicable diseases to the locale. In some cases, it was practiced for 30 days and was known as ‘trentine’. This practice was most prevalent during the times of Plague.
If a ship which was under Quarantine, it had a lemon and black colored flag to indicate it.
Interestingly, it shows us the use and significance of marks, logos to indicate societal practices.
We urge our readers to take precautions, remain correctly informed, avoid panicking and take precautionary medical care.