From the desk of Dr. Mohan Dewan | Assisted by: Adv. Aboli Kherde
As per the Copyright laws, a ‘derivative work’ is a work based on one or more pre-existing works. Music arrangements, language translations, motion picture renditions of literary material or plays, reproductions of well-known art are some of the examples of derivative works. Besides these, there exists another type of derivative work which is known as a ‘new edition’ of a pre-existing work wherein the editorial revisions and other modifications represent an original work, as a whole. In order to be eligible for attaining a copyright, a derivative work must incorporate the pre-existing work in entirety and necessarily contribute something new and original content to that work.
As per the United States Copyright Office, in any scenario wherein a copyrighted work is used without the permission of the copyright owner, the copyright protection shall not extend to any part of the work in which such material has been used in an unlawful manner. Such unauthorized adaptation of a work constitutes copyright infringement.
‘Sports Illustrated’’s swimsuit model Genevieve Morton, has alleged copyright infringement and sought at least $10 million in damages against American microblogging and social networking service Twitter.
According to her lawsuit filed on September 3, in the United States District Court for the Central District of California, both Twitter and TweetDeck (a social media dashboard application for managing Twitter accounts) have been listed as defendants. Moreover, Magic Pony Technology, a photo-algorithm company acquired by Twitter in 2016, has also been listed as a defendant.
Morton has accused the companies of using the ‘saliency algorithm’ (which means to ‘stand out’ or highlight the region upon which people's eyes tend to focus primarily) for cropping and altering her images without her permission, thereby creating an unauthorized derivative work.
Morton, who has over 80,000 followers on her official Twitter account, has sued Twitter in the previous year for a similar instance, wherein another un-associated account, had posted two of her copyrighted photos on Twitter without her permission. Morton thereafter sent take-down requests with regards to both the photographs. However, according to the lawsuit, Twitter had caused a lot of delay in removing her copyrighted material, as one removal took about 12 weeks, while the other took about 5 weeks. That case is currently ongoing.
Reportedly, on May 24, 2021 the International Federation of the Phonographic Industry (IFPI) on behalf of Sony Music Entertainment had sent a complaint alleging copyright violation to Twitter against the Union Information Technology Minister of India Ravi Shankar Prasad. Twitter thereafter, took down Mr. Prasad's tweet and it is no longer available within the public domain now.
It is pertinent to note that according to Twitter’s ‘Transparency Centre’, between July-December 2020, the company has received about 170,000 takedown notices for infringement of copyrighted material.
A. Tamenglong Oranges
Originating from the Tamenglong district of Manipur, these oranges are popular for their sweet taste and acidic nature. These Tamenglong oranges contribute to more than half of the Manipur’s annual orange production. The product has been promoted by the state in the Orange festival held in December since over a decade
B. Hathei Chillies
Grown by the locals of the Sirarakhong village in the Ukhrul district of Manipur, the Hathei Chillies are consider to be ‘God’s gift’. It is believed that they were discovered by the villagers when they were hunting in the forests. The Sirarakhong Hathei is so popular that an annual festival is held to promote the chilli in August.
A. Alibaug’s White Onion
White onions are grown in Alibaug since ages with only traditional and genuine seeds. It has a special taste and color due to the soil texture in which it is grown and is different from the commonly available white onion. The white onions do not have a strong smell like the normal onions. The onion bulbs are tied in traditional plaits style and stored to keep the unique taste intact.
B. Palghar’s Wada Kolam Rice
Wada Kolam, also known as Zini or Jhini rice, is a traditionally grown in the Wada tehsil of Palghar, with the grain being off white in colour. Wada Kolam has been grown in Palghar for years. It is known for its small grain, aroma, taste and for being light for digestion. However, it is a low yielding crop.
A. Rajasthan’s Sojat Mehendi (Henna)
Sojat Mehndi originates from mehndi leaves grown in Sojat. It is naturally cultivated by rainwater for getting high lawsone content in the mehndi leaves. The leaves of the mehndi plant, bark, seeds and root are taken for medicinal use. It gets its special colour due to the soil and rain conditions of the region. The mehndi leaves have 2% more of the pigment lawsone than leaves grown elsewhere.
4. TAMIL NADU
A. Karuppur Kalamkari Paintings
Kalamkari paintings are made on pure cotton cloth, predominantly used in temples for umbrella covers, cylindrical hangings, chariot covers and asmanagiri (false ceiling cloth pieces).
B. Kallakurichi Wood Carvings
Kallakurichi wood carvings are unique form of wood carvings that have ornamentation and designs, derived from traditional styles by the craftsmen.
The World Intellectual Property Organisation (WIPO) defines geographical indication as “A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must identify a product as originating in a given place.” 1
In India, a GI is protected for a period of 10 years from its registration. However, one can renew the registration from time to time for 10 years at a time. By virtue of the registration, the registered proprietor, can restrict others from using the registered GI without permission by filing a civil or criminal suit for infringement of GI.
India has recently granted GI tags to various products hailing from the northern state of Uttarakhand. These indigenous products are granted GI tags to maintain their cultural importance in the fields of art and cuisine.
A. Kumaon’s Chyura Oil
Chyura Oil is extracted from the seeds of the Chyura plant. Natives of the Kumaon region of Uttarakhand have been extracting this oil using the age-old process since years. The entire traditional process of oil extraction is labour intensive. The bitter taste and the overwhelming flavour of Chyura Oil is what makes it different from others. Chyura Oil can be used in the making of candles, ointments, lip balms, and other beauty products.
B. Munsyari Rajma
Cultivation of Munsyari rajma is predominantly seen in the geographical region of Munsyari of the Pittoragarh district. Traditional farming and production methods have been practised by the village community for decades. This nutrient-dense native rajma is a staple of Indian cooking. This small sized kidney bean has a unique and subtle texture.
C. Uttarakhand Bhotia Dann
A Uttarakhand Bhotia dann (a hand-woven rug) is made by Bhotias, a Tibetan nomadic community in Uttarakhand. During winters, this community wanders in the Dhunda region in search of wool to weave these rugs.
D. Uttarakhand Aipan
Hailing from the Kumaon region of Uttarakhand, Aipan is a ritualistic folk art. It is created to memorialise auspicious moments, festivals, and even rites carried out upon the death of a person. It is locally believed in Kumaon that the art form provides protection against evil. While the art form was once only found on the floors and walls of homes, it is now found in a variety of everyday goods and clothes.
E. Uttarakhand Ringal Crafts
Uttarakhand Ringal is a kind of bamboo that is found in abundance in thr Garhwal mountain range of Himalayas. Ringal bamboo is considered to be socioeconomically and ecologically important as it a primary source of livelihood for the locals. Ringal weaving is an age-old craft in Uttarakhand, with nearly every family involved in Ringal weaving activities throughout the state.
F. Uttarakhand Thulma
The Uttarakhand Thumla blanket is recognised for its luxurious fur and intriguing patterns and is woven on a pit loom or a frame loom. It is made up of woven fabric which is cut into large strips and sewed together. A blanket stitch is used to complete the edges. These blankets were originally woven with undyed wool, but due to the increasing demand for the blanket in different colours, they are now woven with red, blue, pink, black, and green dyed wool.
1Delhi District Court M/S Greenply Industries Ltd vs M/S New Krishna Glass & Hardware on 22 September, 2021
Trademark law prescribes trademarks to be non-descriptive of the goods and services that they are sought to be registered for. Marks such as “Apple” for electronics, “Dove” for bath products, “Mac” for cosmetics are the perfect examples. The Madras High Court has held that the brand CYCLE is unique with respect to incense sticks or Agarbathis. However, the Court was still not inclined to give a cross-class protection to the brand as it is a common English word.
N. Ranga Rao & Sons Pvt. Ltd. (hereinafter referred to as “Ranga Rao”) is the owner and registered proprietor of the mark CYCLE for Agarbathi. It wanted to secure its mark from being used by any other entity, claiming it to be a well-known mark. Thus, it filed an infringement and passing off suit2 at the Madras High Court against Sree Annapoorna Agro Foods (hereinafter referred to as “Annapoorna”) to restrain it from using the mark CYCLE for edible oils. Annapoorna is into manufacturing edible oils since 2009 under the trademark CYCLE.
Ranga Rao contended that it is the top manufacturer and supplier of incense sticks and cognate goods since 1948. The trademark CYCLE was adopted by Ranga Rao in the year 1954. It has a number of variations of the mark CYCLE, registered under its name, including but not limited to Cycle Brand, Cycle Brand Three in One with the device of Cycle. All these marks are valid and subsisting as they are registered. These marks have been used for several decades extensively with respect to a variety of goods/ services including but not limited to cosmetics, food products and the like. The trademark CYCLE is registered in class 29 and 30 for several food products such as jelly, jam, dairy and milk, dried, preserved and cooked fruits and vegetables. It is also registered in class 3 for Hair Oil. The artistic features of the mark are also protected under the Copyright Act, 1957.
Ranga Rao alleged that Annapoorna adopted a mark identical to theirs for edible oils. It further argued that Annapoorna’s use of CYCLE will cause a confusion with respect to the origin of the goods. Ranga Rao also sent a cease and desist notice to Annapoorna to restrain the use of the mark CYCLE by Annapoorna.
Annapoorna further claims that the term CYCLE is not a coined word but is a general English word. Use and adoption of such general words do not give exclusive rights to the applicant. It says that it is the prior user of the mark CYCLE with respect to edible oils and has better rights in it.
Annapoorna also claimed that Ranga Rao has filed trademark application in classes 29 and 30 for food products without any documentary evidence of use of the mark. The registration is made by it with mala fide intentions, claimed Annapoorna. Ranga Rao’s mark is liable to be cancelled on the grounds of non-use in classes 29 and 30, argues Annapoorna.
The Court held in favour of Annapoorna. It held that though Ranga Rao is a pioneer in the use of the mark for Agarbathi / incense sticks, it has no evidence of use in classes 29 or 30. However, Annapoorna has shown use since at least from 2010, hence proving prior use for edible oils.
As regards to the distinctiveness of the mark CYCLE is concerned, the Court held that it comes from not just the word or device of cycle but from the use of the combination of the words ‘CYCLE BRAND AGARBATHIS’ along with the oval with logo of cycle placed at the centre. Thus, Ranga Rao’s mark is related to Agarbathis and incense sticks and not food products. Therefore, the differences between the goods are very evident and palpable.
The Court further held that the marks have been coexisting for at least past 8 years, before the institution of the suit and can very well continue to do so. Therefore, it held that Annapoorna’s use of CYCLE is not mala fide and justified.
2N. Ranga Rao & Sons Pvt. Ltd. vs. Sree Annapoorna Agro Foods. CS. No. 259 of 2017. Judgment dated 17.08.2021
The purpose of a ‘trademark’ is to help people determine the source of a particular product or service. Infringement of a trademark or a passing off causes heavy losses to the reputation and goodwill of the actual owner of the trademark. In India, the Trade Marks Act, 1999 lays down the rules with regards to the registration, protection of the trademarks and imposes penalties against infringing parties.
Greenply Industries Ltd. (hereinafter ‘Greenply Industries’), is one of the leading businesses in the field of plywood, decorative laminates, and the like. It sought a permanent injunction against New Krishna Glass & Hardware (hereinafter ‘New Krishna Hardware’) for infringement of its registered trademarks including ‘GREEN’ and ‘GREEN PLY’ after finding that sub-standard goods, deceptively similar to its own products were being sold in the market by New Krishna Hardware. According to Greenply Industries, New Krishna Hardware was using the mark ‘GREEN FOREST’ which is deceptively similar to the mark GREEN for these goods.
Greenply Industries, the registered proprietor of various marks including ‘GREEN’ and ‘GREEN PLY’ etc. claimed that, on account of its high standards of manufacturing, extensive advertising/promotion, goods bearing the mark GREEN have acquired immense reputation and goodwill in India. When Greenply Industries had a survey conducted, New Krishna Hardware was found to have a large stock of products bearing the mark ‘GREEN FOREST’. Greenply Industries further alleged that, not only was New Krishna Hardware making retail sales but also supplying the impugned goods bearing the impugned mark to various other dealers, shopkeepers, and retailers in the markets of Delhi. It further stated that the impugned goods bearing the mark ‘GREEN FOREST’ are not the genuine products made by Greenply Industries and are manufactured with inferior quality material and processes which could be adverse to the interest of the consumers.
The primary issue for consideration was, whether a permanent and mandatory injunction restraining infringement of registered trade mark, infringement of copyright, unfair competition can be granted against New Krishna Hardware. Greenply Industries submitted that as per the report of the Local Commissioner appointed by the Court, 223 infringing products bearing the trademark ‘GREEN FOREST’ were found at the premises of New Krishna Hardware. The Commissioner seized these goods.
Further, even after the service of summons and repeated calls, none appeared before the Court on behalf of New Krishna Hardware. Therefore, the suit proceeded ex parte.
After, considering all the submissions, the Delhi District Court (Tis Hazari) observed that, “Greenply Industries had succeeded in bringing on record that the mark ‘GREEN’ is registered in their favour and that New Krishna Hardware was found using a deceptively similar mark, similarly passing off counterfeit products as products being of Greenply Industries“.
The Court having sided with this interpretation decreed the suit in favour of Greenply Industries and granted a permanent injunction against New Krishna Hardware thereby restraining it along with its associates, agents etc. from using, selling, displaying, advertising in any other manner or using the impugned trademark ‘GREEN FOREST’ or any other mark identical or deceptively similar to Greenply Industries’ registered mark in relation to plywood, wood, and allied products. Furthermore, Greenply Industries was also entitled to recover INR 1 lacs from New Krishna Hardware considering the illegal profit gained by it.
DFM Foods Ltd (DFM) approached3 the Delhi High Court seeking an ex parte injunction to restrain Ishvi Food Private Limited (Ishvi Food) from infringing DFM’s registered trademarks 'CURLS' and 'CRAX CURLS'.
DFM claimed that its predecessor in business introduced Crax Corn Rings in 1984. DFM was incorporated in 1993. aIt has registrations for the trademarks 'CURLS' and ‘CRAX CURLS’ in Class 30 since 2016.
Ishvi Food is engaged in manufacturing and selling fryums and other snacks under the brand name Modi's. DFM Foods came to know through its distributors that Ishvi Food has recently started using the Curls along with Modi’s on its corn-based snacks.
According to DFM, Ishvi Food had uploaded a photograph of a snack under the mark 'CURLS' in July 2020 on its Facebook and Instagram pages. DFM argued that Ishvi Food is using the mark CURLS which is identical to DFM’s registered trademark CURLS in respect of identical products, namely, corn-based snacks.
A comparison of the two marks has been reproduced here for ready reference of the readers.
We do not claim any copyright in the image used. It has been used for academic and representational purposes
The Court, after comparing the two product packagings, stated that by using an identical trademark 'CURLS' for somewhat identical products, Ishvi Foods is prima facie infringing the rights of DFM .
Hence, the Court granted an exparte injunction in favour of DFM Foods restraining Ishvi Foods from manufacturing, selling, advertising, etc. its corn-based products or any other products using the trademark 'CURLS' or any other mark that is deceptively similar to DFM’s registered trademarks till further orders.
3DFM Foods Ltd vs Ishvi Food Private Limited & Anr on 13 September, 2021- CS(COMM) 432/2021
No one can yell like Tarzan!
Did you know that the yell that is typically identified with Tarzan has been trademarked by Edgar Rice Burroughs, Inc. in 2013 as a sound mark! The mark is a yell consisting of a series of approximately ten sounds, alternating between the chest and falsetto registers of the voice.
This is a graphical representation of the Yell! Sound marks are a rarity in India and still not very commonly registered in other countries either!
-Adv. Chinmay Pawar
Ken Gharial Sanctuary: Panna and Chhatarpur, Madhya Pradesh
Location of Ken Gharial Sanctuary (Source: Google maps)
Ghadiyal or Gharial means an alligator in English. It is a narrow-snouted crocodile-like reptile mainly found in fresh waters. This species is unique to the Indian subcontinent. Their primary source of food is fish. It is listed in the list of endangered species in India.
Ghadiyal or Indian Alligator
In order to protect this endangered species, a sanctuary was established in 1981 in Panna & Chhattarpur districts of State of Madhya Pradesh in central India. It is located northeast of famous Khajuraho temples and north of Panna National Park. The Sanctuary is named after river Ken, which flows northwards to meet river Ganges. The Sanctuary is one of its kind in the world and spread over an area of 45,201 sq. km.