From the desk of Dr. Mohan Dewan | Assisted by: Adv. Shubham Borkar & Adv. Arjun Pradhan
These days we observe that a lot of social media ‘celebs’ voicing their opinions and commenting on public affairs. These social media ‘celebs’ include actors, sportsmen, influencers, and YouTubers. Are they empowered to do so, if not, and then what are the repercussion of their opinions or comments?
Recently, M. Maridoss, a popular Youtuber tweeted that the tragic demise of Gen. Bipin Rawat and other army personnel on 08.12.2021 was greeted with glee by those belonging to 'Dravidar Kazhagam' and 'Dravida Munnetra Kazhagam'. Maridoss in his tweet raised a question as to whether Tamil Nadu, under the DMK rule, was becoming another Kashmir. He expressed his apprehension that if the environment is conducive to breeding such anti-national groups, then there is a possibility of any conspiracy of humongous proportions being hatched. He demanded that the secessionist forces should be suppressed.
A District Coordinator of the IT Wing of DMK came across the tweet and filed a FIR against Maridoss for alleged offenses under Sections 124(A), 153(A), 504, 505(1) (b) & 505(2) of Indian Penal CodeMaridoss thereafter approached1 the Madras High Court requesting that the FIR should be quashed as his tweet was “an agonized response of a true nationalist”. He stated that he could not bear to see celebrations and overt expressions of joy from some parts in Tamil Nadu following the tragic event of December 8th. He also stated that he had taken down his tweet within a couple of hours and had not instigated any act of violence. He claimed that he is entitled to freedom of speech and expression guaranteed under Article 19(1)(a) of the Constitution of India. He stated that he has been falsely implicated because he is an acerbic critic of the ruling party of Tamil Nadu.
DMK’s District Coordinator claimed that Maridoss’s offensive tweet clearly attracts the offenses in question. Hence he cannot claim protection under Article 19(1)(a) of the Constitution. He argued that the right to freedom of speech and expression is not absolute and that it is very much subject to reasonable restrictions set out under Article 19(2) of the Constitution. In the present case, Maridoss had crossed the legal boundaries, his offending tweet caused disaffection and hatred towards a democratically and duly elected popular government. He further claimed that the comparison with Kashmir was not only unwarranted but also positively dangerous. He argued that Maridoss has made a conscious effort to instigate his followers to react violently so that a duly elected government can be toppled by alleging that the State government is supporting the separatists.
After hearing both the parties, Hon’ble Justice Swaminathan of the Madras High Court held, “A ‘YouTuber’ or any social media personality regularly commenting on public affairs would also be entitled to the very same rights which are accorded to journalists and the media under Article 19(1)(a) — Right to Freedom of Speech and Expression—of the Constitution.”
Justice Swaminathan further held that Maridoss’s post cannot be characterized as seditious. He said, “The petitioner’s tweet was never intended to subvert the government. He had only drawn the attention of the State government to certain nefarious tendencies brewing in the State. He has merely vented out his anxiety.”
Resultantly, the Court concluded that the registration of the FIR was illegal and no charge was made out against Maridoss and hence quashed the FIR. He referred to how the Turkish novelist and Nobel Prize winner Orhan Pamuk differentiates between a naive and sentimental novelist. "The naive write spontaneously almost without thinking, not bothering to consider the intellectual and ethical consequences of their words and paying no attention to what others might say. The sentimental writing is a product of deep reflection," " the Judge explained. He held that Maridoss appears to have made a "naive tweet" in Pamuk’s sense:"Probably realizing it, he took it down within a few hours.” he added.
1M. Maridoss v. State represented by The Inspector of Police, CCD-III Police Station, Madurai City. (Crime No.21/2021) & Anr. Crl.O.P (MD)No.19872 of 2021 Dated 14-12-2021
As per news reports2 , Mr. Rana Kapoor (hereinafter referred to as ‘Kapoor’), co-founder and former chairman of Yes Bank has filed a suit against Penguin Random House India Pvt. Ltd. (hereinafter referred to as ‘publishing company’), Furquan Moharkan (hereinafter referred to as ‘Author’) restraining them from selling and distributing the book titled “The Banker Who Crushed His Diamonds: The YES Bank Story” which is based on his life. He also sought a declaration and permanent restraint against the Jodhpur-based film production house Almighty Tech Films and its two designated partners involved in the process of adapting the book into a movie; restraining them from releasing and marketing any film that has a direct or indirect relation or reference to him without his prior consent.
He claimed that the book is “defamatory” and alleged that the Author has made various baseless and scurrilous allegations against him without any basis and has portrayed him as a “villain”, a “control freak” and a “fixer”.
Kapoor contended that the book (available online and offline) was written without any inputs from him or his family, and the Author has relied only on the statements of undisclosed witnesses. He further contended that Almighty Tech Films is currently in the process of producing a biopic based on the book, which is likely to cause further prejudice against him.
In 2020, Kapoor was arrested by the Enforcement Directorate (ED) for an alleged scam at Yes Bank and was the accused in various cases filed by the ED and the Central Bureau of Investigation (CBI). He was allegedly taking illegal money in lieu of granting loans to several companies including Dewan Housing Finance Corporation Ltd. (DHFL) and Cox and Kings Ltd. He is in judicial custody since March 2020.
It was claimed by Kapoor that his right to reputation as well as a fair trial are being jeopardized by the Author, publishing company, and the production house for commercial gains. He further added that he has not been found guilty till date by any Court and like any other citizen of the country; he has a constitutional right to be presumed innocent until proven guilty.
Kapoor pointed out that the courts had protected the former CEO and managing director of the ICICI Bank, Chanda Kochhar in similar circumstances when an unauthorized biopic about her was about to be released, and that he too, is entitled to similar protection.
Based on the above contentions, a Delhi District Court presided by Hon’ble Additional District Judge Rajesh Kumar observed that a person is entitled to be treated with dignity. Even if he is a public figure, reputation is a cherished value and an element of personal security. Hence portions of the book which would make readers think of Kapoor as an ambitious villain, are to be restrained from being published and distributed for sale, until the court decides the matter on merits. Saying this, the Court has reportedly restrained the publishing company from publishing the book and Almighty Tech Films from releasing and marketing any film that has a direct or indirect relation or reference to Kapoor without his prior consent until the matter is resolved on merits. The matter is now listed for hearing on January 13, 2022.
Since the last few years, the Delhi High Court has seen an increase in the number of patent infringement cases. A large number of suits were filed in many scientific and technical disciplines such as medicines, diagnostics, mechanical engineering, telecommunications, electrical/electronics, wind technology and so on. In an effort to address the increasing difficulties surrounding patent suits and proceedings, the Delhi High Court, released a set of Rules which focuses on regulating patent suits in the public domain. Suggestions and opinions from the public wisth respect to the draft rules were also invited.
By simplifying litigation and expanding the procedural flexibility of the law, the draft rules (hereinafter referred to as “Rules”) demonstrate an adaptation to the technology revolution. It is mandated by the Rulles that once published, they would apply to all patent cases in India that are pending before the Delhi High Court's Intellectual Property Division.
• The Definition clause Rule 2(b) of the Rules states that, all proceedings seeking relief under Section 48, Sections 105, 106, including counterclaims under Section 64, Sections 108, 109, and 114 of the Patents Act, 1970 (hereinafter referred to as “the Act”), will be governed by the provisions of the Rules. In addition, the Rules permit for the filing of a Priority Patent Application i.e. "A parent application, a Convention application, or a Patent Cooperation Treaty application from which the suit patent claims priority," (according to Rule 2(j))
• Rule 3 of the Rules describes the mandatory elements of a pleading, as under:
1. Essentials in a Plaint: The Plaint must include a short history of the invention and important technical data, as well as information on ownership, associated suits/applications arising from the innovation, and the suit's essential details.
2. Essentials in a Written Statement: The Written Statement must include reasons that completely refute the infringement accusation. While claiming non-infringement, the written statement must include a technical analysis with details of the defendant's product/process. Furthermore, if the defendant wishes to seek a licence from the patentee, the quantity for such a licence must be specified. Details of the allegedly infringing product's or process's sales must also be disclosed.
3. Counterclaim: The arguments stated under Section 64 of the Act must be specified in the counterclaim. The accusation of a lack of uniqueness or imaginative step must be backed up with 'art documentation’. If a counter-claim for non-infringement remedy is submitted, the Act's provisions for a Suit under Section 105 of the Act must be followed.
4. Replication: The first step in replication is to describe the Plaintiff's and Defendant's cases. Next step is to deliver a para-by-para response to the written statement.
5. Declaration of non-infringement: The scope of the claims, the product/process being implemented by the Defendant alleged to be non-infringing, and the technical/legal grounds on which the declaration is sought must all be specified in an action seeking a declaration of non-infringement under Section 105 of the Act.
6. An injunction suit: A suit for an injunction against groundless threats brought under Section 106 of the Act must include the nature of the threat, whether oral or written; details of any challenge to the patent's validity and an invalidity brief filed in response to the challenge; and details of any correspondence between the parties.
7. Highlighting important points: It is important to highlight that following rigorous directives and standards for the administration of relief petitions under the Act, as it saves judicial time and resources while also improving the quality of the court's judgments. Rule 4 describes
• The Rules not only provide for the specifics and documents that must be attached to a pleading mentioned in Rule 3 but also specific instructions that the Court may issue at each step.
• Under Rule 12 of the present Rules, "compulsory mediation" is mentioned. It states that if the court believes that the parties should undergo mediation at any time throughout the proceedings, it shall appoint a mediator/panel of mediators and technical experts to explore the road of peaceful conflict settlement.
• The Court has been given authority under Rule 13 to compile a roster of scientific advisers who will help the court in the adjudication of patent cases. The list will be reviewed on a regular basis. When an expert's aid is requested, they must provide a statement of integrity and impartiality.
• Rule 16 allows for summary adjudication of patent disputes in the following circumstances:
(a) If the patent's remaining term is shorter than 5 years;
(b) The former Intellectual Property Appellate Board, any High Court, or the Supreme Court has previously granted or upheld a certificate of validity for the abovementioned patent;
(c) If the Defendant has infringed on the same or a related Patent before;
(d) If the Patent's validity is acknowledged but only infringement is disputed.
By simplifying litigation and expanding the procedural flexibility of the law, the Draft Rules demonstrate adaptation to the technology revolution that has affected the industrial sectors throughout the globe. Furthermore, the Draft Rules clearly indicate the list of required documents that the plaintiff must submit, which saves the Court’s time that would otherwise be squandered in adjournments due to the lack of paperwork.
With the ever-increasing globalization, the importance of Patents as an exclusive right granted for inventions is increasing at a significant rate all over the world. As the numbers of patent applications being filed in different countries are increasing at an rapid rate, duplication of work is increasing amongst the patent offices. In order to resolve this issue, the concept of ‘Patent Prosecution Highway’ (hereinafter referred as “PPH”) was introduced. PPH is a set of initiatives for providing accelerated procedures for patent prosecution by sharing information between patent offices.
After the introduction of PPH the process of taking legal action gets accelerated as the concerned patent offices share information and help identify the patent application first.
India's relations with Japan were always tranquil and free of any kind of dispute. India and Japan have been standing by each other in times of need. Japan's image in India has historically been positive as exchanges between India and Japan can be traced from the 6th century A.D., when Buddhism was introduced to Japan.
India and Japan are partners in peace, carrying a complementary responsibility of boosting the security, stability, and prosperity of Asia and nurturing equitable development. At the beginning of the 21st century, India and Japan resolved to elevate their bilateral relationship to a new level. In May 2017, the Japan Patent Office and the Office of Controller General of Patents, Designs & Trade Marks (CGPDTM) of India signed an action plan, where both the bodies decided to perform new initiatives with regards to Intellectual Property such as following-up training courses for new Patent Examiners of CGPDTM or sending officials who are well-versed with Patent Prosecution Highway to India.
Later, in 2018, the Prime Ministers of India and Japan intensified their cooperation for building and escalating the scope of Intellectual Property Rights by intensifying the India-Japan economic fellowship. They mostly focused on patent prosecution leading towards key transformational initiatives such as "Make in India", "Skill India" and "Clean India Mission", by sharing resources and advanced technologies.
This program proved to be beneficial for both the countries as the Japanese companies could then request for expedited examinations in India based on their applications whose claims were determined to be patentable in Japan. Applicants were able to acquire patents swiftly and expand their businesses smoothly in India.
One of the most dignitary developments in the economic relations between Indian Patent Office (IPO) and the Japan Patent Office (JPO) is the implementation of pilot program of Japan-Indian Patent Prosecution Highway (PPH) in the first half of the fiscal year of 2019 as notified by the CGPDTM vide the official website. Under PPH, participating patent offices have allowed applicants who have received a final ruling from a first patent office, to get at least one claim. The applicant may request fast track examination of the corresponding claim(s) in a corresponding patent application that is pending in the second patent office.
The following points are to be noted while submitting a request to IPO under the said PPH program:
• The number of requests for the PPH in IPO will be limited to 100 cases per year on a first come first serve basis.
• An applicant who has filed a patent application, either alone or jointly with any other applicant, shall not file more than 10 PPH requests to IPO per year.
• Request for assigning special status for expedited examination under the PPH is required to be filed online in prescribed Form 5-1 under Chapter 5 of the PPH guidelines.
• An applicant/authorized agent can file the request for expedited examination in Form 18A only after the request for assigning special status filed on Form prescribed in Chapter 5 is accepted by IPO.
• The decision on Acceptance/Rejection/Defect noticed will be communicated to the applicant/authorized agent through email as well as a message on the e-filing portal.
• In case of defects in Form 5-1, the applicant will be provided an opportunity to rectify the defects within 30 days from the issue of notification of defects by IPO.
• Notwithstanding the above procedure, the timelines for filing a request for expedited examination shall be as prescribed under the Patents Rules, 2003.
This has been a great initiative from both countries aiming to commence a bilateral Patent Prosecution Highway Pilot Program consisting of normal PPH and PPH MOTTAINAI (commonly referred to as “IPO-JPO PPH Pilot Programme) facilitating the examination of patent applications commonly filed at offices in both nations.
It was au revoir to one of India’s most astute Intellectual Property Judicial forums alias IPAB (Intellectual Property Appellate Tribunal) when the Ministry of Law and Justice notified in its official gazette the IPAB’s dissolution vide The Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021.IPAB was established to deal with Intellectual Property matters and its dissolution arose many pertinent questions as to who will be dealing with all its pending cases. Eventually, all functions and proceedings pending with the IPAB got transferred to the opposite High Courts. It was questionable as to whether the High Courts would be able to deal with IP cases diligently amidst pending cases and multiplicity of proceedings.
Keeping all these conflicting signs of dissensions aside, Delhi High Court in its attempt to avoid these issues announced their directive of creating a separate Intellectual Property Division (IPD) in the Delhi High Court. IPD refers to the division presided over by Single Judges to deal with disputes and cases concerning IPR subject matters. On October 8, 2021, the Delhi High Court circulated IPD Rules, 2021 for inputs from the members of the Bar. The Draft Rules stated that all concerned rules will apply to all patent suits in India which might lie before the Intellectual Property Division of the Delhi High Court. For the purpose of these rules, the “Intellectual Property Rights” subject matter shall include matters pertaining to Patents, Copyrights, Trademarks, passing off, acts of unfair competition, disparagement, comparative advertising, Protection of trade secrets, confidential information Geographical Indications, Plant Varieties, Designs, Semiconductor integrated circuit layout-designs and many other related subject matters. Every IPR subject matter, case, proceeding or dispute filed before, or transferred to the IPD, shall be heard and adjudicated by a Single Judge of the IPD except those that are to be decided by a Division Bench as per Section 13 of the Commercial Courts Act, 2015.
As per the notification, in case of any inconsistency between the Delhi High Court (Original Side) Rules, 2018 and the Delhi High Court Intellectual Property Division Rules, 2021 then the present rules will prevail.
If we shed light on some sheer details, we might be able to elucidate it better. Starting off with clause Rule 2(b), which lays down that all suits seeking relief under Section 48, Sections 105, 106 including all counterclaims under Section 64, Sections 108, 109, 114 of the Patents Act, 1970 shall be governed by the provisions of this Rule.
Moving further, Rule 3A specifies the contents of the pleadings, providing details of the attachments a plaint must contain. The Rule regulates that the plaint must contain a brief background of the technology, technical details and description of the suit patent and the invention covered therein, description of the Plaintiff’s product Ownership, the details of the patent granted in India including the date of the application and brief summary of international corresponding patent along with relevant facts to show validity of the invention covered by the Patent. It must also contain an infringement analysis explained with reference to the granted claims in the specification. Whereas Rule 3B talks about the contents of a written statement by the Defendants which must be only inclusive of a technical analysis to support the non-infringement but other defences for non-grant of injunction and damages as well. Counter Claim (Rule 3 C) shall be precise as to the grounds that are raised under Section 64. All the prior arts and literature shall be attached to the counter claim.
Replication (Rule 3 D) shall initially summarise the Plaintiff’s case and the Defendant’s case. The Written statement to the Counterclaim and Replication in the Counterclaim must follow a similar pattern as specified above.
The Plaint shall contain the nature of the threat, whether oral or documentary in a suit under Section 106 of the Patents Act, 1970 for injunction against groundless threats and if the threat concerns a granted patent, it shall include an invalidity brief to accompany the Plaint.
At the first hearing, the patentee may seek interim injunction and also demand an appointment of a local commissioner for inspection. Service by email is considered as an adequate service. If the Defendant files a caveat, service by email must be made at least 48 hours before the first listing of the case. The Court will peruse the claim construction briefs, invalidity and infringement briefs, and strike the actual issues where there exists a dispute between the parties. The Court may also seek the assistance of an independent technical expert or call experts of the parties for assistance. However, if at any stage in the suit, the Court is of the opinion that the parties ought to explore mediation, it may appoint a qualified mediator or panel of mediators including, technical experts to explore amicable resolution of the dispute as mentioned under Rule 12.
Prior to the final hearing, the Court shall direct parties to present a summary of pleadings and evidence along with the specific page numbers of the files. The Court can direct the presence of at least one technical person from each side, to assist the Court during the final hearing.
Under Rule 16, in addition to the provisions in the Commercial Courts Act, 2015 for summary judgment, summary adjudication of Patent suits can be undertaken in matters where the remaining term of the patent is 5 years or less and where a certificate of validity of the said patent has already been issued or upheld by the erstwhile Intellectual Property Appellate Board, any High Court or the Supreme Court. Summary Adjudication of Patent suits can also be undertaken if the Defendant is a repeat infringer of the same or related Patent and if the validity of the Patent is admitted and only infringement is denied.
It is neither a novel concept nor does it carry any inventiveness to establish such Intellectual Property Divisions of Courts, which primarily deal with only IP disputes. However, no such Division has ever existed in India, and has been an undiscovered phenomenon for the High Courts of India. The Draft Rules present adaptability by simplifying litigation and increasing flexibility of the procedural law of India. It has clarified the concept and the contents to be included in the pleadings.
A trademark is a sign that may be used to distinguish one company's goods or services from those of other companies. To protect a trademark from being infringed, various measures are suggested under the Trade Marks Act, 1999. 'Prior use' is a doctrine that is common when it comes to trademarks. According to the concept of prior use, previous use, acceptance by the public, and usage take precedence over priority in registration. This effectively suggests that a prior user's rights are more important than the rights of the registered trademark owner. Section 34 of the Trade Marks Act, 1999, mentions the applicability of the doctrine of ‘prior use’. Simply stated, Section 34 provides that a registered user cannot prevent a third party from utilising his or her registered trademark if the third party has been using it consistently from a prior date.
To acknowledge the prior use of any mark, the following needs to be complied with:
(1) A third party's mark that is identical or substantially similar to the registered mark must be in connection with the products and services for which the first-mentioned mark is registered;
(2) The trademark must be used in India on a continuous basis;
(3) The owner of the mark must have benefited from the trademark;
(4) The mark must have been in use previous to the use of the third party registered trademark, or from the date of registration, whichever comes first.
The doctrine of prior use has been very well applied in the present case of The British School Society v. The British International School (CS (COMM) 408/2021 (hereinafter referred to as The Case). The facts of the case states that the mark of “British International School” (hereinafter referred to as the Defendant) was similar to the mark of “The British School” (hereinafter referred to as the Petitioner).The Defendant while putting across their case had argued the following points:
1 That their mark had been registered 6 years prior to the registered mark of the Petitioner.
2 That the words in both marks, ‘British School’, are common words and hence, the Petitioner cannot claim exclusive rights over these words.
The Delhi High Court, however, ruled otherwise and emphasised on the use of the mark of the Petitioner prior to registration. It was observed by the Court that the Petitioner’s mark “The British School” was in use since 1963, while the Defendant had started using its mark since 2005. It thus proved that the Petitioner’s mark had been known to the public for almost 40 years prior to the introduction of the Defendant’s mark. Emphasising on the doctrine of prior use, the Court was of the opinion that the Petitioner’s mark had attained goodwill in the market and amongst its stakeholders i.e. the students and their parents (as the mark is associated with the education field). If an almost similar mark is introduced to the stakeholders, it is most likely possible that there may arise confusion and the said mark might be associated with the original mark, thus hampering the goodwill and business of the enterprise.
The Court verbatim said that, “Now if one also looks at the Defendant’s reply in relation to examination report of its own mark, the Defendant stated it had started using the said mark since the year 2005 i.e. 40 years after the adoption of the mark by the plaintiff. One may also look at the reply of the Defendant it gave to the Cease and Desist notice wherein the claim of the plaintiff qua the user since 1963 etc. was simply denied and it was never alleged in reply the Defendant was not aware of the plaintiff using The British School as its trademark since the year 1963. The Defendant rather admitted of using the website http://www.britishschool.co.in i.e. exactly with the same name of plaintiff. One may also note the area of operation is same, in this case, education, hence in this field the chances of confusion need to be completely eliminated.”
Therefore, focusing on the prior use of the Petitioner’s mark, the Defendant was instructed to change its mark and not use the words “British School” in any further operations of their business.
S. Justin Selvaraj popularly known by his stage name “Suryah” is an Indian film director, screenwriter, actor, composer, and producer who works primarily in the Tamil film industry. Suryah had directed a movie called ‘Vaalee’ in 1999, of which he had also written the story, screenplay and dialogues. The movie was produced by S. S. Chakravarthy (hereinafter referred as ‘Chakravarthy’.).
Suryah was aggrieved by the fact that Chakravarthy assigned rights of the movie to be remade in another language to one Fakrudeen Ali. Therefore, Suryah approached3 the Madras High Court seeking an injunction against Chakravarthy claiming that he owned the copyright (including the remake rights) in the movie as he has been credited its writer and director and hence, remaking the film is not possible without his authorisation. However, the Single Judge Bench found that no prima facie case had been made out for the issue of an injunction and dismissed the application for the grant of the same on February 09, 2021.
Thereafter, Suryah filed an appeal4 challenging the refusal of trial court to grant an injunction for copyright infringement before the Division Bench of the Madras High Court. Suryah claimed that the court had erred in granting interim injunction, merely because he could not produce a written agreement regarding his appointment as the Director. Suryah further asserted that the producer of a cinematograph film has no right to assign the copyright in the relevant film for it to be remade and Chakravarthy had exceeded the rights available to him as the producer of the relevant film. The primary issues for consideration before the Honourable Court were:
i) Does the credit given to a screenwriter for writing a story/screenplay/dialogue indicate their copyright ownership over the work?
ii) Who owns the remake right of a film, the screenwriter or producer?
The Court observed that there are two aspects to analyse who owns the rights to remake the cinematograph film. Firstly, if the producer has commissioned the development of the story, screenplay, and dialogue by paying the valuable consideration; it holds the copyright in the same. Section 14 (d)(i) of the Copyright Act, 1957 allows the producer to make a copy of the film, including the right to make the remake. Secondly, the position shall be different if a writer has developed the copyrighted work independently and has granted limited rights to the producer. If the writer has retained the remake rights, he has to produce a contract that captures it. In such a case, the writer owns the remake right unless there is a contract to the contrary.
The Court referred to a Madras High Court judgment in Thiagarajan Kumararaja v. Capital Film Works (India) Pvt. Ltd, 2017 SCC OnLine Mad 37588 which was a result of a dispute between the writer-director and the producer of the film “Aaranya Kaandam”. In the above-mentioned case, the producer had received only a limited right to use the script in a specific film. The Hon’ble Court had held that the producer cannot be the owner of the remake rights if the copyright of the script is with the writer.
However, in the present case, the Hon’ble Court was dealing with a quia timet action. (A quia timet action is an injunction to restrain wrongful acts which are threatened or imminent but have not yet commenced.) The Hon’ble Court by referring to Section 17 of the Copyright Act, 1957 which deals with the ‘First Owner of Copyright’ observed that in respect of films and particularly cinematographic films, the first owner of the copyright is the producer. The producer in addition to the copyright, also owns the remake rights under the work for hire arrangement under Section 14(1)d of the Copyright Act, and nothing precludes him to make a remake thereof too. Such proprietary interest may also be assigned in accordance with the law to any other. A writer may have copyright in the screenplay, but in the compendium of film, the producer has the copyright. In the present case, Suryah had not been able to make out a prima facie case that he was the owner of the copyright in the screenplay or the dialogue pertaining to the relevant film.
Hence the Division Bench of the Madras High Court through its order dated 12th November, 2021 dismissed the appeal by saying that, the Single Judge Bench has appropriately dealt with the matter by referring to the relevant provision from Section 17 of the Act as it did have any material to satisfy itself that there was any infringement or likelihood of infringement of Suryah’s copyright.
So who has the Copyright, whether it is the producer or the story, screenplay, and dialogue writer?
• Ordinarily, a producer has the copyright in the cinematograph film and the works commissioned in connection therewith.
• If it is established that the Producer had commissioned an individual for valuable consideration to write the screenplay and the dialogue, the individual cannot claim any copyright in respect of such matters.
• However, in the event the individual can establish that the script, screenplay or the dialogues were not commissioned but were permitted to be used by the individual in course of the production of the film, he can claim rights in the same.
3O.A.No.521 of 2020 in C.S. (Comm. Div.) No.282 of 2020. - February 09, 2021
4S.J. Suryah (a.k.a. S. Justin Selvaraj) vs. S.S. Chakravarthy & Anr. OSA No.138 of 2021-12.11.2021
The Copyright Act, 1957 (as amended by the Copyright Amendment Act 2012) (hereinafter referred to as ‘Act’) was enacted to govern the law relating to copyright in India and establish a just and equitable framework of copyright administration and revenue sharing for protecting the rights of authors of original creative works. The Act has been amended five times i.e., in 1983, 1984, 1992, 1994, 1999 and 2012. However, for the purpose of this article, the Copyright (Amendment) Act, 2012 (Amendment) is of vital importance as there were many changed made for “issuing or granting license” in respect of “works”.
A 'copyright society' is a registered collective administration society for the management and protection of copyright in works by authors and owners of such works. As per Section 33 of the Act, only copyright societies can carry on the business of issuing or granting copyright licenses. However as part of the 2012 Amendment, Section 33 (3-A) was inserted in the Act which laid down that, in order to be a valid copyright society, an entity must register itself under Section 33 within a year from the commencement of the 2012 Amendment. Thus, if a copyright society existed by virtue of a pre-2012 registration, there would not be any restriction as to its operations under Section 33 unless there was a new registration within a year after 2012.
While Government’s intent to bring in the amendments is commendable, it is important to consider the other side of the coin. Section 33 was inserted as a part of the 1994 Amendment which mandates that only copyright societies can carry on “the business of issuing or granting licences” in respect of creative works. However, the Act is silent about the matter of assignment of rights in copyrightable works. Therefore, Section 33 creates a bar on entities that may be assigned rights to issue licenses as copyright owners of copyrightable works as under the scheme of the original Copyright Act, copyright owners /author of creative works have the right to assign copyright or to license a work to any “person” under Sections 18 & 30.
On 12 December 2021, the Madras High Court in the case of Novex Communications Pvt. Ltd Vs DXC Technology Pvt. Ltd. passed a pivotal judgment shedding clarity on Section 33 of the Act. Novex Communications Private Limited, a company engaged in the business of distribution of content, primarily film songs had entered into various assignment agreements with the owners of certain songs in films. Novex contended that by virtue of the rights assigned to them they had acquired absolute copyright for granting licenses to others for on-ground performances of the songs concerned. Novex alleged that despite having absolute copyright over ground performances of the works under Section 18(2), DXC Technology Pvt. Ltd. and Cognisant Technologies Solutions India Pvt. Ltd. played those songs in the events conducted by them without obtaining a license from Novex. The primary issue before the Hon’ble High Court was whether Novex, not being a copyright society, as prescribed under Section 33 of the Act, possessed any legal rights to issue or grant a license under the Act.
The Court took into consideration the findings of the case of State of M.P. vs Mukesh5 , wherein it was observed, the right of an owner, in his individual capacity, to exploit a right by issuing a license remains unimpacted but in case of a “business” or any commercial enterprise, licenses can only be issued through a copyright society registered under Section 33(3) of the Act.
The Court further referred to the decision of Bombay High Court in Leopold Café & Stores &Anr v. Novex Communications Pvt. Ltd 6 where the Hon’ble High Court had held that issuance of licences by virtue of Sections 18 and 30 is not barred by Section 33 of the Act.
The Court, after considering all the submissions, pronounced the judgment in clear favour of DCX by holding that Novex was effectively barred under Section 33 of the Act from issuing or granting any licenses. The Hon’ble Court specifically clarified that the right of an owner to issue licenses, in his individual capacity, remains untarnished, subject to his obligations as a member of any copyright society. However, if the right to grant licenses is that of an entity such as Novex, primarily involved in the business of issuing licenses for copyrighted works, the second proviso of Section 33 becomes applicable, where such work was incorporated into a cinematograph film or a sound recording. The Court, shedding further light on Section 33 stated that the second proviso mandates that licenses can only be issued through a registered copyright society and that the legislative intent that business of licensing must be routed only through a copyright society is manifestly clear. Since Novex was not a registered copyright society, it did not have the right to issue licenses. The Court further held that the cause of action upon which Novex had initiated the suits was misconceived, and DCX was consequently awarded substantial costs.
52006 13 SCC 197
62014 SCC Online Bom 1324
During the COVID 19 pandemic, when the entire world was stuck at home, everything was functioning on online platforms. Amidst all of this, there was one platform which was used the most during these difficult times: ‘Zoom Cloud Meetings’ for video calls. The said web based application was launched by “Zoom Video Communications”, a USA based company (hereinafter referred to as ‘Zoom USA’), in the year 2012. Recently, a Japanese recording equipment maker, “Zoom Corp.” (hereinafter referred to as ‘Zoom Japan’) has sued Zoom USA for trademark infringement in the Tokyo District Court. Reportedly, Zoom Japan wishes to legally safeguard its trademark and is not interested in any settlement.
Zoom Japan was founded in the year 1983, almost 30 years prior to the incorporation of Zoom USA. Even though both the companies dealt in different spectra of businesses, the trademark classes in which their respective marks are applied for are similar.
When we explored the Indian scenario with respect to these marks, it was found that the marks of Zoom Japan and Zoom USA were both applied for registration in classes 9 and 42 at the Indian Trade Marks Registry (hereinafter referred to as “Registry”). Evidently, Zoom Japan had applied for the registration of its mark in the year 1996, whereas Zoom USA had applied for the registration of its mark in the year 2020. Therefore, it can be rightly stated that Zoom Japan is the prior user, atleast in India.
ZOOM JAPAN TRADEMARK STATUS:
ZOOM USA TRADEMARK STATUS:
The suit initiated by Zoom Japan against Zoom USA will be decided by the relevant court in Japan. However, through the above analysis, it can be stated that if the dispute would have been tried in India, then the following would be taken into consideration:
• Zoom Japan was operating its business under the said mark prior to Zoom USA.
• Also the marks of Zoom USA have not been accepted by the Registry for registration, till date.
• The difference between the goods and services in which these companies actually deal in vis a vis their trademark applications/ registrations.
As to the case in Japan, watch this space for more updates.
*We claim no rights in the above logo. It has been used for representational purposes only.
Founded in 1926, the National Broadcasting Company (NBC) is the oldest major broadcasting network in the US. Presently, NBC owns 13 popular television stations as well as is an affiliate with 200 other stations.
NBC’s trademark logo has a couple of hidden meanings. It is clear that it’s a peacock, but why? When the logo was developed colour televisions were being introduced and the network wanted a logo which would cause black and white television sets owners to make the switch. Hence, they went with the common phrase ‘proud as a peacock’, promoting that they were proud of their new colour system. The six different colours of the feathers represent the six different divisions of NBC which are News (yellow), Sports (orange), Entertainment (red), Stations (purple), Network (blue), and Productions (green).