Answer - 1
There exist numerous intellectual property rights like patents, trademarks, copyrights, domain
names and many more. Copyright is a type of intellectual property right that a creator attains
over their authored work which may be in the form of literature, drama, music, pictures, etc.
As per Section 14 of the Copyright Act, 1957 (hereinafter, “Copyright Act”), Black Ticket
Films (hereinafter, “BTF”) has the copyright over the literary/dramatic work it has produced.
To validate the allegation of “copyright infringement” by BTF, it becomes pertinent to
understand the meaning of the term. Section 51 of the Copyright Act lays down the
circumstances which would amount to copyright infringement. On a reading of the said
provision, it can be understood that copyright will be deemed to be infringed only when there
is a substantial unauthorized use of the copyrighted work. However, the Copyright Act takes
cognizance of situations which may warrant use of copyright, and thus, do not cause
copyright infringement. The exceptions to copyright infringement are enlisted under Section
52 of the Copyright Act. Majorly, the exceptions to copyright infringement are use for
research, criticism and study. To delineate, copyrighted work may be used for (a) private
research or study, (b) criticism or review, (c) reporting ongoing events, (d) judicial
proceedings, (e) performances, and/or (f) reporting on current events (hereinafter, “Justified
Uses”).
As per the factual matrix, Dr Ashok Kumar wrote a blog post inspired by the documentary
produced by BTF. While it may be argued that the use here was research and study, it was not
personal and neither for his students solely. Drawing from this fact, as soon as Dr Ashok’s
blog post was published by Voice of India, with the same title as the documentary and
available to a larger public, there were no Justified Uses, and thus it did amount to copyright
infringement since the blog did not refer to the documentary. The problem compounded when
Voice of India also published the blog post on its Facebook page along with the picture sent
by Dr Ashok – a still from the documentary by BTF. In other words, since there were no
references to the documentary anywhere in the text or below the picture, Dr Ashok and Voice
of India are liable for copyright infringement.
While there has been much debate about whether sites hosting user-generated content – here
Facebook – are liable for copyright infringements by users, there remains a global ambiguity.
However, since Facebook has in its bag some anti-piracy policies as well as the “Rights
Manager” tool to detect infringing material, there must be some degree of liability that can be
imposed on Facebook. For instance, the position on Italy is that Facebook is indeed liable for
infringing links on its platform and would face liquidated damages.
Moreover, it has been established by way of jurisprudence in Fairmount Hotels Pvt. Ltd. v.
Bhupender Singh that photographs are also copyrighted work. In the case at hand since the
picture was a screenshot of the documentary film, the copyright of the picture also vested
with BTF.1 In this, Dr Ashok, Voice of India as well as Facebook are liable for copyright
infringement. Here, Voice of India is vulnerable to a higher degree of liability due to
Facebook’s Statement of Rights and Responsibilities whereby any content that is uploaded on
the platform is deemed to be action of licensing the intellectual property in the content to
Facebook. While Voice of India did not have copyright over the photograph, it went ahead to
assign the same to Facebook, and thus, Voice of India has been in a grave error of copyright
infringement. The Copyright Act is comprehensive and may effectively protect the rights of
images posted on social media networks as well as the rights of photographers in India. This
is because the law covers not just hard copy/paper images taken, but also photographs posted
online. Although the Copyright Act does not specifically specify this protection for online
images, earlier court decisions addressing similar concerns have repeatedly demonstrated that
the definition of "photographs" under Section 2(c) of the Copyright Act includes photographs
placed on internet platforms. As a result, existing copyright laws are capable of overcoming
any obstacles in the path of Facebook users and cutting-edge technology, and thus BTF
definitely has a recourse under the law.
Summary of opinion: Dr Ashok wrote a blog piece inspired by a documentary by BTF.
However, Dr Ashok did not make any references to the documentary in his blog piece, which
was ignorantly then published by Voice of India. Under the law, when an act causes major
prejudice to a copyright owner, the act is deemed to be a copyright infringement.
Furthermore, Voice of India published the unreferenced blog post and a picture – a
screenshot of the documentary - on its Facebook page. Therefore, Voice of India’s use of
BTF’s copyrighted materials amounted to copyright infringement under the Copyright Act,
1957. Moreover, since Facebook also failed to flag the copyright infringement on its
platform, Facebook also was a party to the copyright infringement.
Answer - 2
1
CS(COMM) 111 of 2018
To understand the problem at hand, we must firstly look into the basics of trademark
infringement and the elements factored into the process of decision making.
The basic purpose of a trademark is to educate customers about the origin of a particular item
or service by pointing them in the right direction. People are able to form opinions about the
value of something by examining its origin. When it comes to making a purchase, the
majority of customers think about the product's quality first. Because of this, holding a
trademark is very necessary in the modern market. Customers have a better idea of where and
what they are purchasing because to the visual cues provided by trademarks.
Infringement of a trademark is defined in India under Section 29 of the Trademarks Act,
which was passed in 1999.2 Infringing on a registered brand's trademark may occur when
someone uses a trademark that is either "identical" to the registered brand or "deceptively
similar" to it.
In the meanwhile, let's have a look at the elements that make up an infringement of a
trademark:
1. Someone who is not the owner of the registered trademark, or the licensee is referred
to as a "unauthorized person" in this context.
2. Second, the question of whether or not the general public is likely to be confused by
the similarities of two marks serves as the criterion by which it is determined whether
or not two marks are the same or not. If there is a possibility that customers may get
the two marks mixed up, then there has been an infringement.
3. Infringement is only allowed for trademarks that have been formally registered with
the appropriate authorities. The concept of "passing off" from common law might be
used to a trademark that has not been registered.
4. In order to demonstrate that the defendant's goods or services infringed against
someone else's trademark, the defendant's goods or services must be either identical to
or substantially similar to the trademarked things.
When the exclusive legal rights associated with a registered trademark are violated in any
way, this is known as trademark infringement.
It is pertinent to note that the classes for both the trademarks, Seri and Serin, are different.
‘Serin’ by Privia falls into Class 5 as per the fourth schedule of Trade Marks Rules, 2002,
2
§ 29, Trademarks Act, 1999.
which provide for ‘Pharmaceutical, veterinary and sanitary preparations; dietetic
substances adapted for medical use, food for babies; plasters, materials for dressings;
materials for stopping teeth, dental wax; disinfectants; preparation for destroying vermin;
fungicides, herbicides.’ ‘Seri,’ on the other hand, falls into Class 3 as per the fourth schedule,
which includes, ‘bleaching preparations and other substances for laundry use; cleaning;
polishing; scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics,
hair lotions, dentifrices.’
Considering the difference in classes, there is an established position by the Indian judicial
system by the way of precedents eliminating any confusion on such alleged infringement.
Because of the decision it made in the case Nandhini Deluxe v. Karnataka Co-Operative
Milk Producers Federation Ltd.,3 the Supreme Court has finally answered the decades-old
question of whether or not the use of a trademark that is confusingly similar by two
companies that sell different types of products constitutes a violation or breach of any laws.
For more than a decade, one of the most controversial topics in intellectual property law has
been the question of whether or not it is permissible for multiple firms to utilize similarly
sounding trademarks for unrelated and completely different items.
In most instances, a trademark is connected to the long-term goodwill that a firm or
manufacturer has built up in a particular market. This is because a trademark serves to
identify the owner of the goodwill. This is a breach of a manufacturer's right, as well as a
source of confusion for customers, due to the fact that the person who uses the trademark in a
manner other than that of a manufacturer or company will profit from the goodwill that has
been established by that manufacturer or company over an extended period of time.
In this case, although the two products were to the same category, the customers could easily
detect the difference between them, hence the Supreme Court made the right decision by
affirming the Deputy Registrar's decision. A registration given to the Appellant for the foods
offered in the restaurant is unlikely to have an adverse effect on the Respondent's business
since their commodities are fully separate from one other.
With respect to Seri and Serin, there was no adverse effect observed from the registration
given to Seri. Also, as the products fall into different classes, there is an inherent difference in
the type of products produced, which if not eliminates, minimizes the possibility of any
confusion between the parties.
3
AIR 2018 SC 3516
As the legal counsel of Privia, the final advisory would be as follows:
1. To take back the infringement case filed against Seri, as it would ultimately lead to
extensive litigation costs and will probably not be decided in the favor of Privia.
2. Focus on tackling the elements promulgating the story of toxic chemicals being
associated with Serin’s products.
Answer – 4
Originality is the key factor that is considered by the various copyright regimes across the
globe in order to decide whether or not a piece of work is entitled to copyright protection.
There is not one universally accepted concept of uniqueness; rather, it varies according to
location. The Section 13(1) of the Copyright Act of 1957 in India protects any original
creative work, whether it be literary, theatrical, musical, or otherwise. 4 On the other hand,
neither originality nor its presence are defined or tested by the Act. Because of this,
determining the minimum amount of originality required for a piece of work to qualify for
copyright protection is left up to the courts.
For answering this particular question, let us look at two important doctrines:
Modicum Of Creativity Doctrine
In the case of Feist Publication Inc. v. Rural Telephone Service, the Supreme Court reached
a ruling that changed the meaning of "originality" from "sweat of the brow" to "modicum of
creativity."5 Works that can be linked to their original creator are afforded the highest level of
copyright protection, regardless of whether or not the works in question are really original. In
order to be recognized as one of a kind, an original piece of work must not only be the
product of an independent invention, but it must also have "a degree of uniqueness," as stated
in the findings handed down by the Supreme Court of the United States in the case of Feist.
The Supreme Court endorsed the idea of "creative uniqueness" and created a new benchmark
for the protection of works based on even the most insignificant degree of originality.
According to this theory, a piece of work has the potential to be regarded as original if it
demonstrates a sufficient amount of intellectual invention and judgement. Copyright law
requires that there be a minimum level of originality in a work before it can be protected as
intellectual property.
4
§ 13(1), Copyright Act, 1957.
5
499 U.S. 340
There is not a single, universally accepted definition of what constitutes a "original work,"
and as a result, there are many different theories that differ depending on the jurisdiction.
The Doctrine of The Sweat of Brow
If a person puts in a sufficient amount of time and effort into a piece of work, the reasoning
goes, that person should have the right to the copyrights to that work. It is not required that
one have a significant amount of "originality" or ingenuity. Because of the amount of effort,
creativity, and financial resources that are put into the creation of a work of art, the artist is
entitled to certain legal protections. It is not necessary for the author of a phone directory or a
database to hold a copyright to demonstrate any originality or ingenuity in the compilation of
data; rather, a copyright should be held because of the amount of time and money spent by
the author in putting the data together in a particular way. This can be demonstrated through
the use of a phone directory or database. On the other hand, a compilation should be the
author's original work and not a reproduction of the work of another person.
India has followed its own "sweat of the brow" concept from ancient times. The Supreme
Court of India adopted the English Courts' approach after noting that copyright law does not
prohibit developing an original work. The Supreme Court found that a non-original work may
be protected under copyright law. Copyrighting covers even dictionaries and gazettes. Feist's
case was similar to Burlington Home Shopping v Rajnish Chibber, where a court ruled a
compilation copyrighted.6
Copyright protects speech while allowing others to expand on its ideas and information.
Although it is impossible to set a high criterion of originality since most works would be
beyond the purview of copyright protection, it should not be so low that every derivative
work with minor adjustments is protected by law. The US law, which conforms to "Modicum
of Creativity" and puts a higher priority on writers' originality than the UK's, strikes this
delicate balance. India's copyright jurisprudence is headed in the right direction. The United
States is implementing its own checks and balances to assure the appropriate protection of
unique literary and creative works while refusing such protection to compilations with no
trace of originality.
Answer – 6
6
1995 PTC (15) 278
Patent infringement occurs when a patent owner's rights to innovation are infringed upon.
Unless the patent owner grants permission, it is incompetent to produce, use, propose to
negotiate or sell anything that comprises all of the components of a claimed claim or its
equivalent while the patent is in consequence. Patent infringement occurs when a forbidden
act is committed against a patented idea without the authorization of the patent holder.
Authorization is usually given in the form of a license.
Literal infringement and infringement established on the doctrine of equivalents also known
as functional infringement are the two categories of patent infringement. According to the
expression "literal infringement," every aspect supplied in a claim has a related
correspondence in the allegedly interfering item or method. If no actual infringement ensues,
the doctrine of equivalents may enable a claim to be infringed if another element of the
accused machine or technique performs nearly the same process, in substantially the exact
manner, and stimulates substantially the same outcome. The notion of equivalents, on the
other hand, enables a limited "extension" of claim scope. Rather, the earlier art and (ii) the
law of "prosecution history estoppel" limit the extent of coverage accessible to the patent
owner.
An infringement estimation deduces whether a patent claim "reads on" an accused infringer's
equipment or method, or whether the idea of equivalents pertains to the allegedly infringing
device. The steps in the analysis are as follows:
1. Determine the claims' "literal" language's scope.
2. Compare the claims to the accused device or process, as correctly construed, to see if
there is literal infringement.
3. Use the law of equivalents to evaluate the scope of the claims if there is no actual
violation.
Equivalents are a fairness doctrine that effectively expands the scope of claims beyond their
precise phrasing to include the true range of the inventor's contribution to the art. The number
of equivalents to which the patent owner is allowed is, however, limited.
When assessing the range of equivalents to which the patent owner is allowed, the concept of
prosecution history estoppel must be considered. Prosecution history estoppel, which
prevents a patent owner from recouping during litigation what was given up during patent
prosecution to evade prior art and win a patent, limits the notion of equivalents. For this part
of the inquiry, the patent application file is attained and analyzed.
In the case of Polaroid Corp. v. Eastman Kodak Co., Polaroid said it lost $4 billion because
Kodak infringed on its instant photography patents 14 years ago. 7 Polaroid's instant camera,
which produced photographs in 60 seconds, enchanted America after Thanksgiving 1948.
From 1976 through 1986, Polaroid accused Kodak of stealing their instant photography
technology. Polaroid wanted $12 billion in damages due to Kodak's loss of market
dominance and unfair price competition. The second-largest decision in an oil company
takeover case was handed out by a US District Judge in Boston, who ruled that illegal
conduct by Kodak had cost Polaroid over $250 million in revenues.
The previous art/innovation also constrains the scope of equivalents accessible to the patent
owner. The patent owner cannot broaden the claims to contend infringement if the degree of
equivalency pursued will implicate the prior innovation. If the theory of equivalents is found
to be infringing, a prior art search should be administered to assess whether the scope of
correspondence includes the prior innovation.
7
641 F. Supp. 828