Category Archives: Legal Issues

Patentability of Genetically Modified Plant Breeds: The Monsanto Conclusion

On January 08, 2019, the Supreme Court of India, in the matter of Monsanto Technology LLC v. Nuziveedu Seeds Ltd.[1] held that genetically modified cotton seeds were patentable, and allowed U.S. company Monsanto to file their patent claims. The bench, comprising of Justice Rohinton Fali Nariman and Justice Navin Sinha, set aside the order of the Division Bench of the Delhi High Court, which had held such claims to be inapplicable in India. The Single Judge of the High Court had granted an interim injunction against any sale of Bt cotton seeds using the patent of Mahyco Monsanto Biotech, Monsanto’s Indian arm.

On 21.2.2004, the plaintiffs had entered into a 10-year sub-license agreement with the defendants to develop “Genetically Modified Hybrid Cotton Planting Seeds” using the technology provided by the plaintiffs, after paying a license fee for the same. However, the agreement was terminated by the plaintiffs on 14.11.2015 due to disputes in lieu of the price control regime by the government, which the defendants asked the plaintiffs to adhere to.

The defendants in the suit argued that their rights were statutorily protected under the Protection of Plant Varieties and Farmers’ Rights Act, 2001 (hereinafter referred to as ‘the PPVFR Act’). It was argued that the patent was bad as unlike the “complex biological processes” adopted by the defendants, “claims 1-24 were “process claims” concerning genetic engineering or biotechnology method to insert “Nucleic Acid Sequence” (NAS) into a plant cell as in claim 25-27” were practiced in laboratory conditions. Basically, it was contended that NAS could not reproduce itself and could only impart insect resistance through its Bt trait when it was injected into another organism, thereby resulting in a process that was not biological, and hence patentable. Thus, infringement was denied in lieu of Section 3(j) (the Act) of the Patents Act, 1970 concerning plants and seeds with DNA sequences. In addition, revocation of the concerned patent was sought under Section 64 of the Act.

The Single Judge prima facie observed that the termination was not of any significant consequence as the plaintiffs had benefitted from the agreement all these years and hence held the action unjustifiable. The Division Bench accepted the counter-claim of the defendants and upheld their contention. Dismissing the appeal filed by the plaintiffs, the patent exclusion under Section 3(j) of the Act would stand and the plaintiffs could register their patent under the PPVFR Act. However, the suit continued with regard to damages and other reliefs.

In the Supreme Court, the advocates for the plaintiffs contended that the issue of patentability was never an issue in the suit and that the issue was solely about patent infringement. It was argued that the issue of patent exclusion was a mixed question of law and fact. The impugned order did not restrict itself to the “process claims” (25-27) and went further and held the 1-24 claims also, as bad in law, which was contended. Even the Single Judge had admitted that the issue of patentability required expert evidence and could be decided only when during the final trial of the suit and not summarily. It was also brought to the attention to the court that this patented technology had the highest number of seeds sold, and that the plaintiffs never intended to sue any Indian farmer individually. It was argued that the PPVFR Act and the Act were not complementary but were mutually exclusive in nature. Hence, it was contended that such a DNA construct/gene was not a plant variety as it did not come within the definition of “plant grouping”, i.e. the lowest ranking of any plant – a species. Construing Section 2(za) read with Sections 14 and 15, it did not fall within the PPVFR Act. The advocates for the petitioners also went on to say that this required human intervention and was by no means purely a biological process.

The advocates appearing on behalf of the defendants contended that such genetically modified plant breeds could not be patented as the same would go against the scheme envisaged under the PPVFR Act. Such donor seeds had to be registered under this statute and were entitled to its constituent benefits listed under Section 26 as well. It was argued a proper construction of asserted claims and a determination of how the product infringes this claim, has to be proved in cases of patent infringement. In this case,  the plaintiffs argued that there was only an improvement of a prior, existing art form and this precluded the plaintiffs from claiming a patent for the same. It was further argued that even though it was a gene variety, the process made it an inherently transgenic plant. Further, this passes onto the progeny plants and infiltrates into every cell of the plant, even to the extent of going to the sub-cellular level. and that this irreversible biological process made the characteristics pivotal to the plant. Thus, an effective meaning of this process did not construe it to be a product claim. In addition, the insertion of NAS into the Indian varieties of plants developed an entirely new variety of plants. The use of such varieties under the PPVFR could not be undone by patenting the same. The lack of any inventive step and any industrial application was also argued for the applicability solely of the PPVFR Act and not the Patents Act, 1970. A conjoint reading of Section 2(j) and 3(c) of the Act did not allow biological processes to be patented. Moreover, no patent claims of this nature could deprive farmers from using this technology, as the powers under Section 48 of the Act could only be exercised against biotechnology companies seeking to exploit it. This would hold true, whether seen from the lens of the Patents Act or the PPVFR Act. As a last resort, it was prayed that the matter be heard fresh by the Division Bench only on the injunction matter.

After listening to the submissions of the counsels, the Supreme Court agreed with the decision of the Single Judge. It opined that owing to the complicated nature of this matter, the existing patent should not have been summarily adjudicated. The Division Bench, in their opinion, should have confined themselves to adjudging whether the injunction was valid or not. It held –

The Division Bench ought not to have examined the counter claim itself usurping the jurisdiction of the Single Judge to decide unpatentability of the process claims 1-24 also in the summary manner done. Summary adjudication of a technically complex suit requiring expert evidence also, at the stage of injunction in the manner done, was certainly neither desirable or permissible in the law. The suit involved complicated mixed questions of law and facts with regard to patentability and exclusion of patent which could be examined in the suit on basis of evidence.

The apex court then went onto examine Section 64 of the Act, dealing with revocation of patents. The same, in their opinion, necessarily presupposed valid consideration of all claims and consequent counter-claims. The bench stated that Section 9 and 10 of the Civil Procedure Code, 1908 dealt with the procedure of such suits all the way till the decree is passed. The court held that only in certain situations could a suit be tried summarily, and that the Division Bench erred in disposing of the suit without hearing all the arguments and assessing all the evidences before it.Referring to Alka Gupta v. Narender Kumar Gupta[2], it was seen that when the case is being tried on preliminary issues, an inquiry into other matters in the case could not be done without a trial. It said that the injunction granted by the Single Judge was valid and that no further interference was needed. Consequently, it set aside the order of the Division Bench and remanded the matter to the Single Judge for early disposal of the suit.

The Supreme Court of India has been, and rightfully so, strict with respect to the procedural aspects of intellectual property disputes which come up in appeal. Very often, High Courts across the country overstep their mandate and decide complex matters of law while deciding on a particular point. This has sought to be prevented by the Court, while allowing the lower courts to hear matters of such importance. Hence, the merits of the case were heard and the injunction was restored. Additionally, the Single Judge was allowed to dispose of the case after hearing both sides on merits. Purely from a legal standpoint as well, the courts have been encouraging towards newly developing patentable technologies in the field of agriculture. While some argue that this affects the rights of farmers, the same cannot be at the cost of invention. Hence, this judgment is important to set the tone and encourage such research endeavors for future progress.

Author: Dushyant Kishan Kaul, Jindal Global Law School, Sonipat, Haryana, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at pratistha@iiprd.com.

References:

[1] 2019 SCC OnLine SC 25

[2] (2010) 10 SCC 141

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Looking Into The Deal Between GSK – Hindustan Unilever And What Ensues From The Same

INTRODUCTION

Recently,  in the first week of  December 2018, Hindustan Unilever announced  a merger with the local unit of GlaxoSmithKline.  The said deal is estimated to be of around $ 3.8 Billion and is anticipated to bolster the FMCG company’s (Fast Moving Consumer Goods)  (HUL ) position in the Indian market  significantly.  The deal involves the FMCG  giant Hindustan Unilever Limited (HUL) and GlaxoSmithKline’s Indian nutrition business. [1]

Hindustan Unilever Limited (HUL) is India’s largest FMCG company and enjoys a long heritage in India, i.e. about almost 80 years. HUL claims that on any given day, about 9 out of every 10 Indian households use its products. [2] HUL is a subsidiary of Unilever, a British – Dutch company . Some of the products that HUL manufactures include beverages, personal healthcare products, cleaning agents , and water purifiers. India happens to be the second  largest market for Unilever globally.

On the other hand, GSK is a science-led healthcare company which has its operations across the globe. In India, GSK enjoys an extensive product portfolio which encompasses prescription medicines and vaccines. [3]

THE GSK- HUL DEAL

The present deal of a whopping  $3.8 Billion is important in many respects. The move shall help HUL consolidate its position in India. As a consequence of this deal, popular health drinks like Boost, Maltova and Horlicks shall move to the HUL camp. [4]

 The present transaction  is an all equity merger and 4.39shares of HUL shall be allotted for every share in GSK Consumer Healthcare India. GSK’s other group companies shall continue holding 5.7 percent of the merged entity and are being expected to sell these shortly.

To successfully complete the deal, Cyril Shroff ,  Nivedita Rao and Ramgovid Kurupath acted for Hindustan Unilever, while Vinati Kastia, Ajay Bahl and Bharat Bhudolia acted for GlaxoSmithKline.

However, in this deal , Steer Engineering has approached the Delhi HC wanting appropriate protection for its Intellectual Property and to stop transfer of its IP post the acquisition of GSK Consumer Healthcare.

WHAT FLOWS FROM THE DEAL?

The said deal if successfully completed , shall be a win-win situation for both GSK and HUL. The deal shall help HUL strengthen its refreshment and food business as HUL shall enter the Health Food drinks which has seen  the entry of several global as well as Indian companies of late. It is estimated that HUL’s food and refreshment business which currently stands at 6500 crore (with brands like Knorr, Kissan and Kwality) would rise to 10000 crore, as GSL CH’s annual sales is about 4200 crore .  Also, post the deal, GSK’s losing market share and the threat of competition from other Key players like Mondelez International (Bournvita), Pediasure (Abbott Nutrition) and Complan (H.J. Heinz) shall be effectively dealt with.

However, the impending suit filed by Steer Engineering might actually affect the deal in some or the other manner. Steer Engineering claims that it has rights to protect its IP against transfer to any third party and its rights created in the technology.

ELEMENT OF IP IN THE GSK – HUL DEAL

After the announcement of the said deal between HUL and GSK CH, Steer Engineering has moved to the high court wanting appropriate protection  for its rights. It claims that it has provided certain important IP to GSK and it has rights over the same upon the transfer of the same to third parties.

Steer Engineering claims and contends that it was a result of its extensive efforts on hardware and  machine components  that certain important technology were developed . The company claims to have provided  GSK with the relevant technology that enabled scaling up of the “Two Twin Extrusion Process being employed by it”. It further contends that, in the light of the Development Services Agreement and the Task Order between GSK and itself,  the company is entitled to protect the technology in case, it were being transferred to GSK by the same [5].

Presently, the matter is sub-judice before the Delhi HC.  The court has agreed to give some time to the counsel on behalf of GSK to seek instructions and conclusively establish that the technological know-how and the IP owned by Steer Engineering (Petitioner) was being transferred to the third party. Also, it instructed GSK to file its response on an affidavit in the said matter and until then, its status quo order had to be maintained

 IP ISSUES IN ACQUISITIONS

Intellectual Property is an important element of Acquisitions and Mergers now a days. Also the understanding of IP of M & A that we use cannot be said to be restricted to Patent or Trademarks but even technology. A lot of times, an important reason of M & A, is the company’s goodwill and IP.  However it is not always so that the IP comes as  a part and parcel with the mergers and acquisitions. Due diligence must be observed while taking over, in mergers and even in acquisitions. [6]

It might happen that that as a result of a contact between two parties, the entity attempting acquisition might not be able to use the IP as becomes the third party in such a case and  the IP might be protected from the third party’s exercise of rights over the same.

A popular dispute involving absence of due diligence was the long lasting and extended battle  before the European Commission  involving Volkswagen, BMW and Rolls Royce Motor Cars.   [7]The matter involved Volkswagen purchasing the assets of Rolls Royce and Bentley automobiles for several millions. However, it was only upon the closure of the deal that Volkswagen realized that the IP assets did not include the right to use the trademark of Rolls Royce as the same was owned by Volkswagen’s competitor car maker BMW. Thus, IP due diligence plays a very crucial role in the cases of M & A. [8]

Similarly, the issue of IP due diligence is quintessential in the present case between GSK and HUL. The previous contract or agreements between Steer Engineering and GSK shall play a decisive role to play in the unfolding and the execution of the present deal between GSK and HUL.

CONCLUSION

As has been discussed, the two companies GSK CH and HUL, when combined, shall have a very important role to play in the market. However for an effective exploitation of the said deal, it is imperative that HUL enjoys atleast certain basic IP rights of GSK. What exactly is the mater in dispute and to what an extent the problem  persists is something that is confidential atleast until the matter is pending before the court. What eventually emanates from the deal and the legal battle shall be a matter to wait and watch. The next hearing in the said matter is scheduled before the Delhi HC on 23 January 2019.  Let’s hold back and wait until then.

Author: Kanay Pisal, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at pratistha@iiprd.com.

References:

[1]https://www.legallyindia.com/corporatemna/3-8bn-blockbuster-deal-cam-azb-help-hul-buy-gsk-india-s-horlicks-biz-20181203-9668

[2]  https://www.hul.co.in/about/who-we-are/introduction-to-hindustan-unilever/

[3]  https://india-pharma.gsk.com/en-in/about-us/

[4]https://www.thehindubusinessline.com/companies/hul-to-acquire-horlicks-maker-gsk-ch-india/article25653550.ece

[5] https://barandbench.com/gsk-hul-deal-steer-engineering-transfer-ip/

[6] https://blog.ipleaders.in/ip-issues-in-ma/

[7]https://www.ipeg.com/how-to-avoid-another-rolls-royce-ip-due-diligence-in-ma-transactions/

[8]https://uk.practicallaw.thomsonreuters.com/7-100-8290?transitionType=Default&contextData=(sc.Default)&firstPage=true&comp=pluk&bhcp=1

Importance of Sports Law in India

Introduction

India is a place that is known for umpteen games. While sports like cricket have been pursued like a religion, present occasions have achieved a dynamic change and numerous different games are being pursued currently more than ever. As the type of amusement has developed significantly and India has turned into an overflowing scene for holding numerous national and international sporting events amid its time that rules and regulations are additionally set up. The UN has officially acknowledged sport as a method for advancing health, education and development. Therefore, there is a need to streamline the field of sports with reasonable law framework.

However, India has been seeing litigations on issues of broadcasting rights[1] and arbitrary actions of Sports authorities.[2] However, the Indian judiciary’s contribution towards developing sports jurisprudence has been very negligible. Adjudication in the field of Sports generally involves application of several laws. It has been seen that courts have refrained themselves from adjudicating upon issues involving sports. This situation can be ascribed to the incompetence of the Indian courts as sports issues include matters which require technical expertise in the field of games and the judicial officers in India or in some other country are not technically equipped for the same.

Nevertheless in the last decade, dispute resolution in matters relating to sports has certainly seen imperative advancements across the globe. The international sports bodies are commonly independent bodies, having their very own adjudicatory organs for settling sports related debate and always express their hesitance to submit to any Jurisdiction. For example, when sued in the American Courts for banning Butch Reynolds from international athletics, the governing body of the sport replied, “Courts create a lot of problems for our anti-doping work, but we say we don’t care in the least what they say. We have our rules, and they are supreme.”

Indian legislator too has not shown much interest in contributing to sports jurisprudence. Sports law in India, in contrast to USA, France, China or Canada is still underdeveloped despite the presence of numerous sports authorities.

Approach of the Indian Judiciary

This judgment of the Hon’ble Supreme Court in Zee Telefilms ( aforementioned) is referred as Magna Carta of Indian Sports Law. The issue in question in this case was BCCI’s arbitrary termination of broadcasting rights agreement. Zee Telefilms, being the aggrieved party, filed a writ petition in the Supreme Court under Article 32 of the Constitution. However, a writ under Article 32 can only be filled against authorities that come within the meaning of ‘State’ under Article 12 of the Constitution. The court in its majority judgment ruled that BCCI did not constitute State within the meaning of Article 12 of the Constitution. Although, in his minority opinion Justice Sinha opined that BCCI is State. Over the span of his judgment, he featured the significance of Sports in India with explicit reference to cricket. His minority opinion discussed that importance of the role played by the sports authorities in various jurisdictions, for example, United States of America, Australia, United Kingdom, Scotland and New Zealand. This is presumably the only ruling in India which has talked about the significance of games in such expound detail.

Aside from Zee Telefilms case, there are different decisions as well which have contributed to the jurisprudence of Sports Law in India. In 1991, the Supreme Court in the case of K. Murugan v. Fencing Association of India, Jabalpur discussed the importance of sports in India. The issue under consideration was regarding election of members to the executive council of the Indian Olympic Association. The Supreme Court while expressing its hesitance to adjudicate upon the issue commented:

“This does not appear to us to be a matter where individual rights in terms of the rules and regulations of the Society should engage our attention. Sports in modern times have been considered to be a matter of great importance to the community. International Sports has assumed greater importance and has been in the focus for over a few decades. In some of the recent Olympic games, the performance of small States has indeed been excellent and laudable while the performance of a great country like India with world’s second highest population has been miserable.”

Ungoverned Authorities

Subsequent to the absence of enthusiasm of the State in Sports, the Sports experts in India remain generally ungoverned. There are different Sports bodies, for example, the Board of Cricket Control India for Cricket, the Indian Hockey Federation for Hockey, the All India Football Federation for Football, the Indian Basketball Association for Basketball, the All India Tennis Federation for the Tennis, and the Indian Olympic Association and the Sports Authority of India at the zenith. There is no focal sports authority other than the Ministry of Sports Affairs which externally administers these games bodies. Truth be told, there are instances where the financially sound sports authorities like BCCI have denied any intention to join the Ministry of Sports Affair. This shows that the Sports authorities integrate themselves with the Ministry for monetary advantages alone. In Zee Telefilms v Union of India, the Supreme Court touched upon this issue. It said that “the Sports bodies largely remain unaccountable to the state or any other central body inside the territory of India, which however should not be the case considering the importance of sports in the modern arena”

Are there no Enactments to Govern Sports?

In absence of a specific enactment for the entire country, the National Sports Development Code, 2011 governs the conduct of the National Sports Federations in India. Even though sports form a part of Entry 33 of the State List, Seventh Schedule of the Constitution of India, the validity of the above-mentioned code has been upheld by the Delhi High Court in Indian Olympic Association v. Union of India. There are two other draft Central bills i.e. the National Sports Development Bill, 2013 and the Prevention of Sporting Fraud Bill, 2013, which if promulgated would give further credence to the existence of sports law in India.

Corruption – Betting and Match Fixing

The sports law majorly revolves around the corruption that takes place in an event of sport. betting, gambling and match fixing are among the other integral factors contributing particularly to this corruption. Every event of sports, big or small, has been and is continued to be subject to betting and match fixing. To this topic, betting is acceptable to some extent; however, when such betting leads to match fixing is when it becomes problematic. This has led to development of profit making industry that indirectly is regulating sports while defeating the main essence of having a sport.

Remedies to Sportsmen

In this part we will examine the remedies available to Sportsmen if he finds himself in dispute with the sports authority. Every Sports authority has its own dispute resolution mechanism to deal with disputes. When a dispute arises between the Sports authority and the sportsmen, the sports authority would of course be a party to the dispute as well as the adjudicator.

Issues

  1. The international body to which they owe their allegiance also has a great role to play in the outcome. Hence, it is never an ideal process of adjudication when the disputes are handled by the sports authority.
  2. An athlete lives in a world where one misplaced word or action often threatens the immediate end of his athletic career. An athlete is always placed in a vulnerable situation in relation to Sports authorities.

The second option left for an aggrieved sportsman is to approach the Judiciary, which in all probability will add to the agony of the sportsmen rather than providing any relief. There are various infirmities associated with the Indian judiciary.

  1. The delay in disposing cases. Given that the opportunities for Sportsmen in their career are scarce and short-lived, it is wiser for him to restrain himself from approaching the judiciary.
  2. The judges are not well equipped with intricate aspects relating to the particular sports.
  3. There are very few advocates with dedicated practice in Sports law, Khurana and Khurana being one of exceptional few. It is also to be noted that sports disputes tend to rest on complex issues of Law.

Further, it is also to be noted that all the Sports authorities in India which are affiliated with the Indian Olympic Association have a much complex and unreasonable mode of dispute resolution. It is to be noted that a precondition to affiliation with the Indian Olympic Association is that the respective National Sports Federation/ Association/ State Olympic Associations would have to surrender right of seeking redress in any Court of law. All the disputes involving these Sports authorities would be submitted to the Indian Olympic Association which would suggest a panel of arbitrators from the Indian Olympic Association who would resolve the disputes.

This practice goes against  the fundamental principles of Natural Justice Nemo Judex in Causa Sua, as it fails to provide an Independent adjudicatory mechanism.

In case a Sportsman finds himself in dispute with the Indian Olympic Association or any Sports federation affiliated with the Indian Olympic Association, the adjudicators of the dispute would be his adversaries.

  1. The right to have resort to Civil Court is forfeited
  2. The adjudicator is the same as the disputant.

Such is the agony of Sportsmen who a member of I.O.A or of a Sports federation which is affiliated to I.O.A in India.

The third option for the Sportsmen is to have resort to private Arbitration or submit the dispute to Dispute resolution bodies like ICC, FICCI etc. These institutions have a panel of arbitrators from amongst whom the Arbitrator or mediator is appointed. Though it provides reasonable degree of flexibility regarding the choice of arbitrators, it is a rare possibility to choose an arbitrator reasonably well versed in the Sporting arena. A formal Sports Dispute Resolution body has its own advantage over any other form of Alternative Dispute resolution body like ICC or FICCI. This demonstrates the urgent need for establishing a standardized Sports Dispute Resolution Body.

Is Alternative Dispute Mechanism  an Ideal method of Resolution of Sports Disputes

The success of Court of Arbitration Sports or other Central Dispute resolution mechanisms in Canada, Australia or Ireland stands testimony to the success of alternative dispute mechanism in resolution of Sports disputes. However, it is important at this juncture to identify the reasons why there is a sudden influx towards these bodies. The prime advantage is that these Dispute Resolution Bodies are specialized and standardized Sports Dispute Resolution Bodies. Owing to the dearth of sports related litigation in Indian Courts, we take clue from the cases in other jurisdictions.

  • There are numerous deficiencies in litigation and hasn’t been a satisfactory mode or resolution of disputes whenever litigation has occurred. The general reluctance of Sports authorities to submit to the Jurisdiction of national Courts has been the major drawback. For example, in the case of the track star Butch Reynolds famously brought legal action that went on for four years and some fifteen stages of litigation and arbitration. At one point, after the International Amateur Athletic Federation (IAAF) had refused to appear in the proceedings, Reynolds won a $27 million default judgment.

This on the contrary would not be the case if the dispute was referred to Specialized Sports Dispute Resolution bodies, to which the Sports authorities have reverently submitted themselves.

  • The resolution of dispute through litigation gets unnecessarily protracted and complicated. The popular Lindland’s case featured two competitors for a single weight-class position on the United States wresting team for the 2000 Olympics in Sydney. The loser of the match, Matt Lindland, complained that the winner, Keith Seracki, had used illegal holds. The dispute went through thirteen stages of arbitration and litigation in the federal Courts, including unsuccessful appeals to the United States Supreme Court, as well as the CAS. In the end, the plaintiff won both his case and the silver medal in the Olympics. A simple one or two-step arbitration process would have been preferable. Moreover, ADR process allows the parties to obtain timely hearing, low overall costs,confidentiality, flexibility and a decision made by an expert familiar with sports.Confidentiality is one of the major highlights of ADR process in sports. We live in a world where sportsmen are regarded morally very high in the society. Media glare could do irreparable damage to this facet of Sports. Apart from the success rate of the Sports dispute resolution, bodies specialized in alternative dispute resolution mechanism like CAS, these are few of the advantages of having resort to Alternative dispute resolution. In the light of the arguments advanced above, we suggest that Alternative Dispute Resolution on a comparative scale is an ideal mode of dispute resolution for sports disputes.
  • A legal action brought at the eleventh hour of a Sports competition can disrupt the competition. It raises very important questions of respecting judiciary and continuing with the competition as well as connected questions about the eligibility of the player. In 1994 winter games, world-class skater Tony Harding was accused of physical assault on her United States competitor.The consequences of this timely litigation resulted in severe hardships to the United States Olympic Committee. Pursuant to this, the United States Congress amended Amateur Sports Act in 1998. According to the amendments, a Court may not generally impose any injunction against the United States Olympic Committee within 21 days of the beginning of a major Sports Competition. In contrast, none of the Indian Legislations or judicial pronouncements have imposed any such embargo limiting such timely litigations.

ADR process allows the parties to obtain timely hearing, low overall costs,confidentiality, flexibility. Further, arbitrators have expertise in the field. Apart from the success rate of the Sports dispute resolution, bodies specialized in alternative dispute resolution mechanism like Court of Arbitration of Sports, these are few of the advantages of having resort to Alternative dispute resolution.

Conclusion

For Sports and Sportsmen to flourish, Sport law needs to flourish in India; the intervention of the Legislature is must. India need to understand that sports is no more an insignificant array of sportsmen battling for top position but it also involves intricate legal issue and the entire career of the sportsmen is at stake. There is a distinct legal system emanating from this field and should be given adequate attention. Sports law should form part of the course curriculum for law students.

Sports Law is definitely a rewarding profession. Attempt should be made to ameliorate the sporting environment with the aid of law. Sport is not limited to recreation alone but is a matter of National pride. The emergence of Indian Premiere League and Indian Cricket League has started to raise very important issues regarding Competition Law in the recent times. This adequately demonstrates the need to improve Sports Law in India. Khurana and Khurana is actively involved in Sports Litigation as well as Sports Law arbitration.

Author: Mr. Shubham Borkar, Senior Associate – Litigation and Business Development  and Parimal Kashyap – Intern, at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at shubham@khuranaandkhurana.com or at www.linkedin.com/in/shubhamborkar.

References:

[1]Secretary, Ministry of Information and Broadcasting v. Cricket Association of Bengal, AIR 1995 SC 1236

[2]Zee Telefilms v. Union of India, (2005) 4 SCC 649.

Case Study: Zee Entertainment Enterprises limited v. Sony Pictures Networks India Private limited” : Copyright Protection with respect to Reality T.V. shows

INTRODUCTION

Copyright Law in India is governed by the Copyright Act, 1957. Section 13 of the Act defines the scope of existence of copyright by listing those works in which copyright subsists. Section 14 defines the meaning of copyright and describes the exclusive rights given to the author of the work. This Article analyses Copyright Protection for Format Ideas in Reality Television Programmes through case laws in India and other countries. Fully scripted half-hour dramas have become increasingly costly, with diminishing TRPs. It therefore is not surprising that the reality television genre has become so popular in recent times.

While hit shows can generate high revenues, they also are easily copied, forcing producers to try to protect their creative investments through resort to the courts. The most significant of these lawsuits assert intellectual property rights, concentrating on allegations of idea and format theft.[1] Zee Entertainment Enterprises limited v. Sony Pictures Networks India Private limited and Ors[2] also deals with a  similar issue thatwhether Plaintiff’s popular show “India’s Best Dramebaaz”, a televised talent hunt for child actors in 5-12 year age group has been illicitly copied by Defendant, and hence, infringed Plaintiff’s Copyright in its concept note?

COURT DECISION

1)  On Originality- A talent hunt requires eliminations from a larger pool and selection of a winner from a larger crowd. There has to be some process of auditioning. It is difficult to conceive of any talent hunt that goes about its stated business in any other fashion. There cannot, therefore, be exclusivity in this. Fact that both shows feature children, they seek out children with acting talent from different cities, and fact that they seek out best of these is hardly something in which anyone can claim any Copyright.

2) Defendant programme not infringed Plaintiff programme– In this industry, it is common to use this document called a ‘concept note’. It sets out the thematic structure, unique elements and so on. There is no doubt that copyright can vest in an original concept note as original literary work.[3] These are not just ideas. These are particularized expressions of ideas. But this is not to suggest that every page of a concept note enjoys the same level of protection. In a field as crowded as this there bound to be common elements and a plaintiff claiming copyright in some aspect of a show such as this will not get copyright in those matters that are undeniably in the public domain. It is not possible to accept that there can be any such monopoly in the concept of a talent hunt for children.

In the present case granting copyright protection to plaintiff would mean granting protection to an idea which is not the objective of grant of Copyright. We can understand this by applying different doctrines to understand the judgement in this case.

IDEA- EXPRESSION DICHOTOMY 

The idea-expression dichotomy was formulated to ensure that the manifestation of an idea (i.e. an expression) is protected rather than the idea itself.[4] An idea is the formulation of thought on a particular subject whereas an expression constitutes the implementation of the said idea.

In the present case we can say copyright does not extend to the idea and the idea is selecting child actors through reality shows.  Anyone can express this idea. There cannot be monopoly to seek out children with acting talent, therefore the plaintiff failed in its case.

MERGER DOCTRINE                                     

The idea and expression are intrinsically connected. The expression is no longer copyrightable because granting copyright over the expression will effectively confer the owner with a monopoly over the idea itself. Applying this doctrine courts have refused to protect the expression of an idea that can be expressed only in one manner, or in a very restricted manner.[5]

In the present case under discussion there is one idea that is of selecting child actors through reality shows and the way to express this idea has very limited scope. If both shows of plaintiff and defendant are on the same theme of seeking child actors then both shows will contain child actors, will have judges and selection of child actors will be done from different cities. There is no other way to do these.

SCENES A FAIRE

One may also contemplate instances where the expression of an idea cannot be made without the use of certain elements. The Courts consider these essential elements as non-copyrightable since protecting these will lead to the protection of the idea. Such essential elements are referred to as Scenes A Faire. Similarly, scènes à faire, sequences of events that necessarily result from the choice of a setting or situation, do not enjoy copyright protection.”[6]

In the present case as already said there are some elements which are non copyrightable  as selecting child actors and then declaring from among them a winner, these are sequences of events that necessarily result from the setting of the reality show seeking child actors.

RECENT TRENDS

In the case “Milano v. NBC Universal, Inc.” [7], the court granted judgment in favour of defendant. Court held the similarities were in elements that were not protectable. The similarities between the two works were the generic idea of a weight loss show and the Scenes A Faire (expressions that are standard or common to a particular topic) that flowed from that idea, none of which were protectable.

In a reality format case Fox Family Properties Inc. v. CBS Inc.[8], the court found that most of the elements, such as camera crews following contestants, running for 13 episodes, air dates and titles, were not entitled for protection.

INDIA

The most famous case for reality show and infringement is “Anil Gupta v. Kunal Gupta and Ors.” [9], where the plaintiff, conceived an idea of producing a reality television show containing the process of match making calling it “Swayamvar“. It was held that defendant could not reap the fruits of labour put in by the plaintiff. Defendant show based on concept of spouse selection in any form as a reality TV show cannot be permitted as that has been conceived by the plaintiff at the first instance.”It was also held that the idea per se had no copyright, but in case the same was developed into a concept fledged with adequate details, the same could be registered under the provisions of the Copyright Act, 1957. Further in case the confidential information was used with certain variations, the same would amount to violation of copyright under section 51 and 55 of the Act.

To conclude, it cannot be denied that concept notes that are submitted by individuals need to be given protection in order to encourage ordinary people to communicate their ideas and see their fruition into TV programs. But mere generic idea which is in public domain cannot be grant copyright protection.  The difference between “Zee case” and “Anil Gupta case” is that zee was claiming copyright over something where sufficient skill and judgment was not applied but in the “Swayamvar” case some unique idea was conceived for the first time which was also reduced into writing with adequate details for which sufficient labour and skill was applied in the concept note which was not the case with Zee. It is held that if sufficient skill and judgment applied then copyright protection is granted.[10]

Author: Purnashri Das, Hidayutullah National Law University, Raipur, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at pratistha@iiprd.com.

References:

[1] https://www.sheppardmullin.com/media/article/806_Reality%20Format%20Paper.pdf

[2]https://iiprd.wordpress.com/2018/02/16/copyright-and-reality-tv-shows/

[3] Section 2(o) of Copyright Act, 1957 defines Literary work.

[4]R.G. Anand v M/s Delux Films & OthersAIR 1978 SC 1613

[5]The Chancellors Masters and scholars of the University of Oxford v. Narendra Publishing House and Ors,2008 (38) PTC 385 (Del)

[6]Ibid

[7]584 F. Supp.2d 1288(2008)

[8]663 F.3d 122(3d Cir. 2011)

[9]97(2002)DLT257

[10] Eastern book company v. D.B.Modak(2008) 1 SCC 1

Carlsberg Breweries V Som Distilleries And Breweries Ltd: Delhi High Court Upholds The Maintainability Of Composite Suit For Design Infringement And Passing Off

Introduction

In a recent judgment dated December 14, 2018, a five-judge bench of Delhi High Court has ruled that a plaintiff can join two causes of action: one of infringement of the registered design of the plaintiff and the second of the defendant passing off its goods, against one defendant in a composite suit. Through this judgment, the court has effectively overruled the three-judge full bench judgment of Delhi High Court Mohan Lal v. Sona Paint and Hardwares[1].

The suit in question was filed, complaining of infringement of a registered design as well as passing off (of the plaintiff’s trade dress) in respect of the bottle and overall get up of the “Carlsberg” mark. The defendant objected to the frame of the suit, pointing out that per Mohan Lal,the two claims (for passing off and reliefs regarding design infringement) could not be combined in one suit. The question was sent to Delhi High Court for reference which constituted a special bench to decide the issue.

The issue in front of the court was to decide whether in one composite suit, there can be joinder of two causes of action, one cause of action being of infringement by the defendant of a design of the plaintiff which is registered under the Designs Act, 2000 and the second cause of action being of passing off by the defendant of his/its goods/articles as that of the plaintiff.

Joinder of Causes of Action in a Composite Suit

Joinder of two causes of action is governed by Order II Rule 3 of the Code of Civil Procedure.

Rule 3(1) reads as:

Save as otherwise provided, a plaintiff may unite in the same suit several causes of action against the same defendant, or the same defendants jointly; and any plaintiffs having causes of action in which they are jointly interested against the same defendant or the same defendants jointly may unite such causes of action in the same suit.”

Erroneous Application of Precedents in Mohan Lal

In Mohan Lal, the court differentiated a claim of design infringement from that of passing off. It opined that “fundamental edifice of a suit for infringement under the Designs Act would be the claim of monopoly based on its registration, which is premised on uniqueness, newness and originality of the design. Whereas, the action for passing off is founded on the use of the mark in the trade for sale of goods and/or for offering service; the generation of reputation and goodwill as a consequence of the same”.[2] Having reached this conclusion, the court relied upon the Supreme Court’s ruling in Dabur India Limited v. K.R. Industries[3] (‘Dabur’) and M/S. Dhodha House v. S.K. Maingi[4] (‘Dhodha House’) to hold that different causes of action cannot be combined in one suit. Therefore, in order to understand the court’s position, we must carefully examine both Dabur and Dhodha House judgments.

In Dhoda House, the court was faced with jurisdictional questions over a composite suit of copyright infringement and trademark infringement.The court did not consider the maintainability of the composite suit but it rightfully affirmed that Order II Rule 3 contemplates uniting of several causes of action in the same suit and even if the causes of action have no common nexus, the suit can be joined. However, the court in its judgment acknowledged that Order II Rule 3 would not ipso factoconfer jurisdiction upon a court in respect of a cause of action on which it originally did not have jurisdiction. That is to say, Order II Rule 3 would only apply to cases where the court has jurisdiction in respect of both the causes of action. Applying this interpretation to the facts of the case, the court held that the two causes of action had been incorrectly joined.

Supreme Court in Dabur examined the Dhodha House judgement and concluded that the issue of composite suit was never takeninconsideration in that case. It further clarified that the court in Dhodha Househad never ruled that two suits having different causes of action can be clubbed together as a composite suit.

However, similar to Dhodha House, the facts before the Supreme Court in Daburwere that a composite suit was filed with respect to two causes of action, where for one cause of action the court in which the suit was filed had territorial jurisdiction, and for the other cause of action the court had no territorial jurisdiction. Unlike Dhodha House, the court in Dabur considered the question of composite suit. It held that a composite suit can be filed for two causes of action where the second cause of action is essentially a right incidental to or supplemental to the main relief arising out of the main cause of action.[5] It even clarified that besides an incidental power, a supplemental power can also be exercised.[6]

Judgment of the High Court in Carlsberg Breweries v Som Distilleries and Breweries Ltd

After examining both the cases, the court held that Mohan Lal has erroneously applied the precedent set in Dabur and Dhodha House. It reasoned that none of the two cases concerned with joinder of causes of action in one composite suit of infringement of registered design and passing off.[7] The court also stated that Mohan Lal had failed to appreciate that the ratio of a case is facts dependent.

The court also negated the second ground of the Mohan Lal judgment which statedthat a claim of infringement was fundamentally different from that of passing off; and since no common questions of law and facts would arise between the two claims, a composite suit cannot be filed joining such claims.

The court went ahead to interpret the general law on joinders to ascertain whether there would arise common questions of facts and law in the two causes of action of infringement of registered design and passing off so that these two causes of action can be joined under Order II Rule 3 of the Code.

The court placed reliance on Prem Lata Nahata v. Chandi Prasad Sikaria[8] where Supreme Court had ruled that the main purpose of joining two suits was to save cost, time and effort and to make the conduct of several actions more convenient by treating them as one action.

It was said in the same case that “the jurisdiction to consolidate arises where there are two or more matters or causes pending in the court and it appears to the court that some common question of law or fact arises in both or all the suits or that the rights to relief claimed in the suits are in respect of or arise out of the same transaction or series of transactions; or that for some other reason it is desirable to make an order consolidating the suits”.[9] Hence, the ultimate question for decision in all the suits is the nature of the transactions that were entered into between the parties and whether the evidence in those transactions would be common.

The court made use of law laid down in Prem Lata Nahata and opined that “if the substantial evidence of two causes of action would be common, then there can be a joinder of causes of action under Order II Rule 3 CPC”. Likewise, if the evidence is for the most part different of the two causes of action, then there cannot be a joinder of causes of action.

The court also interpreted the term ‘cause of action’. To do this, the court visited the Supreme Court’s ruling in case of Kusum Ingots & Alloys Ltd. v. Union of India[10] where the term was interpreted to mean “every fact which would be necessary for the plaintiff to prove, if traversed, in order to support his right to the judgment of the Court”.[11]

The court finally applied the Delhi High Court judgement in M/s. Jay Industries v. M/s. Nakson Industries[12]concerning the joinder of two causes of action: first of infringement of plaintiff’s trademark and second of the plaintiff’s claim to a copyright in a label of the plaintiff. The court, in that case, had ruled that both the causes of action resulted from the single transaction of sale by the defendant and hence both causes of action could be joined.

The court applied the aforesaid judgment to the facts of the present case and opined that where the claims of infringement of a registered design and passing off arise from the same transaction of sale, the two causes of action will have common questions of law and facts. Hence, the evidence of the two causes of action will also be common. In such a situation, to avoid multiplicity of proceedings there should take place joinder of the two causes of action of infringement of a registered design and passing off against the same defendant in one suit, otherwise multiplicity of proceedings will result in a waste of time, money and energy of the parties and also of the courts.

Conclusion

With this judgment, the court has cleared the fog over maintainability of a composite suit of infringement of design as well as passing off. The approach taken by the court in Mohan Lal had been disregarded by Bombay High Court in 2017 in the case of Cello v Modware[13] where both the design infringement and passing off actions were maintained simultaneously in the same suit. However, Mohan Lal was, until now, still effective and binding in the jurisdiction of Delhi High Court.

The judgement upholds the fundamental rationale behind the provision of joinder of causes of action i.e. avoiding needless multiplicity of suits. The judgment has also affirmed that Remedy for passing off for a registered design can be brought if the said design is not functioning as a trademark and if the remedy of passing off is claimed for trade dress infringement or any other similar infringement. With ever escalating cost of IP litigation, the ruling in respect to the maintainability of the court, in particular, will bring massive relief to the plaintiffs. Composite suits for design infringement and passing off will also promote convenient disposal of such disputes.

Author: Mr. Parimal Kashyap, 3rd year BA LLB(Hons.) at Dr. Ram Manohar Lohiya National Law University, Lucknow Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at rishabh@khuranaandkhurana

References:

[1]AIR 2013 Del 143.

[2]ibid, para 24.

[3]Dabur India Limited v KR Industries, (2008) 10 SCC 595, para 34.

[4] (2006) 9 SCC 41.

[5]Dabur India Limited v KR Industries (2008) 10 SCC 595, para 25.

[6]ibid, para 34.

[7]Carlsberg Breweries v Som Distilleries and BreweriesLtdC.S.(COMM) 690/2018 & I.A. No.11166/2018.

[8] (2007) 2 SCC 551

[9]ibid, para 18.

[10] (2004) 6 SCC 254.

[11]ibid, para 6.

[12] AIR 1992 Del 338.

[13] Suit (L) No. 48 of 2017.

A Tale of Restasis: Misadventures of Sovereign Immunity

Allergan’s “Restasis®” is a branded ophthalmic cyclosporine emulsion, for the treatment of chronic dry eye, with annual sales of nearly $1.5 billion. Original patent covering the Restasis formulation (US 5,474,979), was set to expire in 2014. In an attempt to protect its Restasis franchise, Allergan filed more patents, covering the “specific formulation and the method of use”. The additional patents got granted, delaying the generic entry till 2024.

Paragraph IV: One of the popular approach adopted by generic manufacturers for early generic entry is to certify that any listed, relevant patent is invalid or will not be infringed by the manufacture, sale or use of the drug described in Abbreviated New Drug Application (ANDA). This method, i.e., using “Paragraph IV” filing is a technical infringement of existing patents and leads to litigation.

Inter partes review (IPR): Another method is invalidation of patents through Patent Trial and Appeal Board (PTAB), which offers economically viable and highly effective opportunity for competitors. Inter partes review (IPR) proceedings are filed with the United States Patent and Trademark Office (USPTO) and heard by PTAB as an alternative to or in conjunction with traditional patent litigation in the U.S. Court of Appeals for the Federal Circuit. Therefore, patent owners may have to defend their patents both at PTAB and in federal court. If the patent can be removed by invalidation, the competitor can easily copy the drug and get FDA approval via ANDA.

Generic Restasis: In 2015, Mylan, a global generic and specialty pharmaceuticals company, filed an ANDA with the FDA in order to manufacture and sell a generic version of Restasis and challenged the Restasis patents as invalid. Allergan sued Mylan in the Eastern District of Texas for infringement of the Restasis patents based on their filings of ANDA.

On June 2106, Mylan filed six inter parte review (IPR) challenges with PTAB, describing Restasis patents as obvious and hence non-patentable, following which PTAB in December 2016, granted Mylan’s petitions for IPR, finding it reasonably likely that Allergan’s patents were invalid. Subsequently, Teva and Akorn filed similar petitions. Even though, PTAB has a statutory deadline of exactly one year to complete the IPR, PTAB extended its deadline from December 2017 to April 2018. A consolidated oral hearing was scheduled on September 15, 2017.

Allergan’s manoeuver: Prior to the district court ruling, in September 2017, one week before the date scheduled for oral hearing in the IPR, an interesting transaction took place. Allergan responded to the threats from generic competition by announcing a controversial deal assigning their patents to New York State’s Saint Regis Mohawk Tribe. The Tribe, after the ownership change, updated PTAB and filed a motion to terminate the IPR proceedings for the Restasis® patents invoking tribal Sovereign Immunity.

Sovereign immunity: It refers to the doctrine that the government cannot be sued without its consent.  The concept of sovereign immunity stems from British common law, banning lawsuits against the king. Tribal sovereign immunity is a common-law privilege that is subject to regulation by Congress and not covered under the Eleventh Amendment of the U.S. Constitution. The immunity applies in federal or state court without regard to the relief sought or the nature of the controversy. The principle of sovereign immunity applied to Inter partes review, gives sovereign entities legal immunity to administrative patent challenges in front of the PTAB.

The deal: Allergan paid the tribe $13.75 million, with the promise of $15 million in annual royalties as long as the patents remained valid. The transaction included the full transfer of ownership of the Patents (U.S. Patent Nos. 8,629,111; 8,633,162; 8,642,556; 8,648,048; 8,685,930; and 9,248,191) to the Tribe and Allergan’s retention of an exclusive license to the Patents.

Allergan’s tactic was to claim the Tribe’s Sovereign Immunity and shield the Restasis patents from review by USPTO and ultimately from competitors. The license agreement expressly stated that the Tribe “…..will and shall assert its sovereign immunity in any contested PTO proceeding, including in the IPR Proceedings”. The Tribe, after the ownership change, filed a motion to terminate the pending IPR proceedings using the defense of sovereign immunity. The unusual deal, first of its kind in the pharmaceutical industry, invited criticism from all domains. Allergan defended by saying it entered into the deal with tribe to avoid “double jeopardy” of having its patents challenged in both federal court and through administrative review.

Court Litigation: On October 16, 2017, after trial in August the Texas federal court Judge Bryson invalidated four out of six Restasis patents because they described methods of treatment that were obvious in light of earlier patents granted to the company. This decision came before the PTAB ruling, rendering Allergan’s move of Sovereign immunity largely meaningless. The judge severely criticized Allergan’s deal with the tribe, in an attempt to escape validity challenges in IPR proceedings. In a thorough 135-page judgement, the court found that Allergan had secured these Patents “by way of a presentation that was more advocacy than science.”

The invalidation grounds: The earlier patents of Allegan (US 5,474,979), with expiry in 2014, disclosed a composition with 0.1% cyclosporine. This composition was proven to be safe and effective in Phase III FDA testing, but Allergan did not apply for final approval of this formulation. The additional patents, as part of evergreening, disclosed a composition with 0.05% cyclosporine, which also cleared FDA testing and is the actual formulation used in Restasis. The later patents were initially objected to but later on granted by the USPTO, based on the expert testimonies provided by Allergan, highlighting the “unexpected and surprise” findings. In Phase 2 trials, a 0.1% cyclosporine formulation outperformed the 0.05% cyclosporine formulation, which was eventually approved by the U.S. (FDA) in the new drug application (NDA) submitted for Restasis. The efficacy of the 0.05% cyclosporine formulation in Phase 3, outperforming the 0.1% formulation results from Phase 2, was quoted as “unexpected and surprise” finding by Allergan’s research employees.

Judge Bryson found that a person skilled in the art, reviewing the Phase 2 results published by Allergan wouldn’t conclude that the 0.1% cyclosporin formulation was more effective than the 0.05% cyclosporine formulation at the conclusion of Phase 2 trials. The FDA’s medical review of the Phase 3 trials indicated that the 0.05% cyclosporine formulation resulted in statistically significant higher responder rates. Statistically significant didn’t equal unexpected according to Judge Bryson. He concluded that the FDA’s primary objective in its analysis was to determine whether the 0.05% cyclosporine formulation was effective against a castor oil only vehicle and not to determine the efficacy of the 0.05% against 0.1% formulation. The so called unexpected results were found to be foreseeable based on the early cyclosporine studies as the Restasis formulation has statistically the same efficacy as one of the prior art examples.

PTAB decision: On February 23, 2018, PTAB issued a decision denying the Tribe’s motion to terminate Mylan’s patent challenge regarding the Restasis patents. PTAB found that even if tribal sovereign immunity did apply, the IPR proceeding could continue with or without the Tribe’s participation because Allergan retained ownership interest in the challenged patents. The exclusive licenses sold back to Allergan were so significant that the tribe was essentially giving the ownership back.

Federal Circuit affirmation: Following the decision of PTAB, Allergan and the tribe filed an appeal brief at the Court of Appeals for the Federal Circuit in April 2018, arguing that it was entitled to sovereign immunity from administrative proceedings. In November 2018, the United States Court of Appeals for the Federal Circuit issued a Rule 36 judgement affirming the judgment of the Eastern District of Texas that patent claims covering Allergan’s Restasis dry eye treatment were invalid under 35 U.S.C. § 103 grounds for obviousness. Federal Circuit Appellate Rule 36 authorizes the Court in certain circumstances to “enter a judgment of affirmance without opinion”. Rule 36 decision is a proper procedural tool to use when there are no genuine issues of law and that a written opinion would not further the cumulative body of law. For Allergan, Rule 36 affirmation was a final fatal blow to the Restasis patents.

Conclusion: This case is a perfect example of ingenuity in finding the loopholes in the system to keep patents valid and enforceable to ward off the competition by any means. If this strategy was successful, it could have had serious consequences on the patent legal framework and would have set precedence for pharmaceutical companies to partner with other sovereign entities and circumvent the law, thereby delaying the entry of generics. However, rulings of PTAB and Federal Court denying the benefits of Sovereign Immunity to Allergan effectively closed a loophole in the law that could have opened the floodgate for such sham deals.

Author: Dr. Gurmeet Kaur Nanda, Principle Associate – Patents at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at Gurmeet@iiprd.com.

References:

[1] King L. Wong, Indian Tribal Sovereign Immunity Asserted in an IPR, BIOLOQUITUR, (Sep 25, 2017), https://www.lexology.com/library/detail.aspx?g=8646562b-50af-4668-ae72-2df6e814b69a.

[2] Josh Landau, Inter Partes Review: Five Years, Over $2 Billion Saved, PATENT PROGRESS, (Sep 14, 2017), https://www.patentprogress.org/2017/09/14/inter-partes-review-saves-over-2-billion.

[3] 35 U.S.C. § 316(a)(11) (2016)

[4] Allergan, Inc. v. Teva Pharms. USA, Inc., No. 2:15-cv-1455-WCB, 2017 WL 4619790, at *4(E.D. Tex. Oct. 16, 2017).

[5] Allergan, Allergan and Saint Regis Mohawk Tribe Announce Agreements Regarding RESTASIS® Patents, (Sep 8, 2017), https://www.allergan.com/news/ news/thomson-reuters/allergan-and-saintregis-mohawk-tribe-announce-agr.

[6] Jan Wolfe and Michael Erman, S. judge in Texas invalidates Allergan patents on Restasis, REUTERS, (Oct 16, 2017), https://www.reuters.com/article/us-allergan-patents/u-s-judge-intexas-invalidates-allergan-patents-on-restasis-idUSKBN1CL2KE.

[7] Gene Quinn & Steve Brachmann, Blockbuster Restasis Patent Goes Down at Federal Circuit a Victim of Rule 36, IPWATCHDOG, (Nov 15, 2018), https://www.ipwatchdog.com/2018/11/15/blockbuster-restasis-patent-federal-circuit-victim-rule-36/id=103309/.

United States District Court for the District of New Jersey invalidates all asserted claims of US Patent No. 8822438 for prostate cancer drug Zytiga (Abiraterone Acetate)

US healthcare giant Johnson & Johnson (J&J) on Oct. 26, 2018 announced that the District Court of New Jersey has issued a ruling that invalidates all the claims of J&J subsidiary Janssen’s US Patent No. 8,822,438 for the prostate cancer drug Zytiga® (abiraterone acetate). The patent challenge was brought by generic drug makers who had questioned the validity of the US8822438 patent which is scheduled to expire on August 24, 2027.

The defendants in this case are Amerigen Pharmaceuticals; Amneal Pharmaceuticals; Dr. Reddy’s Laboratories; Mylan Pharmaceuticals; Teva Pharmaceuticals USA, Inc. (“Teva’9; West-Ward Pharmaceutical Corporation, and Hikma Pharmaceuticals, LLC (“West-Ward/Hikman”); and Wockhardt. The defendants are generic drug companies who seek to engage in the commercial manufacture, use, offer for sale, or sale of a generic version of the plaintiff’s branded drug, ZYTIGA®.

ZYTIGA® (abiraterone acetate) is a prescription medicine that is used along with prednisone. On February 7, 2018, the USFDA approved Zytiga in combination with prednisone for treatment of men with metastatic high-risk castration-sensitive prostate cancer (CSPC). The USFDA initially approved abiraterone acetate with prednisone in 2011 for patients with metastatic castration-resistant prostate cancer (CRPC) who had received prior chemotherapy, and expanded the indication in 2012 for patients with metastatic CRPC. The recommended dose for Zytiga for metastatic CSPC is 1,000 mg orally once daily with prednisone 5 mg orally once daily. Zytiga had sales of $1.4 billion in the first 9 months of 2018 in the US alone.

The plaintiff, i.e. Janssen alleged infringement of claims 4, 8, 11, 19 and 20, all of which rely on claim 1 of the US 8,822,438 patent, based on the defendants’ filing of Abbreviated New Drug Applications (“ANDAs”). If defendants’ ANDAs are approved, defendants will allegedly induce infringement of the asserted claims of the US 8,822,438 patent under 35 U.S.C. § 27 1(b) and contribute to infringement of the asserted claims under 35 U.S.C. § 27 1(c). Defendants denied infringement and claimed that the patent claims are invalid for obviousness and for lack of a written description.

The US8822438 patent covers method of treatment of a prostate cancer in a human by co-administering Zytiga with steroid prednisone. Independent Claim 1 of the US8822438 patent reads as follows:

“A method for the treatment of a prostate cancer in a human comprising administering to said human a therapeutically effective amount of abiraterone acetate or a pharmaceutically acceptable salt thereof and a therapeutically effective amount of prednisone.”

Essentially, the US District Judge McNulty ruled as follows “Like the PTAB, I find that the ‘438 patent is invalid for obviousness. I find the patent’s written description to be adequate, however. In the alternative, and to facilitate appellate review, I have ruled on the infringement issues that were tried. Assuming that the ‘438 patent is valid, I find based on the proposed generic labels that the ANDA defendants’ marketing of abiraterone would infringe, on either an induced infringement or contributory infringement theory”.

The US District Judge McNulty found that there was more than sufficient motivation for a person of ordinary skill in the art (POSA) to combine abiraterone with prednisone. The Judge ruled that prednisone’s ability to reduce pain and side effects in cancer patients “would furnish a powerful motivation” to combine prednisone with Zytiga’s active ingredient and as such: “That road led straight to the practice of the patented method: the target condition would be prostate cancer; the target population would be the subset of patients who had mCRPC; the dosage would be 1000mg of abiraterone and 10mg of prednisone daily; the object would be to slow the spread of the disease by hormone deprivation; the clinical results would be the same, and would be measured by prolongation of life (or, in the interim, by proxy metrics such as reduction of PSA levels)”. The judge concluded that “the patented combination here was well foreshadowed in peer-reviewed articles. That factor outweighs the others. Balancing all of the prior art and the other indicia, I find that the evidence favors a conclusion of obviousness. Tokai Corp. u. Easton Enters., 632 F.3d 1358, 1370 (Fed. Cir. 2011) (“However, even assuming the existence of a nexus, we see no error in the district court’s determination that Tokai failed to establish ‘that any of these secondary factors are significant,’ . . . in light of the strong showing of prima facie obviousness.”).”

The judge also said that if the US8822438 patent is found to be valid upon appeal, the generic-drug companies would infringe it. The decision has come after a number of generic-drug companies including Teva Pharmaceutical Industries Ltd., Mylan NV, and Amneal Pharmaceuticals Inc submitted Abbreviated New Drug Applications to sell generic versions (250 mg and/or 500 mg tablets) of the drug.

Caroline Pavis, a spokeswoman for J&J’s Janssen unit said “We strongly disagree with the court’s ruling and will continue to defend the patent.” “We plan to appeal the decision.”

Previously, on 17 January 2018 the US Patent Trial and Appeal Board (PTAB), in three inter partes proceedings, found the US8822438 patent invalid for being obvious. A motion for reconsideration remains pending.

Author: Mr. Antony David , Principal Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at antony@khuranaandkhurana.com

Back-To-Back Victories for Christian Louboutin in IP Infringement Suits: E-Commerce Websites Are Also Accountable For the Sale of Counterfeit Products Online

After winning exclusive ownership of its trademark “Red Sole” design in an infringement suit, Christian Louboutin has yet again made headlines in another trademark infringement suit against e-commerce website www.darveys.com, which allegedly sold counterfeited or fake products on their website claiming them to be original products of the world-renowned luxury brand. This latest judgment has come in the wake of urgent need of IP owners who are facing challenges from online marketing websites by way of sale of fake or counterfeited products which is leading to heavy goodwill as well as monetary losses. Such sellers on the e-commerce websites are able to protect themselves by seeking shelter behind the platform’s legitimacy, without incurring any liability, such as in the present case.

Factual Background

Plaintiff, Christian Louboutin, is a world-renowned brand, known for luxury products and the Defendant is an e-commerce website, which exclusively sells luxury products, to its members only. Plaintiffs alleged sale of its “impaired and counterfeited” products on Defendant’s website under their trade name ‘Christian Louboutin’. Plaintiff asserted proprietary rights in the name in the image of Christian Louboutin, in the name Christian Louboutin, in the Red Sole design, in the logo of Christian Louboutin and in the write up thereof. Defendants pleaded exemption under Section 79 of the Information Technology Act, 2009 (“IT Act”) stating to be mere “intermediaries” who only book orders. The actual supplies being made by various sellers.

When can E-commerce websites or online marketplaces be considered as intermediaries? 

Most frequently pleaded ground of defence by E-commerce websites in IP infringement suits is claiming exemption as an ‘intermediary’ under Section 79 of the IT Act. In the present case, the Court has clarified the position of e-commerce websites or online marketplace as intermediaries. Placing reliance on various judgments, the Court observed that, in general, in India intermediaries have been given exemption in various fact situations including in the case of uploading of content by users, copyright infringement and violation of design rights. The Court held that definition of intermediaries under Section 2(w) of the IT Act specifically includes online marketplaces or e-commerce websites since they provide services to the customers on behalf of the actual sellers but “while the so-called safe harbour provisions for intermediaries are meant for promoting genuine businesses which are inactive intermediaries, and not to harass intermediaries in any way, the obligation to observe due diligence, coupled with the intermediary guidelines which provides specifically that such due diligence also requires that the information which is hosted does not violate IP rights, shows that e-commerce platforms which actively conspire, abet or aide, or induce commission of unlawful acts on their website cannot go scot free. So long as they are mere conduits or passive transmitters of the records or of the information, they continue to be intermediaries, but merely calling themselves as intermediaries does not qualify all e-commerce platforms or online market places as one”.

Section 79 of the Information Technology Act

The Section does not apply if a platform is an active participant or is contributing in the commission of the unlawful act. The words conspired, abetted, aided or induced have to be tested on the basis of the manner in which the business of the platform is conducted and not on a mere claim by the platform. Section 79(3) (a) limits the exemption only to those intermediaries i.e. platforms and online market places who do not aid or abet or induce the unlawful act. Any active contribution by the platform or online market place completely removes the ring of protection or exemption which exists for intermediaries under Section 79.

Decision

The Court made the following observations:

www.darveys.com, the Defendant, is involved in the promotion and sale of luxury products. The seller is located on a foreign shore and it is not clear as to whether the seller is selling genuine products. The Defendant promotes the products to its members who sign up on their website and without becoming a member, one cannot affect a purchase on Darveys.com. In such cases granting exemption under Section 79 would amount to legalizing the infringing activity. The seller is not known, the person from whom the seller purchases the goods is not known. It is also not known if the product is genuine, though the Defendant represents to be the same to be genuine. In view of these factors, Darveys.com cannot be termed as an intermediary that is entitled to protection under Section 79 of the IT Act. The use of the mark, Christian Louboutin, the name, the photograph of the founder, without the permission of the Plaintiff, and without ensuring that the products which are sold are in fact genuine, would constitute a violation of Plaintiff’s rights.

Meta-tagging allows the infringing party to ride on the goodwill of the IP owner, who shall not only face monetary loss but also huge loss of customer base, goodwill and its reputation due to the sale of counterfeit products especially in sector of luxury products, Moreover, if the sellers themselves are located on foreign shores and the trademark owner cannot exercise any remedy against the said seller who is selling counterfeits on the e-commerce platform, then the trademark owner cannot be left remediless.

The Court ruled in favour of the Plaintiff and against the Defendants without costs. This judgment has clarified the position of ‘intermediaries’ under IT Act and has significantly changed the vulnerable position of IP owners regarding e-commerce websites, online sales of fake products and liability of parties.

Author: Mr. Rishabh Tripathi, Legal Intern at Khurana & Khurana, Advocates and IP AttorneysIn case of any queries please contact/write back to us at vatsala@khuranaandkhurana.com.

Recent Grant of Patent is Valid Ground of Defence for Refusal of Interim Injunction in Infringement Suits: Galatea Ltd & Anr. V. Diyora and Bhandari Corporation & Ors.

BRIEF FACTS

Plaintiffs are Israeli companies, engaged in the business of developing and providing inclusion scanning methods in rough diamonds and the Defendants are Indian companies are also engaged in the business of manufacturing and providing inclusion scanning services and in some cases are engaged in selling of inclusion scanning machines and rendering inclusion scanning services to its customers. The Plaintiffs claimed infringement of their suit patent by the Defendants by using of infringing machines, directly or indirectly. An ex-parte interim injunction prayed by the Plaintiffs was rejected by the Ld. Single Judge on the ground that the Plaintiffs have not fulfilled the prima facie conditions necessary for an ex-parte injunction. The said Order rejecting the injunction was challenged in Gujarat High Court.

 CLAIMS

 Plaintiffs claimed that previous several inventions have been made to the presence of inclusions in transparent and partly polished stones through imaging but none could determine the exact location of the inclusion since refractive index of the stone and the air lead to generation of multiple images produced by a single inclusion further more inventions took place to reduce the refraction and to obtain accurate location of inclusions but they also failed. Plaintiffs’ claims to have invented an apparatus and a method which are the subject matter of Plaintiffs’ suit patent and the Defendants are manufacturing or procuring, importing and selling duplicate/infringing machines. They are using such machines to provide services to third parties.

JUDGEMENT OF LEARNED SINGLE JUDGE 

By the judgement dated 26.03.2008, Ld. Single Judge rejected the interim injunction application of the Defendants on the following ground:

  1. On the basis of commissioner’s report, no apparatus was found in the machine of the Defendants which would infringe Plaintiffs suit patent prima facie and the said machine is liable to be tested and after such only it can be determined whether infringement has taken place or not.
  2. The suit patent was considered to be new in the sense that it is granted on 22.2.2016 and its validity is yet to be adjudicated.
  3. Patents which are granted to the Plaintiffs in other countries cannot be made basis of an action of infringement in India.

Similarity in the end results of the machine does not determine the infringement

  1. Defendants pleaded against the use of vacuum pump or any apparatus for removal of bubbles and only because the end result of the two machines is the same, would not constitute infringement of the Suit Patent.
  2. The Defendants were directed to maintain separate accounts for sale of any machines manufactured and/or sold by any of the defendants and restrained them from using any device for bubble removal in their machines till final disposal of the suit.

Appeal was preferred by the Plaintiffs against such Order of the Ld. Single Judge.

APPEAL BEFORE DIVISION BENCH

Interpretation of Section 107(1) and 64 of Patents Act

Mere grant of patent would not give an indefeasible right to the plaintiffs to enforce the patent in a suit and to claim the interim injunction pending such suit. If the patent is old time tested one, existing since long, the Court would consider it with due regard and would lean in favour of enforcing it in absence of any other reason to the contrary. On the other hand, if the patent is relatively new, the Court would be slow in enforcing it at the interim stage, unless shown to be beyond vulnerability. In the context of patent being new or old, the Courts have often employed a yardstick of six years time. The Bench relied on judgments of TVS Motor Company Limited(supra), V. Manioka Thevar v. Star Plough, TEN DC Wireless Inc and Anr. V. Mobi Antenna Technologies (Shenzhen) Co Ltd Works, Melur.

 Essentials for deciding to grant or refuse an injunction in a Patent infringement suit are:

  1. Whether patent is an old time tested one or a recent one?
  2. Whether the person interested have either applied for revocation of the patent or opposed the patent in the suit?
  3. Whether in such proceedings the defendants have made out a prima facie case of vulnerability of the patent on any of the grounds otherwise available for revocation of the patent such as lack of any innovative step or existence of prior art?

Held

The Bench held that the predominant prima facie feature of the patented apparatus and method invention claimed by the Plaintiff is the vacuum pumps which remove the impurities and bubbles to eliminate the possibility of third refractive index which removes distortion in images of inclusions in the gemstone.  Controller’s report was also taken into account that vacuum pumps are essential part of the suit patent and Defendants also stated that they are not using vacuums pumps in their device which was also revealed from the Court Commissioner’s report who, at the time of inspection, did not find any device containing vacuum pumps.

Most integral reasoning given by the Court for refusing the interim injunction to the Plaintiffs was that the Patent itself is a recent one and has not been previously tested in court of law, also the Defendants have succeeded in demonstrating the vulnerability of the suit patent by citing various similar techniques used widely for of inclusion in gemstones. Considering all factors and arguments, the Hon’ble Court refused the interim injunction since it was found that prima facie case, irreparable loss and balance of convenience bends towards the Defendants, at the present stage.

Author: Ms. Vatsala Singh, Litigation Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at vatsala@khuranaandkhurana.com.

Reference:

[1] R/APPEAL FROM ORDER NO. 109 of 2018, High Court of Gujarat

Regulation of Content Available On Video-On-Demand Players Like Netflix, Amazon Prime, Zee5, Hotstar

There are various video-on-demand streaming (VOD) platforms like Netflix, Amazon Prime, Hulu, Hotstar etc. which provide online streaming services allowing people watch a wide-variety of contents like TV Shows, web-series, sitcoms, movies, documentaries etc. What makes these VOD’s different from a typical television channel or a movie theatre is that they allow the viewer to choose and decide what, where and when to watch the videos we like. Therefore, one can enjoy unlimited viewing of the content available on such online streaming platforms without taking pain of watching a single commercial. These platforms are subscription based , a person can avail the services from these platforms which include video contents along with rating guides and episode synopsis in-order to help viewers decide what they want to watch and what they don’t. However, these VOD’s are facing multiple court cases wherein there are allegations of depicting contents on their apps which are not morally good for the society.  Before going into the details of the issue, it is important to understand the reason why such issue has arisen in the first place. For a better understanding let’s have a look at the petition filed before the Delhi and the Bombay High Court.

The Petition

Few days back, a PIL has been filed in Delhi High Court by an NGO called Justice for Rights Foundation seeking framing of guidelines to regulate the functioning of online media streaming platforms /on-demand entertainment apps such as Netflix, Amazon and others[1] alleging that they show “unregulated”, “uncertified”, “sexually explicit”, “vulgar”, “inappropriate”, “religiously forbidden” and “legally restricted” content. Some of their shows often “depict women in objectifying manner”. In August, 2018 the Ministry of Information and Broadcasting has received an application to ban shows like Sacred Games, Game of Thrones, Spartacus etc. in India. The petition was filed before the Hon’ble court seeking guidelines in order to regulate the uncertified, pornographic, sexually explicit, vulgar, profane and legally restricted contents broadcasted on the online platforms including Netflix, Amazon etc. seeking a writ of mandamus to the respondents to frame legal provisions/guidelines in order to regulate the said online platforms and contents broadcasted on the online platforms, and to direct the respondents to pass necessary directions to all such online platforms to remove such content with immediate effect. It was alleged that these shows contain “obscene, nude and vulgar scenes” which are cognizable offences under the Cinematography Act, Indian Penal Code, Indecent Representation of Women (Prohibition) Act and the Information Technology Act. For instance, content from ‘Charlie and the Chocolate Factory’ where the scene depicting animal (the holy ‘Cow’) abusive is available for view (for viewers of age 7 years and above) on Amazon Prime video.

A similar petition has also been filed before the Nagpur bench of Bombay High Court by Divya Gontia against AltBalaji for broadcasting show ‘Gandi Baat’ and against Netflix for ‘Sacred Games’.[2] In this case, the petitioner has approached the court under Article 226 and 227 of the Indian Constitution in the interest of securing justice to the general public of the country and especially members/supporters of Indian National Congress whose revered figure Shri Rajiv Gandhi is sought to be defamed in the name of artistic freedom. It was alleged that the show ‘Sacred Games’ has inappropriate dialogues, speeches and even political attacks which are derogatory in nature and harms the reputation of the former Prime minister Shri Rajiv Gandhi. The petitioners have taken the reference of Secretary, Ministry of Information and Broadcasting, Govt. of India v. Cricket Association of Bengal where the court observed that in today’s context electronic media has become the most powerful tool because of its audio visual impact and its widest range covering almost all the sections of the society and can be easily accessible by the children at home. [3] Further, it was also alleged that the show incorrectly depicts historical events of the country like Bofors case, Shah Bano case, Babri Masjid case and communal riots, which is maligning the reputation of the former Prime Minister Rajiv Gandhi and also defames him internationally. The petitioners have taken the plea that the portrayal of historical figures especially a former prime minister has to be done in a historically accurate manner and creativity cannot be used as a pretext to malign or sully their image. Also, it is reprehensible that only for the sake of TRP and to earn some profit the producers have come down to such a level that they have projected former prime minister in the bad light when he is a role model to millions of Indians.

What Are The Consequences?

In the aforementioned petition filed before Delhi High Court, the main issue before the court is that Netflix and Amazon are broadcasting illegal and morally inept contents on the on-demand web shows which are vulgar, vile and violent. The petition was filed seeking intervention from the High Court to clamp down on the “unregulated, uncertified, sexually explicit, vulgar, profane and legally restricted content broadcasted on the online platforms including Netflix, Amazon Prime Video etc. The petitioner has demanded the Hon’ble High Court to frame regulatory guidelines for online shows and to ban objectionable content on online shows. In case if the court has accepted the arguments of the petitioner, then there are highly likely chances that these on-demand entertainment apps can face possible ban. However, the matter was not taken up since the bench did not assemble and it is expected to be taken up next on November 14.

Are There No Laws To Restrict Such Platforms?

The answer to this question is NO. There are various acts that govern different domains; however, since such VOD platforms are actually a mix of many domains, there is no single law which covers it completely. For example, in the above mentioned petition ,it was alleged that the contents depicted in these VODs platforms is violative to the Information Technology Act, 2000 (hereinafter referred to as the ‘IT Act’). Section 79 of the IT Act puts onus on the intermediaries to observe due diligence while discharging their duties under the act and to observe guidelines as prescribed by the Central government. However, Section 79 of the IT Act does not apply to all the online platforms in the present case as a blanket provisions as these platforms stream third party content and also give self generated content.

Further, the Cinematograph Act, 1952 is not applicable to an online movie streaming service as the same along with its rules only govern the censorship of films in Theatres and Television, and content that is streamed online does not fall under the domain of Cinematograph Act. Further, the Section 3 of the Cinematograph Act provides for the establishment of Central Board of film Certification   (CBFC) and the purpose behind is to certify films which are intended for “public exhibition”. The term “public exhibition” has not been defined anywhere in the act or its rules therefore, there is issue of interpretation involved that whether public exhibition would include only to film available for watching only in public places like Multiplex or it would also include video content available to public for watching whether in public or private.

The Cable Television Network (Regulation) Act, 1995 governs the cable network operators, and under Rule 6(n) of the Cable Television Network (Regulation) Rules, 1994 they are required to ensure that the films that can be accessed by their viewers should be certified from CBFC. Going by this analogy, the term “exhibition” of films can be said to include “exhibition” of films for private viewing by the public.

Why These Acts Cannot Be Applied To Video–On-Demand Platforms?

However, the problem persists as different media are regulated by different legislative frameworks, one cannot compare Netflix or Amazon prime with a multiplex as Netflix provides viewing in Private. We can also not compare Netflix with a Cable operator as they have pre fixed sequence of content and viewer can not choose what and when and where he wants to view the content, all he can do is to change the channel, but he does not have any control over the sequence of the content, whereas in the case of video-on-Demand Platforms viewer has absolute control over what, when, where he want to watch. Another major difference between Cable operator and video-on-demand platforms is that the former uses satellite signals to distribute content whereas the latter uses networks of telecom operator and hence they cannot be equated.

Indecent Representation of Women

The scenes depicted on these online entertainment apps are also violative to the Indecent Representation of Women (Prohibition) Act (IRWA), 1986 which seeks to “prohibit indecent representation of women through advertisements or in publications, writings, paintings, figures etc”.  The Act penalizes persons involved in the publication, distribution and packaging of prohibited materials however, such material can be published for scientific purposes or representation of ancient monuments. Recently, the Nagpur bench of the Bombay High Court took a strong view over pornographic contents of Netflix, Amazon Prime, Hotstar and other channels on internet and directed the Information and Broadcasting Ministry to initiate effective steps to control and regulate these contents. The bench comprising of Justice Bhushan Dharmadhikari and Justice Murlidhar Giratkar also directed the concerned ministries to set up a pre-screening committee for monitoring the contents before they are released on online media. The direction issued by the High court will be helpful in curbing crudity, sexual or unsavoury language, vulgar actions, nudity, sex and immodesty on web series.

Right To Free Speech And Expression

These video-on-demand cannot be left to broadcast unrestricted, unregulated content in the name of right to free speech and expression, as even the fundamental right of freedom of speech and expression granted under article 19(1)(a) of the constitution of India, 1950 is also subject to certain restrictions, like respect of the rights or reputation of others, protection of national security or of public order or of public health or morals etc. The word ‘reasonable restriction’ corresponds to the societal norms of decency. The contents shown on such online platforms are definitely violative of Article 19 of the Indian Constitution and therefore the said platforms are bound by reasonable restrictions guaranteed under article 19(2). The fundamental right to carry on trade or business does not extend to carry on trade or business of products or equipment that could interfere with the safety, health or peace of the citizens. Furthermore, the said content on such online platforms shows women in bad light and merely as an object which is also violative of their fundamental right to live with dignity as enshrined under article 21.

Conclusion

In the above backdrop, it is high time for the government to come up with stringent laws in order to put a check on the contents that are not morally appropriate for the society. In the present case, no efforts were made to regulate the said online platforms or to remove such legally restricted contents in order to put an end to this problem. This ignorance of the government actually provides such platforms another opportunity to perpetuate the illegality. The said online platforms go unchecked due to lack of certifications or legislations and are not regulated properly because of lack of guidelines or provisions of law specifically dealing with such contents. Now, it really becomes important to tackle such online platforms which operate unregulated and unchecked on an urgent basis.

I strongly believe that anything that disturbs public tranquility or public peace disturbs public order. The right of freedom of speech and expression cannot be extended in order to accommodate “just anything” to be beamed in every home especially when it concerns the former prime minister of our country who is a hero to the millions of people. Netflix in the present case have taken undue liberty and have completely distorted the historical facts which directly impact the reputation of Shri Rajiv Gandhi and are highly slanderous. In Kanu Biswas v. State of West Bengal case, the court held that “in order to determine the effect of an act on the law and order situation in the society, it is important to see the disturbance of the current life of the community which leads to the disturbance in the public order.”[4] We believe that the inaction on the part of the Information and Broadcasting ministry in not taking a proactive step to control and regulate the online streaming platforms led to the violation of Fundamental Rights guaranteed under Article 19 and 21 of the Indian constitution because there is an inseparable interconnection between freedom of speech and stability of society.

We believe that the screening of pornographic contents, vulgar gestures and talks are overriding the Indian culture and morality and there is no controlling and monitoring authority for such video-on-demand platforms. Therefore, it becomes important that there must be a monitoring machinery to control such web contents. Also, in interest of the public at large, the Hon’ble court must impose deletions on visuals and dialogues relating to former Prime Minister Rajiv Gandhi which are found to be derogatory in nature and under article 19(2) reasonable restrictions can be imposed on freedom of speech and expression on account of ‘Public order’ which is synonymous with public peace, safety and tranquility.

Author: Mr. Shubham Borkar, Senior Associate – Litigation and Business Development, Mr. Rishabh Tripathi, Legal Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at shubham@khuranaandkhurana.com.

References:

[1]  Justice for Rights Foundation v. Union of India W.P (C) No. 11164/2018.

[2]  Nikhil Bhalla v. Union of India Writ Petition (Civil) Number 2018/7123.

[3]  Secretary, Ministry of Information and Broadcasting, Govt. of India v. Cricket Association of Bengal (1995) 2 SCC 161.

[4]  Kanu Biswas v. State of West Bengal [1972] 3 SCR 831.