Category Archives: Legal Issues

Samsung Acquires Hera Wi-Fi Patents Through (Patent Troll?) Sisvel

Sisvel UK Limited (“Sisvel”) arranged and finalized a Wi-Fi patent license agreement between Samsung Electronics Co. Ltd. (“Samsung”) and Hera Wireless S.A. (“Hera”), on June 7, 2018. Hera is the wholly owned subsidiary of Sisvel International S.A., the holding company of the Sisvel Group. The Sisvel Group has companies in major countries across the world such as the United States, Italy, China and Germany, among others.

Hera’s portfolio has over 100 patents across various jurisdictions such as the United States and Japan. The agreement covers a multi-year global license for the patents pertaining to the sale and distribution of Wi-Fi enabled products by Samsung. With this, Samsung has access to the essential patents owned by Hera, which are significant to the Institute of Electrical and Electronics Engineers 802.11 group of WIFI standards.

What are Patent Trolls?

Patent Trolls, or Patent Assertion Entities (“PAEs”) essentially acquire patents without the intent of actually manufacturing or developing products using those patents. In general, patent trolls are notorious for enforcing patent rights against infringers through rough legal practices such as undertaking frivolous litigation (or just the threat of it). They generally target smaller companies that cannot afford the expenses of an arduous litigation and hence would be quicker to settle. Even big companies can suffer harm in courts as was seen in the fight between Apple and VirnetX, a Patent Assertion Entity, over the Facetime and iMessage patents. In April 2018, a federal court in the United States ordered Apple to pay $502.6 million in damages to VirnetX.

Is Sisvel a Patent Troll?

The company is known for acquiring essential patents relating to telecommunication and wireless communication industries. One such example is its acquisition of 450 patents from Nokia, out of which 350 were essential for mobile telecommunication, specifically to 2nd, 3rd and 4th-generation communications standards, including GSM, UMTS / WCDMA and LTE. Sisvel has gained a notorious reputation in the past due to aggressive protection of its patents rights. In 2010, Sisvel called for the German police to raid a booth at the CeBIT and a heavy fine was imposed.

Nonetheless, Sisvel may not be considered a troll in its pejorative sense since it provides licenses for all the patents it owns on reasonable terms, that is, FRAND terms. FRAND is an acronym for fair, reasonable and non-discriminatory terms that an owner of Intellectual Property Rights should provide while granting a license. Sisvel acquires patents and then acts as the ultimate destination for companies to get licenses for all essential patents that they could require for their products. Forbes recognized this and declared Sisvel to be “the Patent troll we actually like”. In conclusion, Sisvel  just might be a company reclaiming the term ‘Patent Troll’ to get rid of its negative meaning and continue revolutionizing the patent licensing landscape.

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

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Case Summary Of “Coca Cola Company V Glacier Water Industries Ltd.”

This article summarises the judgment of High Court of New Delhi dated 28thFebruary 2018 in the case “Coca Cola Company v Glacier Water Industries Ltd..

Brief Insight Into The Dispute:

Introduction:

This case pertains to the infringement, passing off and unfair competition of registered trademark ‘KINLEY’. Coca Cola Company (hereinafter “the plaintiff) is the registered proprietor of the mark ‘KINLEY’in class 32, which is primarily used by the plaintiff in relation to drinking water. Glacier Water Industries Ltd. (hereinafter “the defendant) were using the mark ‘KINLEY’ for water purification systems using reverse osmosis. The Defendant falsely claimed to have launched their water system in collaboration with the plaintiff no.1’s Indian subsidiary, The Coca Cola India Pvt. Ltd., but no such collaboration exists. The Defendant openly advertised its product using the mark ‘KINLEY’. The Defendant also applied for registration of the mark KINLEY bearing Application No. 2329491 in Class 11 for the specifications”water purifier, water supply and sanitary purpose” claiming use since 1st April, 2011. The Court vide order dated 29.04.2013granted an ad interim injunction in favour of the Plaintiff which restricted the Defendant from using the mark till further orders.

The application is decided ex parte by Justice Manmohan.

Facts:

  1. The Defendant was openly advertising its product, and that the mark KINLEY was displayed prominently on its products.
  2. The Defendant created websites like http://www.glacierswater.com, http://www.kinley.in and http://www.kinleyro.com using the registered mark of the Plaintiff.
  3. The reliefs sought under the prayer clause of the application are;
    a. A decree of permanent injunction restraining the defendant from doing any acts or deeds amounting to or likely to –
    (i) infringement;
    (ii) passing off;
    (iii) unfair competition;
    b. A mandatory injunction to direct the Defendant to transfer the domain name to the Plaintiff.
    c. Costs of the proceedings.
    d. And for such other and further reliefs as the court may deem fit.

Arguments Before The Court:

The arguments advanced by the Plaintiff are –

  • It is contended that the Defendant is advertising its products by displaying the registered mark ‘KINLEY’ on their promotional materials.
  • The Defendant has falsely claimed to have launched their water system in collaboration with the plaintiff no.1’s Indian subsidiary, The Coca Cola India Pvt. Ltd., whereas, in fact, no such collaboration exists.
  • The Defendant has applied for registration of the mark KINLEY for the specifications “water purifier, water supply and sanitary purpose” claiming use since 1st April, 2011
  • The Plaintiff has proved that their sales amounted to Rs.4,229 crores (approx.) and advertising expenses amounted to Rs.839 crores.
  • It is further contended that the Defendant have created websites http://www.glacierswater.com, http://www.kinley.in and http://www.kinleyro.com using the registered mark of the Plaintiff.
  • Also, the Court vide order dated 29.04.2013 granted an ad interim injunction in favour of the Plaintiff which restricted the Defendant from using the mark till further orders.

Decision Of The Court:

The court thus decided;

  1. The plaintiff’s mark ‘KINLEY’ hasacquired reputation and goodwill in the marks in India as well as globally.
  2. The defendants have dishonestly used the ‘KINLEY’ trademark of the Plaintiff in relation to water purification system.
  3. The trademark ‘KINLEY’ used by the defendant, amounts toinfringement and passing off of the plaintiff’s trademark.

Conclusion:

The Courtheld that due to extensive use over substantial period of time, the plaintiff’s mark ‘KINLEY’ have acquired reputation and goodwill in India as well as globally. The Court further observed that as the Defendant have not appeared before the Court, the evidence submitted by the Plaintiff is accepted as true and correct. The Court relied on the case of Ramesh Chand Ardawatiya Vs. Anil Panjwani, AIR 2003 SC 2508 which held that –

A prima facie proof of the relevant facts constituting the cause of action would suffice and the court would grant the plaintiff such relief as to which he may in law be found entitled.

The Court disposed off the case by holding that the trademark KINLEY used by the defendant, amounts to infringement and passing off of the plaintiff’s trademark and the Defendant will compensate the Plaintiff by paying costs.

Note: Several quotations from the judgement are included in this article. The complete judgment can be found here.

Author: Ankita Aseri, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

Business Method Patents: Non-Patentable Only In Books?

The legal situation of granting business method patent depends from place to place. The reason being that Trade-Related Aspects of Intellectual Property (TRIPS) did not expressly address the said patent issue. Thus, countries grant (or do not grant) looking upon its local conditions and national policies. That said, India is one of the country that does not believe in granting business method patent and has declared so statutorily in Section 3(k) of the Patent Act, 1970 and Entry 08.03.05.10 of the Patent Manual.

It has always maintained the stance of non-patentability of business method. Unlike USA, it never changed its position. It was only after the infamous case of State Street Bank & Trust Co. v. Signature Financial Group that US allowed business methods to be granted patent protection under the US Patent Law. The United States Court of Appeals for the Federal Circuit stated that since the Patent Act 1952 business method patents must fall under the ambit of patentability. The Federal Court over-ruled the lower court and held that practical utility and essential characteristics are the two factors needed to be seen for determining patentable subject matter.

On the other hand, European Commission sides with India and states that business and invention should not be mixed together otherwise it will hamper development, innovation and creativity. It is a fact that a business has limited number of methods of doing a business. Granting monopoly will restrict small players to rise and increase the licensing cost exorbitantly.

In India, Patent Office considers a particular method to be a business method if it involves a monetary transaction or mere marketing or sale purchase methodology. Section 3(k) expressly bars business method patents as innovations. The landmark case of Yahoo v. Controller and Rediff was a prominent case where J. Prabha Sridevan discussed Business Method Patents. She held:

We must place ourselves in 1998, to decide the patentability and what appears so easy and familiar today was new then. Even if we go back in time to 1998 the nature of invention is still a method of doing business. That does not change. There are huge innovations in the computers themselves, but the invention claimed is not for the machine but for the method. From whichever point of time we look at it, it still looks to be a business method.”

A patent application having claims directed to a software program/algorithm having a bunch of computer instructions cannot be claimed as an invention. The exclusions are carved out for all business methods and, therefore, if in substance the claims relate to business methods, even with the help of technology, they are not considered to be patentable.

As per recent decisions by the Controller of Patent, the trend is only in black letters and is not being followed to the T. In an interesting turn of facts and reasoning, three applications of business method patent were granted by the Controller Office. This post will dissect the three applications so granted.

I. In the matter of Patent Application No. 830/CHENP/2009 filed on 12/02/2009

The Applicant Facebook had filed for patent of a method for generating personalized data for viewing of user of a social network. Soon a series of objections were filed opposing the patent by virtue of Section 3(k) of the Act. It was claimed that the method is purely functional in nature and the whole patent falls under the ambit of business method patents. The Applicant then amended their claim 1 to 6 by including so called ‘hardware limitations’ in their method steps. The observations of the decision while accepting the amended claims randomly record that the “present subject matter implements a technical process and has a technical effect.” The absence of a proper definition of what constitutes a technical effect has what resulted into the grant of patent. The decision does not proceed to explain what were the actual technical effects that the Facebook had in its method patent.

II. In the matter of Patent Application No. 6799/CHENP/2009 filed on 18/11/2009

The Applicant Facebook had filed for patent of a method of providing access to user profile data maintained by a social network website to a third-party application server; a method of sharing user profile data between a social network website and a third-party application server and a system for sharing user profile data between a social network website and a third-party application server. The major opposition that the application faced was that it was nothing, but mere algorithms implemented through software and thus cannot be allowed u/s 3(k) of Patents Act, 1970. The Applicant in response submitted that the present invention included hardware limitation and provided technical improvements and benefits like checking privacy setting associated with the user profile and based on the privacy setting the access is provided to the third-party application and the third-party application personalizes the user content data. The Controller Ms. Subhra Banerjee relying on the written submission by the Applicant proceeded to grant patent to Facebook. The same problem arose here; the decision did not specify what was the technical effect or for that matter hardware limitation. It has been time and now held that hardware limitation should be the one that essentially captures the subject matter of the patent. However, in the present application, there was no such essential link between the method and the hardware.

III. In the matter of Patent Application No.461/KOLNP/2009 filed on 03/02/2009

The Applicant Apple had filed patent for a method for browsing data items with respect to a display screen associated with a computing device and electronic device. The purpose of the alleged invention was to browse media content with multiple browsers whose operations are synced. The Applicant pleaded that the ‘claimed method’ should not be read as computer programme as it only permits the computer program’s functionality. Deputy Controller of Patents and Design Ms. Nirmalaya Sinha accepted the claims of the Applicant. The whole decision is ambiguous as the application clearly reeks of being a business method. However, the basis of grant was given on technical aspects and practical utility which are of no concern to business method patents.

The grant of patent in all the above three applications show a sorry state of affairs and undue advantages of absence of definitions of terms like ‘technical effect’, ‘novel hardware’ and ‘practical utility’. It is for the time to come, when these decisions will be challenged and hopefully logic will prevail.

Author: Esha Himadri, Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnil@khuranaandkhurana.com.

References:

[1]https://www.financialexpress.com/india-news/google-gets-big-boost-in-india-awarded-patent-for-system-to-spot-good-and-bad-phrases/666474/

[2] Bandyopadhyay TK, Alyappan A (2014) Business Method Patents and IT Industry: An Analysis, Intel Property Rights, 2:112.

[3]https://www.firstpost.com/tech/news-analysis/software-patents-prohibited-under-indian-law-but-granted-in-spirit-3702725.html

[4] Yahoo v. Controller and Rediff, 2012 (49) PTC 502 (IPAB)

[5] State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368

Unboxing The Confusion In Marks Of Pharmaceutical Products

It is not new that the Supreme Court had cautiously laid down the seven principles for determining confusion or deceptiveness in pharmaceutical products. The landmark case of Cadilla held that medicines are boon but if given wrongly it can have life-threatening impact. Thus, there need not be an iota of confusion in the mind of people while buying medicines. The trademark of the pharmaceutical products must be distinctive and not similar or identical. The seven-principle test held that for deciding the question of deceptive similarity, weightage must be given to each of these factors depending upon the facts and circumstances of each case. The factors included are:

a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.

b) The degree of resemblance between the marks, phonetically similar and hence similar in idea.

c) The nature of the goods in respect of which they are used as trademarks.

d) The similarity in the nature, character and performance of the goods of the rival traders.

e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.

f) The mode of purchasing the goods or placing orders for the goods; and

g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

The rationale behind establishing these principles was that drugs are poisons, not sweets. Therefore, confusion between pharmaceutical products is are not merely inconvenient but also life threatening. One wrong medicine could cost a person his life. At times, drugs are purchased in critical and pressurized time where there is chaos in one’s life to save his near and dear ones. Many a times; patients are elderly, infirm or illiterate. India has varying degree of infrastructure for supervision of pharmacists and physicians of medical profession in the country due to large variation in linguistics and literacy. Same is the situation with the customers. They may not be able to differentiate between the medicine prescribed and bought which is ultimately handed over to them. There can be accidental negligence as well. The same was supported by McCarthy in Trade Marks, 3rd Edn., para 23.12 which held that the tests of confusing similarity are modified when the goods involved are pharmaceutical products. If the goods involved are pharmaceutical products each with different effects and designed for even subtly different uses, confusion among the products caused by similar marks could have disastrous effects. For these reasons, it is proper to requires lesser quantum of proof of confusing similarity for drugs and pharmaceutical preparations. The same standard has been applied to medical products such as surgical sutures and clavicle splints.

While this is one side of the coin; the other side of the coin was represented by 2015 judgement of Delhi High Court. In Sun Pharmaceutical Industries v. Anglo-French Drugs and Industries Limited, the plaintiff had registered OXETOL on one of its medicinal preparation used for curing bipolar disorder and epilepsy. On the other hand, Respondent had filed for registration of EXITOL under the same class as of the plaintiff, i.e., class 5 for its medicine used in treating constipation.

The main issue held by appellant was that the impugned trademark EXITOL of the respondent was as almost identical to the appellant’s trademark OXETOL and thus it infringed by taking advantage of the financial and human resources invested by the appellant since 2001 without incorporating any cost themselves.

Since both the products fell into class 5 i.e., medicines, therefore the Court took a pragmatic approach. It firstly held that there cannot be any U-turn from Cadilla’s judgement in terms of undermining the aspect of confusion or deceptiveness. However, in judging the deceptiveness, what also must be seen is the material differences between the product. The methods of administering the drug, the shop in which the drugs are sold, the ailment for which the drug can be prescribed are factors that are pivotal for determining deceptiveness. Elaborating on the same, the Hon’ble Court makes comparison of the dissimilarities between the two products-in-dispute in a tabular form. Aspects including different active pharmaceutical ingredients to purpose; from method of administration to visual packaging were compared.

The Division Bench of Delhi High Court upheld the order by Single Judge Bench of the same court and held that a slight semblance in the phonetic pronunciation between two marks cannot automatically satisfy the test of confusion in a person with average intelligence and imperfect recollection. It is necessary that the marks are seen as a whole. The word ‘TOL’ was common in both the marks; however, the prefix was different for both signifying two totally different medicines. Also, both the drugs were Schedule H drugs. Thus, they could only be sold on prescriptions.

Finally, the Court took a progressive view and held it may be a situation that the products-in-dispute fall into the same class and are phonetically similar. However, that cannot be the sole reason to call the marks as confusing. If there are dissimilarities which created no iota of confusion or deceptiveness, then the marks are to be held not infringing one other.

Author: Esha Himadri, Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnil@khuranaandkhurana.com.

References:

[1] Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd (2001) 5 SCC 73

[2] Franco Indian Research Pvt. Ltd. v. Unichem Laboratories Ltd. 2005 (30) PTC 131 (Bom)

[3] McCarthy in Trade Marks, 3rd Edn., para 23.12

[4] Sun Pharmaceutical Industries v. Anglo-French Drugs and Industries Limited(2014) 207 DLT 375

[5] Sun Pharmaceutical Industries v. Anglo-French Drugs and Industries Limited(2014) 215 DLT 493 (DB)

Diet Sabya – The New Call Out On Copyright And Fashion

The motifs on my jackets were hand-drawn and hand-embroidered. The collection is still selling, and one piece is sold for Rs. 40,000. However, one brand is re-creating the motifs as digital prints and selling it for Rs. 1,500.

          – Designer Rahul Mishra in an interview to Times of India on 13 May 2018.

‘Inspiration’, ‘Homage’ and ‘Dedication’ are few words that designers use shamelessly while ‘Copying’, ‘Infringing’ or ‘Plagiarising’ other’s design and fashion works. Earlier, clothing was necessity and hence seen in a utilitarian aspect. However, with changing times fashion has grown from utilitarian to artistic creations.With ever-increasing fashion industry, there are huge cries amongst the designer whose works are blatantly being ripped off.  Every Indian on the streets of Chandni Chowk, Delhi or Linking Road, Mumbai has been witness to knockouts and counterfeits of Sabyasachi’s lehengas and Manish Malhotra’s fashion week designer outfits. The reason being weak IP laws pertaining to fashion industry.

The lingering issue of Copyright protection in the Fashion industry has revived again due to internet sensation ‘Diet Sabya’. Diet Sabya is an anonymous Instagram page and desi-version of Diet Prada. The page calls out plagiarised fashion design works by comparing it on side-to-side basis. It has garnered attention of many in a short span of time with various celebrities appreciating the cause and various others fuming it.

Diet_sabya_blog1      diet_sabya_blog2

The relation of fashion and copyright has always been complicated. IP protection via trademark is limited in its scope. It will cover only those patters or marks which helps the brand in its attaining its distinctiveness. Famous examples include Christian Louboutin and its trademarked red sole on footwear. However, Copyright is an IP protection which can save the drowning boat of designers. However, it comes with a set of its own problems.

The Scope of Copyright Protection

Getting a copyright registration is not necessary. A copyright exists as soon as the work is created. The first question then arises is whether a design is a work under Section 13 of the Copyright Act, 1957? Artistic work under Section 2(c) includes drawings, among other things. The sketches of the designs are drawings and can be protected under the Act. Also, copyright in artistic work includes conversion of 2D work into 3D work. So, when a drawing or sketch of a dress is converted into an actual dress, it would still enjoy the protection of Copyright.

The problem starts with Section 15 of the Copyright Act which provides that there cannot be any dual protection of design. It means that one cannot protect his design under Copyright Act as well as Design Act. If an Applicant wants Copyright protection for his design, he needs to submit an affidavit stating that the design is not enjoying protection under the Designs Act. The clause 2 of the said section also states that a copyright in any design which has not been registered under the Designs Act will cease as soon as the Article is reproduced more than 50 times by an industrial process.

Hence, the dilemma starts. Whether the work of fashion should be protected under Copyright Act or Designs Act? There is no definite answer to this. Some may prefer Copyright registration as it gives protection for more years than what Designs Act could give. On the other hand, some feel that there could be no purpose of registering a fashion work under the Copyright Act if it cannot be reproduced more than 50 times.

Another pitfall with copyright registration is that fashion is all about trends. It phases out every season. Getting a copyright registration takes its own time and there is a possibility that by the time the creator gets the registration, the fashion trend phases out.

In the case of Tahiliani Design Pvt. Ltd. v. 2008 PTC (38) 251, Delhi High Court deliberated the engagement of the regime of copyright and design law to decide an infringement suit. It was India’s first full-fledged battle on creative integrity. The Court held that intent of the Legislature is clear from the words of the Act. There is a deliberate exclusion of ‘artistic work’ from the definition of ‘design’ under the Designs Act, 2000. Further the Court held that “uniqueness not only in conceptualization but also in creation and presentation are sine qua non of haute couture.”

The other case which deliberated on the same issue was Microfibres v. Girdhar & Co.2009 (40) PTC 519 where the Division Bench of Delhi High Court held that the Legislature has always treated commerce and art as different things. The activity which is commercial in nature has to be granted lesser period of protection and hence Section 15(2) of the Copyright Act exists.

France currently is the only country having strong copyright laws for protecting fashion works. The statutory protection comes in the form of Article L. 112-2.73 in the Code de la Propriete Intellectuelle. The Code lists “the creations of the seasonal industries of dress and articles of” as a protected subject matter, and “uniform protection is given to original fashion designs automatically on the date of creation, regardless of registration, unlike different protection schemes given to registered and unregistered designs under the European Union regulations.”

There is another theory in IP protection and fashion works. Some feel that the weak IP protection to fashion works are boon. It encourages people to be more creative and think out of the box. If there were strong protection, no one would have thought of coming out with aluminium or steel plated boots. To think of, replicating or creating counterfeits of such steel-plated boots would be impractical as the essence lies in the material itself. Reproducing in a cheaper material would make the fashion useless and hence is secured without IP protection. But the question remains standstill. What about other designers whose designs could still be counterfeited with cheaper materials? A slight change in the material or patterns are still enabling infringers get away easily from the legal hands.

Recently, Designer Sabyasachi Mukherjee was awarded the National Intellectual Property Award 2018 in the field of designs and commercialisation for holding the copyright on more than 700 of his designs. His was the first design house to receive the award. In an interview he said, “It is expensive to register every single design, but it helps us to break the notion that the fashion industry is frivolous and doesn’t understand such complexities.”

On the issue of Copyright and fashion works, FDCI President Sunil Sethi stated that the Nandi bull by Designer Rohit Bal cannot be copyrighted. But the interpretation of embroidery makes the difference. By copyrighting such works, there will be better awareness and signature recall which will make imitation difficult in the fashion industry.

Author:  – Esha Himadri, Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnil@khuranaandkhurana.com.

References:

[1]https://timesofindia.indiatimes.com/city/delhi/rahul-mishra-accuses-indian-ethnic-wear-brand-and-a-french-label-of-plagiarism/articleshow/64137078.cms

[2]https://www.nytimes.com/2018/02/06/business/christian-louboutin-shoes-red-trademark.html

[3]http://www.thefashionlaw.com/learn/legal-protections-for-fashion-in-france

[4]Tahiliani Design Pvt. Ltd. v. Rajesh Masrani, 2008 PTC (38) 251 (Del.)

[5] Microfibres Inc. v. Girdhar & Co. &Anr., 2009 40 PTC 519 (Del)

[6] http://www.dailypioneer.com/vivacity/bal-protects-his-original-line.html

Case Summary of A Recent Decision of U.S. Court of Appeals for The Federal Circuit In The Case, “Core Wireless Licensing vs. LG Electronics”

This article summarises a recent judgment of United States Court of Appeals for the Federal Circuit dated 25th January 2018 in the case “Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., LG Electronics Mobile comm U.S.A., Inc.

Brief Insight into the Dispute:

The patents 8,713,476 (hereinafter referred to as “‘476”) and 8,434,020 (hereinafter referred to as “‘020”) owned by Core Wireless Licensing form the subject matter of this dispute. The dispute revolves around the claim of Core Wireless Licensing that these patents were infringed by LG and LG’s defence that both the patents direct to an ineligible subject matter (a mere abstract idea) under 35 U.S.C. § 101 hence, not patentable and there is no infringement.

Subject Matter of the Dispute:

The patents ‘476 and ‘020 of Core Wireless Licensing which were allegedly infringed by LG form the subject matter of the dispute. The patents revealed and claimed “improved display interfaces, particularly for electronic devices with small screens like mobile telephones. The improved interfaces allow a user to more quickly access desired data stored in, and functions of applications included in, the electronic devices.”

The ’476 and ’020 patent specifications are effectively identical and the functionality proposed by both the patents can be stated as “A computing device comprising a display screen, the computing device being configured to display on the screen a menu listing one or more applications, and additionally being configured to display on the screen an application summary that can be reached directly from the menu, wherein the application summary displays a limited list of data offered within the one or more applications, each of the data in the list being selectable to launch the respective application and enable the selected data to be seen within the respective application, and wherein the application summary is displayed while the one or more applications are in an un-launched state.”

Flow of Proceedings:

To avoid the trial, LG filed a motion for summary judgment for invalidity of the claims under 35 U.S.C. § 101, which was denied by the court. For the purposes of evaluating patent eligibility, the district court found claim of ’476 patent to be the representative of both the patents. It held that the claims are not directed to an abstract idea because, the concepts of “application,” “summary window,” and “un-launched state” which form the core of the claim are specific to devices like computers and cell phones. It further noted, even “if claims were directed to an abstract idea, it would still be patent eligible at least because it passes the machine-or-transformation test.”

The case proceeded for trial after denial of summary judgement. The district court found that a conundrum existed as to how the words “reached directly” and “un-launched state”, as mentioned in the claims of the disputed Patents,are mapped to the actual functionality. Hence, the court offered an opportunity to both the parties to argue constructions of these terms.

LG requested for a judgement as a matter of law claiming the defence that the plaintiff had insufficient evidence to support the case and to prove infringement. They argued that the correct construction of “un-launched state” means “not running” and that the “reached directly” limitation required user interaction with the main menu, and no reasonable jury could have found infringement under such constructions.

After hearing the explanation provided by experts of both the parties, the district court ruled that “un-launched state” signifies “not displayed” and “reached directly” signifies “reached without an intervening step.” The district court declined to revisit claim construction stating that noting LG did not preserve its claim construction arguments in the original motion itself.

LG again requested for judgment as a matter of law. This time the defence taken was of anticipation, which questioned the novelty of the patents. The district court denied LG’s this motion and concluded “LG failed to overcome the presumption of validity accorded to the ’476 and ’020 Patents by clear and convincing evidence.”

In the Court of Appeals for the Federal Circuit, the district court’s decision was affirmed providing the following explanation.

Decision of the Court:

Three factual questions regarding the patentability of the claims in dispute, question of anticipation and whether there was an infringement or not, were answered by the Court of Appeals for the Federal Circuit.

The court noted, “The asserted claims in this case are directed to an improved user interface for computing devices, not to the abstract idea of an index, as argued by LG on appeal. Although the generic idea of summarizing information certainly existed prior to the invention, these claims are directed to a particular manner of summarizing and presenting information in electronic devices. The Claim of the ’476 patent requires “an application summary that can be reached directly from the menu,” specifying a particular manner by which the summary window must be accessed. The claim further requires the application summary window list a limited set of data, “each of the data in the list being selectable to launch the respective application and enable the selected data to be seen within the respective application.” This claim limitation restrains the type of data that can be displayed in the summary window. Finally, the claim recites that the summary window “is displayed while the one or more applications are in an un-launched state,” a requirement that the device applications exist in a particular state. These limitations disclose a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods to display a generic index on a computer. The claims recite a specific improvement over prior systems, resulting in an improved user interface for electronic devices.” This answered the question of patentability under 35 U.S.C. § 101 and affirmed that the claims are not directed to an abstract idea and there is no need to proceed to the second step of the inquiry.

It was observed by the courts of appeals that the claimed invention provided flexibility that prior art processors did not possess, and removed the need to design a separate memory system for each type of processor. This answers the question of anticipation.

Now parties’ dispute boiled down to whether the status bar is part of the accused “home screen.” This is a fact question that the jury resolved in favour of Core Wireless, and substantial evidence supports the jury’s finding. In the LG user manual, the status bar is the first section of the view identified as the home screen which answers the question of infringement.

Thus, United States Court of Appeals for the Federal Circuit upheld the district court’s denial of summary judgment that the claims are ineligible under 35 U.S.C. § 101. It also affirmed the district court’s denial of judgment as a matter of law that the claims are anticipated by Blanchard and the claims are not infringed.

Note: Several quotations form judgement is included in this article. The complete judgment can be found here.

Author: Mr. Akash Kiran More, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

Monsanto Technology LLC And Ors Vs. Nuziveedu Seeds Ltd. And Ors

Monsanto Technology LLC, one of the world’s leading seed company, was smacked by the decision upheld by the Division bench of Delhi High Court in an appeal that was preferred by them against the order of Delhi High Court single bench.

The dispute initially arose over license and royalty of Patented seed technology–BOLLGARD II, between Monsanto and Nuziveedu seeds Company in 2015 (which has earlier been discussed here),  which stretched to a major debate over the legality of Patent No. 214436 consisting of  Bt. Technology  that was granted to Monsanto.

The disputed Patent No. 214436 is titled as “METHODS FOR TRANSFORMING PLANTS TO EXPRESS BACILLUS THURINGIENSIS DELTAENDOTOXINS”  which was questioned on claims 25-27 that contains biotechnological invention containing the infusion of Bt gene into the cotton genome. This Bt. bacterium eradicates pests afflicting the cotton plant.

Nuziveedu’s Claim

Nuziveedu filed a counter claim under section 64, relying on various grounds such as  absence of novelty[1], absence of obviousness[2], complete specification not revealing any “invention”[3],deficiency in complete specifications[4] and claim[5], false suggestions or representations[6], non-compliance of the requirements of Section 8[7],non-disclosure of source or geographical origin[8]and the invention claimed in the complete specification being not useful[9]. Apart from the above grounds, Nuziveedu focused on Section 3 (j) of the Patent Act, 1970, which served as the main ground for the revocation of the mentioned Patent.

Arguments

  1. Interpretation of Section 3(j) of Patent Act,1970 vis-a-vis Patent No. 214436

Nuziveedu contended that Section 3(j)  clearly explains as to what are not an ‘inventions’, i.e. “plants and animals in whole, or any part, thereof, other than microorganisms, but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.” Thus, Nuziveedu asserted that claim 25 of the Patent relates to ‘nucleic acid sequence’, application of which  is only in terms of “a plant cell, a seed, a transgenic plant “or a plant variety”. Thus, the specification does not provide any industrial application. Since, a plant or seed, which has such a nucleic acid sequence containing the Cry2Ab gene, cannot be granted a patent in India as this (claim 25) falls squarely within Section 3(j) of the Act.” Further, Nuziveedu contended that Bt. Trait in Cotton Hybrid varietal plants is an essential biological process, and did not regard cross-bred plants and animals as patentable because they are better regarded as ―discoveries[10] which happens naturally and therefore, its just a discovery which has taken place in a laboratory.

Monsanto interpreted the term ‘Plant’ under section 3(j) as a “living organism” and further averred that exclusion would apply to biological entities, per se and not to inventions, which properly fit the description of “micro-organisms” that are excluded specifically from the mischief of the provision. It explained that “DNA” is the “substance responsible for all the processes within a living organism”  and a ‘gene’ is merely a code which is used for production of a protein in a living organism, thus it is not a living thing. Therefore, the subject matter of the patent (Claim Nos. 25-27) are manmade DNA sequences comprising the CryAb gene which confers insect resistance to plants, when incorporated into the plant’s genome. They emphasized that no part of the DNA sequence is a living organism and thus DNA cannot be called as “part” of a plant as well, because it is not like an organ of an animal or the physical attribute of a plant, like flower, fruit, etc.  This is a method of creating transgenic varieties and micro-organisms that are new and inventive transgenes and therefore, very much a Patentable subject matter under the Patents Act.

  1. Applicability of Plant Variety Act

Since ‘Micro-organism’ has not been defined by Plant Variety Act, Nuziveedu provided a Cambridge Dictionary definition of ‘Micro-organism’ as “A living thing that on its own is too small to be seen without a microscope, such as bacteria, germs, viruses. Thus, negated Monsanto’s contention that their Patent claim is inanimate and Patentable. Nuziveedu, emphasized on the history of India’s ratification to the TRIPS Agreement, as consequences to which Plant Variety Act was enacted with the objective to protect plant varieties and, the rights of the breeders and also to encourage the development of new varieties of plants. Nuziveedu contended that since the questioned Patent comes under the definition of micro-scopic living entity and a part of plant variety , thus it should   rather be protected by under the Plant Variety Act instead of Patent Act.

However, Monsanto rebutted the contentions of Nuziveedu by averring that the patented ‘trait’ or DNA is beyond the scope of the expression “plant variety” as defined as ‘plant variety’ with a commentary note which comprehensibly excludes ‘such a plant or part(s) of the plant could be used to propagate the variety) a trait (e.g. disease resistance, flower color),  a chemical or other substance (e.g. oil, DNA),  a plant breeding technology (e.g. tissue culture)” by International Convention for the Protection of New Varieties of Plants (UPOV Convention 1991). Further, Monsanto elaborately mentioned the history of the Patent amendments in order to explain that through various amendments of the concerned Act in 2002 and 2005, and on observing section 3(j) and section 2(1) (j) read with the objects and reasons of the amendments:

4. some of the salient features of the Bill are as under :

(a). …

(b). to modify section 3 of the present Act to include exclusions permitted by TRIPS Agreement and also subject matters like discovery of any living or non-living substances occurring in nature in the list of exclusions which in general do not constitute patentable invention.

So it is very clear that the patentee is entitled to Patent protection for the invention resulting from innovations and skill and the subject claims being products or processes of biotechnology. They also observed that when the patented invention is injected into the cotton seeds which provides a hybrid variety, then that hybrid variety can be protected under Plant Variety Act and the invention will be protected under Patent Act.

  1. Trade Mark Violation and Sub-Licensing issue:-

Monsanto alleged that termination of Sub- Licensing was perfectly legal as Nuziveedu failed to provide the required trait value to Monsanto for using their technology. As a matter of right, they could injunct Nuziveedu from using their Patented technology and abbreviation of their trademarks BG I and BG II. Further, once the agreement has been terminated it cannot be restored and the parties cannot be directed to perform the obligations contained therein as per Section 14(1) of the Specific Relief Act, 1963.[11]

However, Nuziveedu claimed that by virtue of  seeds included under the Essential commodity Act, 1955, the Central Government is empowered to fix the trait value of the seeds, exceeding which, one cannot terminate the agreement on the grounds of non-payment of licensee fee. Nuziveedu rebutted the reliance taken by Monsanto under section 42 of specific Relief Act, by asserting that it cannot be bound by those obligations (trait fees) fixed by Monsanto, to which only the Central Government is empowered to fix. Thus, relief under the mentioned provision apropos the present case negated. Furthermore, based on this contention questioned the validity of such termination of sub-licensing agreement, terming it as an arbitrary action taken by Monsanto.

In addition to this, Nuziveedu also averred that such technology is only capable to be protected under Plant Variety Act, which Monsanto neglected, thereby avoiding the provision of Benefit sharing[12] arrangements with the seed companies who developed new Bt. Cotton plant varieties expressing Bt trait (subject Patented).

However, in order to rebut the above-stated contentions, Monsanto referred to the judgment of Percy Schmeiser case[13], where “purposive construction‟ was applied to the similar facts and it was held that Monsanto’s gene patent was infringed by “use”, when an unauthorized person developed and commercialized seeds containing the patented gene, since the gene was present throughout the seed, conferring the advantageous trait to the plant and this amounted to taking advantage of the technical contribution of the patentee. Similarly, Nuziveedu has also taken full advantage of the functionality of insect tolerance arising solely from the use of the patented DNA sequences in their cotton hybrid, thereby infringing their subject Patent. Thus, Nuziveedu is infringing Monsanto’s Patent, as it is using their invention to bring out the ultimate product.

With respect to the, Trademark violation by Nuziveedu, it is claimed by the alleged party that they did not intend to use the mark on their product and have just used the abbreviations of Monsanto’s Trade mark, only with the intention of indicating the source which has been used in manufacturing the product, which is legitimate as being a descriptive mark under section 35 of the Trade marks Act, 1999. Moreover, infringement of Trade mark can occur only if a registered mark is used as ‘Trademark’ and not otherwise.[14]

The Delhi High Court Decision

The division bench of Delhi High Court analyzed contentions of both the parties, it upheld Nuziveedu’s Contention and observed that protection under Plant Variety Act and Patent Act are not complimentary but are exclusive of each other and Monsanto Patent protection was incorrect as it should have been protected under the Plants Variety Act, looking at the nature of invention.

On account of the above reasons and by observing that Monsanto had failed to disclose the details as well as source  of its invention as per section 10(4) of the Act and  the Court held that the subject patent falls comes under the ambit of Section 3 (j) of the Patents Act i.e. the said inventions are not patentable. Therefore, Counter claim filed by Nuziveedu is consequently allowed. The Court further gives Monsanto, an opportunity to restore its right in there subject Patent, by allowing them to seek for registration of the same within three month  from the date of this judgment, i.e. 11.07.208.

With regard to Trade mark infringement, the Court observed that the defendants do not have any malafide  intention  to use the Plaintiff’s marks “BOLLGARD” or “BOLLGARD-II”,  rather, Nuziveedu is only using the abbreviation of  the name which is permitted under section 2 (o) of Trademarks Act.

Further, the Court directed Monsanto to continue with its obligations under the sub-license agreements and allowed “the suit to proceed with respect to the claim for damages and other reliefs”, in the light of the sub-license termination notices issued by Monsanto. The Court also provided a period of three months to Monsanto to seek protection of their subject Patent

Analysis

The whole case revolved around the very major issue, that is whether the Patent No. 214436 has been erroneously granted Patent under the Indian Patent Laws. The Court Observed an important aspect of Intellectual Property Laws, that Patent Act are not complimentary but are exclusive of Plant Variety Act and thus, Monsanto Patent protection was incorrect as it should have been protected under the Plants Variety Act, going by a literal interpretation of provisions of both the statutes.

However, such kind of practice and the current position of law as laid down by Justice  Mr. Justice S. Ravindra Bhat and  Mr. justice Yogesh Khanna, may create a future barrier for entrance of new technologies in the Agricultural Industries as the major incentive for the technology developers have been sacked and also now that the technology developers have lost the right to fix the license price to the Central Government. I feel that with an advanced inventions along with growing technology and need of such development, the statute must be flexible enough to imbibe the new changes and pave way for such technological developers subject to public policy and can be regulated by the Central Government with respect to the kind of invention taking place as well as ‘benefit sharing aspect and license fee’, hence taking care of farmer’s right as well. Therefore,  the subject Patent may be validated and the outcome product after being processed by the Patented invention can be protected under Plant Variety Act. Thereby, avoiding the overlap of IP laws and rightfully protecting each party’s right.

Monsanto, being the world’s biggest agricultural company also may prefer a special Leave Petition for the above placed decision. Let’s wait and watch what’s in store for the company and Nuziveedu has been lucky so far having the laws of the land by its side. If Monsanto appeals against the judgment, which is more probable to happen then The question on  3(j) would definitely arise as to its need, intention and validity in the contemporary world having advanced technological inventions, ideas and its needs.

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

References:

[1] Section 64 (1)(e), The Patents Act, 1970

[2] Section 64 (1)(f), The Patents Act, 1970

[3] Section 64 (1)(d), The Patents Act, 1970

[4] Section 64 (1)(h),The Patents Act, 1970

[5] Section 64 (1)(i), The Patents Act, 1970

[6] Section 64 (1)(j), The Patents Act, 1970

[7] Section 64 (1)(m), The Patents Act, 1970

[8] Section 64 (1)(b), The Patents Act, 1970

[9] Section 64 (1)(g), The Patents Act, 1970

[10] Harvard College v Canada (Commissioner of Patents),[ 2002] 4 SCR 45

[11]Indian Oil Corporation Ltd. v. Amritsar Gas Services and Ors., (1991) 1 SCC 533

[12] Section 26, Plant Variety Act

[13]Percy Schmeiser v Monsanto 2004 1 SCR 902

[14] Section 29, Trade Marks Act,1999

Joinder Of Parties

There is always a concern while filing a suit as to whether all the parties concerned have been taken into account or not. Further, if any party is missed, can that party be joined in a suit at a later point of time is another issue to be pondered upon. Fortunately, Code of Civil Procedure, 1908 comes to our rescue in order to provide a remedy for the same.Though the joinder of parties rests upon the discretion of court, Order 1 Rule 1 or Order 1 Rule 3, as the case may be, of Code of Civil Procedure, 1908[1] is to be read together with Order 2 Rule 3 and Order 2 Rule 6.

Order I Rule 1 of Code of Civil Procedure, 1908 states that:

1. Who may be joined as plaintiffs

All persons may be joined in one suit as plaintiffs where—

(a) any right to relief in respect of, or arising out of, the same act or transaction or series of acts or transactions is alleged to exist in such persons, whether jointly, severally or in the alternative; and

(b) if such persons brought separate suits, any common question of law or fact would arise.[2]

The provision clearly mentions two grounds upon which a party may be joined in a suit at a later point of time as well. First, the party must have a right to claim a relief, either arising out of the same act or same transaction or arising out of a series of acts or transactions upon which the suit rests. Second, if a separate suit is filed, there would exist a common question of law or fact. It should also be read that the two conditions must be read together and not in priority of the first over the second.

This provision of the Code has been elaborately explained by the Indian Courts in various landmark judgments. One of the earlier judgments in this regard came even before independence in the year 1935 from Calcutta High Court in the seminal case of HaruBepari and Ors. vs. Roy KshitishBhusan Roy Bahadur and Ors. (21.05.1935)[3], where under Justice Khundkar and Chief Justice Henderson, it was held that, ““The conditions which rendered the joinder of several plaintiffs permissible under Order I, Rule 1. C. P. C. do not necessarily imply that there can be only one cause of action in the suit in which the several plaintiffs join[4]

This was followed by Guwahati High Court judgment delivered in the year 1956 in the remarkable case of of SitaramAgarwallavs.Rajendra Chandra Pal where the Court made an observation that, “It is not necessary that all questions arising in the case should be common to two suits if plaintiffs co – sharers had instituted separate suits. If even one question of law or fact common to both the suits could arise, there would be justification for joinder and the requirement of Rule 1 of Order 1 would be satisfied. The defence actually set up would have been raised in both the suits.[5] and that “The joinder has caused no difficulty in the consideration of this plea and has not adversely affected the case of the defendant on the merits.[6]

In the year 1964, another matter in Allahabad High Court came forward in this regard in the celebrated case of of ShambhooDayalvs. Chandra Kali Devi, where the Court made an observation that, “The law was changed after the decision in Salima Bibi v. Sheikh Muhammad (ILR 18 All 131)[7] and now it is possible for three plaintiffs to be joined in one suit even on the basis of different causes of action, provided any common question of law or fact would arise if the suit had been filed separately. The change in India was parallel to corresponding changes in English procedure and a joinder of plaintiffs on the same principle is permitted by the English and Indian Courts today.[8]

Further, in a subsequent Bombay High Court judgement delivered in the year 1972, in the landmark case of Krishna Laxman Yadav and Ors. vs. Narsinghrao Vithalrao Sonawane and Anr., in the Courtroom of JK.K. Desai and Chief Justice M.S. Vaidya, it was observed that, “The result of the provisions of Order 1, Rule 1 of the Civil Procedure Code is that where right to relief exists in favour of several plaintiffs as a result of the same transaction even if the right is several the plaintiffs would be entitled to join in the same suit for the several reliefs the only precondition being that common question of law or fact arose between the plaintiffs.[9]

It was followed by the verdict delivered by Rajasthan High Court in the case of Hari Ram Fatan Das and Ors. vs. Kanhaiya Lal and Ors., where in the Court of Justice P.N. Singhal, it wasobserved that, “The relief which the -plaintiffs have claimed, jointly, against the defendants thus arises out of that basic fact, not only in regard to that part of the suit which relates to the recovery of the arrears of rent and damages, but also the other part relating to eviction from the suit premises. One essential requirement of Order 1. Rule 1. C. P. C. has therefore been fulfilled in this case. According to the other requirement of the rule joinder of plaintiffs would be permissible if it could be shown that “any common question of law or fact” would arise if they brought their suits separately. It is quite obvious in this case that the common questions of fact which would arise on the filing of separate suits would be those relating to the existence of the tenancy granted by Lal Mohammad and the nonpayment of rent by the defendants at the rate of Rs. 50/- per mensem. It is therefore clear that both the essential requirements of Order I. Rule 1, C. P. C. have been fulfilled and there is no reason why the four plaintiffs should not have join-ed in their suit against the defendants.[10]

Later, another Bombay High Court judgment delivered in 1978 in the case of Paikanna Vithoba Mamidwar and Anr. vs. Laxminarayan Sukhdeo Dalya and Anr., where the Court opined that, “It is not, therefore, necessary any more that there must be identity of interest or identity of causes of action. What is necessary is the involvement of common question of law or fact.[11]

An attempt has been made by the legislators, and in order to provide the defendants with equal footing, a similar provision has been provided for in Order 1, Rule 3 of Code of Civil Procedure, 1908 which reads as:

“3.  Who may be joined as defendants

All persons may be joined in one suit as defendants where—

(a) any right to relief in respect of, or arising out of, the same act or transaction or series of acts or transactions is alleged to exist against such persons, whether jointly, severally or in the alternative; and

(b) if separate suits were brought against such persons, any common question of law or fact would arise.

It can be observed that the provision provided is more or less the same for both plaintiffs as well as defendants.

This was further clarified and explained by the Honourable Supreme Court in 1999 in the seminal case of Iswar Bhai C. Patel @ Bachu Bhai Patel vs.HariharBehera&Anr.(16.03.1999 – SC),where the Supreme Court observed that:“This Rule requires all persons to be joined as defendants in a suit against whom any right to relief exists provided that such right is based on the same act or transaction or series of acts or transactions against those persons whether jointly, severally or in the alternative. The additional factor is that if separate suits were brought against such persons, common questions of law or fact would arise. The purpose of the Rule is to avoid multiplicity of suits[12] Further the Court observed that the two provisions, namely, Order 1 Rule 3 and Order 2 Rule 3 if read together indicate that the question of joinder of parties also involves the joinder of causes of action. The simple principle is that a person is made a party in a suit because there is a cause of action against him and when causes of action are joined, the parties are also joined.

On providing a harmonious construction to Order 1 Rule 1 or Order 1 Rule 3 separately with Order 2 Rule 3 the issue seems to be resolved. Order 2 Rule 3 of Code of Civil Procedure, 1908 which can be read as:

3.   Joinder of causes of action.

(1)        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 plaintiff’s 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.

(2)        Where causes of action are united, the jurisdiction of the Court as regards the suit shall depend on the amount or value of the aggregate subject-matters at the date of instituting the suit.

This clarifies that any party subject to the conditions provided can be joined in the suit if the Court deems fit. Order 2 Rule 3 was further explained by the Honourable Supreme Court in 2017 in the seminal case of Kazimunnisa (dead) by L.R. vs. Zakia Sultana (dead) by L.R. and Ors.), where it was held by the Supreme Court that, “This was an appropriate case where the provisions of Order II Rule 3 of the Code, which deals with joinder of causes of action, could have been resorted to by the Court suo – moto for clubbing the two cases as the facts involved in both the cases satisfied the attributes of Order II Rule 3 of the Code[13]

This view was supported by numerous High Courts even before this landmark judgement. In Allahabad High Court in the year 1942 in the case of Karan Sinqh and others vs. LalaKunwar Sen and others, being one of the earlier verdicts delivered in this regard, Justice James Joseph Whittlesea Allsop observed that, “It is necessary that the right to relief should arise out of the same act or transaction or series of acts or transactions and this implies, in my judgment that the acts or transactions, where they are different, should be so connected as to constitute a single series which could fairly be described as one entity or fact which would constitute a cause of action against all the Defendants jointly. Whether this necessary condition exists in any particular case would, of course, depend upon the nature of the case but I am satisfied that this at least is necessary that the case should be such that it could be said that the Court in which the suit was instituted had local jurisdiction in the first instance to deal with the controversies arising between the Plaintiffs and each of the Defendants.[14]

Further, Justice Sen of Calcutta High Court in the year 1950 in the seminal case of Shew Narayan Singh vs. Brahmanand Singh and Ors.observed that:

Read in isolation Order 2, Rule 3 does not permit a suit of this description. The rule permits the joining of several causes of action in one suit against one defendant or one group of defendants jointly. It does not sanction a single suit when the cause of action against one defendant is different from the cause of action against another. But it has been held in numerous cases that Order 1, RULE 3 is not confined to joinder of parties only but that it also embraces joinder of causes of action against different parties. It has been further held that Order 2, Rule 3 must not be interpreted so as to override or render nugatory the provisions of Order 1, Rule 3.[15]

And it was also observed:

That although a suit as framed may not be in accordance with the provisions of Order 2, Rule 3, nevertheless, it would be maintainable if it complied with the provisions of Order 1, Rule 3 and for the purpose of showing that Order 1, Rule 3 deals not only with joinder of parties but also with joinder of causes of action. It is permissible to join different causes of action against different defendants in one suit so long as the stipulations set out in Order 1, Rule 3 are complied with.”[16]

Further the Court observed the intention behind consolidating various cases in   Chitivalasa Jute Mills Vs. Jaypee Rewa Cement[17] and was of the opinion that The Code of Civil Procedure does not specifically speak of consolidation of suits but the same can be done under the inherent powers of the Court flowing from Section 151 of the CPC. Unless specifically prohibited, the Civil Court has inherent power to make such orders as may be necessary for the ends of justice or to prevent abuse of the process of the Court. Consolidation of suits is ordered for meeting the ends of justice as it saves the parties from multiplicity of proceedings, delay and expenses. The parties are relieved of the need of adducing the same or similar documentary and oral evidence twice over in the two suits at two different trials.

Thus, it can be observed that where the same cause of action arises from the acts of various Defendants, the Plaintiff can file a single suit against all the defendants. And the defendants may ask to be added as a party in a suit. In every case, the joinder of a party depends upon the satisfaction of the Court.

Author: Madhur Tulsiani, Intern at  Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

References:

[1]https://indiacode.nic.in/bitstream/123456789/2191/1/190805.pdf#search=Code

%20of%20Civil%20Procedure

[2] (ibid).

[3]HaruBepari and Ors. vs. Roy KshitishBhusan Roy Bahadur and Ors, (MANU / WB / 0046 / 1935).

[4](ibid).

[5]Sitaram Agarwalla v. Rajendra Chandra Pal AIR 1956 Gau 7

[6](supra).

[7]Sheikh Muhammad and Ors. vs. Salima Bibi and Ors. MANU/UP/0107/1895

[8]ShambhooDayal vs. Chandra Kali Devi, AIR 1964 All 350,( MANU/UP/0107/1964)

[9]Krishna Laxman Yadav and Ors. vs.NarsinghraoVithalraoSonawane and Anr., (MANU/MH/0123/1973)

[10] Hari Ram Fatan Das and Ors. vs. Kanhaiya Lal and Ors.,1974, (MANU/RH/0007/1975).

[11]PaikannaVithobaMamidwar and Anr. vs.LaxminarayanSukhdeoDalya and Anr.(MANU/MH/0061/1979)

[12]Iswar Bhai C. Patel @ Bachu Bhai Patel vs. HariharBehera&Anr. (MANU/SC/0173/1999)

[13]Kazimunnisa (dead) by L.R. vs. Zakia Sultana (dead) by L.R. and Ors., (MANU/SC/1426/2017)

[14] Karan Sinqh and others vs. LalaKunwar Sen and others, (MANU/UP/0176/1942)

[15]Shew Narayan Singh vs. Brahmanand Singh and Ors., (MANU/WB/0181/1950)

[16](supra).

[17]Chitivalasa Jute Mills vs. Jaypee Rewa Cement,(MANU/SC/0092/2004)

Violation Of Moral Right In Light Of ‘Ghar Se Nikalte Hi’- Will This Be An Eye Opener For The Trend Of Remixes?

Everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.” [1]

The foundation of this concept was laid in the case of Amarnath Sehgal v. Union of India[2]. This was a landmark judgement delivered by the Delhi High Court thereby setting precedent and contributed in increase in understand and scope of moral rights given under Section 57[3] of the Indian Copyright Act, 1957. Moral rights are generally meant for protecting the work of the author and maintaining its integrity which essentially means preventing it from getting mutilated or distorted or altered in any undesired manner which may result in hampering the image of the author or its use in such a way that it may hurt the sentiments of the author.

The latest Bollywood glitch between Javed Akhtar and Armaan & Amaal Malik has been with respect to the same. The renowned Bollywood lyricist Mr. Javed Akhtar has issued legal notice against Armaan & Amaal Malik and Super Cassettes Industries Pvt. Ltd., for violation of his moral rights by recreating the song ‘Ghar Se Nikalte Hi’. It is alleged by Mr. Akhtar that the newly created version has used the original “mukhda (first stanza)” of the song repetitively. Although it is combined and mixed with different composition and different lyrics, the essence of the song remains the same. Mr. Akhtar further claims that the new version infringes his “moral rights” under Section 57 of the 1957 Act and aggrieved by the fact that ‘Kunaal Verma’ has been credited as sole author for the recreated version denying Mr. Akhtar, his statutory right of authorship.

There is no doubt that ‘Mukhda’ is the soul& essence of a song to which we all shall agree and so Mr. Akhtar has every right to be identified and credited for the same, especially when the original track bears his name in bold. Further, the fact that his right to royalty (Section 18[4] and 19[5]of the 1957 Act) in respect of using of lyrics which were originally given by him, has been jeopardized as they will not be able to receive royalty without the recognition of authorship. Even the Apple’s Itunes does not recognize him as the original lyricist which has further aggravated the entire situation.

However, the anomaly which can be observed in this notice is that it has been issued to Armaan Malik, who merely is the performer and singer and had nothing to do with the authorship of the song and in my opinion,

it should have been issued to lyricist of the new version who has in fact distorted the entire song. Other shortcomings of the legal notice may be that-

  • There was no legal notice issued to Apple’s Itunes for having failed to mention Mr. Javed Akhtar as the lyricist of the song, although they have specifically violated Section 52-A[6].
  • Legal Representative of the author can exercise the rights conferred upon the author of a work, other than right to claim authorship of the work. The proper body to allege on the recreated version as trying to escape the payment of royalty is IPRS (Indian Performing Rights Society), to whom Mr. Akhtar has assigned his rights.
  • Notice issue to Armaan Malik for simply making a public comment on You Tube page in which he failed to acknowledge the original authors seems senseless and baseless.

There have been several cases with respect to moral right &recreated versions, but a penumbral area exists as nowhere the term ‘recreation’ has been defined in the 1957 Act per se, but if we go by the definition of the word ‘adaptation’, Section 2(a)includes in relation to any work, any use of that work involving in its alteration and rearrangement. Section 14 also confers such type of right to the owner of any literary, dramatic artistic or musical work. If we comply with these provisions, then T-Series, being the owner of the original work has the right to make an adaptation or recreated version. But the question arises that whether recreation of original work amounts to violation of moral rights of the original authors of that work?

Section 57[7]of the 1957 Act provides two rights to the author i.e., of paternity (right to claim authorship) and integrity (to claim damages for any mutilation, distortion, modification of the work prejudicial to his honor or reputation). These rights are also protected under Article 6bis[8] of the Berne Convention where under the right to Paternity, author can claim due credit for any of his work.

But the catch here is that Section 57 protects the right of authors only when it is established that the alteration or modification of the work is prejudicial to author’s reputation and also there is some relation between the original and recreated work. This view has been reiterated by the court in Manu Bhandari v. Kala Vikas Pictures.[9]

From Amarnath Sehgal’s case[10] the Indian Copyright legislation has moved further on broadening the scope of artist’s reputation and interest and the outcome of present matter will also add up to it.

With respect to integrity rights, I am of opinion that on comparing and reading the lyrics of original and recreated version there is nothing dishonorable or prejudicial which can damage the reputation of the original authors. If this is treated as violation of moral rights, it would send a signal of warning for music industry and the trend of making remixes. As nowadays with increase in number of remixes or recreated versions, this issue of moral right will be one of the major debates in India and even though it remains unsettled, it is essential to protect the interest of original writers so that their music does not wither away with the modern remixes.

Author: Prashant Arya, Intern at  Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

References:

[1]Universal Declaration of Human Rights, Article 27(2)

[2]Amarnath Sehgal v. Union of India,2005 (30) PTC 253

[3] https://indiankanoon.org/doc/1710491/

[4] https://indiankanoon.org/doc/1703533/

[5] https://indiankanoon.org/doc/262036/

[6] https://indiankanoon.org/doc/588136/

[7]Supra, fn.4

[8] Independently of the author’s economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation.

[9]Manu Bhandari v. Kala Vikas Pictures,AIR 1987 Del 13

[10]Supra, fn.3

An Article On Shamnad Basheer V. Union Of India And Ors.

It is common to witness infringement cases in the intellectual property law sector but rarely there are suits which point out to the defects in the system managing the grant and working of patents, trademarks or other intellectual property rights.

In the case of Shamnad Basheer v. Union of India and Others[1], a writ-petition was filed against the defaulting patentees as well as the Patent Office as both of them were not complying with the statutory requirements.

Facts leading to the case

Section 83 (g) of the Patents Act, 1970 clearly mentions that “patents are granted to make the benefit of the patented invention available at reasonably affordable prices to the public”.

To fulfil such an object, Section 146 of the abovementioned Act specifies that a periodical statement as to the extent to which the patented invention has been worked on a commercial scale in India has to be submitted by every patentee as well as licensee. The Controller has the power under the same section to order any patentee (or licensee) to do the same.

But the real scenario seems to be very different as was pointed out by Professor (Dr.) Shamnad Basheer (the Petitioner in the case) through a number of arguments and evidences that neither the ‘commercial working statement’ has been submitted by many Patentees nor any action is taken against them by the Controller of Patents.

Issue

    1. Manifest failure to comply with Section 146 of the Patents Act, 1970 as well as no action initiated under Section 122 of the same Act against the patentees who did not follow the procedure mentioned under Rule 131[2] of the Patent Rules, 2003.

 

  1. Whether information provided under section 146 of the said Act “Confidential” nature of licensees and sub-licensees.

Arguments by the Petitioner

    • Annual Report (2012-13) of the Office of the Controller General of Patents, Designs, Trademarks and Geographical Indications clearly indicated that out of 43920 patents granted in the year 2012-13, only 27946 of them submitted Forms (Form-27) as required by Section 146 and Rule 131 (mentioned above). The fact that only 6201 patents out of them were found to be commercially working in the territory of India shows that neither the Patent Office nor the patentees consider following the general principles of law.

 

    • Furthermore, the Petitioner presented a query as was raised in front of the Patent office under Right to Information Act (RTI), 2005 which was basically an inquiry as to whether any action was taken against those Patentees or licensees who did not submit the Form-27? The answer was in negative indicating that no action had been taken against the defaulters.

 

    • An interesting point that was further raised was that when NATCO Pharma was granted compulsory license (in relation to a patent numbered 215758 o 9th March, 2012), it was ordered to report accounts of sales to the Controller on a quarterly basis, on or prior to the 15th of each succeeding month but when a query related to the same was raised before the Controller General of Patents, Designs, Trademarks and Geographical Indications on 19th January, 2015, no details were available in the concerned office.

 

    • Furthermore, it was informed to the Petitioner by the Controller of Patents and Designs that Form-27 is filed by Patentees only and many Patentee such as M/s Telefonaktiebolaget LM Ericsson state in the column wherein they are required to furnish information regarding licensees that “As all the licenses are confidential in nature, the details pertaining to the same shall be provided under specific directions from the Patent Office.”

 

Court’s Order

According to the Delhi High Court the information regarding licensees (and sub-licensees) cannot be termed as confidential as all information regarding the grant of patent is already available on the website of the Patents Office and failure to disclose such information by the Patentees would mean non-compliance with the requirements of Section 146 of the Patents Act, 1970 and thus, making such patentees liable for action.

Furthermore, It is pertinent to point out that the Delhi High Court had opined on 10.01.2018 that no information that is required to be filled in Form 27 is ‘confidential’. This was negated on 07.02.2018 stating that information cannot be held ‘not confidential’ as it would be voilative of section 146.

The case has been pending in the Court since 2015 and the Court has directed the Patent Office to provide a proposed modified Form27. Few of the recommendation have also been sent by stakeholders. (read here)

Observation

The systematic failure is a topic seldom touched upon in India as already mentioned in the beginning of the article. The fact being that the internal process of an institution is not thoroughly monitored due to which the persons availing facilities get a way to skip the statutory requirements as laid down by the legislature. Hence, it has become all the more important that people should be made aware that they have certain duties related to the rights they receive from an institution and non-compliance with such duties entails action against them.

One such institution is the Patent Office(s) which grants Patent. The basic purpose of granting a Patent is not to provide exclusive rights to the Patentee over his invention but to ensure that the invention is commercialized for the welfare of the public at large. Hence, submission of ‘commercial working document’ as mandated by the Patents Act, 1970  should not be ignored either by the Patent office or by the Patentee otherwise the whole concept of grant and protection of an invention would come down to nothing.

This case was a progressive step taken to ensure that the common man as well as the institutions understand their responsibility in a field (that is, Intellectual Property Rights) which is in its budding stage in India.

Author: Priya,  intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

References:

[1] W.P.(C) 5590/2015.

[2] Form and manner in which statements required under Section 146(2) to be furnished.