Category Archives: News & Updates

The Budding Patent Law in Myanmar

Myanmar, also known as Burma, a least developed country in mainland South-East Asia, is still in its embryonic phase of Intellectual Property Laws. The country is not presently a signatory to the Paris Convention for the Protection of Industrial Property or any other treaty protecting patents. The Burma Patents and Designs (Emergency Provisions) Act 1946 came into force in 1993 in the country, but has been repealed, and therefore currently Myanmar does not have any standard through which Patents can be applied and enforced. This brings about a scenario where goods that are patented, and for which companies or individuals hold relevant patent rights outside Myanmar, can be produced and used for commercial purposes and traded in Myanmar without the permission of the actual rights owner. There is no regulation or any law for protection of inventions and related IP. As a result, it is currently not possible to apply for patents in Myanmar.

Current setting for Patent Protection: Though, there is a gap between the redundant Patent Law and enforcement of new law, Patent protection has found its way through section 18(f) of the Registration Act under which Declaration of Ownership with the Myanmar Registry Office of Deeds and Assurances can be filed by the Patent owners. This declaration is a solemn statement of facts made by the Patent owner. After the declaration is registered, it is advisable to publish a Cautionary Notice in a daily English Language newspaper informing the public about the ownership of the patent which warns the potential infringers of legal action by patent owners. There is no substantive examination of the patent filed by way of such Declaration. The Declaration is valid for three months period with possibility of renewal. Nonetheless, this Declaration doesn’t grant any patent rights and currently, in absence of a proper legislation, there is actually no option to enforce patents in Myanmar.The Specific Relief Act (Section 54(b) and (c), and Illustration (u)) allows for patent infringement lawsuit, but it is ambiguous as to how such lawsuit may be conducted and decided upon in absence of patent law and the required legal standard. Thus, this law provides limited patent protection. Moreover, priority claim registration is not available under the Registration Act.

  Furthermore, Technology Transfer Agreements are enforceable if they are registered with the Myanmar Scientific and Technology Research Department but it doesn’t cover patent licensing. As there is no specific law for protection of patents in Myanmar, most entrepreneurs as an alternate way of protecting their inventions, spend extensive amounts in protecting their trademarks through the available means. By doing so, they protect the brand reputation and goodwill of their products as a minimum that they can achieve.

TRIPS and MyanmarMyanmar has acceded to Trade Related Aspects of Intellectual Property Rights (TRIPS), and therefore it is required that the country complies and implements the laws in consonance with the Agreement by no later than 1st July 2021. Consequently, Myanmar is drafting IP laws particularly Patent Laws to ensure its legislation is in line with the TRIPS. Thus, the status of IP Law seems to be improving as the country has drafted a new legislation for regulation of Patent which is supposed to be in compliance with TRIPS Agreement.

The Draft Law for Patents: The Draft law has been framed and published in 2015 and it is endowed with the procedural and substantive provisions found in patent laws of most Paris Convention countries. The Attorney General’s Office and Ministry of Science and Technology were instrumental in drafting the said law that is expected to be promulgated by the end of 2017 or in early 2018. According to the Draft Patent Law, to be patentable, the invention must be novel involving an inventive step and should also have an industrial applicability. These requirements are the basic three requirements as per the international standards of patent protection globally.

 According to the draft bill, Patent applications can be filed with the Myanmar Intellectual Property Office (IPO) and the registration system has been kept similar to the other ASEAN countries. IPO shall be responsible for all IP registrations in the country. After the receipt of the application for the patent filed, preliminary examination will be conducted by the IPO following publication of the patent application only after making sure that it does not defy the integrity, national security, and public safety. If it is found that the patent application is contrary to national security and public safety, the rights will get transferred to the Myanmar Government. After the publication, a three months period will be provided for any opposition which can be raised from the date of publishing of the patent application, it will be subsequently followed by substantive examination and finally grant or reject the application. The life of protection of Patents will be twenty years, subject to annual fees.

The draft bill has also provided for the grant of compulsory licenses wherein, the Myanmar Government will have the right to issue compulsory licenses for specific vital pharmaceuticals and the owner of the rights can’t deny such grant of license subject to royalties. The interest of the patent owners has been protected by the law and specific remedies have been provided in case of infringement of the patents which include civil litigation and criminal prosecution. Also, the patent owners can apply to appropriate courts for grant of preliminary injunctions.

At present, it is extremely difficult to enforce patent protection in Myanmar in absence of proper Patent law and legal standards. Innovations and intellectual inventions can’t be protected in Myanmar, so it is highly worthwhile to think before bringing such innovations into place in Myanmar. However, it is a sigh of relief for the inventors and investors, that the country has acceded to TRIPS, the law for patent protection has been drafted and is set to arrive anytime soon.

References:

[1] http://www.youripinsider.eu/patent-protection-myanmar/

[2] http://www.myanmarpatent.com/patent.htm

Author: Ms. Pratistha Sinha, Intern at Khurana and Khurana Advocates and IP Attorneys and can be reached at anirudh@khuranaandkhurana.com.

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IP Rights Encompassing Comic Books

Comic book characters like Superman, Batman, Spiderman, Iron Man, Harry Potter etc. have become part of our daily lives ever since they were created via comic books and later incorporated through television shows, merchandise and more recently movies. From soft toys, video games to movies all such methods provide various avenues to the owners and creators of such characters to earn money and goodwill in this fiercely competitive market.

The artists behind such characters use their imagination, intellect and imagination and provide such characters with certain specific and unique attributes such as, costume, alter ego, superpowers, backstory etc. with which they are uniquely identified with when the consumers read about them or watch a TV show or a movie based on such characters. These unique attributes also give the idea of the artist an expression. It is due to these reasons that the creator/artist to protect such character to avoid infringement, copying, and misappropriation by third parties.

The production companies, advertisers, licensees and business houses, who invest a substantial amount of money to obtain rights of such characters for using such characters through various media like TV, movies, radio, merchandising, shall also have a genuine concern over infringement of their rights over such characters by any third party. It is due to these reasons that it becomes very important that such comic book characters are also included in the ambit of Intellectual Property Rights.

It is very important to understand that when do such comic book characters come under the ambit of copyright and trademark related legal protection and what happens to characters which are already in public domain but may be used subsequently in new copyrighted work.

Characters may be differentiated into two categories: graphic, and fictional. Where a graphic character can be depicted simply by a cartoon, or another form of graphic representation with its physical representation and characterization being visually obvious for the readers, a fictional character is a word portrait of which the physical appearance and characterization reside in the mind of the reader. Since images are more easily identifiable, retained in the memory of the readers and characterized than literary descriptions, it is are easier to afford them legal protection. David B. Feldman goes as far as to opine that fictional characters’ are the second-class citizens in the world of intellectual property.

Graphic characters

Copyright protection under the ambit of ‘artistic work’ can’t be afforded to such graphical characters since such characters and their personalities evolve from various episodes which the artist/creator creates, as it can’t be visually expressed and can only be perceived by the human mind. The copyright law though can protect such expressions of the character which can be graphically represented through drawings, colors, art, storyboard etc.

In the case of Hill vs. Whalen Mortell, 220 F 359 (S D NY, 1914), in which the court had held that the stage characters of Nutt and Giff were copies of plaintiff’s characters Mutt and Jeff since everybody viewing these characters was able to make the connection.

In another such case of protection to graphic characters, the case of Detective Comics vs. Bruns Publication, 111 F 2d 432 (2d Cir, 1940) comes to mind. In this case, the defendants had created a character called ‘Wonderman’ which had the same physical and emotional attributes as the Plaintiff’s popular comic character ‘Superman’. It was held by the court that the defendant’s had also copied the Plaintiff’s character’s pictorial and literary details. The court said that protection to characters can be given only if they have been portrayed in detail and they have been converted from an idea into a visual expression. In the present case, the idea of ‘superhuman powers’ can be used by anyone but the character must have different personality than an already existing one.

In another landmark judgment of Walt Disney vs. Air Pirates, 581 F.2d 751 (9th Cir, 1978), cert. denied, 439 U.S. 1132 (1979), the court had held that a two step test needed to be carried out to determine if copyright infringement has taken place. Firstly the visual similarities of the characters are analyzed and in the second step the personalities of the cartoon characters.

The second step is to be done through the ‘character delineation’ test which was developed in the case of Nichols vs. Universal Pictures, 45 F 2d 119 (2d Cir 1930), cert denied, 282 US, 902 (1931), this test is used to determine if the character in question is distinct and unique from other characters in such a way that it warrants copyright and trademark protection. It means that this is a penalty on authors and creators who do not put in effort or intellect on making their characters distinct from others.

In the Indian case of Malayala Manorama vs. V T Thomas, AIR 1989 Ker 49, the court had held that V T Thomas could continue drawing the characters of ‘Boban’ and ‘Molly’ despite leaving MalayalaManorama’s employment, since the characters had been created by Mr. Thomas before entering into employment with Manorama and the publishing house did not create or use their artistic imagination or intellect to create the aforementioned characters so their copyright will only be limited to the extent of the drawings made using the character, but the copyright over the character would remain with Mr. Thomas.

Fictional characters

While fictional characters are generally associated with copyright protection, increasing commercialization has meant that the intellectual property in these characters is no longer limited to the artistic works that created them, but has also extended to associated goods and services, which has benefited tremendously from the immense appeal and popularity of these fictional characters. This is known as character merchandising. The obvious consequence of the fact that the goodwill of these characters perform both, source-identifying as well as promotional functions meant that in most cases, they have been protected with trademarks.

Fictional characters have three significant components: name, physical or visual appearance, physical attributes, personality traits or characterization. In the case of Anderson vs. Stallone, 11 USP Q 2d 1161 (C.D. Calif. 1989), the court had held that the ‘Physical’ and ‘Emotional’ characterization of the character ‘Rocky’ were set in such detail that they were highly delineated, distinguishable and unique and imprinted in the mind of the viewers.

However in the case of Warner Brothers Pictures vs. Columbia Broadcasting Systems, 216 F 2d 945, 104 US P Q 103 (9th Cir. 1954), cert. denied, 348 US 971, 99 L Ed 756, 75 S. Ct. 532 (1955), the test of ‘story being told’ was applied. In this case, the court had held that the copyright protection would only be applied to the characters only if the story revolves around the particular character.

In another case of Silverman vs. Columbia Broadcasting Systems, the concept of ‘characters entering public domain and later acquiring new copyrighted work’ came into question. In this case it was held that the character will be entitled to protection once it enters the public domain unless new traits or characterizations have been added to it in subsequent works.

Conclusion

In conclusion I would like to say that it is clear from the various judgments discussed here that in case of graphic characters courts have had a lenient approach in granting protection because of their visual impact, as opposed to fictional characters where protection has been granted only if it is proved beyond doubt that they are distinct and distinguishable. Another aspect is that under Indian law ‘character’ has not been included in the definition of ‘artistic work’ and similarly under the definition of ‘literary work’ the work to be protected must be written down. It is hoped that the ambit of artistic and literary work is expanded to include characters as well.

References:

[1]https://www.americanbar.org/publications/landslide/2013-14/march_april/ip_and_comic_book_superhero.html

[2]https://spicyip.com/2016/04/giving-due-protection-to-fictional-characters-the-possibility-of-copymark.html

[3]https://theconversation.com/who-owns-superman-the-man-of-steel-fights-trademark-law-14625

About the Author: Aditya Vardhan, Trademark Associate, Khurana and Khurana Advocates and IP Attorneys, aditya@khuranaandkhurana.com

Initial Coin Offering (ICO) and its Intellectual Property (IP) Interface

With growing importance and widespread adoption of Cryptocurrencies such as Bitcoin, Litecoin, Ethereum, Ripple among many others, Initial Coin Offerings (ICO) have become very popular over the last few years. In brief, an ICO is an unregulated means by which funds are raised for a new cryptocurrency venture or even by a technology company that integrates its offerings/products with issuance and/or transactions of cryptocurrencies. An Initial Coin Offering (ICO) is used by startups to bypass the rigorous and regulated capital-raising process required by venture capitalists (VCs) or banks, wherein in an ICO campaign, a percentage of the cryptocurrency is sold to early backers of the project in exchange for legal tender or other Cryptocurrencies as mentioned above. More information on ICO’s can be seen herehere, and here.

Having been an active part of ICOs since 2016, and have drafted over 5 ICO offering documents, and 10 white papers, we have closely observed that there has been a strong and growing correlation between subscription levels for an ICO during the initial offering and the manner in which they depict/demonstrate their Intellectual Property (IP), especially their Patent portfolio. A clear mapping between ICO entity’s product commercialization, coin offering strategy, basis of product differentiation, and how they harness the blockchain technology with respect to their Patent/IP portfolio is a strong indicator of how they create entry barriers. Investors too are gaining maturity by doing thorough due-diligence on the IP that the ICO-entity holds before they invest in the ICO through comprehensive assessment of how broad the claims are, how the claimed subject matter integrates with the blockchain platform for issuance or transaction of newly issued currencies/coins, whether claim charts have been prepared, assignment/ownership issues if any, litigation/pre-litigation outcomes, validity challenges, competitive analysis, market landscape, white-space analysis, among other common IP due-diligence parameters.

Most ICO white papers therefore pay significant attention to how they present their Patent portfolio with respect to the manner in which each feature of their blockchain based implementation would be executed such as, for instance, how digital contracts would be managed, for an IoT architecture based entity: how blockchain would enable optimization of IoT device monitoring, and for an analytics company: how data analytics can be configured to associate with blockchain network tokens. Some white papers go further to even map their patent claims with the cryptocurrency interfacing mechanisms. Although most ICOs focus on their US Patent Portfolio, companies in other major startup communities such as in Israel, UK, Germany, and Singapore are also engaging strongly in how they uniquely position their offerings to gain competitive advantage through presentation of their IP. Most white papers intend explaining what their tokens are, how they are acquired, released/spent, along with their token generation events, and IP’s that interface with each of these steps can be integrated into the relevant portion of the white paper so as to demonstrate the extent of coverage and protection that the entity has done, which is also reflective of their IP strategy.

It is therefore, in sum, crucial to develop a robust IP strategy before launching an ICO to instill higher confidence in potential investors and create a differentiator in the market.

 

Author: Tarun Khurana, Partner and Patent Attorney at Khurana & Khurana (K&K) and IIPRD can be reached at Tarun@khuranaandkhurana.com

Effect of Acquiescence on Trademark

The dictionary meaning of acquiescence is the reluctant acceptance of something without protest.

The Trade Marks Act 1999 talks about the “acquiescence” under Section 33 of the Act and is based on the well settled principle-

 “Equity aids the vigilant, not those who slumber on their rights.”

It means a person who has been wronged must act relatively swiftly to preserve his rights.

The proprietor of the trade mark must remain vigilant about any unauthorized use of his mark by others and if he doesn’t, he would not be entitled to claim any relief under the Act due to inaction on his part.

Condition prior to Trade Mark Act 1999

Prior to the provisions in Trade Marks Act, 1999 there was not any clear and precise law regarding the defense of acquiescence under the Trade Marks Act, 1940 and under the Trade and Merchandise Act, 1958 and the scope of acquiescence was based on judicial pronouncements. Under Trade Mark Act, 1940 the court permitted the defendant to take the defense of acquiescence under ‘special circumstances’ in Section 10(2) of the 1940 Act which says,“In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of trade mark which are identical or nearly resemble each other in respect of the same goods or description of goods subject to such conditions and limitations, if any, as the registrar may think fit to impose.

 Under Trade and Merchandise Act, 1958 the plea of acquiescence can be availed by the defendant under the ‘special circumstance’ under clause (1) of sub-section (b) of Section 30 of 1958 Act which is as follows –

Section 30 – Acts not constituting infringement :- (1) Notwithstanding anything contained in this Act, the following acts do not constitute an infringement of the right to use of a registered trade mark – (b) the use by a person of a trade mark in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or bulk of which they form part, the registered proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark.

 Acquiescence under Trade Marks Act 1999

 The act came into force in 2003 and it clearly lays down the provision for acquiescence under Section 33 which is mainly evolved from the various opinions and judgments of the courts over the years.

 Section 33– Effect of acquiescence:

(1) Where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of a registered trademark, being aware of that use, he shall no longer be entitled on the basis of that earlier trade mark—

(a) to apply for a declaration that the registration of the later trade mark is invalid, or

(b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used unless the registration of the later trade mark was not applied in good faith.

(2) Where sub-section (1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark, or as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark may no longer be invoked against his later trademark.

Section 33 of the Act in simple words allows the defendant to take the plea of ‘acquiescence’ against the proprietor of the trademark for his ignorance and inaction even after being aware of the use of the proprietor mark in good faith for the period of continuous five years.

The Supreme Court in the Ramdev Food Products Ltd. Vs. Arvind Rambhai Patel [AIR 2006 SC 3304] crystallized the law on the point as – The principle of acquiescence would apply where the plaintiffs found (i) sitting by or allowing another to invade the rights and spend money on it, (ii) it is a course of conduct inconsistent with the claim for exclusive rights for trademark, trade name, etc.

The Delhi High Court in Jolen Inc. Vs. Doctor & Company [2002 (24) PTC 29 (Del)] observed that the defendant can avail the plea of acquiescence not only if he proves that the plaintiff is standing by but he has also to prove that the plaintiff has turned a blind eye for a substantial period. Bombay High Court in the case of Emcure Pharmaceuticals Ltd. Vs. Corona Remedies Pvt. Ltd. upheld that a mere failure to sue without a positive act of encouragement is no defense and is no acquiescence.

The exception to this section is in the words “good faith”. If the proprietor of the mark is able to prove that the defendant adopted the mark in bad faith, to trade upon the reputation and goodwill of the proprietor’s mark for commercial gains, then the plea of acquiescence doesn’t hold good. In the case of  M/s. Hindustan Pencils Pvt. Ltd. Vs. M/s. India Stationary Products Co. Ltd. [AIR 1990 Del. 19]- Delhi High Court held, if the user even after knowing that he is violating the right of the owner of the trademark, acts fraudulently, the relief of injunction is not denied.

Thus a mere delay in filing a suit would not amount to acquiescence. If the plaintiff even being aware of the use of a similar mark sits idle and allows the defendant to grow and popularize its business under the similar mark over a substantial period of time. However, it is clear that the defendant can only be allowed to raise the plea of acquiescence if he proves that he adopted the mark in good faith and without knowledge of the earlier similar mark being in use. Acquiescence can be a ground for granting injunction and factors such as knowledge of unauthorized use of the mark, ignorance, and inaction by the proprietor for a substantial period of time, mala fide intentions of the user are to be considered while deciding the plea of acquiescence, thereby, not only allowing the defendant to use the mark concurrently, but also to get the mark registered!

About the author:     Ankit Chaudhary, Faculty of Law, Delhi University, intern at Khurana & Khurana Advocates and IP Attorneys and can be reached at info@khuranaandkhurana.com

Freedom of Panorama

Freedom of panorama is a derived from German word Panoramafreiheit. It is the right of individual to publish photographs of the public buildings and the public structures which are attached to the public places permanently and is one of the exception of the Copyright law. “French-Italian model” and the “German-English model” are the two modular frameworks on which the freedom of panorama is based. On one hand, where the French-Italian model does not lay down the restrictions on the copyright law, the German-English model, on the other hand, states freedom of panorama as an exception to the copyright law. Indian Copyright Act has incorporated the German-English model with certain modifications to suit the Indian scenario.

Article 5 of the Berne Convention,1886 has laid down the “principle of assimilation” which means that countries who are the members of the convention enjoy the rights as laid down in the convention along with the national law of the State. Article 17 of the Convention has permitted the States to enact necessary legislation to prevent the infringement of any work thereby following one of the essential principles of the International Law. Article 9 of the Berne Convention mentions that audio and visual reproduction of copyrighted work amounts to the copyright infringement. Article 9 of the Berne Convention is contradictory to the Section 52 of the Copyright Act, 1957 as it follows the principle of assimilation and the basic principles of the International Law.Italian Copyright law follows the French-Italian model by recognizing the freedom of panorama and states that the photographs and video recording of sculptures, artistic work and architectural structures having public access, will not amount to copyright infringement if such a reproduction is used only for personal purpose but, if it such photographs or video recordings are used commercially, it will amount to the copyright infringement.

For example: – Photography of the Eiffel Tower at night amounts to copyright violation. However, photography during the daytime is rights-free and does not amount to infringement. The interesting explanation to such a law in France is that the in 1923 the creator and the owner of the copyright of the Eiffel Tower died and the Eiffel Tower entered public domain in the year 1993. Thus, in 1999 Las Vegas had its own Eiffel Tower. Although, the copyright expired in 1993 the lights in the Tower were installed in the year 1985, adding to the aesthetic beauty of the pre-existing structure and classifying the tower’s light display as an “art work” within the purview of Copyright Laws. Hence, the night-time photography of Eiffel Tower will amount to the copyright infringement, as it does not fall within the public domain till date.[1]

Looking into the Indian scenario, even though there is no provision explicitly defining the Freedom of Panorama, the Copyright Act, 1957 under Section 52 sub-clause (t) and sub-clause (u) has provided for the provision related to the Freedom of Panorama. Section 52(t) states that the making or publishing of a painting, drawing, engraving or photograph of a sculpture, or any other work of artistic craftsmanship, permanently situated in a public place or any premises to which the public has access, will not amount to copyright infringement. Section 52(u) has included the cinematographic films within the ambit of the freedom of panorama.According to sub-clause (u)the following inclusions in the cinematographic films does not amount to the copyright infringement:-

  • Any artistic work which is situated permanently in a place which can be accessed by the public.
  • Any other artistic work, if such inclusion is only by way of background or is otherwise incidental to the principal matters represented in the film.
  • Use of the author’s artistic work where the author is not the copyright owner or it was the author’s commissioned
  • Reconstruction of any structure or building in accordance with the architectural plans by which the building was constructed.

All in all, Section 52 of the Copyright Act, 1957 has resolved a potential conflict which could have arisen, if any architectural structure or any sculpture displayed in the public is photographed or used in a cinematographic film without the prior permission of the artist.In practice, Section 52 does conflict with certain aspects of the copyright law yet, it has been seen that Section 52 prevails over the other provisions.

Neelkant Darshan was a short feature film shot in the Akshardham Temple where photography and videography is prohibited. Section 14(c)(i)(A) of the Copyright Act, 1957 provides the architects and the author of an architectural work have the right to protect their work from being stored in any medium by electronic means. A tourist if photographs the Akshardham Temple by virtue of Section 14(c)(i)(A) will be deemed to infringe the copyright. However, by virtue of Section 52 of the Copyright Act, 1957, such photography and videography will not amount to infringement of copyright as the temple is situated permanently in an area easily assessable to the public.Therefore, it is quite evident that Copyright law is clear about the concept of Freedom of Panorama; however, conflict may arise if a building is trademarked and recorded in a video!

About the Author: Trishala Sanyal, intern AKK New Law Academy Intern at Khurana and Khurana Advocates and IP Attorneys and can be reached at  info@khuranaandkhurana.com

Reference:

[1] https://petapixel.com/2017/10/14/photos-eiffel-tower-night-illegal/

Copyright Protection to Architectural Works

Issue of infringement of architectural works requires understanding of protection of works when they are reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner.

For example: if an architect uses a part of the architectural design of another architect in order to build his own building, without the prior permission of the architect who owns the copyright from which the other architect derives his work, it would amount to infringement. This permission may be obtained through an assignment or a license for the use of the same. However, not all inspiration amounts to infringement of copyright. Copyright law allows portions of a copyrighted work to be used without the author’s permission for specific purposes such as criticism, comment, news reporting, research, teaching etc. under the doctrine of fair use which is often used as a defense.

The protection of architectural works through Copyright against infringement and imitation is provided in the copyright act 1957. Therefore answer to the question of whether architects could protect their “Architectural works” from infringement? Is yes. Discussion on what is protected as part of Copyright of a building, needs clear understanding of what is a copyright, what is an architectural work, and is it an work of art or not?

Architectural works were not afforded legal protection or any form of copyright protection till the “Berne Convention” of 1908 was revised, after which it was included in the ambit of “literary and artistic” works protected at international level.

Despite architectural works being considered artistic works, some structures have been kept outside the scope of copyright protection, like bridges, dams, tents, boats are not considered “buildings”.

 Freedom of Panorama

“Freedom of Panorama” is an exception to the other provisions of the Copyright Act, 1957. The term has not been explicitly incorporated in the Act but Section 52 of the Copyright Act interprets similar meaning to the terminology and lays down certain acts which do not lead to copyright infringement. The section is explained by the following points:-

  • Any painting, engraving, drawing or the display of a work of architecture, photograph of a work of architecture can be made or published and has been incorporated under section 52 (1)(s).
  • The making and publishing of a drawing, painting, photograph of a sculpture, or other artistic work, engraving or any other work of artistic craftsmanship, if such work is situated in a public place permanently or any premises where the public has an access.
  • Any artistic work which is permanently situated in a public place or where the public has an access is included in a cinematograph film.
  • It is in this regard that the Indian Copyright Law can be appreciated, as against European and American copyright law which allows this freedom only if the copyrighted work is used for non-commercial or educational purposes, the Indian law is not subject to such demarcations.

Protection under the ambit of Copyright Act

“In general, any original work made by a person is eligible for copyright protection. Originality refers to the fact that an author must have created the work through the application of the author’s own creativity and labour. In addition, such work must have been reduced to a material form. Copyright comes into existence as soon as a work is created and no formality is required to be completed for acquiring copyright, although it is advised that the author/owner of the copyright gets their work registered to make sure they can enforce the rights conferred by the Copyright Law, should their copyright be infringed. Different countries have different laws pertaining to copyright of artistic works.

Indian law provides protection to the architectural works under the uniform copyright law. Section 13 of the Indian Copyright Act, 1957 numerates the types of artistic works that are eligible for copyright protection.

According to Copyright act 1957-

Section 2(b) “work of architecture” means any building or structure having an artistic character or design, or any model for such building or structure;

Section 2(c) “artistic work” means—

(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an
engraving or a photograph, whether or not any such work possesses artistic quality;

(ii) a work of architecture; and

(iii) any other work of artistic craftsmanship.

In India architects can register their original works under the Copyright registration system. Also, being a signatory to Berne Convention as well as Universal Copyright Convention, works protected in other Berne signatory countries will automatically be protected in India without the need for registration. Architecture may be defined as the “art of designing and constructing buildings”, and therefore has both functional as well as artistic attributes. Section 57 of the Indian Copyright Act also takes into consideration the moral rights of the creator of the artistic work as well as the rights of integrity and attribution of the author. The Indian copyright law has also widened its scope to allow protection to the architectural design of commercial buildings. We, at Khurana & Khuranahadthe opportunity to register the copyright for architectural design of a commercial building for our client Riis Retail, a company based out of Denmark, vide diary no. 12158/2010/CO/Aon 10thof November, 2010!

 Protection under the ambit of Design Act

Section 2(d) of the Design Act, 2000 has defined the term design as “ the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.

The Design Act, 2000 provides for registration of Architectural works under Class 25-03 and 25-99. Due to multiple provisions conferring protection to architectural works, a conflict mayarise, whether Architectural works should be protected under the Copyright Act, 1957 or under the Design Act, 2000 or whether Section 15(2) of the Copyright Act, 1957 would come in play for determination of what works would be protected through Designs vs Copyrights.

Application of Mischief rule by the courts

Mischief rule pertains to the interpretation of the statutes and is applied by the Courts when there is a conflict between two laws or provisions of law on interpreting it by the words as stated in the particular law or is interpreted by the courts to resolve the confusion in its application. In the case of Microfibers Inc. vsGirdhar& Co. &Anr.,[1]the question was whether the design of an “artistic work” in fabrics should be protected under the Copyright Act or the Design Act. The court by applying the mischief rule stated that the “the mischief sought to be prevented is not the mischief of copying but of the larger monopoly claimed by the design proponent inspite of commercial production.[2] The court had held that if the design is registered under the designs act, the design would lose its copyright protection, and if the design has not been registered it would still continue to enjoy copyright protection as long as the threshold limit of its application through an industrial process does not go beyond 50 times, after which it shall lose its copyright protection. Delhi High Court by giving a reference to the particular case in Holland L.P. &Anr. vs A.D. Electro Stell Co. Pvt. Ltd[3]., where it was argued by the plaintiff that under section 2(c) read with section 13 of the Copyright Act he had the “right to convert a two dimensional artistic work into a three dimensional constructions”[4]and that the “drawings” are capable  of being copyrighted under Section 15(2) of the Copyright Act. Thus by the virtue of the two statements the copyright should stay with him. The court rejected the plaintiff’s contention and stated that the drawing was capable of being registered under the Design Act and it would lose its copyright if it is reproduced by the industrial process more than 50 times and would also fall under the public domain.

International Conventions protecting the architectural structures 

 Article 2(1) of the Berne Convention requires member countries to extend copyright protection to, among other things, “works of . . . architecture . . . and three-dimensional works relative to . . . architecture.”[5]However, the Berne Convention does not explicitly define what works constitute a “work of architecture” entitled to protection, except that such works may be “incorporated in a building or other structure.” The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) explicitly incorporates the Berne Convention’s mandate for architectural copyright protection without further defining what constitutes a work of architecture. Architectural works were not included in the Convention of 1886, except for the Article 4 which states “plans, sketches and artistic works relating to architecture were specified.

Thus, the protection of architectural works is an issue that has not been understood and discussed enough. A large number of architects or designers lack the knowledge to protect and enforce the IP rights in their building designs. Most of the countries have now modified their laws to meet the requirements of the Berne Convention with regard to the copyright protection for architectural works. Further, the basic use of spaces such as windows and doors, which are elementary to any building’s structure, are not themselves protected by copyright law. In such a scenario the Delhi High Court’s judgment and the harmonious construction of the Copyright Act and the Design Act has acted as a balancing beam to tackle the issue.

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About the Author: Trishala Sanyal, AKK New Law Academy and Aditya Sehgal, Symbiosis Law School Intern at Khurana and Khurana Advocates and IP Attorneys and can be reached at  info@khuranaandkhurana.com

[1] RFA (OS) NO.25/2006

[2] https://indiankanoon.org/doc/112937069/

[3] CS(COMM) 83/2017

[4] https://indiankanoon.org/doc/151057483/

[5] https://www.law.cornell.edu/treaties/berne/2.html

COPYRIGHT PROTECTION FOR ARCHITECTURAL WORKS- PART II

Application of Mischief rule by Courts

Mischief rule is pertains to interpretation of statutes, and is applied by Courts when there is a conflict between two laws or provisions of law on interpreting it by the words as stated in the particular law or is interpreted by the courts to resolve the confusion in its application. Delhi High Court in Microfibers Inc. vs Girdhar& Co. &Anr.[1] where the “artistic work” in the fabrics was in question that if the design would be protected under the Copyright Act or the Design Act. The court by applying the mischief rule stated that the “the mischief sought to be prevented is not the mischief of copying but of the larger monopoly claimed by the design proponent inspite of commercial production.[2]  In other words it means that the copyright is protected in an article till 50 reproductions by the industrial process are made and beyond this limit the copyright ceases to exist. Delhi High Court by giving a reference to the particular case in  Holland L.P. &Anr vs A.D. Electro Stell Co. Pvt. Ltd[3]. , where it was argued by the plaintiff that under section 2(c) read with section 13 of the Copyright Act that he had the “right to convert a two dimensional artistic work into a three dimensional constructions”[4] and that the “drawings” are capable to be copyrighted under Section 15(2) of the Copyright Act thus by the virtue of the two statements the copyright should stay with him. The court rejected the plaintiff’s contention and stated that the drawing was capable to be registered under the Design Act and it would lose its copyright if it is reproduced by the industrial process more than 50 times and had also entered the public domain.

International Conventions protecting the architectural structures 

Article 2(1) of the Berne Convention requires member countries to extend copyright protection to, among other things, “works of . . . architecture . . . and three-dimensional works relative to . . . architecture.”[5] However, the Berne Convention does not explicitly define what works constitute a “work of architecture” entitled to protection, except that such works may be “incorporated in a building or other structure.” The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) explicitly incorporates the Berne Convention’s mandate for architectural copyright protection without further defining what constitutes a work of architecture. Architectural works was not included in the Convention of 1886, except for the Article 4 which states “plans, sketches and artistic works relating to architecture were specified.

Thus, the protection of architectural works is an issue that has not been understood and discussed enough. A large number of architects or designers lack the knowledge to protect their building designs intellectually. Most of the countries have now modified their laws to meet the requirements of the Berne Convention with regard to the copyright protection for architectural works. Certain structures are considered to be outside the protection of copyright law. For instance, certain structures such as bridges, dams, cloverleaf’s, tents, recreational vehicles, walkways, mobile homes, and boats cannot be considered “buildings”. Further, the basic use of spaces such as windows and doors, which are elements that can be found in the majority of buildings, are not in and of themselves protected by copyright law. In such a scenario the Delhi High Court’s judgement and the harmonious construction of the Copyright Act and the Design Act has acted as a balancing beam to tackle the issue.

[1]RFA (OS) NO.25/2006

[2]https://indiankanoon.org/doc/112937069/

[3]CS(COMM) 83/2017

[4]https://indiankanoon.org/doc/151057483/

[5]https://www.law.cornell.edu/treaties/berne/2.html

About the Author: Trishala Sanyal, AKK New Law Academy and Aditya Sehgal, Symbiosis Law School Intern at Khurana and Khurana Advocates and IP Attorneys and can be reached at  info@khuranaandkhurana.com

Intellectual Property, Singapore: Registered Designs legislative amendments enters into force

Intellectual Property of Singapore (IPOS) in its constant endeavor to grow the IP regime and provide an effective legal framework to the local design industries of Singapore has taken a significant step forward as the Registered Designs (Amendment) Act 2017 (“Act”) and its corresponding subsidiary legislation amendments comes into force from October 30, 2017 [1] [2]. Key features of the amendment are as follows:

 Expanding the scope of Registered Design:

This amendment allows the broadening of scope of the designs that can be registered. In simpler words, an applicant can protect more types of features for their designs. This includes the design features related to a non-physical product and also includes the feature of colors and handicrafts.  A new category which has been introduced into the ‘Registered Designs Act’ is a Non-Physical product which can be a virtual of projected design. A “non-physical product” is anything which

  • doesn’t have a physical shape or feel;
  • is a projection of a design on a surface or into a medium (including air); and
  • has an intrinsic utility.

A virtual keyboard can be an example of a non-physical product which does not have a physical shape/form and is projected by light onto a surface, and which has an intrinsic utility function to type characters in the same way as a physical computer.

Changing the default ownership position of  commissioned designs:

Prior to the amendment, when the designers were commissioned to create a design, the commissioning party was considered to be the owner of the rights in the design, not the creator/ designer. According to the amendment, Section 4 of the Registered Designs Act gives the ownership rights to the designer/ creator by default unless the parties have contracted otherwise.

Extension of Grace Period:

Inclusion of a new section 8A in the Act allows to broaden the circumstances where the designs are disclosed by the designers and to lengthen the grace period for designers to get their designs registered in cases where the designs were disclosed to the public prior to date of filing the registration application. The grace period has been extended from 6 months to 12 months. In other words, the designer can still file a design application for his/her design within 12 months of any disclosure made by him/her for the same design. This new Section 8A shall apply in cases where the disclosure was made on or after the date of commencement of the legislative changes (i.e. 30 October 2017).

Allowing multiple designs to be filed in a single application:

The amendment allows the applicants to file a single application for multiple designs. This must be done at the time of filing the application for registration of their designs on ‘Form D3’. A maximum of 50 designs can be filed within a single application.

Further for providing convenience in filing applications, the amendment includes a new Section 16 A which states that for correcting any non-compliance or to comply with either or both of the formal requirements of Section 11 (2) (c) and 11 (4) (a), subject to the permission of the Registrar, a new application can be filed by the applicant for registration of the design. An additional benefit is granted to the applicant i.e. the new application filed by the applicant shall be treated as filed on the date of filing of the previous application for registration of design.

A per the released Circular No. 6/2017 [2], the corresponding subsidiary legislation amendments to the Registered Designs (Amendment) Act 2017 can be found in the Registered Designs (Amendment No. 2) Rules 2017, the Registered Designs (International Registration) (Amendment) Rules 2017 and the Copyright (Amendment) Regulations 2017.

The above amendments as already mentioned allows greater ownership rights for the local designers and to get protection for more type of features for their designs.

The updated legislative amendments in relation to the changes above will be made available on the IPOS website (https://www.ipos.gov.sg/resources/ip-legislation) [4] after it is published in the Government Gazette.

Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

References:

[1]https://www.ipos.gov.sg/docs/default-source/resources-library/design/Guidelines-and-Useful-Information/registered-designs-infographic-legislative-amendments.pdf

[2]https://www.ipos.gov.sg/docs/default-source/resources-library/design/circulars/2017/(2017)-circular-no-6—designs-related-legislative-amendments-to-enter-into-force-on-30-october-2017.pdf

[3]https://www.ipos.gov.sg/

[4]https://www.ipos.gov.sg/resources/ip-legislation

100 and counting: Indonesia joins Madrid Protocol

The Madrid Protocol is an international treaty which simplifies the procedure for international registration of trademarks by filing a single application along with onetime payment fee. The protocol was adopted at Madrid on June 27, 1989, amended on October 3, 2006 and further amended on November 12, 2007 [1]. The Protocol provides for convenient and effortless managing and registration of trademarks worldwide. A landmark moment in Madrid System history was October 2, 2017 as Indonesia officially became 100th member of the Madrid Union on this day. The instrument of accession to the Madrid Protocol with WIPO’s Director General was completed through the issuance of the Presidential Decree No. 92 of 2017. The Protocol will become effective for Indonesia on 2 January 2018 [2].

Indonesia is one of fastest growing top five G20 economies and a leader in global marketplace and membership in   Madrid Union opens up a direct path for Indonesian enterprises in new marketplaces like US, China, Europe and Japan. Indonesia is the eighth member of the Association of Southeast Asian Nations (ASEAN) to join the Madrid System after Vietnam which became member in 1995 [4]. It further reinforces the motto of ASEAN, to promote technology transfer throughout the region and stimulate innovation through strengthened IP-rights co-operation.

Once the Madrid Protocol comes to force, local economic growth will be stimulated as the Indonesian nationals will be able to seek protection of their trademark in the territory of other member countries. Likewise, the owner of an existing International Trademark Registration (IR) will be able to expand the scope of their protection by filing a subsequent designation to its existing IR, in order to seek additional protection in Indonesia.

The Presidential Decree No. 92 of 2017 provides that Indonesia has made the following declarations in regard to its accession to the Madrid Protocol [3]:

  1.  With respect to Article 5 (2)(b) of the Madrid Protocol, time limit of 18 months will be given to notify a refusal to the International Bureau against an international application made under the Madrid Protocol.
  2. With respect to Article 8 (7)(a), the Government declares its rights to receive fees produced from supplementary and complementary fees, in the event:
  • An international trademark application is intended for Indonesia
  • Indonesia becomes the next appointed country in the international registration
  • A renewal for an international registration is intended for Indonesia.
  1. With respect to Rule 20 bis(6)(b) of the Common Regulations (recording of licenses in the International Register), further on it will not have any effect in Indonesia.

The Madrid Protocol after gaining instrument of accession from Indonesia becomes the fifth WIPO administered treaty after the WIPO Convention, the Paris Convention, the Berne Convention and the PCT. Indonesia’s entry into the Madrid system as its 100th member clearly showcases its significance of being a key component of global protection of trademarks. It also highlights a cost-effective and reliably convenient solution it provides to global brand owners.

For an applicant to apply for trademark protection in Indonesia, he/she must browse the Global Brand Database which has almost 870,000 marks currently registered in that market before he/she files an international application.

Just before Indonesia entering into the Madrid system, Thailand became the 99th member of the Madrid System. The Protocol will enter into force for Thailand on November 7, 2017 [5]. This development can be seen as indication of news from remaining two ASEAN members, Malaysia and Myanmar.

Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

 [References]

[1]http://www.wipo.int/treaties/en/text.jsp?file_id=283484

[2]http://www.wipo.int/madrid/en/news/2017/news_0020.html

[3]http://www.wipo.int/madrid/en/members/declarations.html

[4] https://www.state.gov/p/eap/regional/asean/

[5]http://www.wipo.int/madrid/en/news/2017/news_0015.html

Evolvement of Quantum dot Light Emitting Diode (QLED) Technology: An Overview

Television is amongst many other technologies which evolved rapidly in 20th century as a result of market competition. Currently, this evolution has landed from huge boxes to flat screens with high definition display, which give more colorful experience than reality itself.

It was late before 1940s when people enjoyed Black and White Television, which worked merely on the basis of white phosphor coated screen which represented an image, when an electron beam painted that image on it resulting into a black and white image. Later on, CRT (Cathode Ray Tube) Technology for generation of colored images in television came up with three electron beams one for each additive primary color (red, green, and blue).

As technology evolved, Plasma Technology came into existence in televisions, which consists of tiny cells coated inside with phosphor which were then coated to the interior of a glass tube, which was filled up with a gas. Once current flows through the gas and the gas atoms bombard on cells, there occurs generation of ultraviolet light, ultimately generating an image on screen. This ultimately reduced the size, as the cathode tube is absent in this case.

Further Evolution of LCD (Liquid Crystal Display) Technology came into existence in televisions, which utilizes a backlight source to illuminate, which includes CCFL(Cold Cathode Fluorescence Lamps), etc. as this technology doesn’t include electron beams like CRT and these are much thinner than Plasma television and are available in variety of sizes.

Advancement in technology led to utilization of LED (Light Emitting Diode) as a backlight source for the display. In case of LCD, where the backlight needed to be blocked in order to represent a darker zone in display, LED provided a facility wherein the light can be dimmed (LED can be manufactured in very small sizes). LED television are of two types white and RGB, where white uses white CCFL and RGB utilizes three colors(red, green, blue).

In recent times market has flushed with OLED  (Organic Light Emitting Diode) technology televisions, which refers to Organic Light Emitting Diode Technology which utilizes Organic Semiconductors, to create a digital display on activation by two electrodes, one of which is transparent.

Currently market is hit by a newer technology utilizing Quantum Dots or Semi-conductor nanocrystals called as QLED (quantum dot light emitting diode) Technology. QLED TV offers high and dynamic brightness levels, best viewing angle and produces more colours than any LED TV. QLED is supposed to be a so-called emissive technology. QLED basically means quantum dot technology + LED = QLED. QLED technology utilizes a quantum dots as a light source or light emitting device. Quantum dots are very small semiconductor particles, only several nanometers in size, so small that their optical and electronic properties differ from those of larger particles. The quantum dots are really tiny particles that, when hit with light, can deliver extremely high-intensity light means basically quantum dots may emit light, or just convert it. QLEDs are characterized by pure and saturated emission colors with narrow bandwidth. Quantum dots are tiny, and their size determines their color. LED TVs with quantum dots such as cadmium selenide (CdSe) nanocrystals, considered as “QLED” use BLU (Back-Light Unit) and produce enhanced colors utilizing quantum dots. The quantum dots can be used as a tube adjacent to the LEDs or in a sheet of film. QLED TV technology utilizes quantum dot with LED display. The quantum dot can be utilized to experience extremely bright and intensely dark colors on the QLED TV, just as real life. QLED TV technology places a layer or film of quantum dots in front of a regular LED backlight panel. The layer or film is made up of quantum dots which are tiny particle seach of which emit its own individual color depending on its size (anywhere between 2 and 10 nanometers). In QLED TV quantum dots are arranged between the display and the LED lights i.e. behind the display and in front of the LED. When the quantum dot is struck by light, it glows with a very specific colour.

Conventional LCD TV mostly utilizes LED which emits white light butQLED TV can utilize any color, like blue LED which can emit blue light. A blue LED light emits the blue hues. When blue LED emits the blue hues then the different sized quantum dot emits different colors such as red, green, etc based on size of quantum. The quantum dot can have different size and each size producing a different hue to turn light into perfect expressions of color. For example, when a blue LED light is struck on the quantum dot which has 5 nm diameters, then that quantum dot will emit red hue to express red colour and likewise, different size quantum dots emit different hue to express different colors while producing a picture.

Recently Samsung has come up with QLED TV quantum dot technology paired with (high dynamic range) HDR technology to reproduce a greater dynamic range of luminosity with standard digital imaging or photographic techniques for experiencing full spectrum of real-life hues and clarity. Samsung has paired this QLED technology with precision black technology which automatically adjusts the brightness of every scene accordingly, in their QLED TV series. In QLED TV the quantum dot technology helps in experiencing true or real colour as real life event and HDR technology assists in expressing greater dynamic range of luminosity from any angle.

Samsung has recently filed a Patent application (application no. WO2017018713A1) on QLED technology which talks about a display apparatus and a display method, which consists of fixed number of light emitting elements and a controller to monitor and control the light emission of these elements as per the requirement of the display. Samsung filed Another Patent application (application no. WO2016175541A1), which describes presence of liquid crystal panel in the display, associated purpose and utilization of quantum dots as color filter in between polarizing components of liquid crystal panel. The quantum dots are adapted to filter light of preset colors.

REFERENCES

[1]. http://www.samsung.com/global/tv/qled/quantum-dot/

[2]. https://www.wired.com/2015/01/primerquantum-dot/

[3]. https://www.google.co.in/patents/WO2016175541A1?cl=en

[4]. https://www.google.co.in/patents/WO20170187A1? dq=WO2017018713A1&cl=en

[5]. http://www.pocket-lint.com/news/139867-what-is-qled-samsung-s-new-tv-tech-explained

 ABOUT THE AUTHOR:

Ms. Shubhangi Dhakane, Patent Associate at Khurana & Khurana Advocates and IP Attorneys, along with Ms. Shalini Patil, Birla Institute of Technology & Science, Pilani (Rajasthan), intern at Khurana & Khurana  and can be reached at: swapnils@khuranaandkhurana.com