Decoding the Case: Humans of Bombay Vs People of India

  • September 28, 2023
  • Shreya Chaddha

In a social media post that now has over 4 million views, Brandon Stanton, creator of Humans of New York, called out Humans of Bombay for filing a lawsuit for what he has “forgiven” them for, indicating his storytelling model being adopted by the latter. Responding to Stanton’s post, the Indian photoblog issued a statement to clarify the matter and point out that its lawsuit did not concern the concept of storytelling but was instituted to protect its intellectual property rights, specifically copyright.

The Controversy

Stanton’s statements have been widely quoted by several media houses and influencers leading the public to form strong opinions on the matter. Overlooking the issues involved in the case before the Delhi High Court, the media has focused on the ownership of the “Humans of .…” photoblog concept, with many hailing it as Stanton’s work and accusing Humans of Bombay of copying the concept and taking legal action against People of India for doing the same.

This article aims to demystify the core issues surrounding the controversy and shed light on the associated IP rights.

Battle of Titles: Humans of New York Vs. Humans of Bombay

A quick search conducted in both the United States Patent and Trademark Office (USPTO) registry and the Indian Trademark Registry reveals that a trademark has indeed been registered under Stanton’s name for “Humans of New York” in the United States. However, this does not hold for India.

Given that trademark rights are inherently territorial, it becomes evident that “Humans of New York” will not have grounds to file a trademark infringement case against “Humans of Bombay” in India; however, a passing-off and misrepresentation case can be made out, if required.

Considering that the term “Humans of….” may be considered a descriptive term, it will be interesting to see how the courts interpret such a case if contested.  

Storytelling Concept / Business Idea

Since 2010, Humans of New York has been a storytelling platform which showcases the stories of individuals who share brief interviews that delve into their life experiences, the challenges they’ve confronted, and the steps they’ve taken to surmount these challenges.

It is important to mention here that copyright law doesn’t protect an idea; instead, it is the expression of an idea that is protected. Further, copyright does not protect a business idea because, if done, it will create a monopoly in the market and stop any third person from creating/operating a business.

Therefore, even though the concept may have been introduced through “Humans of New York”, no copyright over such a concept can be claimed. 

The Actual Issue: Humans of Bombay Vs. People of India

The plaintiff, Humans of Bombay Stories Pvt. Ltd., owns a platform through which it shares the life stories of various individuals. These stories are published as posts, write-ups, interviews, etc.

It came to the plaintiff’s notice that an Instagram handle (@officialpeopleofindia) operated by the defendant was hosting content identical to that of the plaintiff, including images and videos. Further, they’ve been interviewing the same subjects whose stories were published by the plaintiff.

Hence, the plaintiff filed a suit before the Delhi High Court on September 14, 2023, seeking an injunction against the defendants on account of copyright infringement of its content, including photographs, literary works, films, and creative expressions published on its website and social media platforms. In support of its contentions, the plaintiff attached a series of screenshots of social media posts and photographs as annexures to its plaint, to indicate the imitation.

The plaintiff seems to have endeavoured to address the issue amicably before taking recourse under the law.

Replication of Stories  

The plaintiff submitted that the defendants replicated its stories, which amounted to copyright infringement. Additionally, in its plaint, the plaintiff averred that the similarities in the content constituted passing off and unfair competition, considering that the defendants have been banking on the goodwill that has been “painstakingly built by the plaintiff”.

Referring to the efforts that go into storytelling, the plaintiff asserted that its team is engaged in conducting substantial research, approaching several subjects, converting stories into audio-video works and uploading them on the website and social media platforms.

Prima Facie Case of Imitation and Court’s Order

With respect to the lawsuit, the Court directed that a summons be issued to the defendants, also requiring submission of the written statement within 30 days.[1]

Upon perusal of the annexures attached to the plaint, the Court observed that prima facie, there was “substantial imitation”, and in some instances, the images were “identical or imitative”. With this, the Court directed that notice be issued to the defendants that the application for interim relief would be considered on the next date of hearing.

The matter will be heard next on October 11, 2023.

Takeaways

A mere glance at the posts published on the Instagram handle of People of India readily reveals the striking similarities and, in certain instances, outright replication of House of Bombay’s content. As mentioned above, the Delhi High Court, in its admission dated September 18, 2023, acknowledged the existence of a prima facie case for imitation.

While it appears to be a straightforward case of potential copyright infringement, if proven, a more substantial issue looms regarding the ownership of the business concept over “Humans of ….”. This raises questions about ethical considerations, originality, and misrepresentation within the broader context.

References:

[1] Humans of Bombay Stories Pvt. Ltd. v. POI Social Media Pvt. Ltd. & Anr. [CS(COMM) 646/2023 and IA 18038-18042/2023]

Image Credits:

Photo by Georgescu Adrian’s Images: https://www.canva.com/photos/MAFB3Sc1CqU-man-doing-live-video-with-phone-with-stabilizer-in-ny/

A mere glance at the posts published on the Instagram handle of People of India readily reveals the striking similarities and, in certain instances, outright replication of House of Bombay’s content. As mentioned above, the Delhi High Court, in its admission dated September 18, 2023, acknowledged the existence of a prima facie case for imitation. While it appears to be a straightforward case of potential copyright infringement, if proven, a more substantial issue looms regarding the ownership of the business concept over “Humans of ….”. This raises questions about ethical considerations, originality, and misrepresentation within the broader context.

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Notice of Trademark Opposition by Email: Service When Complete?

The Indian legal landscape is replete with cases that hinge upon principles of natural justice, fair play, and procedural propriety. One such case is Ramya S Moorthy v. Registrar of Trade Marks & Anr.[1], a recent Madras High Court decision that addressed the issue of deemed receipt of notice when sent via email and upheld an applicant’s substantive right to be heard.

It is pertinent to note that before the introduction of the new Trade Marks Rules of 2017, the Trade Marks Registry used postal mail to serve notice of opposition to the applicants. Through the rules, e-mail was introduced to serve the opposition notice under Section 21(2) of the Trade Marks Act, 1999. While the new service delivery system was a breath of fresh air, it was not devoid of problems.

Service of Notice Via E-mail: TM Registry’s Stand

Since the implementation of the rules in 2017, the Trademark Registry has established a standard practice that if the sent notice reached their e-mail inbox as an internal copy, they deemed the notice as successfully delivered to the Applicant. However, the same posed a problem when there were technical glitches, and e-mails remained undelivered, adversely impacting the Applicant’s rights.

Facts of the Case

The Ld. Registrar, via orders dated April 28, 2023, deemed the applications for registration of two of the Petitioner’s marks as abandoned. The timeline for the early stages of the application filing was as follows:

  • Filing of trademark applications: February 4, 2022.
  • Receipt of examination report: March 8, 2022.
  • Publication of marks in the journal: September 12, 2022.
  • Opposition filed by the opposite party (Respondent no. 2 herein): January 12, 2023.

The problem began when the Trade Marks Registry deemed the delivery of service to be done on January 19, 2023, while the Petitioner kept denying the receipt of the service of notice. Section 21(2) of the Act requires that a counter statement be filed within two months of receiving a copy of the notice of opposition. As one may expect, the Petitioner, without being served with the notice, failed to file the counter statement. The Registry issued abandonment orders on April 28, 2023, on the expiration of the period prescribed under the said Section.

Aggrieved, the Petitioner approached the Madras High Court, challenging the abandonment orders passed by the Trade Marks Registry.

Transmission of Opposition Notice

While sending opposition notices, the Registry marked one of their internal e-mail addresses in carbon copy (CC), and if the internal servers received the e-mail without any glitches, they considered the e-mail to be successfully delivered to the Applicant. Now, this is a relevant issue because often times, the external servers of the Applicant’s e-mail ID either do not receive the e-mail or the e-mail gets marked as spam due to the huge number of e-mails sent by the Registrar’s handles on a daily basis.

Legal Fiction under the 2017 Rules

It was observed that Rule 18(2) of the 2017 Rules presented a clear conflict with Section 21(2) of the Act because the said Rule states that “Any communication or document so sent shall be deemed to have been served at the time when the letter containing the same would be delivered in the ordinary course of post or at the time of sending the e-mail.”

The Court opined that Rule 18(2) created a conundrum by providing that the notice would be deemed to be served ‘at the time of sending the e-mail.’ The literal interpretation of the said Rule would entail that mere proof of transmission of the e-mail would suffice. If such an interpretation were to be adopted, it would have resulted in an inherent contradiction between the rules and the statute, potentially causing injustice to Applicants who are unable to file timely counter statements due to the non-receipt of the opposition notice.

Absence of Provision regarding Deemed Receipt of Notice

Since there was no provision in the statute regarding deemed receipt of notice, the Court noted that Rule 18(2) would not be in consonance with Section 21(2) of the Act. This is because the said Section contemplates that the time limit of two months for filing the counter statement would activate from the date of receipt of the notice of opposition by the Applicant.

It was acknowledged that the stakes were high since an Applicant’s substantive right to trademark registration was on the line. With this, the Court concluded by holding that the time limit under Section 21(2) would apply from the date of the e-mail’s receipt by the Applicant, and the document that the Registrar relied on was insufficient and could not qualify as valid evidence of receipt.

Thus, the Court harmonised the provisions by asserting that the prescribed time limit would run from the date of receipt of the e-mail containing the notice of opposition. This interpretation aligns with procedural fairness and natural justice principles, ensuring that an Applicant has a reasonable opportunity to respond to a trademark opposition notice before being deemed to have abandoned the trademark application.

Implications of the Court’s Order

The Madras High Court’s decision effectively addresses the concerns of trademark applicants when it comes to technological glitches and other issues involved in the electronic service of opposition notices, such as e-mails not reaching the Applicants, ending up in spam folders, not being delivered, etc.

The Registrar’s office needs to proactively monitor the impact of the judgment and develop potential solutions to track service delivery. One such method could be adding a verification link in the e-mail that redirects the Applicant to the Registry’s website, and without this, no counter statement should be allowed to be filed. Further, the judgement will certainly bring about a positive change in the opposition process and ultimately serve the parties on both sides of the table, whether it be the opposition party or the Applicant whose rights might otherwise be threatened by the flawed delivery system.

References:

[1] [WP(IPD) Nos.3 & 4 of 2023], https://www.foxmandal.in/wp-content/uploads/2023/09/ramya-s-moorthy-v-registrar-of-trademarks-1533986.pdf

Image Credits:

Photo by GettyImages: https://www.canva.com/photos/MADerI61I68/

The Court opined that Rule 18(2) created a conundrum by providing that the notice would be deemed to be served ‘at the time of sending the e-mail.’ The literal interpretation of the said rule would entail that mere proof of transmission of the email would suffice. If such an interpretation were to be adopted, it would have resulted in an inherent contradiction between the rules and the statute, potentially causing injustice to Applicants who are unable to file timely counter statements due to the non-receipt of the opposition notice.

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Sushant Singh Rajput’s Publicity Rights: Delving into the Order’s Reasoning

In an order dated July 11, 2023, the Delhi High Court in the case of Krishna Kishore Singh vs. Sarla A Saraogi & Ors. [IA 10551/2021 in CS(COMM) 187/2021] rejected the plea of the father of late actor Sushant Singh Rajput (SSR) seeking an injunction against the continued streaming of the film, “Nyay: The Justice” which is based on the late actor’s life.

Before diving deep into the Delhi High Court order, let us look at the status of publicity rights after an individual’s death.

In 1979, in a significant ruling, the California Supreme Court held that the name and likenesses of late actor Bela Lugosi were not heritable, and the right of publicity died with him. Thereafter, the Celebrities Rights Act was passed in the year 1985, which established that publicity rights survive the death of the individual. Similarly, in Washington and Indiana, the position is that publicity rights survive the individual’s death. However, the position is different in New York, where such a right exists only during a person’s life.

This can be better understood through a 2012 judgment of a US Federal Court, wherein the Court prevented Marilyn Monroe LLC from contending that the late actress, Marilyn Monroe, was domiciled in California at the time of her demise. With this contention, Monroe LLC wished to bank on California law (on the posthumous rights of publicity) to assert that the usage of Monroe’s image and likenesses by Milton Greene for commercial purposes was in violation of her publicity rights. Rejecting this stand, the Court applied the principle of judicial estoppel since Monroe’s legal representatives had earlier maintained that she was domiciled in New York at the time of death to avoid paying California estate taxes[1].

In India, there is no law which expressly recognises the publicity or personality rights of individuals yet; hence, the heritability of such rights after the individual’s death is a grey area. However, one can rely on case laws in this regard. For instance, the Madras High Court, in the case of Deepa Jayakumar vs. AL Vijay[2], held that the reputation, personality and privacy rights of a person come to an end after their lifetime and cannot be inherited by legal heirs, like movable or immovable property. Here, the niece of the late Dr. J Jayalalitha filed a suit seeking an injunction against the release of the film, “Thalaiva” and the web series, “Queen”, based on the life story of the former Chief Minister.

Brief Facts of the Present Case

In March 2021, when the movie, “Nyay: The Justice” was still in the making, the plaintiff approached the Delhi High Court seeking a decree of permanent injunction against the defendants to prevent them from using SSR’s name, caricature, lifestyle or likeness in any of the projects or films. The plaintiff’s contention was that his permission had to be obtained before doing so. He submitted that in the absence of Class 1 legal heirs, he was SSR’s sole surviving legal heir in Category 1 of Class 2 legal heirs in accordance with provisions of the Hindu Succession Act, 1956.

Film’s Disclaimer

The Court, after watching the impugned film and comparing its story with real-life events, came to the conclusion that its story is indeed a re-enactment of SSR’s life based on news reports and commented that “Hardly any independent inventive input has gone into the movie”.

Rejecting the defendants’ contentions, the Court held that the disclaimer added at the beginning of the film could not be relied upon to determine whether there was any resemblance between the events shown in the film and real-life events.

Publicly Available Information – No Violation of Rights

The Court pointed out that the film was based on news items that were available in the public domain and hence, no right of SSR was violated particularly since the reports were not refuted or challenged at the time of their publication. Even if “arguendo”, it was assumed that the film violated SSR’s publicity rights or defamed him, such a right was personal to SSR and died upon his demise. Similarly, the other rights referred to in the plaint, including the right to privacy, personality rights, etc., vested in SSR and were not heritable. In arriving at this conclusion, the Court relied on multiple case laws, including the Madras High Court judgment in Deepa Jayakumar vs. AL Vijay[3].

The Court reasoned that before making the film, the defendants were not obligated to secure the plaintiff’s consent, and since it was released on the Lapalap platform in 2021, an injunction could not be issued at this point.

Celebrity Rights as a Sub-species of Personality Rights

It was expressed by the Court that though individuals are entitled to rights arising from their personalities and persona, the concept of conferring additional rights on a person “merely because he, or she, is a ‘celebrity’” has not been accorded judicial recognition.

With this, the Single Judge Bench of Justice C Hari Shankar opined that celebrity rights were a sub-species of personality rights, and the same did not merit further deliberation (since it was already decided that SSR’s personality rights were not violated).

Right to Free Trial cannot be affected by Impugned Film

Coming to the petitioner’s contention that the investigation into the death of SSR was still underway and the impugned movie would be prejudicial to the right to a free and fair trial guaranteed under Article 21 of the Constitution, the Court remarked that the country’s “legal system is, fortunately, not so fickle as to justify any apprehension that the dispensers of justice, who constitute its ethos and backbone, would decide on the basis of the facts depicted in the impugned movie”.

Passing Off in Reverse

Explaining that the tort of passing off involves deception, in “portraying the unreal as the real”, the Court stated that the allegation made by the plaintiff was in reverse as the impugned film was “portraying real facts behind a façade of artificiality and fiction”.

The Outcome

The plaintiff’s application for an interlocutory injunction (IA 10551/2021) against the continued streaming of the impugned film was dismissed in the present case. However, it was clarified that the Court’s decision didn’t have any impact on the plaintiff’s right to claim damages from the defendants.

This decision has far-reaching implications on the country’s stand when it comes to posthumous rights of publicity. If publicity rights are considered part of an individual’s property, it would be equitable if the same were heritable for the benefit of the legal heirs. As depicted at the beginning of the article, the legal position in this matter depends mainly on the concerned jurisdiction. India has yet to develop specific legislation and fill the existing gaps.

References:

[1] https://www.theguardian.com/film/2012/sep/03/marilyn-monroe-estate-image-rights

[2] OSA No.75 of 2020 and CMP Nos.2945, 2946 and 9240 of 2020

[3] Supra 2

Image Credits:

Photo: Judge Gavel with Law Scale on the Background – Photos by Canva

The Court pointed out that the film was based on news items that were available in the public domain and hence, no right of SSR was violated particularly since the reports were not refuted or challenged at the time of their publication. Even if “arguendo”, it was assumed that the film violated SSR’s publicity rights or defamed him, such a right was personal to SSR and died upon his demise. Similarly, the other rights referred to in the plaint, including the right to privacy, personality rights, etc., vested in SSR and were not heritable. In arriving at this conclusion, the Court relied on multiple case laws, including the Madras High Court judgment in Deepa Jayakumar vs. AL Vijay[3].

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Rario's Cricket NFT Case Against MPL & Striker: A Comprehensive Review

The advancement of blockchain technology, Artificial Intelligence (AI), and virtual digital assets has led to growing apprehension about the multitude of legal and ethical dilemmas that could arise from their development and their potential impact on the legal rights of individuals.

The Delhi High Court recently deliberated on the relationship between generative AI and personality rights in Digital Collectibles Pte. Ltd. and Ors. vs Galactus Funware Technology Private Limited and Anr. [CS (COMM) 108/2023]. In this case, the court declined to issue a temporary injunction against the gaming platforms Mobile Premier League (MPL) & Striker for using the name and likeness of certain cricketers to create Non-Fungible Token (NFT) – enabled “Digital Player Cards”.  

Non-Fungible Tokens under Copyright Law

NFTs are distinct digital assets that leverage blockchain technology to validate ownership and are frequently utilised for trading digital art and collectables. Nevertheless, an ongoing discussion revolves around the intellectual property rights tied to NFTs and the question of whether acquiring an NFT bestows copyright ownership.

On the other hand, Online Fantasy Sports (OFS) involve participants creating virtual teams of real-life athletes and competing based on their performance in real sports events. The users pay an entry fee to join and use their skills to participate in online events or leagues. Under prevailing copyright laws, purchasing an NFT does not automatically convey the legal right to claim copyright in the artwork unless a separate commercial agreement is established to that effect. In the instant matter, an OFS platform created NFT-enabled “Digital Player Cards” (DPCs) featuring the names and likenesses of certain cricketers. These digital assets could be owned and traded by users on the blockchain.

Case Overview

Digital Collectibles Pte. Ltd. (Plaintiff No. 1 here) owns and operates ‘Rario’, a digital collectables platform based on NFTs. The platform facilitates selling, purchasing, and trading officially licensed DPCs featuring cricketers. As well-known cricketers, Plaintiff Nos. 2 to 6 granted Plaintiff No. 1 an exclusive license to utilise their names and photographs on the Rario platform.

These DPCs contain names, photographs, and other personality traits of cricketers which are bought, sold, and traded for actual currency on Rario, utilising Rario’s private blockchain. The price of each DPC is determined by the demand and supply for the specific DPC, which is, in turn, influenced by the popularity and renown of the respective cricketers.

Galactus Funware Technology Private Limited (Defendant No.1) is the proprietor and operator of the online fantasy sports platform called MPL, while Defendant No. 2 is the proprietor and operator of the mobile application ‘Striker’, listed on the MPL. Like Rario, Striker users can purchase, sell, and trade DPCs and Striker also utilises NFT technology to authenticate the DPCs on its platform.

In February 2023, a suit was filed before the Delhi High Court against the defendants for using players’ names, images and other attributes (including those of Plaintiff Nos. 2 to 6) on their platforms without obtaining the players’ authorisation or license.

Right to Publicity vis-à-vis Freedom of Speech and Expression

The plaintiffs asserted that the value of the DPCs, considered digital art collectables, is primarily derived from and dependent on the names, likenesses, and other elements associated with the cricketers whose DPCs are offered on the Striker platform. Moreover, they relied on precedents set forth by the Hon’ble High Court of Delhi in D.M. Entertainment Pvt Ltd v Baby Gift House & Ors [MANU/DE/2043/2010] and Titan Industries v M/s Ram Kumar Jewellers [(2012) 50 PTC 486], to contend that the Striker DPCs are an unauthorised endorsement and violated the plaintiffs’ publicity rights.

In reply to the plaintiffs’ contention, the court remarked that while Indian courts have acknowledged the existence of celebrity personality rights, these rights are not absolute and must be weighed within the context of the common law principle of “passing off” and in accordance with the right to freedom of expression enshrined in Article 19(1)(a) of the Indian Constitution.

The Single Judge Bench of Justice Amit Bansal opined that the right to publicity was subordinate to the freedom of speech and expression guaranteed under the Constitution and noted that the “Right to publicity”, i.e., the right to control the commercial use of one’s identity and personality, is not absolute or unrestricted.

The celebrity’s right to publicity is only violated when using their name or image is intended to mislead the public into believing that they are endorsing and associated with the product in question. In such instances, it can be said that the celebrity’s goodwill and reputation have been misused to promote a product or service.

Use of Artwork with Creative Elements

The court highlighted that the DPCs of the defendants include artwork of the players, not photographs, and this artwork was determined to have creative elements that set them apart from the actual images of the players since the defendants have shown their expression through these creations rather than utilising celebrities’ likenesses directly. These innovative features and creative caricatures were held to be protected under Article 19(1)(a) of the Constitution.

Players’ Information Available in Public Domain

The defendants expressed that the content used for DPCs on the Striker platform is in the public domain, which served the purpose of identifying the cricketers on the platform; thus, it is beyond the scope of those cricketers’ personality rights. It was further stated that the platform is categorised as an OFS game, which does not offer the ability to purchase and “own” cricket moments (a key feature of the plaintiffs’ licensed DPCs). The defendants asserted that their DPCs could not be traded or used outside the Striker platform as they are inherently linked to the user experience and format of the Striker platform and highlighted the usage of players’ names and other information in a similar manner is common in other OFS games, demonstrating an established industry practice.

The defendants also cited the decision of U.S. Courts in CBC Distrib. & Mktg. v Major League Baseball Advanced [505 F. 3d 959] and Daniels v Fan Duel Inc [109 N.E. 3d 390], to support their argument that if the information and facts regarding certain celebrities which the defendants use are already publicly available, there can be no valid claim for infringement of publicity rights.

The court noted that OFS operators use publicly available player names and images to identify players. Thus, the court ruled that no one can own information in the public domain and such information can’t be monopolised or licensed. Since public domain facts cannot be monopolised, a third party’s use or publication for commercial gain cannot afford the plaintiffs a cause of action. With respect to the remedies available for an aggrieved celebrity, the court only cited defamation as a resort. 

Accordingly, the Hon’ble Court held that the plaintiffs failed to make out a case for the grant of an interim injunction[1] and effectively gave the go-ahead to Striker as it is not a ‘trading platform’ like Rario per se and does not mislead customers regarding any affiliation with or endorsement and does not violate any right of Digital Collectibles. Based on this, the matter has been listed for completion of pleadings on July 10, 2023.

Order of Single Judge Bench Challenged

Indian cricketers, including Mohammed Siraj, Harshal Patel, and Rario, have challenged the above interim order of the Single Judge Bench through appeals filed before the Division Bench of the Delhi High Court. The appellants lay emphasis on the players’ absolute rights over their persona and argued that there is a misunderstanding as to when fair use ends and confidentiality begins. The Bench has instructed the parties to submit written statements within a week and scheduled the next hearing on July 10, 2023.

Analysis

In the abovementioned case, the Delhi High Court has recognised that the test for determining the infringement of the right to publicity aligns with the principles and standards of the tort of passing off. It is now clear that the right to publicity is violated when a third party employs a celebrity’s information, trait, or attribute in a manner that is likely to cause confusion.

The recent appeal against the order of the Single Judge Bench is a testament to the brunt faced by celebrities when Online Fantasy Sports platforms utilise their images to entice audiences. The position of the Hon’ble Court is yet to be determined; however, the mere incidental or transformative use of a celebrity’s name, image, etc. in connection with a product or service cannot be said to be an infringement of the right to publicity. This order has provided precision to Indian jurisprudence on the right to publicity while also emphasising the need to strike a balance between justly enforcing the right to publicity and upholding the constitutional right to freedom of speech and expression.

Additionally, the court’s decision has the potential to influence the approach of Indian courts in addressing the incorporation of emerging and advanced technologies in our everyday lives. As this field of law is still developing, it remains to be seen whether the Indian judiciary will embrace this trend of engaging with novel concepts.

References:

[1] I.A. 3960/2023

Image Credits:

Photo by Aksonov: https://www.canva.com/photos/MAEJTBLx3xI-cricket-on-laptop-live-broadcast/

The court noted that OFS operators use publicly available player names and images to identify players. Thus, the court ruled that no one can own information in the public domain and such information can’t be monopolised or licensed. Since public domain facts cannot be monopolised, a third party’s use or publication for commercial gain cannot afford the plaintiffs a cause of action. With respect to the remedies available for an aggrieved celebrity, the court only cited defamation as a resort. 

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Authors’ Right to Receive Royalty for Underlying Works Recognised at Last

  • May 29, 2023
  • Mathews V C
  • Muskaan Sawhney

The Bombay High Court recently issued a ruling stating that FM radio stations are required to compensate composers and lyricists for the copyrighted music they broadcast[1]. Through this judgment, the court clarified that after the Copyright Act, 1957 was amended in 2012, making a sound recording available to the public will mean using the musical and literary works that form its foundation.

The longstanding dispute between broadcasters and the authors of underlying works has reached a fair and equitable conclusion, with the latter celebrating the recognition of their rights. In this article, we look at the intricacies involved in the case and analyse the reasoning provided by the court in arriving at its decision.

Case Overview

The Indian Performing Rights Society (IPRS), a copyright society, and Music Broadcast Private Limited, a company which owns and operates the radio station “Radio City”, entered into a licence agreement in the year 2001 to employ IPRS’s library of literary and musical works for FM radio broadcast. Akin to this, Rajasthan Patrika Pvt. Ltd., which operates the radio station “Radio Tadka”, finalised a radio broadcasting deal with the IPRS in 2006. Subsequently, the Copyright Board of India set a mandatory licence price for radio broadcasting under Section 31(1)(b) of the Act. IPAB set the royalties rate while making decisions concerning applications submitted under Section 31D in 2010. The defendant companies and the IPRS were earlier involved in a legal battle over the rights of authors of original works in case the public becomes aware of sound recordings that consist of these original works. In Music Broadcast Pvt. Ltd. v. IPRS[2], it was held that authors of the original works or the underlying literary and musical works that were included in sound recordings did not have the authority to impede the rights of the owners of those sound recordings to share them with the public through radio broadcast, etc.

The issues raised in the matter include: –

  • Whether the defendant companies are required to provide royalties to IPRS for transmitting musical works to the general public through their FM radio broadcast channels.
  • Whether the modifications adopted in the Copyright Act, which took effect on June 21, 2012, have any bearing on the rights of the creators of original works when those original works are included in sound recordings that are shared with the public.

In Entertainment Network India Ltd. v. Phonographic Performance Limited India and Anr[3], and related matters, the Delhi High Court clarified that the IPAB order remains in effect even while an appeal is pending. The court held that no compensation for the underlying works had been provided since the IPAB order was issued and stated that the respondent is entitled to use any available remedies if the IPAB order is not followed. Afterwards, on October 6, 2021, the court released a notice in the public domain seeking feedback from parties interested in fixing royalty rates concerning the underlying works. In a request for an interim injunction, IPRS alleged that the defendants were broadcasting songs from its catalogue without permission. According to IPRS, the Copyright Act underwent significant revisions addressing the rights of the authors of underlying works after 2012.

Contentions of Parties

The IPRS made thorough arguments to convince the court that the 2012 amendment to the Copyright Act, which took effect on June 21, 2012, had fundamentally altered the Act’s structure and supported the claims made in the lawsuits and the requests for temporary relief. According to the argument, the IPRS, which is seeking interim relief in the current applications, cannot be hindered by the legal position established by the Supreme Court in its 1977 decision in the case of IPRS vs. Eastern Indian Motion Pictures Association and others[4], which the Supreme Court and several High Courts later upheld.

The IPRS drew the Court’s attention to the amendments to Sections 17, 18 and 19 of the Copyright Act. Furthermore, the revisions carried a by-product of overturning the legal precedent established by the unaltered Copyright Act, as determined by the Supreme Court in the case of IPRS vs. Eastern Indian Motion Pictures Association and others and subsequent decisions and that the provisions of the unamended Copyright Act had been incorrectly perused by the Supreme Court and erred against the rights of the authors of such underlying works.

On the other hand, the defendant companies asserted that while the Copyright Act has clearly undergone changes since 2012, most of the changes are merely clarifications. It was argued that even if it were true that the revisions were implemented to extend the rights of authors of original works, the objective that the IPRS professes to support had not been achieved. Moreover, the defendants contended that since the 2012 amendment was only clarifying in nature and that since Sections 13 and 14 had not been changed, the adjustment to the other provisions could not have conferred any new substantive rights.

The Verdict

Accepting the contentions of the IPRS, the court stated that the 2012 amendment does “have the effect of creating a substantive right in favour of authors of underlying literary and musical works”. It was pointed out that though Sections 13 and 14 weren’t amended when they were read in conjunction with the amended Sections 17, 18 and 19, it can be seen that there is a “change in position of law brought about in favour of such authors of works”.

In its joint order, the court also concurred with IPRS’s claims that, despite payments made by the broadcasters to the owners of the sound recordings, the broadcast of music by FM radio broadcasters necessitated the payment of royalties in respect of the utilisation of literary and musical works underpinning the sound recordings. In response to the defendants’ claim that sharing the sound recording with the public violates their exclusive right under Section 14(e)(iii) and cannot be interpreted as using the underlying works; the court ruled that sharing the sound recording with the public uses the underlying works because they are integral to the sound recording.

The court held that even though Section 14(e)(iii) does confer an exclusive right upon the defendants to communicate to the public, such exclusive rights are subject to the provisions of the Copyright Act, and on a joint reading of Sections 13(1)(a), Section 13(4), the proviso to Sections 17, third and fourth proviso to Sections 18, and Sections 19(9) and (10) it was interpreted that the exclusive right to communicate sound recordings to the public is dependent on the author’s right to collect royalties.

The court declined to agree that the right to earn royalties would be eliminated because the underlying works are included in the sound recordings because such an interpretation would eliminate the entitlement provided to the authors of the underlying work.

The Bombay High Court concluded that the amendments made to the Copyright Act, 1957 in 2012, which created a substantive right in favour of authors of the underlying literary and musical work, fundamentally altered the legal framework concerning ownership of authors and composers who create lyrics and musical compositions. The court ruled that IPRS is entitled to royalties for the use of literary and musical works included in sound recordings or motion pictures. The court has categorically determined that each time a sound recording is shared with the public through radio stations, it constitutes the utilisation of the underlying literary and musical works for which the authors are entitled to royalties. As a result, the authors of these literary and musical works are qualified to request royalties on each occasion that these sound recordings are shared with the public through radio stations.

Therefore, when a synchronised product (cinematographic film or sound recording) is made publicly available, the creators of those works are entitled to royalties, except for situations when a cinematograph film is shown in a theatre. The defendants have been granted six weeks to comply with the court’s directive and pay the royalties to IPRS in accordance with the order dated December 31, 2020, passed by the former Intellectual Property Appellate Board or else temporary injunctions prohibiting the broadcast of music would take effect.

Outcome

In the Indian copyright system, the problem of royalties faced by creators of the underlying work has been extensively discussed and is the subject of several litigations. There have, however, been undercurrents of a modern interpretation within these orders that held otherwise, disregarding the unanimous nature of these opinions of the law prior to the 2012 revision. The order, as originally intended by the amendment, expressly recognises the rights of the authors of the underlying works. The order underlines a huge incentive to the authors and has received a warm reception from the community. However, the order’s practical ramifications are yet to be determined. The order may be overturned if the appellate authority believes that the IPAB exceeded its power by setting the royalty rates for the underlying work while it is currently pending review.

References:

[1] Indian Performing Right Society Ltd. v. Rajasthan Patrika Pvt. Ltd. (IA No. 9452 of 2022) and Indian Performing Rights Society Ltd. v. Music Broadcast Ltd. (IA No. 1213 of 2022)

[2]Suit No.2401 of 2006

[3]C.O.(COMM.IPD-CR) 3/2021

[4]1977 AIR 1443

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Photo by dotshock: https://www.canva.com/photos/MAAXiQsGTn8-radio-station-microphone/

The Bombay High Court concluded that the amendments made to the Copyright Act, 1957 in 2012, which created a substantive right in favour of authors of the underlying literary and musical work, fundamentally altered the legal framework concerning ownership of authors and composers who create lyrics and musical compositions. The court ruled that IPRS is entitled to royalties for the use of literary and musical works included in sound recordings or motion pictures. The court has categorically determined that each time a sound recording is shared with the public through radio stations, it constitutes the utilisation of the underlying literary and musical works for which the authors are entitled to royalties. As a result, the authors of these literary and musical works are qualified to request royalties on each occasion that these sound recordings are shared with the public through radio stations.

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Intermediaries' Obligation to Pursue Complaints Against Infringers: Analysing the Latest Interpretation

The recent interim order dated March 1, 2023, issued by the Delhi High Court in Samridhi Enterprises vs. Flipkart Internet Private Ltd.[1] had sparked a lot of debate and confusion among the public concerning the liability of an intermediary. As per the order of the High Court, an intermediary is not obligated to take action in cases of infringement reported by their users. The Hon’ble Court delved deeply into the interpretation of Rule 3 of the IT (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021, on the question of whether there exists an obligation on the part of intermediaries to act on complaints against infringers.   

Facts

The plaintiff was in the business of manufacturing and selling car covers under the marks “UK Blue” and “Autofact” and had been selling them on Flipkart since 2018. The plaintiff happened to notice that some other entities started to copy their designs, looks and marketing strategies on the Flipkart platform itself. Apart from the fact that the covers were identical, the infringers also sold these covers in a fashion similar to that of the plaintiff’s company to create confusion and boost their sales.

The plaintiff had informed and reported to Flipkart about the infringement of their products by placing screenshots and other similar evidences of infringement committed by the infringer on record. The platform refused to take any action against the infringers and advised the plaintiff to approach a court of law for redressal of IPR disputes.

The plaintiff approached the Delhi High Court, citing that Flipkart cannot act as an intermediary if it fails to adhere to its obligations as an intermediary and to observe important due diligence mandated by Rule 3(2) of the IT (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021.

Law Involved

Rule 3(1)(b)(iv) requires intermediaries to inform their users of their privacy policy, rules and regulations and user agreement and shall make reasonable efforts to ensure that any information that infringes any patent, copyright, trademark, or other proprietary rights shall not be hosted, displayed, uploaded, modified, published, transmitted, stored, updated, or shared by the intermediary.

Rule 3(2)(a) of the IT rules requires the intermediary to publish on its website the details of the grievance officer and the mechanism by which a user could complain about any possible violations. Further, it requires the officer to acknowledge the complaint within 24 hours and resolve the issue within a period of 15 days.  

The plaintiff relied on these two sections to further their claim of infringement against Flipkart. 

Rule 3 (2)(1) (proviso) provides for intermediaries to acknowledge any complaint within 24 hours and resolve all such complaints within 15 days from their receipt. Moreover, the proviso also calls upon the intermediary to develop appropriate safeguards to avoid any misuse by users.

The Ruling

The Hon’ble Court was of the opinion that Rule 3(2)(a) only envisages complaints regarding violations of the obligation imposed on the intermediary under the rules. There is no scope for the intermediary to take any kind of action against the infringer upon receipt of the complaint. The same argument was also put forth by the court when the question surrounding Rule 3(1)(b)(iv) was raised, and the court clarified that the rule merely provides for intermediaries to inform users not to display or host infringing content. The rule does not mandate or require the intermediary to take any action upon receipt of the complaint of infringement.   

The Hon’ble Court stated that it cannot read into IT rules something that the rules do not contain expressly or by necessary implication. It further said that, “where the applicable statutory rules do not envisage action being taken by an intermediary merely on the complaint being made by an aggrieved victim or user regarding infringement of intellectual property rights, by content posted on the platform of the intermediary, the court cannot, by placing reliance on an internal policy of a particular intermediary, read into Clause 3 any such requirement, especially where such a provision existed in the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 and has consciously been omitted in the 2021 Rules”.  

The Hon’ble Court was of the opinion that the complaint against Flipkart that it is not taking action does not appear to be sustainable due to the above-mentioned reasons. However, a prima facie case of copyright violation was made out by the court and in order to protect the plaintiff from any further damages, an interlocutory injunction was granted against listing the alleged infringing content.

General Observations 

Though the Hon’ble Court did grant the injunction to protect the plaintiff from the ongoing infringement occurring on the platform, the main essence of the IT Act and rules was not taken into consideration while discharging Flipkart of any liability.

The plaintiff erred in not considering the many precedents laid by this very same court. For instance, in Super Cassettes Industries Ltd. vs. Myspace Inc. & Anr1, the court said that “I find that there is no impact of the provisions of Section 79 of the IT Act (as amended in 2009) on copyright infringements relating to internet wrongs where intermediaries are involved and the said provision cannot curtail the rights of the copyright owner by operation of the proviso of Section 81 which carves out an exception for cases relating to copyright or patent infringement”. 

The case witnessed that the Indian Copyright Act, 1957, overrode the provision of the safe harbour granted by the IT Act under Section 79. The Hon’ble Court relied on Section 81 of the IT Act, which provides for an exemption for people exercising their rights under the Copyright Act and the Patent Act. The Hon’ble Court should have recognised this precedent and acknowledged the obligation it posed to the intermediary to remove such infringing products from its platform.   

It doesn’t end here. The court should have considered in what instance the immunity available for intermediaries will be impacted under Section 79 of the IT Act. Section 79(3)(b) of the IT Act states that upon receiving actual knowledge of an unlawful act connected to the computer resource controlled by the intermediary, the intermediary shall expeditiously remove or disable access to such infringing material. If such action is not undertaken by the intermediary, it shall lose the safe harbour guaranteed by Section 79. If safe harbour protection is not available, then allowing an infringement to take place on their platform may constitute abetment and unlawful activity which in turn would make them liable under the law of the land.  

Another striking part of the order is that, even though the Hon’ble Court completely relied on the IT (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021, the court failed to read into Rule 3 (2) (1) of the IT Rules 2021. The proviso of the rule clearly stipulates that any complaint received from the user other than under Subclauses (i), (iv), and (ix) needs to be expeditiously resolved within 72 hours by the grievance officer. That does not take away the primary obligation of the intermediary to act within the 15 days mandated in the main provision in relation to such excluded matters, including cases of IP infringement. It is astonishing that the court or the parties gave more emphasis to the proviso than the main clause under Rule 3(2)(a)(i). 

Initially, Rule 3(2)(b) was worded as follows: “(i) acknowledge the complaint within twenty-four hours and dispose off such complaint within a period of fifteen days from the date of its receipt;  

(ii) receive and acknowledge any order, notice or direction issued by the Appropriate Government, any competent authority or a court of competent jurisdiction.”.   

On October 28, 2022, the government amended the above rule to read as follows: “acknowledge the complaint within twenty-four hours and resolve such complaint within a period of fifteen days from the date of its receipt: 

Provided that the complaint in the nature of request for removal of information or communication link relating to clause (b) of sub-rule (1) of rule 3, except sub-clauses (i), (iv) and (ix), shall be acted upon as expeditiously as possible and shall be resolved within seventy-two hours of such reporting;  

Provided further that appropriate safeguards may be developed by the intermediary to avoid any misuse by users;” 

The intention of this amendment is to prescribe faster action for certain kinds of wrongdoings and expect them to act within 72 hours. At the same time, for those others (sub-clauses (i), (iv) and (ix)) the original time frame of 15 days for taking action remains. Without a doubt, the goal of this amendment is not to encourage platform users to behave irresponsibly or complacently despite being aware that the platform is frequently used to violate intellectual property rights. It merely provides them with sufficient time and excludes the requirement of compliance within 72 hours.

The intermediary is still obligated to undertake the due diligence described in Rule 3(1)(b)(iv), and if they do not do so and do not take action within fifteen days even after becoming aware of the infringement, the immunity from liability specified in Section 79 will end. The safe harbour will be eliminated because the proviso to Section 81 of the IT Act clearly indicates that IP rights are to be expected to be protected by the intermediary.

Conclusion

The Hon’ble Court was right in granting the injunction in favour of the plaintiff to restrain Flipkart from allowing such infringing products on their platforms.

However, the Hon’ble Court erred by not making a harmonious reading of Rule 3 (2) (a) of the IT (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021, with Section 79 (3) (b) and the proviso to Section 81 of the IT Act. An isolated reading of the provision and discharging Flipkart of their liability under the IT (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 seems to be an oversight.

The proviso appended to the said section provides that nothing contained in this act shall restrict the exercising of any right by any person under the Copyright Act. This, along with Section 79 (3) of the IT Act, mandates the intermediary not to conspire, abet or aid any infringement and to remove the infringing material on receiving actual knowledge of it.  

The above-referred order will only help the intermediaries and platforms to behave irresponsibly and indifferently even when an intellectual property owner notifies them of infringement on their platforms. It compels aggrieved intellectual property owners to initiate legal action for every infringement, which is expensive to carry out. IT (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021, was primarily made to make the platforms more responsible and ethical. Allowing them to act irresponsibly through a limited interpretation of law is unconscionable.

References:

1. CS (COMM) 63/2023

The recent interim order dated March 1, 2023, issued by the Delhi High Court in Samridhi Enterprises vs. Flipkart Internet Private Ltd. (CS (COMM) 63/2023) had sparked a lot of debate and confusion among the public concerning the liability of an intermediary. Though the Hon’ble Court did grant the injunction to protect the plaintiff from the on-going infringement occurring on the platform, the main essence of the IT Act and rules was not taken into consideration while discharging Flipkart of any liability.

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Facets of Conceptual Similarity and Semantic Similarity in Trademark Infringement Cases

  • April 13, 2023
  • Shreya Chaddha
  • Shreyali Yadav

In this article, we aim to anatomize the facets of conceptual similarity and semantic similarity vide the many judgments that have envisaged their principles and other cognate principles that arise when the question of conceptual similarity is effectuated between rival trademarks.

Introduction

The idea that rival marks should be assessed as a whole rather than in terms of their individual components is a well-established and widely accepted tenet of trademark law. Confusion, likelihood, similarity, etc. – these terms are allied to the concept of trademarks. An infringement action calls for a comparison of trademarks based on various factors. One crucial factor, and very often not considered part of strategies, is “conceptual similarity”. A test to the latter’s effect, namely the conceptual similarity test, compares competing marks based on the underlying idea or concept that the marks imply or portray. To portray instances, what has been the idea behind the inception of the impugned mark? Whether solely a word mark has been used or a logo/device has also been attached to the word mark? Like many other facets of trademark law that have been established through judicial acumen, the test of conceptual similarity is also one such. 

Similarity vis-à-vis trademarks: Conceptual Similarity and Semantic Similarity

The concept of similarity is extremely crucial to the edifice of trademark law. As per Section 2(h) of the Trademarks Act, 1999, the marks will be deemed to be deceptively similar if the resemblance is likely to deceive or cause confusion. The said section implies that the resemblance should be such that it produces a hazy understanding of the rival mark being that of the victim mark. While certain marks are visually and/or phonetically similar, some marks do not fall in the latter category; however, they are still considered infringement. Here is where conceptual similarity steps in.

The conceptual similarity test compares competing marks based on the underlying idea or concept they indicate or project. The main issue in such a test is whether or not the average man might be misled or confused by two conceptually similar marks because of their similarity. This concept can be better explained with the help of the Delhi High Court judgment in the case of Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd[1].  The marks in the present case were “OFFICER’S CHOICE” and “COLLECTOR’S CHOICE/OFFICER’S SPECIAL”. While a prima facie view herein would indicate a lack of phonetic similarity, the conceptual similarity test brings in a pivotal and exciting aspect to consider the words’ semantic synonymity. Citing the decision in the case of Corn Products v. Shangrila Foods[2] (wherein the marks “GLUVITA” and “GLUCOVITA” were considered), the semantic similarity was relied upon to decide on the basis for infringement beyond the normal binds of visual or phonetic similarity.

The above-mentioned case is a pioneer in the establishment of principles pertaining to semantic similarity. It has, for instance, referred to various case studies, for instance, the “Distinctive Brand Cues and Memory for Product Consumption Experiences[3]“, wherein one line is of utmost relevance to this article – that the conceptual background behind the brand name is what triggers the recollection of memory in a consumer, and not the brand name in itself. Further, the word “Collector” can be seen as a hyponym of the word “Officer”, in common parlance, both signifying a “Person holding an office of authority”.

Thus, since both trademarks in the current case are used in the same context for one single product, that is whisky, when a consumer is forced to decide on a purchase and is presented with the product of the appellant with the mark “Collector’s Choice”, the word “Collector” will cause him to think of the cue “Person holding an office of authority,” which is related to the word “Officer”. This signal may induce the consumer to mistakenly believe that the appellant’s whisky is the respondent’s or cause a false recollection that may confuse consumers. Thus, this concept of semantic synonymy is highly relevant to trademark jurisprudence and can be subdivided as follows.

Expanding horizons of synonymy

The general understanding of synonymy is the phenomenon of two or more different linguistic forms with the same meaning. To this extent, synonymy can further be categorized. For example, synonyms of different degrees signify words with the same (although extended) meanings, but the degree of effectuation differs. For instance, fury, rage, and anger are synonyms with the same extended meaning of emotional excitement induced by intense displeasure. In contrast, anger is used commonly without a substantial degree of intensity, rage focuses on a loss of self-control, and fury empathizes with a rage so violent that it may approach madness. Similarly, are concepts of synonyms with different emotions, styles, collocations, etc.

What becomes vital in each case, thus, is to establish the degree of synonymy with respect to other factors of similarity, which has been highlighted in the recent case of Metis Learning Solutions Private Limited v. Flipkart India Private Limited and Ors.[4] The court held that conceptual similarity could not be judged in isolation, and the overall phonetic, visual or structural similarity is also required to be seen holistically.

In Make My Trip (India) Private Ltd v. Make My Travel (India) Private Limited[5], the Court had to examine any deceptive similarity between the marks MakeMyTrip and MakeMyTravel. From a prima facie view, one part of the mark “MAKEMY” is identical, visually and phonetically, and hence, warrants no application of conceptual similarity. The test comes into the picture by comparing the rival marks’ latter half – “TRIP” and “TRAVEL”. While these two words are neither identical visually nor phonetically, they are synonyms and convey a similar idea with respect to the services they provide. Thus, the marks could be considered deceptively similar for establishing an infringement action.

Hyponymy & Hypernymy: An extended branch of conceptual similarity

Alongside synonymy are two other important concepts we must look at – hyponyms and hypernyms. As per the Oxford English Dictionary, a Hypernym is a “word with a broad meaning constituting a category into which words with more specific meanings fall; a subordinate”. An example of this effect would be that ‘colour’ is a hypernym of ‘blue’, ‘dog’ is a hypernym of the breed ‘dachshund’, etc. On the contrary, a Hyponym is a “word of more specific meaning than a general or super-ordinate term applicable to it”; for example, ‘Spoon’ is a hyponym for ‘cutlery’, etc. Having a basic conceptual understanding of Hypernyms and Hyponyms, we now look at their relevance in trademark infringement actions.

What hyponyms and hypernyms do is create a sense of inclusion. Sharing a hyponym in the form of a conceptual background would make the consumer think of the same thing, making it harder for him to remember the name of his favoured brand. Similarly, when two or more brand names are similar, for example, men’s perfume brands being called rugged and macho, while the meaning of each of these terms may vary according to the situation, in the context of men’s perfumes, they all refer to masculinity, and hence, are very likely to confuse the relevant category of consumers.

Conclusion

Time and again, courts have taken the lead and strived to bring into the picture the diverse ways trademark infringement can occur. Nevertheless, a restricted and cautious approach must be followed in applying the concepts of conceptual similarity (including hypernyms and hyponyms), semantic similarity and synonymy. Best explained using an example, let us consider the men’s perfume example. Would trademark protection of synonyms cover all equivalent words, preventing the naming of any masculine fragrances after any phrase synonymous with “Tough”? Such situations may lead to malpractices such as monopoly, squatting, etc. Thus, to protect words that share a sense relation, a restrictive application must be made, preserving only those sense relations of the term where the context in which they are applied to the brand name is the same, causing identical concepts to be conveyed to consumers.

References:

[1] Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd, FAO (OS) 368 and 493/2014.

[2] Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142.

[3] International Journal of Research in Marketing [22 (2005) 27-44].

[4] Metis Learning Solutions Private Limited v. Flipkart India Private Limited and Ors., CS (COMM) 393/2022 and Crl. M. A. 12694/2022.

[5] Make My Trip (India) Private Ltd v. Make My Travel (India) Private Limited, 2019 (80) PTC 491 (Del).

Image Credits:

Photo by Robert Anasch on Unsplash

In Make My Trip (India) Private Ltd v. Make My Travel (India) Private Limited[5], the Court had to examine any deceptive similarity between the marks MakeMyTrip and MakeMyTravel. From a prima facie view, one part of the mark “MAKEMY” is identical, visually and phonetically, and hence, warrants no application of conceptual similarity. The test comes into the picture by comparing the rival marks’ latter half – “TRIP” and “TRAVEL”. While these two words are neither identical visually nor phonetically, they are synonyms and convey a similar idea with respect to the services they provide. Thus, the marks could be considered deceptively similar for establishing an infringement action.

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Application of Prosecution History Estoppel in Trademark Infringement Proceedings

  • March 17, 2023
  • Drishti Kardam
  • Indiradevi Kollipara

The doctrine of prosecution history estoppel, which was initially prevalent in determining the infringement of patents, also has its uses in trademark infringement proceedings. It prevents individuals from claiming the advantages associated with a right waived on a previous occasion.

When applied to trademarks, the doctrine dissuades applicants from misusing the opportunity bestowed upon them to amend their claims of infringement by relying on the submissions made to the Registry while making the trademark application or during the examination. In this context, it is relevant to understand the estoppel concept, defined under Section 115 of the Indian Evidence Act, 1872. This section states as follows: –

“When one person has, by his declaration, act or omission, intentionally caused or permitted another person to believe a thing to be true and to act upon such belief, neither he nor his representative shall be allowed, in any suit or proceeding between himself and such person or his representative, to deny the truth of that thing.”

Although judges make infrequent use of the doctrine in disposing of trademark infringement cases, its significance in this domain cannot be understated. For instance, this doctrine was applied by the Delhi High Court in Mankind Pharma Ltd. v. Chandra Mani Tiwari & Anr.[1] Back when the plaintiff had applied for the registration of the mark ‘ATORVAKIND’, the examiner found that it was similar to the marks ‘ATORKIND’ and ‘ATORKIND-F’. In its reply to the examination report, the plaintiff contended that its mark was different from the cited trademarks. The defence proved that the plaintiff’s reply took the publici juris defence for the term ‘KIND’. Subsequently, the court held that the defendant’s use of the mark ‘MERCYKIND’ did not constitute trademark infringement, and accordingly, the plaintiff’s plea for injunction was dismissed.

Here are some instances wherein the doctrine of prosecution history estoppel can be applied, and prosecution history (I.e., history of the proceedings right from application filing to trademark registration) can be relied upon in trademark infringement cases: –

Trademark includes a generic or descriptive term

If an application is made for the registration of a trademark with a generic or descriptive term, subsequently, the claimant cannot assert in the infringement proceedings that the mark used by the defendant is generic or descriptive. This principle also extends to determining the scope of goods and services. If the claimant in the prosecution stage claims the difference in goods or services compared to another mark, then the claimant can be said to have misclassified the goods at the prosecution stage. However, if the claimant has stated that there exists a difference in goods or services amongst rival companies, then infringement suits will backfire against the claimant.

Failure to make disclosures

Claimants must disclose statements given in the prosecution case that are potentially contradictory to the infringement claims posed in the infringement proceedings. And failure to make said disclosure could lead to the claimant’s incrimination. In some cases, the failure of the defendant to challenge the claimant’s trademarks can lead to prosecution history omission, just as in the Dish TV[2] case.

One can conclude that the doctrine of prosecution history estoppel calls for cautious handling of arguments and submissions at every stage of the prosecution of trademark applications. The arguments should be made considering their implications in the future as it unlocks an ambit for approbation and reprobation, which in most cases is used against the proprietor of the IP.

References:

[1] 2018 SCC OnLine Del 9678.

[2] Dish TV India Ltd. v. Prasar Bharti, 2019 SCC OnLine Del 9141.

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Photo by Clarisse Meyer: https://unsplash.com/photos/jKU2NneZAbI?utm_source=unsplash&utm_medium=referral&utm_content=creditCopyText

The doctrine calls for cautious handling of arguments and submissions at every stage of the prosecution of trademark applications. The arguments should be made considering their implications in the future as it unlocks an ambit for approbation and reprobation, which in most cases is used against the proprietor of the IP.

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Online Gaming: Challenges in Protection of Intellectual Property

  • February 13, 2023
  • Mathews V C

IP protection is a crucial aspect of the gaming industry as it helps game developers in protecting their creations and ensures that they receive appropriate recognition and adequate compensation for their work. However, protecting IP rights can prove difficult in the digital world, especially in countries where IP laws are weak or nonexistent.

Introduction

The gaming industry in India has been growing and evolving rapidly over the past few years. According to estimates, the Indian gaming industry was valued at approximately US$1.1 billion in 2020 and is expected to reach US$2.1 billion by the end of this year. The massive growth in this domain could be attributed to the increase in smartphone use, growing middle-class population, easy access to high-speed internet connections, rise in disposable income, expansion of e-commerce, and extensive use of online modes of payments. These factors enable companies and investors to tap into opportunities offered by the industry.

The mobile gaming segment, which accounts for more than 70% of the total market value, is the largest and fastest-growing segment of the country’s gaming industry. Moreover, the esports market is proliferating, driven by investments and recognition of esports as a competitive sport.

Challenges Faced by Game Developers

The exponential progress in the field of gaming has brought about numerous challenges such as complications involved in the protection of Intellectual Property (IP), game cloning issues, etc. With the rise of digital distribution, it has become easier for rogue companies to copy popular games and market them as their own, thereby infringing on the original game’s IP and reputation.

One of the biggest challenges in protecting IP in online gaming is the issue of game cloning. Game cloning occurs when one company creates a copy of another company’s game and markets it as its own. This not only infringes on the original game’s IP, but it can also harm the reputation of the original game and the company behind it. Game cloning is particularly prevalent in the mobile gaming industry, where the low barriers to entry and the ease of access to development tools make it simple for companies to create a copy of a popular game. Game cloning may confuse consumers or users, resulting in a loss of revenue for the original game’s developers. Such cloning also harms the reputation of the original game. In some cases, game cloning can also lead to negative reviews and decreased ratings for the original game, further impacting its business performance and success.

Another challenge in protecting IP in online gaming is the issue of piracy. With digital games, it is easy for users to obtain and share illegal copies of the game, which can result in lost revenue for the game’s creators. This is particularly problematic for smaller game developers, who may not have the resources to invest in anti-piracy measures. While some companies have attempted to use digital rights management (DRM) technology to prevent piracy, this can also make the game less accessible for legitimate users and can result in technical issues.

Protection of Intellectual Property

To combat the challenges of protecting IP in online gaming, game developers can take several steps. Firstly, they can register their IP, including trademarks and copyrights, to have a more robust legal standing in the event of an infringement. Additionally, game developers can invest in anti-piracy measures, such as DRM technology, to prevent the illegal distribution of their games.

Another way to protect IP in online gaming is by enlisting the help of the gaming community and collaborating with its members. Game developers can work with players to report game cloning and piracy instances, allowing them to take swift action to protect their IP. Additionally, game developers can engage with players to gather feedback and improve their games, creating a loyal and engaged community invested in the game’s success.

Conclusion

Though the challenges of protecting IP in online gaming are complex and multi-faceted, game developers can mitigate these challenges and ensure the success of their games through IP registration, anti-piracy measures, collaborating with members of the gaming community, etc. The gaming industry is constantly evolving, and the challenges of protecting IP in online gaming will continue to change. In this rapidly changing marketplace, game developers must be proactive in protecting their IP to remain competitive and receive the recognition and compensation they deserve.

Image Credits:

Photo by Ron Lach : https://www.pexels.com/photo/group-of-teenagers-watching-a-man-play-game-on-computer-7849517/

Though the challenges of protecting IP in online gaming are complex and multi-faceted, game developers can mitigate these challenges and ensure the success of their games through IP registration, anti-piracy measures, collaborating with members of the gaming community, etc. The gaming industry is constantly evolving, and the challenges of protecting IP in online gaming will continue to change. In this rapidly changing marketplace, game developers must be proactive in protecting their IP to remain competitive and receive the recognition and compensation they deserve.

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Music on the Block: How Music Artists can Benefit from Blockchain Technology

  • January 19, 2023
  • Mathews V C

All of us make use of music streaming services quite frequently. But have we ever stopped to wonder how the creators or artists get paid for their music? More often than not, music artists are forced to settle with modest royalty earnings. Nevertheless, the advent of blockchain technology has ushered in a new era and this technology has the potential to ensure that music artists get adequate compensation for their efforts and talent.

All have enjoyed music throughout the ages. The music industry has evolved from EP records to Cassettes to CDs to MP3s. Currently, music is enjoyed predominantly via digital streaming platforms such as Spotify, and Apple Music, and closer home services such as Airtel Wynk, Times Music, JioSaavn, etc.

However, the growth in streaming services like Spotify has not benefited individual artists who typically receive very little royalty overall because of slowing album sales. Taylor Swift, a famous musician, went to the extent of removing her music from Spotify due to the low per-stream royalty.

The advent of blockchain technology has set the stage for the music industry to undergo another evolution. With the blockchain, artists can create a token-based economy where the value is derived from an artist’s work. When a token is created, the artists convert their intellectual property into a financial asset that all of us can purchase. All holders of this token receive a portion of the artists’ revenue. Hence the more consumers of the content, the higher the token’s value. An artist thus can raise revenue through the launch of a token.

Tokenization of the asset also assists in the removal of the middleman. Currently, recording labels take away the majority of the gains. Recording labels also act as hindrances many a time for the entry of new artists into the business. A system based on blockchain eliminates the middleman, thus putting the power back into the hands of the creators. Funds are raised by fans rather than the recording label via tokenization. The flip side of this model is the lack of users.

A few platforms exist such as Theta.tv,  the YouTube of Web 3.0, or Audius (which is said to be the equivalent of Spotify or Apple Music). Having used these platforms, it is safe to say that though there is a vast scope, their success and similar platforms will depend on the consumers or users.

Artists can also utilize Non-Fungible Tokens (“NFT”) to create a new vertical of revenue generation from their work. Purchasing music as NFTs holds much value for both the creator and the collector. For one, there is a transfer of ownership.

In a world driven by music streaming, the conundrum arises of why a purchase of the rights in music would be required. The answer, as always, lies in the monetization of the asset. The purchaser sees value in buying the rights and reselling them later for a potential profit. Such music NFTs benefit artists at both the initial sale pricing and the secondary sales. Artists can earn from secondary sales in the form of royalties, especially if the underlying smart contract attached to the music NFT is so that they can earn future royalties on such sales.

Platforms such as Async.art help artists mint NFTs of their musical works, and Catalog Works let music fans bid on digital records. Award-winning artist, Ross Golan who has worked with renowned artists like Ariana Grande and Justin Bieber, and rock bands such as Maroon 5 and Linkin Park, also recently minted The World’s First NFT Musical, The Wrong Man.  

There is still much grey area regarding the synergy between blockchain and music. However, the benefits, as well as the various avenues, are something that cannot be denied. In time, we are confident of innovative music-focused NFT projects, which will hopefully allow the creators or artists to get the compensation they deserve for their craft.

Image Credits:

Photo by Matthias Groeneveld: https://www.pexels.com/photo/set-of-retro-vinyl-records-on-table-4200745/

The advent of blockchain technology has set the stage for the music industry to undergo another evolution. With the blockchain, artists can create a token-based economy where the value is derived from an artist’s work. When a token is created, the artists convert their intellectual property into a financial asset that all of us can purchase. All holders of this token receive a portion of the artists’ revenue. Hence the more consumers of the content, the higher the token’s value. An artist thus can raise revenue through the launch of a token.

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