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

Image Credits:

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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Online Dispute Resolution: A Game Changer

As a result of COVID-19’s influence, there had to be adjustments made to how arbitrations for conflict resolution are conducted and this is how Online Dispute Resolution (ODR) came into being. ODR is an extension of Alternative Dispute Resolution (ADR) that takes place through digital platforms. In essence, it denotes e-ADR and is an integration of technology with ADR. It typically consists of one or more of the following: negotiation, mediation, arbitration, or some combination of these.

As online commerce has grown, so has the necessity for a dispute resolution system to handle any disagreements that may arise. In 1996, researchers at the University of Massachusetts and the University of Maryland took the first steps towards developing ODR programmes. eBay’s online mediation model for buyer-seller disagreements was launched in the year 1999. To help its users work out their differences, eBay implemented a system of online mediation. In just two weeks, this project was able to settle 200 disagreements. In 2010, eBay’s online mediation process resolved more than 60 million conflicts, allowing the company to reach more equitable outcomes for all parties involved. The global success of these relatively small platforms has attracted the interest of governments throughout the world. In 2004, New York County was the first in the nation to use ODR. After seeing the success of ODR systems like Brazil’s Consumidor.gov and Europe’s European Online Disputes Resolution Platform, governments around the world began adopting similar systems.

In June 2020, Niti Aayog, in India, brought together key stakeholders, including senior judges of the Supreme Court, secretaries from key government ministries, and leaders of the industry, for advancing ODR in India. Thereafter, on June 10, 2021, a handbook was released containing rules, policies, and expectations from the system. India is in grave need of a system like ODR because the Indian judicial system is under tremendous pressure with over 4.7 million cases pending across different levels of the judiciary. Due to this, there is a huge backlog of cases that are pending for the past 30 years.

ODR is time and cost-effective, and this is a very important factor in delayed justice. The economic burden associated with dispute resolution can hinder a person’s access to justice. Anyone with the help of ODR can do the arbitration from anywhere, and ODR also has the potential to reduce legal costs. The system of ODR is quicker at giving awards and resolving issues than ADR. Since it’s conducted online, the synchronisation of schedules is also done with much ease. It also eliminates the bias made by human judgement as it is much more secure and strict and the proceedings are easily available, and any higher authority can review the whole process.

For any system to grow, the governance framework must encourage the growth of innovation both within the government and the private sector. Even though ODR is still in its development stages, it has already started to show great potential by reducing the load on overburdened courts and resolving matters more effectively. ODR is the future of dispute resolution. We should accept it rather than oppose it, as it delivers efficiency and is cost-effective. Overall, ODR has the potential to transform the Indian judicial system by being a more efficient and accessible system of dispute resolution. With the right support, ODR can become an integral part of India’s legal ecosystem and contribute to the country’s growth and development.

Image Credits:

Photo by Anna Shvets: https://www.pexels.com/photo/people-on-a-video-call-4226140/ 

ODR is time and cost-effective, and this is a very important factor in delayed justice. The economic burden associated with dispute resolution can hinder a person’s access to justice. Anyone with the help of ODR can do the arbitration from anywhere, and ODR also has the potential to reduce legal costs. The system of ODR is quicker at giving awards and resolving issues than ADR. Since it’s conducted online, the synchronisation of schedules is also done with much ease. It also eliminates the bias made by human judgement as it is much more secure and strict and the proceedings are easily available, and any higher authority can review the whole process.

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Enemy Property in India: An Overview

The declaration of the Indo–Pakistan War in the year 1965 meant that Indian Goans living in Pakistan were now enemies of India. It is in this war lies the birth of the Enemy Property Act, 1968.

It is said that Karachi, Pakistan gained prominence in the eyes of the British Monarchy during the early 1800s, as the English colonisers began to develop the city as a trade hub, resulting in the Indian Goans migrating to this city.  These Indian Goans made several voyages to Africa and other Asian continent countries in search of better monetary prospects and while doing so they left behind movable and immovable properties in India to build a new life in Pakistan. 

It is a part of the world’s history that India was facing the army of Pakistan on its western borders in the year 1965. The leadership of Pakistan had assumed India to have weakened after the Sino-India War of 1962 resulting in Pakistan attempting to invade India. The war ended in a stalemate even though India had successfully repelled the army of Pakistan. A truce was negotiated between the two warring nations by the United Nations (UN) and the two countries negotiated the terms of the cease-fire in the city of Tashkent, Soviet Union (the city is currently part of Uzbekistan).

Against this backdrop, some Indian citizens having movable and immovable properties in India chose to leave for Pakistan, thereby resulting in the property being taken over by the Indian government. A custodian was appointed under the Evacuee Property Act, 1950 who took over those properties. Such properties came to be known as the evacuee properties and were administered under the said Act.

After Goa’s liberation from the Portuguese, the properties belonging to Goans who left the state were acknowledged under the Goa, Daman & Diu Administration of Evacuee Property Act, 1964. However, during the 1965 war, the Indians who had acquired the nationality of Pakistan and continued to own property in India were in for a shock. All the properties in India belonging to erstwhile Indian nationals were considered as ‘enemy property’. A similar situation took place during the Indo – China War in the year 1962. Under the Defence of India Rules, 1962, properties belonging to Chinese nationals were declared as enemy property and they continue to be identified as enemy property even today.

The Enemy Property Act, 1968

This Act was enacted to provide for “the continued vesting of enemy property vested in the Custodian of the Enemy Property for India under the Defence of India Rules, 1962 and for the matters connected therewith”. The Act inter alia defined enemy property as “any property for the time being belonging to or held or managed on behalf of an enemy, an enemy subject or an enemy firm”. All the rights, titles, and interests in, or any benefit arising out of such property would be covered within the ambit of enemy property which may include land, jewellery, bank accounts, commercial properties, investments, etc. The Act provides for the appointment of the Custodian of Enemy Property for India and the Deputy Custodian, etc. and specifies their powers and roles. The Custodian may after making such inquiry as it deems necessary, by order, declare that the property of the enemy or the enemy subject or the enemy firm described in the order vests in it under this Act and accordingly issue a certificate to this effect.

The enemy properties vested in the Custodian under this Act are exempted from attachments, seizures, or sales in execution of the decree of a Civil Court or orders of any other Authority. Further, the Central Government may by general or special order transfer the property back to the person from whom such property was acquired and vested. Furthermore, the Act provides that any person aggrieved by an order of the Central Government, may within the period specified under the Act file an appeal to the High Court on any question of fact or law arising from such orders.

The Central Government has formulated the Enemy Property Rules, 2015, the Transfer of Property (Vested as Enemy Property in the Custodian) Order, 2018, Guidelines for the disposal of Enemy Property Order, 2018, the Procedure and Mechanism for Sale of Enemy Share Order, 2019 and the Procedure and Mechanism for disposal of Immovable Properties Order, 2020 in the exercise of its powers conferred under the Enemy Property Act, 1968.

Notable Case Studies

  1. The onus of proof lies on the Authority to prove that a person has migrated to an enemy state and consequently the property held by him/ her was enemy property – Case references: (i) Ghasitu (through his legal representatives) v Assistant Custodian Enemy Property and (ii) Tanvir Eqbal & Ors v Union of India & Ors.
  2. If the property is recorded in the revenue records in the name of ancestors who are alleged to have migrated to an enemy state, the same would be treated as enemy property – Case reference: Buniyad Hasan v Zila Adhikari Barabunki.
  3. Public purpose is the pre-condition for the deprivation of a person from his property under Article 300 A and the right to claim compensation is also inbuilt into that article, and when the person is deprived of his property the state must justify both the grounds which may depend on the scheme of the statute, legislature and other relevant factors – Case reference: K.T. Plantation Pvt. Ltd & Anr v The State of Karnataka.

Current Scenario

A film named ‘Enemy’ released in the year 2015 was based on the consequences of the Act, where the protagonist comes home after serving in the Indian army during the war of 1965 only to find out that properties belonging to his family would be taken away from them because they were registered in the name of a relative who had migrated to Pakistan earlier.

Apart from the above movie reference, the general statistics/ data available in the public domain show that there are about 16,000 enemy properties across India, with a maximum number of such properties in the state of Uttar Pradesh. In Goa itself, the government has identified 263 properties, which are roughly estimated to be worth INR 100 crores.

The current situation is such that the Act does not allow the heirs or relatives of enemy state nationals living in India to inherit properties, even after they have passed away. Further, any person who bonafidely purchased a property when it was sold can now be ousted from his/ her vested interest in the subject property. These lacunas in the Act have left the judicial courts burdened for the want of judicial intervention.

References:

  1. The Administration of Evacuee Property Act, 1950;
  2. The Enemy Property Act, 1968;
  3. Enemy Property Rules, 2015;
  4. The Transfer of Property (Vested as Enemy Property in the Custodian) Order, 2018;
  5. The Guidelines for disposal of Enemy Property Order, 2018;
  6. The Procedure and Mechanism for Sale of Enemy Share Order, 2019;
  7. The Procedure and Mechanism for disposal of Immovable Properties Order, 2020;
  8. Ghasitu (through his legal representatives) v Assistant Custodian Enemy Property;
  9. Tanvir Eqbal & Ors v Union of India & Ors;
  10. Buniyad Hasan v Zila Adhikari Barabunki;
  11. T. Plantation Pvt. Ltd & Anr v The State of Karnataka.

Image Credits:

Photo by Shamoil on Unsplash

This Act was enacted to provide for “the continued vesting of enemy property vested in the Custodian of the Enemy Property for India under the Defence of India Rules, 1962 and for the matters connected therewith”. The Act inter alia defined enemy property as “any property for the time being belonging to or held or managed on behalf of an enemy, an enemy subject or an enemy firm”. All the rights, titles, and interests in, or any benefit arising out of such property would be covered within the ambit of enemy property which may include land, jewellery, bank accounts, commercial properties, investments, etc. The Act provides for the appointment of the Custodian of Enemy Property for India and the Deputy Custodian, etc. and specifies their powers and roles. The Custodian may after making such inquiry as it deems necessary, by order, declare that the property of the enemy or the enemy subject or the enemy firm described in the order vests in it under this Act and accordingly issue a certificate to this effect.

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Validity of Unstamped Arbitration Agreements: A Scrutiny of Dissenting Opinions

A five-judge Bench of the Supreme Court comprising Justice K.M. Joseph, Justice Aniruddha Bose, Justice C.T. Ravikumar, Justice Hrishikesh Roy, and Justice Ajay Rastogi while deciding an appeal on 25th April 2023, held that an arbitration agreement in an unstamped contract which is liable to be stamped will not be considered valid in law. Until now, arbitration clauses were considered as separate agreements and this pronouncement will have a deep-rooted effect on the law of the land.

Introduction

Settling the long-standing debate around the validity and enforceability of an unstamped arbitration agreement and putting an end to contradictory judicial pronouncements surrounding the issue, the Apex Court delivered the judgment in N.N. Global Mercantile v. Indo Unique Ltd.[1] by a 3:2 majority, while Justice Ajay Rastogi and Justice Hrishikesh Roy dissented and were of the view that arbitration agreements are valid till the pre-referral stage. In this article, we analyse the majority and minority views while referring to the concepts of separability and Kompetenz-Kompetenz.

Background

The Petitioner and Respondent had entered into a subcontract which contained an arbitration clause. The case began when the Respondent approached the Commercial Court invoking arbitration proceedings against the Petitioner under Section 8 of the Arbitration and Conciliation Act, 1996 (the Act) when certain disputes arose between the two pertaining to the invocation of a bank guarantee furnished by the Petitioner. On rejection of the application by the Commercial Court, the Respondent filed a revision application before the Bombay High Court. Consequently, the Bombay High Court allowed the Respondent to withdraw the revision application and approach the Court by way of a writ petition[2], wherein the Court held that the Section 8 application was maintainable before it and the issue of unenforceability of the arbitration clause owing to the unstamped and unregistered subcontract can be raised before the Arbitral Tribunal under Section 11 of the Act. Aggrieved by the decision of the Bombay High Court, the Petitioner filed a Special Leave Petition before the Supreme Court which was heard by a three-judge Bench. When faced with this issue, the court, overturning the decision laid down in SMS Tea Estates (P) Ltd. v. Chandmari Tea Co.[3] and Garware Wall Ropes Ltd. v. Coastal Marine Constructions and Engg. Ltd. held that the independence of the arbitration clause will be deemed supreme and will not be vitiated owing to the insufficient stamping and thus cannot be a ground for refusing the arbitrator’s appointment[4].

The bone of contention, however, persisted regarding the enforceability of the arbitration clause in the unstamped subcontract and the Supreme Court referred the matter to a five-judge bench for the very reason that in the case of Vidya Drolia v. Durga Trading Corpn[5], a co-ordinate bench held differently.

The Majority View

Fast forward to 2023, the five-judge Bench held arbitration agreements in unstamped contracts as invalid by a majority. The Supreme Court held that an instrument containing an arbitration clause which is bound to be stamped and registered but is not, does not fit within the definition of a contract under Section 2(h) of the Indian Contract Act, 1872 and hence cannot be enforceable in law. The majority view reasoned that the doctrine of arbitration will be followed and that in case of an original agreement being produced which is unstamped, the Court under a Section 11 application is bound by law to proceed as per Sections 33 and 35 of the Indian Stamp Act, 1899 and impound such an agreement and the Courts must follow the law as per due procedure to ultimately remove the defect.

Prior to NN Global, the Supreme Court while examining the same issue in SMS Tea Estates, held that an arbitration clause in an unstamped arbitration agreement cannot be acted upon for the appointment of an arbitrator owing to the rationale that an instrument which mandatorily needs to be registered and is chargeable under the Stamp Act cannot be admitted into evidence and loses credibility.

A two-judge bench in Garware Wall Ropes also upheld the rationale in SMS Tea Estates while adding that the introduction of Section 11 (6-A) does not alter the position of law and the existence of the arbitration clause will survive only if the contract is stamped and registered, being duly valid in law as the arbitration clause cannot be culled out of the main contract and be considered a separate entity[6]. Recently in 2021, a three-judge bench in Vidya Drolia also affirmed the findings in SMS tea estates and Garware wall ropes.

Merit in Dissent

The objective of the Indian Stamp Act, 1899 is primarily to generate revenue for the State. In this regard, Section 33 of the Act empowers the Authority to examine and ascertain whether the stamp duty on an instrument presented before them has been duly paid. In case of a situation to the contrary, the Authority is to impound the document and direct the parties to pay the stamp duty with or without levying a penalty.

A perusal of Section 35 further reveals that no instrument can be admitted in evidence which does not carry the requisite stamp duty the instrument is liable for. However, the proviso to said Section further provides a cure in case of this defect by allowing its admission into evidence after payment of the requisite stamp duty and the penalty. Thereby revealing that such a defect can be cured even at a later stage and that an unstamped or insufficiently stamped instrument can be turned valid in law by fulfilling the criteria laid out in the proviso to Section 35. Justice Rastogi, on similar lines, noted his dissent by opining that the Stamp Act is not rigid in making the instrument invalid in law and provides for a mechanism to rectify and fulfil the criteria prescribed under Section 35 even at a later stage. Following this scheme, Section 42 of the Stamp Act further envisages that in case of an impoundment under Section 33, such an instrument can be endorsed by the Collector so authorized and then be admitted in evidence. Hence, the law clearly provides for the admissibility of such instruments which may lack or suffer from insufficient stamp duty and nowhere envisions their complete invalidity in law.

Moving on to the Arbitration and Conciliation Act, 1996, he further held that the legislative intent behind the enactment of the Act was to avoid arduous litigation procedures and hasten the dispute resolution processes. A harmonious interpretation of the Indian Stamp Act, 1899 and the Arbitration and Conciliation Act, 1996 needs to be adopted to provide an interplay between the two to meet the ends of justice. The applicability of Section 33 and 35 of the Indian Stamp Act, 1899 to a Section 11 application under the Arbitration and Conciliation Act, 1996 which deals with the appointment of an arbitrator essentially defeats the purpose of speedy disposal of cases by focusing on procedural irregularities which can be cured. Section 11, following the doctrine of Kompetenz-Kompetenz, provides that the Court may restrict its interference only to the “existence” of an arbitration agreement and leave subsequent issues such as validity and scope for the tribunal to adjudicate. It can be inferred that impounding and invalidity of the arbitration agreement at the pre-referral stage will only create more roadblocks and increase interference by courts thereby defeating even the purpose of the Arbitration and Conciliation Act, 1996 and will have no effect on the existence of the arbitration agreement.

Justice Roy in his dissenting opinion was also of the view that a non-stamped or an insufficiently stamped instrument would still be enforceable for the appointment of arbitrators under Section 11 and courts should restrict their scrutiny only to the existence of the agreement to keep judicial interference in check in order to meet the objective of the 2015 amendment.

The Gordian Knot

While arriving at the decision in N.N. Global, the well-established principle of separability[7] in arbitration jurisprudence has not been considered which puts India in a precarious position in its quest to become a hub for Commercial Arbitration. The principle of separability acknowledges that an arbitration agreement is autonomous from the commercial contract it forms a part of[8]. This autonomy is based on the concepts of separability and kompetenz-kompetenz. This doctrine further implies that the invalidity or ineffectiveness of the underlying commercial contract will not vitiate the arbitration agreement. This has also been embodied in Section 16 of the UNICITRAL Model Law which allows the Arbitral Tribunal to rule upon its own jurisdiction including matters regarding existence and validity[9].

Conclusion

The authors believe that this landmark ruling will have far-fetched consequences. The principle of separability of the arbitration agreement will have to see a complete metamorphosis to align itself with the ruling. The question of stamping is not related to the jurisdiction of the Arbitral Tribunal, but it relates to the issue of admissibility. At the pre-arbitral stage, the dissent of N.N Global intrigues the way in which the discourse of arbitration “should be”. It would be axiomatic to state that the majority has set the law of the land by laying down a parameter to be checked in a Section 11 petition.

References:

[1] N.N. Global Mercantile v. Indo Unique ltd, 2023 SCC OnLine SC 495.

[2] Article 226, The Indian Constitution, 1950.

[3] SMS Tea Estates (P) Ltd. v. Chandmari Tea Co. (2011) 14 SCC 66.

[4] N.N. Global Mercantile v. Indo Unique ltd, 2021 SCC OnLine SC 13

[5] Vidya Drolia v. Durga Trading Corpn, (2021) 2 SCC 1.

[6] Garware Wall Ropes Ltd. v. Coastal Marine Constructions and Engg. Ltd, (2019) 9 SCC 209.

[7] Heyman v. Darwins Ltd. 1942 AC 356 (HL).

[8] Ibid.

[9] §16(1), United Nations Commission on International Trade Law, UNCITRAL Model Law on International Commercial Arbitration 1985: with amendments as adopted in 2006 (Vienna: United Nations, 2008), available at www.uncitral.org/pdf/english/texts/arbitration/ml-arb/07-86998_Ebook.pdf.

Image Credits:

Photo by Motortion: https://www.canva.com/photos/MADqQhzGreg-arbitration-agreement-table-gavel-lying-on-sound-block-conflict-settlement/

While arriving at the decision in N.N. Global, the well-established principle of separability[7] in arbitration jurisprudence has not been considered which puts India in a precarious position in its quest to become a hub for Commercial Arbitration. The principle of separability acknowledges that an arbitration agreement is autonomous from the commercial contract it forms a part of[8]. This autonomy is based on the concepts of separability and kompetenz-kompetenz. This doctrine further implies that the invalidity or ineffectiveness of the underlying commercial contract will not vitiate the arbitration agreement. This has also been embodied in Section 16 of the UNICITRAL Model Law which allows the Arbitral Tribunal to rule upon its own jurisdiction including matters regarding existence and validity[9].

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Green Deposits: Existing Framework and the Path Ahead

The use of green deposits in infrastructure banking and finance is a growing challenge, with a lack of awareness among individuals and institutions about its availability and benefits. Additionally, there is a need for more product offerings to be made available to investors and for the Indian government to commit to sustainable development. Green deposits can provide an avenue for investors to invest in these projects and help to promote sustainable development in India.

Introduction

Infrastructure is the backbone of any economy. In India, the need for infrastructure development is necessary due to the country’s large population and fast-paced urbanization. However, infrastructure development projects require large amounts of capital, which is always challenging. This is where infrastructure banking and finance come into play. Infrastructure banking and finance refer to the financial services provided to fund large infrastructure projects. In this context, green deposits serve a crucial purpose as a new source of capital for sustainable infrastructure projects. 

SEBI Circular

The Business Responsibility and Sustainability Reporting (BRSR) framework released by the Securities Exchange Board of India (SEBI) through a circular dated May 10, 2021, is expected to promote responsible business practices and encourage companies to invest in sustainable initiatives. The framework seeks to boost the demand for green bonds in India, which can provide a new source of capital for infrastructure projects and promote sustainable infrastructure development. However, it only applies to certain companies, such as listed companies and certain unlisted companies that meet specific criteria. The BRSR framework was voluntary in nature, and companies were not required to comply with it till FY 2021-22. However, it is made mandatory from FY 2022-2023 and hence, would have a positive impact on the environment, society, and the economy in the long run. By promoting transparency and accountability, the framework would improve their overall performance.  Financing energy-efficient projects through green deposits under public-private partnerships (PPPs) is an effective way to promote sustainable development and reduce the negative impact of energy consumption on the environment.

Green deposits can be utilized to finance the construction of energy-efficient buildings, including the installation of energy-efficient lighting, heating, and cooling systems, and the use of sustainable building materials thereby contributing to sustainable development as also envisaged by the Indian Government through a few of its projects. For example, the Centre’s Smart Cities Mission aims to develop 100 smart cities across the country, with a focus on sustainable development and the use of green technologies. Under this mission, several cities have launched projects to develop energy-efficient buildings, including green buildings, with support from the government and private sector partners.

The Hyderabad Metro Rail Limited (HMRL) is a classic example where HMRL collaborated with a private sector developer (Larsen & Toubro) to construct energy-efficient buildings at the metro stations in Hyderabad. The project involved the installation of energy-efficient lighting systems, rainwater harvesting systems, and solar panels to generate electricity[1]. Green deposits were utilized to finance the project, with the government providing guarantees and incentives to attract private-sector investment.

RBI’s Framework on Green Deposits

In recent years, the Reserve Bank of India (RBI) has taken several steps to promote sustainable finance and energy. One such initiative is the introduction of the RBI’s framework on green deposits, which was issued in April 2023. This framework provides guidelines for banks to offer green deposits to investors, with the aim of promoting investment in environmentally sustainable projects.

The RBI framework provides a clear definition of what constitutes a green deposit. According to the framework, green deposits must be used to finance projects that positively impact the environment, such as renewable energy projects, energy efficiency projects, and projects related to sustainable water management[2]. This clarity helps investors in making informed decisions and ensures that funds raised through green deposits are used for environmentally sustainable purposes.

Further, it encourages banks to adopt best practices in environmental risk management. This includes conducting environmental due diligence on potential projects, monitoring and reporting on environmental risks associated with green deposits and integrating environmental risk considerations into the bank’s credit risk assessment process.

One of the limitations of the RBI’s framework on green deposits is that it does not provide any incentives for banks to offer green deposits. While the framework encourages banks to offer green deposits, there are no financial or regulatory incentives for doing so.

Suggestions

In order to make green deposits successful, some tax incentives can be offered to encourage individuals and businesses to invest in green deposits. Some examples of tax incentives that can be given for green deposits include tax deductions, tax deferrals, reduced capital gains tax rate and income tax rate, etc.

The RBI’s green deposit framework includes concessional treatment of liquidity coverage ratio (LCR) and priority sector lending (PSL) requirements for banks that mobilize green deposits, which could help reduce interest rates and capital gains. This can encourage investors to hold on to their investments for a longer period, which can be beneficial for green projects.

Carbon credits are a type of tradeable permit that allows the emission of a certain amount of greenhouse gases. They can be given to green deposits to incentivize investments in projects that reduce carbon emissions or sequester carbon from the atmosphere. Once the project has been certified, the credits can be issued based on the amount of carbon emissions sequestered. The investors may be granted a carbon credit per ton reduced if they invest in the project. Such credits could be sold or traded on the carbon market, providing an additional source of revenue to investors.

The National Clean Energy Fund (NCEF) and other schemes of the government could also be financed with the help of green deposits under public-private partnerships (PPP) in several ways, namely: –

  • Equity Investment

Green deposits can be used to provide equity investment in PPPs that are aimed at promoting clean energy and sustainable development. This type of investment can provide long-term financing for PPP projects and can help to attract additional private sector investment.

  • Debt Financing

Debt financing can be extended to PPP projects through green deposits. This can be done through loans or other financial instruments that offer lower interest rates and longer tenors than traditional commercial loans. This type of financing can help to reduce the cost of capital for PPP projects and make them more attractive to private sector investors.

  • Risk Mitigation

Green deposits may be utilised to provide risk mitigation instruments to PPP projects. For example, they can be used to provide guarantees or insurance products that protect investors from potential losses due to project delays, cost overruns, and other risks. These instruments can help to reduce the perceived risk of PPP projects and attract more private sector investment.

  • Green Bonds

Green bonds that are backed by PPP projects can be issued through green deposits, to be marketed to socially responsible investors. Such bonds can act as a long-term source of financing for such projects and the proceeds from these bonds could be used to finance clean energy infrastructure and other sustainable development initiatives.

  • Technical Assistance

Conferring technical assistance to PPP projects is possible with the help of green deposits and this includes support for project development, feasibility studies, and other activities that help to build the capacity of projects and attract private sector investment.

Therefore, these mechanisms can help to accelerate the development of clean energy infrastructure and support the transition towards a low-carbon economy, while also attracting private sector investment to support sustainable development initiatives in turn providing financial support and incentives for renewable energy and sustainable development projects. Companies could also choose to invest in such projects using their CSR funds, potentially indirectly incentivizing green deposits.

Conclusion

The RBI’s framework on green deposits is a positive step towards promoting sustainable finance and encouraging banks to adopt environmentally sustainable practices. The framework provides clear guidelines for banks to offer green deposits and encourages them to adopt best practices in environmental risk management. However, the lack of incentives for banks to offer green deposits may limit the framework’s effectiveness and the RBI may need to consider providing financial and regulatory incentives for the same.

References:

[1] Anil Nair, Green Bonds for Sustainable Urban Transport in India

Available at https://www.janaagraha.org/files/Green_Bonds_Sustainable_Urban_Transport_India_1217C1.pdf

[2] Ravi Meena, Green Banking: As Initiative for Sustainable Development

Available at – http://www.ripublication.com/gjmbs.htm

Image Credits:

Photo by DAPA Images: https://www.canva.com/photos/MADFHHnnRyY-money-and-investment-growth/

Green deposits can be utilized to finance the construction of energy-efficient buildings, including the installation of energy-efficient lighting, heating, and cooling systems, and the use of sustainable building materials thereby contributing to sustainable development as also envisaged by the Indian Government through a few of its projects. For example, the Centre’s Smart Cities Mission aims to develop 100 smart cities across the country, with a focus on sustainable development and the use of green technologies. Under this mission, several cities have launched projects to develop energy-efficient buildings, including green buildings, with support from the government and private sector partners.

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Indian Space Policy, 2023: Placing India into a Higher Orbit in the Global Space Economy?

Achieving India’s space aspirations does have a lot to do with “rocket science”, but that alone won’t cut it. The Indian Space Policy, 2023 has taken an important step to create and nurture a robust enabling ecosystem, and the countdown has begun for India as a space power to move to a higher orbit.

Introduction

India’s space prowess has come a long way since ISRO launched the country’s first rocket in 1963. But in these 60 years – and especially in the last decade – space has become a critical domain given its potential not just for peaceful purposes such as superior communication in remote areas, better weather forecasting and disaster warnings/management but also for strategic (military) reasons. The rivalry between the USA and China clearly extends to space, with both countries building weapons that can be deployed in space and used to target virtually every corner of the earth.

In this context, India can ill-afford to not develop its space-related scientific and technological capabilities. We have emerged as a globally competitive provider of launch services. But this is not enough, given that India’s market share is still relatively small. Our space programs are still largely powered by government initiatives. This is not enough; advancing our spacetech capabilities and competing commercially with other global rivals needs a larger domestic ecosystem that can tap into the intellectual and financial capital available to the private sector. This process began a couple of years ago and has already seen many Indian startups design and build satellites and other space vehicles.

The Indian Space Policy, 2023

The announcement of the Indian Space Policy, 2023 by the Government of India earlier in April is important for three reasons, namely: –

  • It provides a sharper focus on the role of ISRO and more clearly demarcates the roles of New Space India Limited (NSIL) and Indian National Space Promotion and Authorization Center (IN-SPACe).
  • It creates a clearer path for private sector participation.
  • It takes a holistic view of the sector, including within its ambit not just the building and launch of satellites, rockets and other space vehicles but also satellite communications, deep-space exploration, remote sensing, data gathering and dissemination and space transportation.

The new policy is expected to boost this process by channelling efforts in different segments of the value chain. ISRO is being asked to develop new technologies and systems, in other words, drive critical R&D, while NSIL will handle the operational aspects of ISRO’s missions, as well as other strategic activities. IN-SPACe will function as the interface between ISRO and non-governmental entities (including the private sector, which was permitted to enter the space sector in 2020). This will improve the creation and adherence to more evolved operating procedures. 

The private sector will be allowed to use ISRO’s facilities for launches, which is critical because startups and smaller companies will often not have the resources needed to tap other launch facilities. The new policy also seeks to encourage private investment in the creation of new infrastructure as well – something that will be needed as more Indian ventures seek engineering, manufacturing and launch infrastructure. Private companies that ISRO sub-contracted work to can, under the new policy, also work with other customers (including foreign companies).

By one estimate, there are already more than 400 private sector entities associated with different facets of the space sector. ISRO itself has supported over 150 startups. College students from across India too have designed and built satellites, some of which have already been launched successfully.  Given rapid advances in various fronts – materials, fuel, communications, miniaturization, AI, etc., and the emergence of so many new application areas, the space industry is now virtually a “sunrise” industry. The new policy is intended to give a boost across the R&D-design-build-launch-harness value chain that will deliver even more thrust to power India’s aspirations as a leader in the space economy.

The fine print matters!

India currently accounts for less than 2% of the US $500 Billion space economy. It is possible to increase this to 10% in the next 3 years. But there’s many a slip between the proverbial cup and the lip. As with every other policy, how the rules are framed, the specific details covered, and the actual wording will collectively determine how well this policy achieves its objective of propelling India’s ability to garner a much larger share of this monopolistic market and become “atmanirbhar” in a sphere that is becoming increasingly critical by the day.

The rules will need to be drafted carefully to ensure that the legitimate interests of innovators are safeguarded (through appropriate mechanisms for protecting Intellectual Property Rights) without compromising national security or other interests (e.g., by allowing critical IPR or sensitive data to be commercially exploited). Shareholding structures and investment routing will need to be carefully monitored to ensure that interests inimical to India do not gain control over key technologies or assets. Individual contracts too will need to be carefully drawn up so that the interests of Indian entrepreneurs/ventures and other entities are protected.

By one estimate, there are already more than 400 private sector entities associated with different facets of the space sector. ISRO itself has supported over 150 startups. College students from across India too have designed and built satellites, some of which have already been launched successfully.  Given rapid advances in various fronts – materials, fuel, communications, miniaturization, AI, etc., and the emergence of so many new application areas, the space industry is now virtually a “sunrise” industry. The new policy is intended to give a boost across the R&D-design-build-launch-harness value chain that will deliver even more thrust to power India’s aspirations as a leader in the space economy.

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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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Decoding IT Amendment Rules: The Hits and Misses

  • April 18, 2023
  • Padma Sinha
  • Sanjana Sreenath

On April 6, 2023, the Ministry of Electronics & Information Technology (MeitY) notified the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Amendment Rules, 2023 to amend the 2021 Rules. In this article, the important changes introduced to the Rules are highlighted.

Introduction

Through the amendment, the Ministry intends to make a few changes to the intermediary eco-system by introducing new due-diligence requirements for intermediaries. It can be broadly summarised under two heads – partial censorship of digital media, and regulation of online gaming intermediaries. 

Partial censorship of digital media

The new amendment requires social media intermediaries, significant social media intermediaries and online gaming intermediaries to follow additional due diligence. It aims to regulate digital media by disallowing the publication of such information related to the business of the Central Government which is identified or declared as fake, false, or misleading by a fact-checking unit set up by the Central Government. This addition to the rules would make it mandatory for the intermediaries to take down (when given a notice by the user) any piece of information that is declared fake or misleading by the fact-checking authority. It is unclear from the amendment if the information checked by the already established fact-checking authority would warrant take-down, but with the available information, it would be reasonable to assume that any information fact-checked and deemed fake by the PIB fact-check mechanism would warrant takedown.

This part of the amendment has been challenged by a political satirist, Mr. Kunal Kamra. He filed a writ petition with the Bombay High Court with the averment that the amendment with respect to establishing a separate unit by the Central government to fact-check digital media is violative of Articles 14, 19(1)(a), and 19(1)(g) of the Indian Constitution and that it is ultra vires Section 79 of the Information Technology Act, 2000. The Bombay High Court has now directed MeitY to file its response within one week on why the IT Amendment Rules, 2023 should not be stayed, and also describe the factual background that necessitated the issuance of the amendments. The affidavit has been ordered to be filed by April 19, 2023, and the matter has been listed on April 21, 2023.

Regulation of online gaming intermediaries

Earlier, a draft of the amendment (pertaining to online gaming) to the 2021 Rules was released in January 2023; though the draft lacked clarity on the kind of online games it intended to regulate (click here to read more). Further, it did not delve into differentiating between games that are in the form of wagering/betting and those which are not. The current amendment attempts to overcome these shortcomings by providing for an ‘online gaming intermediary’ and stipulating the due-diligence requirements for such intermediaries.  

The amendment defines an online gaming intermediary as one that enables users to access one or more online games. It further defines an ‘online real money game’ that is played with real money, where the users are asked to deposit money. The amendment allows the online gaming intermediary to host only those games which are permissible online games and are certified by the online gaming self-regulatory body.

Disallowing online wagering and betting games.

As per the new amendment, social media intermediaries or online gaming intermediaries are not allowed to host an online game which is not verified as a ‘permissible online game’, or any information or content which is in the nature of an advertisement or a surrogate advertisement of such non-permissible online games. It also prohibits the hosting of such games that causes harm to the user.

Permissible online real money game

The amendment further clarifies that for a game to be certified as a permissible online real money game, any member of the online gaming self-regulatory body that enables online real money game can make an application to the online gaming self-regulatory body. The said private body is set up for the sole purpose of acting as an online-gaming self-regulatory body and is notified by the Central Government. It has the power to decide whether an online game is permissible or not. The regulatory body will inquire and ensure that the game does not involve any wagering and that the gaming intermediaries or the online game undertakes all the due diligence laid down in the Rules. Additionally, it shall also ensure that the permitted games are not against the interest of the country. It also has safeguards that protect users against harm, risk of addiction, financial loss, fraud, etc by providing repeated warnings or such. The body is required to adhere to the principles of natural justice. While the self-regulatory body has the power to certify an online game as a permissible one, the Central Government still reserves the right to suspend the certification if it believes that the said game is not in conformity with the Rules.

This is a private body set up for the sole purpose of acting as an online-gaming self-regulatory body and is notified by the Central Government. In brief, they have the power to decide whether an online game is permissible or not.

Due-diligence requirements

Previously, Rules 3 and 4 of the Rules stipulated the due-diligence requirements for social media intermediaries and significant social media intermediaries. With this amendment, such due-diligence requirements in Rules 3 and 4 are extended to online gaming intermediaries too.

Through these amendments, in addition to the existing due diligence requirements under Rules 3 and 4, the online gaming intermediaries that enable permissible real money games have certain additional due-diligence requirements like requiring to display a visible mark of verification, and inform the users about the policy related to the deposit and withdrawal of money, the KYC norms that they follow, the measures taken to protect the deposits made amongst others.  

Online games which are not real-money games do not have to follow the additional due-diligence requirements by default, the Central Government by notification may direct an intermediary to undertake certain due-diligence requirements.

Conclusion

The IT amendment rules are an improvement on the previously proposed amendment to the 2021 Rules. The definitional ambiguity is removed and a step is taken toward regulating online games that are based on wagering. It also makes the self-regulation of online gaming intermediaries more transparent by stipulating for disclosure of decision-making reasons, etc.

Image Credits:

Photo by anyaberkut: https://www.canva.com/photos/MADCr_H7g_U-it-concept-information-technology-diagram/ 

The new amendment requires social media intermediaries, significant social media intermediaries and online gaming intermediaries to follow additional due diligence. It aims to regulate digital media by disallowing the publication of such information related to the business of the Central Government which is identified or declared as fake, false, or misleading by a fact-checking unit set up by the Central Government. This addition to the rules would make it mandatory for the intermediaries to take down (when given a notice by the user) any piece of information that is declared fake or misleading by the fact-checking authority. It is unclear from the amendment if the information checked by the already established fact-checking authority would warrant take-down, but with the available information, it would be reasonable to assume that any information fact-checked and deemed fake by the PIB fact-check mechanism would warrant takedown.

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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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