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

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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Registration of GUI as Designs: Existing Provisions and Challenges

In this article, an attempt is being made to highlight how GUIs can be protected and to ascertain the challenges faced by applicants in filing design applications for the registration of GUIs.

Introduction

A Graphic User Interface (GUI) which allows users to interact with electronic devices or machines, is widely used in the present digital age. The term was coined in the 1970s to distinguish graphical interfaces from text-based ones, such as command line interfaces (CLI), etc. Apple’s GUI-based operating system – Macintosh, Microsoft’s Windows, Mobile Touch Screens, and other 3D interfaces (Eg. Augmented Reality) are all examples of GUIs.

Protection of GUI: A Look at Locarno Classification and Designs (Amendment) Rules, 2021

Just as trademarks are classified into various classes of goods and services provided for in the internationally accepted NICE classification, Designs also have a classification of articles to which a design can be applied, known as the Locarno Classification.

The Locarno Classification, developed under the Locarno Agreement (1968), is an international classification used for registering industrial designs. India became the 57th member to be a signatory to the Locarno agreement in 2019. The changes were incorporated through the Designs (Amendment) Rules, 2021, thereby bringing the classification of industrial designs at par with the rest of the world as opposed to the previous national classification.

Subsequently, on 25th January 2021, the Ministry of Commerce and Industry notified the Designs (Amendment) Rules, 2021, which substituted Rule 10 of the Design Rules 2001, and incorporated the current edition of the Locarno Classification, which specifically created Class 14 – Recording, telecommunication, or data processing equipment, with a subclass “Class 14-04 – Screen Displays and Icons”, and further provided for Class 32, allowing for two-dimensional graphic designs, graphic symbols, and logos, to be protected under the Designs Act, 2000, provided that these designs satisfy the essentials of an ‘Article’ and a ‘Design’ as defined in Sections 2(a) and 2(d) of the Act.

Lacunae in Legislation

As per the Designs Act, 2000, a design means “only the features of shape, configuration, pattern, ornament, or composition of lines or colours applied to any article, whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate, or combined, …”

Now, this is precisely where the problem arises. Even after the Locarno Classification was introduced and the Designs Rules were amended to deal with confusion and uncertainties in the classification of industrial designs, the lawmakers have failed to amend the definition of ‘Design’ and bring the Designs Act, 2000, along the same lines. Further, the Controllers make conflicting observations and the interpretations provided by them seem to lack uniformity.

A GUI should be protected since its intrinsic purpose is to enhance the visual appeal of the program and thus build on its commercial value. The definition of a design given under the Act is limited and does not expressly provide for graphics and/or software. Due to this lacuna, the definition is open to multiple interpretations.

Practice Followed by the Indian Design Office

Before 2009, Microsoft was granted registration for some of its designs under Class 14-99, in the ‘Miscellaneous’ category. Thereafter, in the year 2014, Amazon filed a design application under no. 240305 pertaining to a “Graphic user interface for providing supplemental information of a digital work to a display screen”, which was rejected by the Design Office, on the grounds that GUIs do not qualify as designs under Section 2(d) of the Act, they lacked “consistent eye appeal” and were not physically accessible.

Over the years, several new applications for the registration of GUIs have been filed. While a few have been granted[1], most Examiners opine that the GUIs do not fall under the definition of ‘designs’ and hence, cannot be protected. Hence, applicants are wary of filing design applications for registration of GUIs due to the absence of robust precedents.

Observations made by US Courts

In Ex Parte Tayama[2], the Court made the following observations –

  1. Programmed Computer Systems would suffice to be termed as an article of manufacture.
  2. Design (GUI) is an integral part of computer programmes.

Further, the patent battle[3] between Apple and Samsung (2011 – 2018) ended with Apple being awarded $539 million for Samsung’s infringement of its initial design. Apple was all the while contending to protect its “Total User Experience”.

Various Design Patents have been granted by USTPO, such as apparatus for displaying the path of a computer program error as a sequence of hypertext documents in a computer system having display[4], device, method, and graphical user interface for adjusting content selection[5], etc.

European Union’s Position

EU also provides wide protection to designs under EU Directive 98/71/EC on Legal Protection of Designs. GUIs in the EU are generally registered under the Community Design Regulation (Council Regulation No. 6/2002/EC) but may also exist as unregistered Community Designs. The regulation, however, excludes computer programmes.

Conclusion

The current definition of a design is inadequate and does not expressly cover the aspects of graphics/GUIs. Undoubtedly, the various developments in the IT industry have made the world realize the importance of protecting graphics. However, the introducing of international classification (Locarno Classification) and bringing amendments to existing laws are not sufficient. It is imperative to establish new guidelines and provide appropriate training to the Examiners at the Design Office so that a uniform mechanism is in place to facilitate the registration of graphic symbols/GUIs.

References:

[1] Design Application Numbers 274917, 274918, 284680, 276736, 260403

[2] 24 U.S.P.Q.2d (BNA) 1614 (BPAI Apr. 2, 1992)

[3] Apple, Inc. v. Samsung Elecs. Co., 926 F. Supp. 2d 1100 (N.D. Cal. 2013) (partially affirming jury damages award).

[4] US6763497B1

[5] US10915243B2

Image Credits:

Photo by cottonbro studio: https://www.pexels.com/photo/person-using-macbook-3584994/

A GUI should be protected since its intrinsic purpose is to enhance the visual appeal of the program and thus build on its commercial value. The definition of a design given under the Act is limited and does not expressly provide for graphics and/or software. Due to this lacuna, the definition is open to multiple interpretations.

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Rooh Afza has Immense Goodwill: Delhi HC Rules in Trademark Infringement Case

The Delhi High Court gave its verdict in the trademark infringement battle between Hamdard National Foundation (India) and Sadar Laboratories Pvt. Ltd., and prohibited the latter company from using the mark “DIL AFZA” thereby protecting the trademark “ROOH AFZA”.

In a suit for trademark infringement by Hamdard National Foundation (India) against Sadar Laboratories Pvt. Ltd., the Delhi High Court held that the trademark “ROOH AFZA” possesses immense goodwill and that competitors must ensure that their marks are not similar to it. A two-judge bench, in its judgment[1] held that since the mark “ROOH AFZA” has been used for over a century, it can be considered a strong mark and, thus, restrained the Respondent from using the mark “DIL AFZA” until the suit is disposed of.

Hamdard National Foundation has filed the present appeal against the order[2] passed by a single judge bench of the Delhi High Court on 6th January 2022, rejecting an application for an interim injunction against Sadar Laboratories Pvt. Ltd. Both the marks are used with respect to sweet beverage concentrate. The Appellants claimed that the Respondents were infringing their marks “HAMDARD” and “ROOH AFZA”, and by selling these products under the mark “DIL AFZA,” they were passing off their products as those of the Appellants.

The Single Judge Bench held that the Appellants have to show that “AFZA” has a secondary meaning to claim exclusivity of their product. Therefore, the Court dismissed the application on the ground that they can claim exclusivity only for the mark “ROOH AFZA” as a whole and not just for “AFZA.”

Aggrieved by the order, the present appeal was filed by Hamdard National Foundation seeking a permanent injunction refraining the respondents from using the mark “SHARBAT DIL AFZA” or “DIL AFZA” on the ground that it is deceptively similar to the mark “ROOH AFZA.” The appellants further claimed that the use of this mark would deceive consumers and amount to passing off and also submitted that this would amount to dilution of the Appellant’s mark.

It was claimed that the marks “HAMDARD” and “ROOH AFZA” have been used for a wide range of products and constitute a well-known mark under Section 2(zg) of the Trademarks Act, 1999 owing to their widespread reputation and has therefore acquired goodwill with respect to the class of products pertaining to sweet beverage concentrates.

The Respondent submitted that by virtue of Section 29 of the Trademarks Act 1999, the allegations of infringement are not maintainable. It was submitted that the Appellants do not have an exclusive right over the word “AFZA” and that their mark has been coined by joining the terms “DIL” and “AFZA” and are not phonetically or visually similar. The Respondent submitted that there was no possibility of confusion between the two marks and every other aspect, such as the design and color scheme of “DIL AFZA” is also materially different from the Appellant’s mark. Therefore, there was no possibility of confusion between the two marks.

The Delhi High Court, after considering the arguments from both sides, stated that “AFZA” is an integral part of both “ROOH AFZA” and “DIL AFZA.” The word is neither descriptive nor normally associated with the product; hence, it is material in determining whether there is an infringement of the trademark. The Court further stated that the use of the word “AFZA” lends a certain degree of similarity, and the trade dress of both products is also similar, making the Respondent’s mark deceptively similar to that of the Appellants.

The Court reiterated that “ROOH AFZA” has been used for over a century and is entitled to protection. The mark is a source identifier with a high degree of goodwill and is susceptible to unfair competitive practices. The Court stated that prima facie, the Respondent’s mark lacks a sufficient degree of dissimilarity and hence set aside the order passed by the Delhi High court and passed an ad interim order restraining the Respondent from manufacturing and selling any product under the mark “DIL AFZA” belonging to Class 32 until the present suit is disposed of.

References:

[1] Hamdard National Foundation (India) & Anr vs Sadar Laboratories Pvt. Ltd. [Case No. FAO(OS) (COMM) 67/2022]

[2] Hamdard National Foundation (India) & Anr vs Sadar Laboratories Pvt. Limited [Case No. CS (COMM) 551/2020]

Image Credits:

Photo by Jessica Lewis: https://unsplash.com/photos/qscDBbXBGiI?utm_source=unsplash&utm_medium=referral&utm_content=creditShareLink

The Delhi High Court, after considering the arguments from both sides, stated that “AFZA” is an integral part of both “ROOH AFZA” and “DIL AFZA.” The word is neither descriptive nor normally associated with the product; hence, it is material in determining whether there is an infringement of the trademark. 

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The Football World Cup: An IP Spectacle

A four-year spectacle, i.e., the FIFA World Cup 2022, which captures the imagination of almost 5 billion people worldwide, kicked off on November 20, 2022. No sport is more globally recognised and played than football, or soccer, as it is known in some parts of the world. Their grandest stage captures the imagination of many a country, with matches being watched with loyal fervour and new demi gods arising out of the tournament whose signing fees for their respective clubs could bankroll a country. But this is the FIFA World Cup at its best.

The tournament does bring about numerous challenges, and one such challenge is the protection of Intellectual Property rights. The tournament has close to 5 billion eyeballs on it; therefore, every brand looks to have a presence due to the tremendous commercial value it provides. FIFA has official partners for broadcasting, hospitality, ticketing, etc., who are recognised as official FIFA rights holders. These right holders make substantial financial investments, and such investments will only be forthcoming if FIFA provides them with the exclusive use of their brands during the tournament.

To ensure the education and protection of intellectual property rights, FIFA has an entire section on its website dedicated to brand protection: https://www.fifa.com/about-fifa/commercial/fifa-marketing/brand-protection. FIFA includes several terms and conditions as well as guidelines to protect the investment and exclusive rights granted to their partners and other licensees of the tournament, which include (among others) monitoring and action plans on counterfeit merchandise, ambush marketing campaigns, and social media activity. The rights are actively enforced to prevent misuse and to protect the prestige and value of such a partnership.

 

The Intellectual Property Guidelines provided by FIFA is an extensive document dealing with numerous aspects of protection. It states that only the official FIFA rights holders can use the official intellectual property rights for commercial purposes. Some of the notable official intellectual property items include the following:

With everyone wanting to celebrate the tournament, there is always a risk of unwanted association with the official intellectual property that may occur. However, the FIFA guidelines show that businesses and the public can use generic football or country-related images and terminology that do not include the official FIFA intellectual property.

 

Additionally, there is also the added problem of ambush marketing. It is a prohibited marketing activity undertaken by brands to unscrupulously take advantage of the event without the authorisation of FIFA. Ambush marketing previously raised its head during the World Cup in Russia. FIFA has sought to prevent such ambush marketing to ensure that the official sponsors are given as much protection as possible.

 

FIFA must be lauded for its efforts to create and enforce intellectual property for a sporting spectacle such as the World Cup, and other sporting event organisers must emulate the measures taken by FIFA to ensure the valuable rights of the sponsors are protected.

 

 

 

FIFA includes several terms and conditions as well as guidelines to protect the investment and exclusive rights granted to their partners and other licensees of the tournament, which include (among others) monitoring and action plans on counterfeit merchandise, ambush marketing campaigns, and social media activity. The rights are actively enforced to prevent misuse and to protect the prestige and value of such a partnership.

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Art Meets Law: The Uneasy Tussle of Street Art and Intellectual Property Law

Art-making in public spaces is a 2000-year-old tradition in India. The oldest evidence of painting in communal places can be traced to the Buddhist cave paintings in Ajanta, Maharashtra. The mode of expression and manifestation of these art forms has been unique. For example, folk art on the exterior walls of homes, hand-painted Bollywood posters on walls, truck art, slogans, and many more. Street art is a combination of all of these. Street art is a broad term that encompasses spray painting graffiti, political graffiti murals, (un)sanctioned wall art, and other art forms. Despite concurrent pronouncements on the legal status of graffiti and other art forms, several concerns have arisen about their commercial use and protection under Intellectual Property law.

The medium of expression for a street artist is more often someone else’s property without the permission or knowledge of the owner. In its most unadulterated form, street art opposes authority and the law. On either private or public property, it is usually art made without permission and in violation of the law. Street art embraces metropolitan walls and streets, gifting the public with innovative visual imagery that becomes a part of the city as much as the wall it rests on. Perhaps one of the most rapidly expanding artistic movements is graffiti. Though India has not been much into this, the new era is for something different.

There has been a gradual increase in the number of street artists in India, namely, Yantra and Leena Kejriwal, and internationally there is Banksy and Manu Invisible. Graffiti art has evolved over the past several years from being disregarded as a nuisance and equated with vandalism. Even after the many surrounding conjectures, it has been gauged to be a legitimate form of art and a sought-after commodity among art collectors and enthusiasts. Since graffiti is on the verge of becoming the next big art market, it is grappling with questions of intellectual property protection on creation, unauthorised copying, and destruction.

 

Copyright in Street Art

 

In all its forms, street art has recently gained enormous popularity and is typically not seen as a nuisance to the property. It has instead developed into a highly marketable commodity throughout the world. To clarify a few supplementary terms, “street art” is an umbrella term for artwork produced in a public area.[1] On the other hand, graffiti describes the application of spray paint to surfaces to produce images or different designs. Despite being used in many commercial endeavours, such as fashion brands and advertising campaigns, the law has not recognised it as art. So, the question remains whether it may be extended to copyright protection.

For a work to be qualified for copyright protection, it must be original, reduced to material form, and showcase creativity. Graffiti meets these criteria since it is artistic and fixed in a physical medium of expression. Technically, copyright exists as soon as it is created, so there shouldn’t be any formal requirement for the aforementioned conditions to be met. Other exclusive rights are solely available to the author of the work. For instance, they can publish or authorise the publication of their work, reproduce or authorise the replication of their work, and include or authorise the inclusion of their work in a cinematographic film or T.V. broadcast.

In the Indian scenario, any street art will fall under section 2(y) of the Copyright Act, 1957 (“Act”). Furthermore, as per section 2(c) of the Act, these street arts will also fall under the purview of artistic work. As stated above, copyright protection to subsist in work primarily needs to be original. There is no definition of “original” in the Act, but in the trade, it is assumed that an idea cannot be copyrighted until it has been expressed and is unique in its truest sense. The courts have tried to ascertain originality through various judgements, the most important being University of London Press Ltd. v. Tutorial Press Ltd.[2] In this case, the Court relied on the ‘Sweat of the Brow’ doctrine and observed that the work need not be original in a revolutionary way. However, it should not be of a trivial nature either. Certain efforts must be made to ascertain whether it is original. Further, the “Modicum of Creativity” test stipulates that the work must involve minimal originality to be authentic and copyrightable.

It has often been observed that street art is often plagiarised without permission, taking advantage of the loophole, i.e., the lack of clarity in the law that extends to the protection of such work. It is imperative to understand that whatever the medium, the artist employs skill and labour. The art depicts artistic value and creativity, with the medium typically being a fixed, tangible building surface. Thus, street art should fall under the protection of copyright law.

 

Street Art- Neither Illegal nor Immoral

 

Copyright has two conditions, as indicated above: the work must be unique and created on a specific tangible medium. However, there is a significant flaw because the rules do not address the type of artistic production that may be immoral or in conflict with the law. This raises the question of what would happen if someone stole a pen and drew a captivating portrait on paper or stole a camera and took a stunning photo. The apparent query is whether A and B can both request copyright protection. But the fundamental question is: given that their work is the result of theft, should such stolen works be entitled to protection? In theory, the response should be affirmative. Yes, the portrait and the image should be covered by copyright protection.

Although, in reality, graffiti art is inherently in conflict with the law, through a particular style or identifying tags, the creator of that artwork is easily identifiable. The Copyright Act of 1957 does not specify any requirements relating to the substance of a work other than originality for copyright to exist in the work. Graffiti is a stationary original artistic work of authorship that should be eligible for protection under “painting, graphic, drawing, and sculptural works”, according to a straightforward interpretation of sections 2(y) and 13 taken together. The Trade Marks Act of 1999 and the Patents Act of 1970, which forbid the protection of marks or inventions based on standards like obscenity and morality, contrast this. Therefore, it is abundantly evident what the legislative objective was, and the denial of copyright protection for illegal works was not intended.

There have been theories that graffiti should be excluded from copyright protection because they stand on the fact that the law should not impede social justice and that these artworks are immoral. Contrarily, the author holds that what is immoral does not necessarily mean it is illegal. Graffiti always depicts an idea or message that is legal and should not in any way be considered criminal. It is pertinent to notice the intent behind such an artwork and how it proves instrumental in benefiting society.

 

Protection from (Mis)Appropriation

 

The graffiti movement in India is in a very nascent stage and has not seen many judicial precedents. There have been instances where artwork has been done on the wall of a property, or original artwork has been appropriated, but these cases have not come up for adjudication by the courts. We shall understand appropriation art through the same case-moot points of copyright protection.

Let’s say that X noticed some graffiti on the side of a building and decided to take it as his own. The graffiti artist Y accuses X of violating his copyright. In Court, X asserts that Y violated property law and tort law by defacing the property, causing vandalism, and engaging in trespass while creating the unauthorised art. However, X will be a violator if the Court decides that the graffiti work was copyrighted. It is the doctrine of equitable defence. The party to a litigation who has acted reasonably and honestly can avail itself of defence in equity. And the person guilty of violating or infringing on someone’s right cannot be supported by it. In Tekla Corporations & Anr v. Survo Ghosh & Anr,[3] the Court considered whether an equitable defence is available to a copyright infringer. X, who violated Y’s right, may claim there was a violation. However, Y is not entitled to act against him because Y defaced the property wall and violated another law. The Delhi High Court decided in the negative. Therefore, the defence of unclean hands would fail if the graffiti is found copyrightable and the defendant is observed to be infringing the copyright.

The incentive-based theory is recognised as the primary defence of copyright by the Indian I.P. regime. The Indian Copyright Law’s immediate result is to ensure a just reward for the author’s labour. Still, its goal is to foster artistic creativity for the benefit of all people by providing this incentive. For instance, the United States Supreme Court stated that copyright’s monopoly privileges are “intended to encourage the creative work of authors as well as inventors by the provision of a special reward” in Sony Corp. of America v. Universal City Studios, Inc. According to the incentive-based argument, authors will stop producing new works if free riders are permitted to appropriate others’ works. Copyright protection is required, as it relates to the graffiti movement, to motivate artists to produce more graffiti without the free-riders.

The U.S. Court of Appeals for the Second Circuit recently affirmed this claim in the case of Castillo v. G&M Realty L.P., noting that street art has developed into much more than spray-painted tags and quickly disappearing bits adorned by rebellious urbanites, which is entitled to copyright protection.

Conclusion

Though the street artwork movement in India is at a snail’s pace, we must follow the covenants of international treaties to answer any dissecting viewpoints. The purpose of copyright should be the promotion of art, the free flow of creativity, and, consequently, the progress of society. These principles are primarily upheld by the Berne Convention and the TRIPS Agreement. It mandates that copyright protection be established upon the creation of the work with no need for formalities (such as registration), thus excluding any room for scrutiny of the work and/or evaluation of whether its content or creation process deserves copyright protection. Moreover, the Guide to the Berne Convention states that the work’s value, merit, or purpose is irrelevant to the enjoyment and exercise of copyright and emphasises the all-embracing copyright protection of all works, regardless of the manner or form of their expression.

It is crucial to understand that, even though it is not explicitly stated, the jurisprudence surrounding copyright is largely based on the theory of personality rights, which includes the author’s moral rights as stated in the Berne Convention as well as acknowledged by Indian copyright law. Since India is a signatory, if a case of similar stature arises, these treaties’ reasoning and analytical viewpoint will serve well in the Indian copyright context.

References: 

[1] Graffiti: At The Edge Of Copyright By Jonathan Bailey March 15, 2018 https://www.plagiarismtoday.com/2018/03/15/graffiti-at-the-edge-of-copyright/

[2] [1916] 2 Ch. 601

[3] CS(OS) 2414/2011

Image Credits: Photo by Samuel Regan-Asante on Unsplash

Though the street artwork movement in India is at a snail’s pace, we must follow the covenants of international treaties to answer any dissecting viewpoints. The purpose of copyright should be the promotion of art, the free flow of creativity, and, consequently, the progress of society. These principles are primarily upheld by the Berne Convention and the TRIPS Agreement. It mandates that copyright protection be established upon the creation of the work with no need for formalities (such as registration), thus excluding any room for scrutiny of the work and/or evaluation of whether its content or creation process deserves copyright protection.

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Fluid Trademarks- A Brand’s Alter Identity

Recently in September, 2022 Amul- the most prominent dairy brand in India released a doodle, featuring the famous “Amul girl” celebrating the return of eight Cheetahs in the Kuno National Park, Madhya Pradesh. Over the years, the Brand has managed to position Amul Butter as a household staple through its alternate identity- Amul Girl. The Mascot regularly makes clever puns on the day-to-day political and policy developments while communicating their product’s “utterly butterly deliciousness”.

Fluid Trademarks- A Brand’s Alter Identity

                                                                        Fig: The recent Amul Doodle[1]

Creativity involves breaking expected patterns to look at things differently. The notion of being creative and deploying “out of the box” marketing strategies to drive brand and consumer growth is not a new concept. The ever-increasing competition and the digital revolution have forced brands to go out of their way to stay afresh and ahead of the competition while maintaining their brand identity.

Fluid Trademarks are a relatively new, up-and-coming category of marks that businesses are increasingly using to differentiate their brands and products from the competition. The Morehouse defence[2] (along with Section 43(a) of the Lanham Act)[3]  defines fluid trademarks as marks that change over time (with respect to the original or registered mark) to increase customer engagement. Albeit not explicitly defined, the defence serves as an equitable doctrine that applies when an applicant owns a prior registration “for essentially the same (or substantially similar) mark and goods or services, and for which registration has not been challenged.”

 

What are Fluid Marks?

 

Fluid Trademarks essentially serve as an expansion of the base marks, which are registered and known to the public. What makes these marks “fluid” is the interplay between different iterations of the base mark, which is characterised by the use of creative yet diverse graphical and visual components while maintaining the core features of the base mark.

Many brands frequently deploy such marks to commemorate certain special occasions or landmark happenings, enabling them to keep in touch with the ongoing trends and strengthen brand awareness by promoting interaction with the consumers.

For instance, Google’s ‘Doodle’ could be termed the quintessential fluid trademark, where different variants of the Google logo have been used over the years to mark or memorialise national/international events and festivities. Absolut Vodka is another brand that has been commercialising various iterations of its mark by launching special edition bottles to commemorate events. Some other examples of Fluid Marks being deployed by renowned brands in their marketing strategy include Nike’s ‘Just Don’t Do It’ Swoosh, BMW’s spaced logo citing ‘thanks for keeping distance’ during Covid-19, and Starbucks’ ‘Masked Mermaid’.[4]

While it is appreciable that brands are deploying newer strategies to connect with their consumers, the use of Fluid Trademarks presents some pertinent roadblocks when it comes to IP protection that these brands need to take note of.

 

Protection of Fluid Marks

 

Although there are no explicit provisions or synonymous precedents citing protection for fluid trademarks in India, registering each iteration of the base mark, which would just be deployed occasionally by these brands, would not make much business sense since it would not be cost-effective in the long run.

Section 15 of the Trademarks Act,[5] 1999 accords protection for a series of trademarks, but it is pertinent to highlight here that the section is effective only when all the variants of the base mark could be anticipated in advance,[6] which is not the case with Fluid Trademarks because of their dynamic nature.

Existing commercial identity and recognition of the base mark do accord common law protection to Fluid Marks. Still, it is pertinent for brand proprietors to consider the following essentials while endeavouring for the protection of Fluid Trademarks:

  • Protection for Unregistered Marks: Regardless of whether the brands have moved towards protecting their ‘fluid’ marks or not, the common law still subjects these marks to some sort of protection. In Proctor and Gamble v. Joy Creators,the Delhi High Court held that explicit resemblance need not be a ground to constitute an infringement of the trademark. Substantial resemblance to the primary features of the mark in question might be enough criterion to accord protection to the primary mark.
  • The Degree of Variation: The degree of variation of the base mark should be such that the mark retains its source-identifying features while simultaneously being different enough to command distinguished protection. The public should be able to identify the brand owner based on such iterations of their marks.
  • Likelihood of Confusion: Multiplicity of the base mark to an extent, such that it loses its source-identifying features, might expose the base mark to losing its distinctiveness, thereby putting the base mark at risk of not being synonymous with the proprietor anymore. Hence, the source-identifying features of the base mark should remain intact in the fluid mark to enable the public and trade to associate the fluid mark and the base mark with the proprietor.
  • Copyright Protection: Newer and fundamentally distinct iterations of the base mark may be afforded special protection under the Copyright law since the brands would be subjected to certain rights for their marks even if they are not registered. However, in establishing whether the proprietors would be entitled to a copyright on the mark, the burden of proof shall lie entirely on the proprietors themselves, and hence it would be advisable to maintain a record of the entire creative process, artwork and other resources, that went into the creation of the mark, to establish ownership.
  • Continuing Commercial Use and Identity: The base mark should be subject to constant and uninterrupted commercial use, and there should be no demonstration of abandonment of the base mark. While the base mark should be distinctive and recognised across the market, the unregistered ‘fluid mark’ should also be inherently distinctive and have acquired a secondary meaning within the public.[7]

The importance of having the base mark registered for the fluid mark to have any chance of protection was highlighted in the recent case of McGurr v. North Face Apparel Corp.[8], where the US-based artist, Futura, was denied protection for his recognisable, signature stylised atom design because the base mark, i.e., the shape of an atom, was not registered. The District Court for the Central District of California noted that legally recognising fluid trademarks “would give new meaning to federal trademark law with far-reaching consequences.” The court rather recognised copyright law as a more robust source of protection for entities facing similar situations.

 

Conclusion

 

Fluid Trademarks might be the future of brand building. They have indeed emerged as an excellent tool for businesses across the globe to engage and interact with their customers while simultaneously allowing them to keep in touch with ongoing trends. But as long as the legislature or the judiciary steps up and develops a robust set of guidelines for their protection, it would be feasible to work with an experienced IP attorney who could assist applicants to come up with a smarter plan of action for the protection of their dynamic and ‘fluid’ marks.

References:

[1] https://indianexpress.com/article/trending/trending-in-india/amuls-latest-topical-celebrates-arrival-of-big-cats-in-india-8158728/

[2]  Morehouse Manufacturing Corp. v. J. Strickland and Co., 407 F.2d 881, 160 USPQ 715, 717 (CCPA 1969) (United States).

[3] The Lanham Act, 1946, § 43(a), 15 U.S.C. §§ 1051-1141 (2006).

[4] These famous logos have been remade for the Coronavirus Age, Media Marketing, Accessible at: https://www.media-marketing.com/en/news/famous-logos-remade-coronavirus-age/

[5] The Trade Marks Act, No. 47 of 1999. India Code, § 15.

[6] Draft Manual of Trademarks, 2015. Accessible at: https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-draft-manual.pdf

[7] Louis Vuitton Malletier v. Dooney & Burke, Inc, 454 F.3d 108 (2d Cir. 2006) (United States).

[8] McGurr v. N. Face Apparel Corp., 2021 U.S. Dist. LEXIS 196568 (United States).

Image Credit: Photo by Eva Bronzini

Fluid Trademarks essentially serve as an expansion of the base marks, which are registered and known to the public. What makes these marks “fluid” is the interplay between different iterations of the base mark, which is characterised by the use of creative yet diverse graphical and visual components while maintaining the core features of the base mark.

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Securing your Data with the Trade Marks Registry

Data privacy has been a cause of concern for individuals and corporates, however, when sharing personal information with government authorities, we tend to overlook this concern. Has one ever wondered how secure her confidential, proprietary, or personal information is while sharing it with a government agency like the Trade Marks Registry?

Indian Intellectual Property Offices come under the Ministry of Commerce and Industry; therefore, they are under the control of the Central Government. The Trade Marks Registry, established in 1940, primarily acts as a facilitator in matters relating to the registration of trademarks in India.

The Trade Marks Registry (TMR) is a public filing system. That means once a trademark application is filed with the TMR, a lot of information is placed on record, including the applicant’s and its representative’s personal data, such as mailing address, and the proof of use of the trademark. The digitization of the Registry in 2017 prompted the current practice of recording information on a public access system.

 

Fundamental Concerns

Mailing Address: Open and easy access to such personal information exposes an applicant to scams and other unwanted solicitations. For instance, scam emails (that appear to have been sent by the TMR seeking maintenance fees) from third parties attempt to deceive applicants into paying additional fees. Everyone recalls how anyone who filed an international application between 2005 and 2015 was duped by international scammers who obtained their information from the WIPO. By oversight, many people were duped into paying huge amounts of money.

If an attorney represents an applicant, the TMR does not send correspondence about the trademark application directly to the applicant. In such cases, the Registry directly communicates with their authorised attorneys. Hence, if an applicant receives any mail relating to their trademark, they should consult their attorneys, who may evaluate it to guarantee that a scam letter is not mistaken for real contact.

Documents to support the use of the mark: Applicants are frequently required to submit documentary evidence to support their applications and commercial use of their marks. Such evidence is often public, but an applicant might disclose information they would not intend to make public, such as bills, financial papers, reports, and other confidential information. There is no mechanism to have them masked or deleted from the TMR’s database if such information is uploaded or disclosed.

 

Initiatives by the Trade Mark Registry

In recent times, the TMR has adopted the practice of restricting public access to evidentiary documents submitted during opposition/rectification proceedings that the competing parties upload on the TMR. However, similar documents filed during any other stage, such as filing and pre-opposition prosecution, are still exposed to public access, even if they are documents or information relating to commercial confidence, trade secrets, and/or any other form of confidential, proprietary, or personal information.

However, the advantage of such an open and publicly available database is that it serves as a countrywide “notice,” which means that an alleged infringer of your trademark cannot claim ignorance of your brand. However, disclosure of such information exposes applicants to email scams and other unwanted solicitations and can also harm their competitive position in the market.

In September 2019, on account of various representations made by numerous stakeholders regarding the TMR’s display of confidential, proprietary, and personal information,[1] a public notice was issued by the Registry, inviting stakeholders’ comments on the aforesaid concerns.

The TMR proposed the classification of such documents into two categories:

  • Category I: Documents that are fully accessible and available for viewing or downloading by the public.
  • Category II: Documents for which details will be available in the document description column, but viewing and downloading will be restricted.

 

Roadblocks and Viable Course of Action

Notably, the Right to Information (RTI) Act, 2005, obligates public authorities to make information on their respective platforms available to the public in a convenient and easily accessible manner. There are some notable exceptions to this rule, i.e., information related to commercial confidence and trade secrets is exempted from being disclosed or made accessible to the public in so far as their disclosure leads to a competitive handicap for the disclosing party. Personal information is also exempted to the extent that its disclosure leads to an invasion of privacy or if it has no relation to public activity or interest.

Hence, it is crucial to understand that while such a classification, as has been suggested by the TMR above, might seem like a good initiative on the surface, the lack of any concrete boundaries assigned to the terms “confidential” or “personal” information leaves the Registry with unquestioned discretion to generalise datasets and to restrict access to documents on the TMR website. A simple example could be data collected by the TMR through pre-designated forms, including Form TM A, Form TM O, etc. Most of these forms generally mandate the submission of certain personal information, including the proprietor’s name, address, telephone number, etc. However, this cannot simply mean that the TMR denies the general public access to such trademark application forms, as this would defeat the primary goal of advertising such marks on the Registry, which is to seek any opposition or evidence against such marks. Thus, while the objective behind such a classification of documents might be well-intended, restriction of access to certain documents might lead to a conflict of interest for the TMR, and it might end up over-complicating the due-diligence processes, leading to increased costs and resources.

Such generalised classifications are, hence, only viable in theory. The TMR might end up entertaining hundreds of RTI applications if it decides to limit access to certain documents, which might be necessary for proper due diligence and prosecution. The free and open availability of documents enables the public to have smoother and easier access to essential records and credentials of the trademark proprietors, thereby allowing the masses to have a better understanding of the prosecution history of important trademarks of the target company.

In the long run, a rather sustainable alternative for the TMR might be introducing a multi-factor authentication system for the parties interested in carrying out due diligence or prosecution against a mark. A multi-factor authentication system for gaining access to the records and documents on the Registry might lengthen the entire process in the short run. Nonetheless, the move could be game changer in the long run because it would allow the Registry to restrict access to confidential and personal data of its users to parties with an original or vested interest in the registration of a mark.

Such an approach would not only enable the Registry to provide open and efficient access to necessary documents to the parties who have an original or vested interest in the registration of a mark, but it would simultaneously vest it with the flexibility to protect the sensitive, confidential, as well as personal data of its users from scammers or non-interested parties.

 

Privacy-by-Design

A Privacy-by-Design approach is the future of the modern-day web, and as long as the Registry does not implement more elaborate internal safeguards on its website and databases to protect the privacy and integrity of public data contained therein, it is always recommended that applicants work with an experienced trademark attorney who can assist applicants in reducing the exposure of their information to individuals or a class of individuals with ulterior motives and mitigating the harm associated with the usage of their data.

References:

[1] Public Notice dated 06/09/2019 re Categorization of Documents on the TMR. Accessible at: https://ipindia.gov.in/writereaddata/Portal/Images/pdf/Catergorization_of_Docs.pdf.

The Trade Marks Registry (TMR) is a public filing system. That means once a trademark application is filed with the TMR, a lot of information is placed on record, including the applicant’s and its representative’s personal data, such as mailing address and the proof of use of the trademark. 

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CCPA Introduces New Guidelines to Ban Surrogate Advertising  

In the latest development in the advertising space, the Central Consumer Protection Authority (CCPA) under the Department of Consumer Affairs has introduced ‘Guidelines for Prevention of Misleading Advertisements and Endorsements for Misleading Advertisements, 2022’. These guidelines aim to curb misleading advertisements and endorsers by putting a complete ban on surrogate advertising effective June 09, 2022. These new guidelines will apply to all advertisements irrespective of the form, format, or platform. 

The Consumer Protection Act, 2019, provides for ‘misleading advertisements’ under Section 2(28).

Section 2(28): “Misleading advertisement” in relation to any product or service means an advertisement that— (i) falsely describes such product or service; or (ii) gives a false guarantee to or is likely to mislead the consumers as to the nature, substance, quantity or quality of such product or service; or (iii) conveys an express or implied representation which, if made by the manufacturer or seller or service provider thereof, would constitute an unfair trade practice; or (iv) deliberately conceals essential information.

The new guidelines touch upon each sub-section of section 2(28) and provide further definitions to include conditions for non-misleading and valid advertisements, definitions for bait and free-claim advertisements, and the complete ban on surrogate/indirect advertisements.

 

Salient Features  

 

Bait Advertising  

An advertisement in which goods, products or services are offered for sale at a low price to attract consumers. The guidelines lay down that:

  • The ad should not entice consumers to buy the goods or services without a reasonable prospect of selling them at a price offered in the advertisement.
  • There should be an adequate supply of the advertised goods or services to meet the demand created as a result of the advertisement.
  • The advertisement should state that the stock is limited; if the ad is to assess the demand, the same should be stated, and it should not omit restrictions regarding the availability of goods or services.

 

Free Claim Advertisement 

The advertisement should make clear the extent of commitment that a consumer shall make to take advantage of a free offer and should not use the term “free trial” to describe an offer that promises to pay the money back to the consumer in case of non-satisfaction if it requires the consumer to make a non-refundable purchase. Free claims should not be made in the advertisement –

  • If the consumers have to pay anything other than the unavoidable cost of responding to the ad or packing, handling or administration of free goods or services or if the price has been increased (except where such increase results from factors unrelated to the cost of promotion) or when the quality or quantity of goods or services has been reduced;
  • If an element of the package is included in the price, it should not be advertised as free.

 

Advertisements Targeting Children

In addition to taking measures to protect the general public from being misled, the CCPA has also laid down measures to protect the sensitive and impressionable minds of the younger generations.

  • It provides that advertisements that target or address children shall not condone or encourage activities that are dangerous for children or take advantage of their inexperience, and/or encourages practices that are detrimental to children’s wellbeing, etc.;
  • Advertisements should not be such as to develop negative body image in children or give any impression that such goods, product or service is better than the natural or traditional food which children may be consuming.
  • Advertisement for junk foods, including chips, carbonated beverages and such other snacks and drinks, should not be advertised during a program meant for children or on a channel meant exclusively for children.
  • The Guidelines also prohibit advertisers from featuring children and personalities from sports, music or cinema for products requiring  a health warning or for products children cannot purchase

 

Due Diligence Endorsers

The guidelines clearly state that the endorsements should reflect the genuine, reasonably current opinion of the endorser regarding their representation. Such endorsement must be based on adequate information or experience with the goods or services and must not be deceptive. Foreign professionals are barred from making endorsements in all circumstances where Indian professionals are barred.

If a connection between the trader/manufacturer and the endorser exists, such connection should be disclosed if such information is likely to affect the value or credibility of the endorsement and the audience does not reasonably expect the link.

 

Disclaimers 

While laying down provisions for disclaimers in advertisements, the Guidelines state that a disclaimer may expand or clarify the main offer but cannot contradict or hide the material claim made in the advertisement or attempt to correct a misleading claim made in the ad. Further, it provides that a disclaimer should be in the same language and font as the claim made in the advertisement and that the placement of the disclaimer shall be at a prominent and visible place on the packaging (ideally be on the same panel). Also, if the claim is presented as a voiceover, the disclaimer shall be displayed in sync with the voiceover and at the same speed as the original claim made in the advertisement.

Apart from the features mentioned above, the guidelines also stipulate specific duties on the manufacturer, service provider, advertiser, or advertising agency to ensure compliance in advertisements, which primarily deals with the veracity of the information/claims made in the advertisements. These guidelines are to be read as part and parcel of the Consumer Protection Act, 2019, and the non-compliance with the provisions shall also invite penalization as provided in section 21 of the Act.

These guidelines will also apply to government advertisements issued by PSUs engaged in providing consumer services along with those issued by private agencies. Moreover, the advertising guidelines for self-regulation issued by the Advertising Standards Council of India (ASCI) will also apply simultaneously.

 

Conclusion 

In the last few years, the regulatory bodies have undertaken many reformations and measures to control how and what is advertised. As our country is moving towards digitization, the need of the hour is to closely monitor the content that is made available to the public, mainly on online social media platforms. The guidelines intend to protect the interests of consumers by introducing more transparency and coherence in the way advertisements are published so that consumers can make informed decisions.

 

 

You may read our blog post detailing surrogate advertising and its enforceability for a deeper understanding of the issues.  

Image Credits: Photo by Dennis Maliepaard on Unsplash

The guidelines also stipulate specific duties on the manufacturer, service provider, advertiser, or advertising agency to ensure compliance in advertisements, which primarily deals with the veracity of the information/claims made in the advertisements. These guidelines are to be read as part and parcel of the Consumer Protection Act, 2019, and the non-compliance with the provisions shall also invite penalization as provided in Section 21 of the Act.

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Demystifying the Inventorship Rights of an AI System in India

In this age of technological advancement, Artificial Intelligence (AI) has taken a giant leap from undertaking more straightforward tasks to originating marvellous inventions. Can an AI system be considered an inventor? This question has been beguiling jurisprudence across the globe for a considerable time. However, through the recent decision of Thaler v. Commissioner of Patents, the Australian Federal Court has forced jurisdictions across the world to re-think the inventive capacity and the role of AI in the contemporary ecosystem of innovation.

Through this article, we have tried to determine the implications of the Thaler decision and examine the position of the Indian legislation on the inventorship rights of an AI.

Factual Matrix

Dr. Stephen Thaler designed the Device for Autonomous Bootstrapping of Unified Sentience (DABUS). DABUS is an artificial intelligence system that pioneered the creation of an optimised beverage container and a flashing light for use in emergency circumstances. In the persistence of such a creation, Dr. Thaler filled patent applications worldwide, including in Australia, Canada, China, Europe, Germany, India, Israel, Japan, South Africa, the United Kingdom, and the United States.

“The Deputy Commissioner” rejected Dr. Thaler’s patent application in Australia, which named DABUS as the inventor. The matter was contested and finally, the Federal Court of Australia determined that the AI could be recognised as an inventor under the Australian Patent Act. According to the Court, the patent would be owned by Dr. Thaler, the developer, owner, and controller of DABUS. The Court determined that the legislative intent was to encourage innovation and that nothing in the Patent Act expressly or implicitly forbids AI from being named as an inventor.

Indian Stance: Inventorship Rights of an AI

In India, recently, the Controller General of Patents recorded objections to recognising an AI as an inventor in the matter of patent application numbered 202017019068, citing the provisions under Section 2 and Section 6 of the Patents Act 1970 (“Act”). The term “inventor” has not been defined under the Act. However, Section 6 states that, among other things, a patent application can be filed by any person claiming to be the true and first inventor of an invention.[1]

A bare reading of the provisions indicates that a natural person is distinguished from others. One can also observe that anyone other than a natural person will be unable to claim inventorship. Consequently, a natural person who is true and first to invent, and who contributes his originality, skill, or technical knowledge to the innovation meets the criteria to be acknowledged as an inventor in India.

In the case of V.B. Mohammed Ibrahim v. Alfred Schafranek, AIR 1960 Mysore 173, it was held that a financing partner cannot be an inventor, nor can a corporation be the sole applicant that claims to be an inventor. The Court, through this decision, emphasised that only a natural person (who is neither a financing partner nor a corporation) who genuinely contributes their skill or technical knowledge towards the invention shall qualify to claim inventorship under the Act.

In the light of this judgement, it can be perceived that an AI can also contribute its skill or technical knowledge to an invention and become an inventor. However, a reference to Som Prakash Rekhi vs Union of India & Anr, AIR 1981 SC 212, clarifies the qualification of a legal ‘person’ under Indian law. The Supreme Court observed that ‘personality’ is the sole attribution of a legal person. Such a ‘personality’ is an entity that has the right to sue or can be sued by another entity. An AI is not capable of using such rights, nor can it perform the required duties of any juristic personality independently. For instance, it cannot enter into an agreement or transfer or acquire patent/patent application rights. It would also be impossible for an AI to oppose or revoke a patent application. Hence, an AI falls short of the standards for being deemed an inventor in India.

Furthermore, the legislative intent behind the Indian Patent Act as found in the Ayyangar Committee report of 1959[2] suggests that inventors are mentioned in a patent application as a matter of right. Whether or not the actual deviser has a proprietary claim on the innovation, he has a moral right to be acknowledged as the inventor. This confers reputation and boosts the economic worth of the inventor. The inventor may give up his ownership interest in a particular patent due to a contract/agreement in law, but he retains his moral right.

An examination of legislative purpose and current public policy reveals a desire to protect the rights of the inventor/natural person who creates IP and can use his moral rights. On the other hand, AI cannot be granted moral rights nor appear to enjoy the benefits intended by legislation or public policy. Given this, designating AI as an inventor/co-inventor under current Indian rules seems impossible until explicit revisions are made.

Role of AI and Economic Growth in India

The Parliamentary Standing Committee “(“Committee“”) constituted under the Dept. of Commerce, analysed the current landscape of the IPR regime in India and observed its contribution to promoting innovation and entrepreneurship in the country in its report titled “Report 161: Review of the Intellectual Property Rights Regime in India” presented in the Rajya Sabha on  July 23rd, 2021. In particular, it examined the challenges that exist in the current legislative structure including the inventorship rights of an AI.

The Committee acknowledged the relevance and utility of AI-based cutting edge technology and machine learning, particularly in current times, significantly affected by the pandemic, in which digital technology proved to be instrumental in responding to the global crisis. Further, the Committee placed reliance on a report released by Accenture titled “How AI Boosts Industry Profits and Innovation” which estimated AI to inject US $ 957 Billion into the Indian Economy by 2035, if used optimally, to understand further the impact and role of AI and technology in the contemporary landscape and its relationship with Intellectual Property. 

Therefore, the Committee recommended a review of the relevant provisions of the Indian Patents Act, 1970 [Section 3(k)] and the Copyrights Act, 1957 on a priority basis to afford inventorship rights to AI in India. The Report also stated that “The Committee recommends the Department that the approach in linking the mathematical methods or algorithms to a tangible technical device or a practical application should be adopted in India for facilitating their patents as being done in the EU and U.S. Hence, the conversion of mathematical methods and algorithms to a process in this way would make it easier to protect them as patents“. Thereby including algorithms and mathematical processes under the ambit of patent law.

The Committee concluded that the legislative framework amendments would protect the works of an AI (either autonomously or with assistance/inputs from a human), incentivize pioneering inventions and R&D in the country, and maintain an enabling ecosystem for the protection of human intelligence innovations. The Committee maintained that the embargo placed on the inventorship rights of an AI would dissuade significant investments in the sector since such AI induced innovations would not be protected in the country.

Conclusion:  A Way Forward for Inventorship Rights of an AI System 

The decision would have a favourable impact on the holder of an AI. However, commentators have expressed concerns regarding the difficulties that may arise due to the extending of patent protection to AI-generated concepts, such as:

  • Impact on the Copyright law: A result of such a decision may lead the courts to re-examine the subject of AI authorship and regard AI as a creator of AI-generated works, which will open a Pandora’s box of judicial conflicts.[3]
  • It could potentially raise the bar for innovation or fundamentally alter the definition of a ‘person skilled in the art,’ making it more difficult for human innovators to obtain patent protection.
  • Accepting inventorship to include AI systems would elevate AI to the status of a legal person, allowing it to hold and exercise property rights.
  • It raises concerns about who has the right to use or own the AI-created product. As the AI system is not a legal body, it cannot enter into agreements allowing it to transfer its inventorship rights.

The ability of an AI to be an inventor under patent law will be determined by the specific language in each jurisdiction’s patent laws. To explicitly incorporate and recognise AI-generated ideas, legislative changes and amendments may be required in nations where plain statutory wording needs an inventor to be a natural person. In places where the statutory language is less explicit, such as Australia, the courts may have additional freedom to consider purposeful statutory interpretation and policy considerations.[4] We anticipate that all IP offices adopt a unified approach to successfully address the emerging difficulties posed by inventions by AI.

References: 

[1] Section 6, the Patents Act, 1970.

[2] Shri Justice N. Rajagopala Ayyangar, Report on the revision of the patents law, 1989.

[3] Rita Matulionyte, Australian court says that AI can be an inventor: what does it mean for authors? Kluwer Copyright Blog (September 2021).

[4] Lam Rui Rong, Can Artificial Intelligence Be an Inventor Under Patent Law? Australian Federal Court Says ‘Yes’ but U.S. District Judge Says ‘No’, SKRINE (September 2021).

Image Credits: Photo by Gerd Altmann from Pixabay 

The ability of an AI to be an inventor under patent law will be determined by the specific language in each jurisdiction’s patent laws. To explicitly incorporate and recognise AI-generated ideas, legislative changes and amendments may be required in nations where plain statutory wording needs an inventor to be a natural person. In places where the statutory language is less explicit, such as Australia, the courts may have additional freedom to consider purposeful statutory interpretation and policy considerations.

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