31 October, 2016
National Intellectual Property Rights Policy
The National Intellectual Property Rights Policy (‘IPR Policy’), which was announced by GoI, Department of Industrial Policy and Promotion (‘DIPP’) on May 12, 2016, recognises that the Indian regime on intellectual property rights (‘IPRs’) is compliant with the standards specified by the World Trade Organisation under the Agreement on Trade-Related Aspects of IPRs, and has identified certain objectives to promote an ecosystem to catalyze the full potential of IPRs. These objectives include:
creating public awareness about the economic, social and cultural benefits of IPRs by launching campaigns linked to initiatives like “Make in India” and “Smart Cities”, specifically targeting industry and R&D entities, creating suitable course materials for educational institutions and sensitizing the media to IPRs;
evaluating potential in specific sectors through comprehensive base line surveys, formulating and implementing targeted programs for creating and utilizing IPRs, and devising mechanisms that benefit medium and small scale enterprises, start-ups and grassroot innovators;
carrying out appropriate legislative changes to update IPR laws in consonance with national needs and priorities and enhancing transparency and efficiency in administration and enforcement of laws, by undertaking adequate stakeholder consultation;
modernising and strengthening IPR administration by, interalia, increasing manpower and focus on training officers to ensure that Indian IPR offices operate ef- ficiently, while providing user friendly services;
capitalizing the existing intellectual property assets in the country by, inter alia, setting up of a platform that functions as a common database of IPRs, which would allow interaction among potential users, buyers and funding institutions, thereby
improving IP networking;
sensitizing creators of IPRs of their rights to enforcement and protection measures, strengthening IPR-targeted forces in State police forces and conducting IPR workshops at judicial academies for facilitating effective adjudication of IPR disputes; and
strengthening and expanding human resources, institutions and capacities for teaching, training, research and skill building in IPRs.
While the responsibility for actual implementation of the objectives will remain with the identified Ministries / Departments under the IPR Policy, DIPP will be the nodal point to coor- dinate, guide and oversee implementation and future development of IPRs in India.
Statutory License for Internet Broadcasting under the Copyright Act, 1957
DIPP issued an office memorandum dated September 5, 2016, clarifying that internet broadcasting companies are also covered, along with radio and television broadcasting organizations, within the statutory licensing regime prescribed under Section 31D of the Copyright Act, 1957 (‘CR Act’). This view was taken based on a broad interpretation of the words “any broadcasting organization desirous of communicating to the public” under Section 31D of the CR Act read with the definition of the term “broadcast” under Section 2(dd) of the CR Act and the definition of the term “communication to the public” under Section 2(ff) of the CR Act.
Diverging John Doe Orders in Relation to Blocking URLs
The Bombay High Court (‘Bombay HC’) recently passed a number of orders dated June 16, 2016,4 July 1, 20165 and July 22, 20166 that have narrowed down the scope of John Doe orders. The Bombay HC refused to pass orders that would result in wholesale blocking of hundreds of websites that allegedly offered and hosted illicit links to the movies ‘Udta Punjab’, ‘Great Grand Masti’ and ‘Dishoom’. The Bombay HC held that an order to block entire website without demonstrating that the entire website contains infringing material cannot be granted and that specific uniform resource locators (‘URL’) containing infringing material must be identified and established.
On the other hand, in the case of Department of Electronics and Information Technol- ogy v. Star India Private Limited,7 a division bench of the Delhi High Court (‘Delhi HC’), by its judgement dated July 29, 2016, upheld a sweeping John Doe order for blocking 73 websites on the grounds that if only a single URL is blocked, the same website can very easily provide access to the blocked content through another URL.
Diverging Rulings by the Bombay HC and Delhi HC on the Issue of Jurisdiction in Trademark and Copyright Infringement Cases
Pursuant to the decision of the Supreme Court of India (‘SC’) in Indian Performing Rights Society Ltd. v. Sanjay Dalia and Anr. 8 (‘Sanjay Dalia Case’), the Bombay HC and the Delhi HC have had the opportunity to interpret this ruling and have adopted diverging views.
For instance, in the case of Manugraph India Limited v. Simarq Technologies and Ors9 the plaintiffs (having registered offices in Mumbai) brought a suit for trademark infringement before the Bombay HC, although the cause of action arose in Delhi for one set of plaintiffs, and in Kolhapur for the other set. The Bombay HC, however, ruled that it continues to have jurisdic- tion despite no cause of action having arisen in Mumbai on the reasoning that Sections 134 and 62 of the Trade Marks Act, 1999 and the CR Act, respectively, allow plaintiffs to institute suits at the place where they carry on their business, irrespective of whether or not a cause of action arose in that place. Further, the Bombay HC held that the only mischief the SC was trying to remedy in Sanjay Dalia Case was the mischief of plaintiffs filing suits at far-flung subordinate offices where no cause of action had arisen.
However, a Division Bench of the Delhi HC has taken a contrary view in the case of Ultra Homes v. Purushottam Kumar Chaubey & Ors.10 In this case as well, the plaintiff instituted a suit before the Delhi HC on the ground that it carried on business in Delhi, i.e. its principal of- fice was located in Delhi. However, the cause of action arose in Deogarh, Jharkhand (where the plaintiff ’s subordinate office is located). Applying the principle laid down in the Sanjay Dalia Case, the Delhi HC held that the plaintiff would be deemed to carry on business at the place of his subordinate office and not at the place of the principal office and therefore, in such a situation, the plaintiff could sue only at the subordinate office and not at the place of its principal / registered office.
Photocopying for Course Packs Falls within “Fair Dealing” and Does Not Amount to Copyright Infringement
In the case of The Chancellor, Masters & Scholars of the University of Oxford & Ors v. Rameshwari Photocopy Services and Or.11, a suit was filed by five publishers against Delhi Uni- versity and Rameshwari (a photocopying shop attached to Delhi University) alleging that by photocopying and distributing substantial extracts of academic text books for course packs, for sale, the defendants were infringing the publishers’ copyright in these books. However, the de- fendants’ main argument that photocopying of academic books for course packs fell under Sec- tion 52 of the CR Act, i.e. the fair dealing provisions, was upheld by the Delhi HC. On the grounds that the acts of the defendants fell under Section 52(1)(i) of the CR Act i.e. reproduction of a work by a teacher / pupil in the course of instruction, the Delhi HC held that: (i) this provision applies to an institution and its students and is not limited to an individual teacher and his / her student; (ii) the words “course of instruction” is not limited to a lecture in a class room and extends to various acts of imparting instruction throughout the academic session; (iii) the course packs were provided to students at nominal rates and only contained extracts of the books and, hence, would not be considered as competing with the books of the publishers; and (iv) such an interpretation would not violate the Berne Convention for the Protection of Literary and Artistic Works or the Agreement on Trade-Related Aspects of Intellectual Property Rights as these conventions have left this issue to be decided by their respective member countries. The publishers have filed an appealed on October 5, 2016 challenging this decision and the matter is pending before a Division Bench of the Delhi High Court.
4 Balaji Motion Picture Limited & Anr. v. Bharat Sanchar Nigam Ltd. & 49 Ors., Notice of Motion (L) No. 1783 of 2016 in Suit (L) No. 633 of 2016.
5 Balaji Motion Pictures Ltd. & Anr. v. Bharat Sanchar Nigam Ltd. & Ors., Notice of Motion (L) No. 1940 of 2016 in Suit (L) No. 694 of 2016.
6 Eros International Media Ltd. and Anr. v. Bharat Sanchar Nigam Limited & Or., Notice of Motion (L) No. 2147 of 2016 in Suit (L) No. 751 of 2016.
7 Department of Electronics and Information Technology v. Star India Private Limited, R.P. 131/2016 in FAO (OS) 57/2015.
8 Indian Performing Rights Society Ltd v. Sanjay Dalia and Anr., Civil Appeal Nos. 10643-44/2010 (arising out of Civil Suit FAO (OS) No. 359/2007)and Civil Appeal arising out of SLP [C] No. 8253/2013.
9 Manugraph India Limited v. Simarq Technologies and Ors, Notice of Motion No. 494 of 2014 in Suit No. 516 of 2013, Bombay High Court (judgement dated June 15, 2016).
10 Ultra Homes v. Purushottam Kumar Chaubey & Ors., FAO (OS) 494/2015, Delhi High Court (judgement dated January 20, 2016).
11 The Chancellor, Masters & Scholars of the University of Oxford & Ors v. Rameshwari Photocopy Services and Or., CS(OS) 2439/2012, Delhi High Court (judgement dated September 16, 2016).
For further information, please contact:
Zia Mody, Partner, AZB & Partners