IP Litigation in India

ITECH Law
International India Conference
January 31 st 2014

Saikrishna Rajagopal

A Few Quick Thoughts ..

Formal / conventional IP now jostles with
non-conventional / spin off IP;
Indian Courts more willing to protect nonconventional IP forms;
Trend of sector specific legislation exerting
limitations on IP: Examples:
TRAI must provide provisions/ interconnect
regulations;
Sports Mandatory Sharing Law- Prasar BharatiWrit
Growing trend of statutory and other
limitations on IP will likely bring the focus on
valuation of IP:
Statutory licenses, Copyright Act, 1957

 The Hot News Doctrine, Unfair Competition

and Unjust Enrichment

Suits filed by Star India [Broadcaster] against

Mobile VAS Cos., & Telecom Operators
Claim
against
commercial
exploitation
of
contemporaneous
ball-by-ball
commentary,
scores, score updates, match updates, match
alerts, etc. in relation to cricket matches.
Action based on unfair competition, unjust
enrichment and commercial misappropriation
A civil right having a pecuniary value

Single Judge upheld Plaintiffs claim inter alia on

the basis of the hot news doctrine.

The Hot News Doctrine & Pre-emption

The INS Doctrine - Acts of taking material acquired by

the skill, organization and money of the complainant and
appropriating it and selling it as its own, is trying to reap
where it has not sown and would thus constitute unfair
competition.

Primary Questions before the Court:

Whether common law claim barred under Section 16 of the
Copyright Act, 1957 ?
Whether it was appropriate for courts to create new property
rights?
Even if such a right existed, did it get exhausted upon broadcast
of the scores on television/radio?

Single Judge ruled that the significance of the scores lay

in their contemporaneity, and allowed third parties to
use the scores ONLY after a fifteen minute time lag.

The Hot News Doctrine - contd.

Division Bench setting aside Single Judge
order, held:
Rights asserted not recognised under
statutory law;
Claims pre-empted by virtue of the bar
contained in Sec.16 of the Indian
Copyright Act, 1957; Scores flow out of
the Broadcast which is protected under
the Copyright Act, 1957
Where Parliament has stepped in to
create a statutory regime, creating
supplementary rights in common law
would
result
in
obstructing
the

The Hot News Doctrine - contd.

that Courts must be cautious in
creating doctrines and rights
that
have
such
clear
implications for constitutional
rights.
On Appeal, the Supreme Court of
India by an interim order directed
a return to the status quo
existing on the day of the single
judges order.

Educational Exceptions to Copyright

Oxford University Press, Cambridge University Press,
Francis & Taylor v. Delhi University & Ors.
Injunction and damages sought for infringement
copyright in Plaintiffs academic publications.

of

The suit seeks to draw the line between:

a)The exception in Section 52(i) of the Copyright Act, 1957
for face-to-face teaching, in which teachers might be
able to avail themselves of appropriate narrowly tailored
exceptions to provide materials to students, and
b)the commercial production of course packs which Delhi
University has outsourced to a commercial, for-profit,
copy shop.

Exceptions- Contd.

Plaintiffs urge a major difference between the two activities,

with the former falling within the scope of what may be
permissible under global norms, and the latter falling squarely
outside those strictures
Case raises several interesting questions:
Is there a limit to photocopying for educational purposes?
Public interest as an exception to infringement
Future of educational publishing
Is the Indian Reprographic Rights Organisation license the right
balance?

Defendants urge that course packs comes

exceptions provisions of the Copyright Act, 1957

An interim injunction granted restraining the photocopying

business from doing such acts with an undertaking by Delhi
University to not engage in such activities.
Matter is being adjudicated presently.

within

the

 SLAPP SUITS
Tata Sons Ltd. v. Greenpeace A
Funny Game

SLAPP Suits- Contd.

Facts:
Greenpeace accused by Tata Sons Ltd., of
trademark infringement and defamation
Use of TATA logo in video game a la PACMAN
Game aimed at protesting against port
construction at Dhamra, Orissa and [what
Greenpeace] alleges is harming Oliver
Ridely turtles;
Tata claimed that distinctive identity of its
trademark was being tarnished;
Greenpeace claimed that the suit was a
SLAPP Suit [Strategic Lawsuit Against
Public Participation]

Questions before court

Impact of Section 29(4) of Trade Marks Act, 1999 use of a trademark for criticism, fair comment with
due cause allowed?
Denominative use to focus public attention on proprietor
Granting an injunction would freeze public debate

Use of Trademark for Parody/ hyperbolic statements

allowed?
Fair Comment on a matter of public interest without
malice
Exaggeration possible

Differing standards for online libel v. libel in other

media?
Applied the Rule in Bonard Vs Perryman
No injunction in the interest of freedom of speech

 Standard Essential
Patents
Ericsson v. Micromax
[Technology] Standard Essential Patents [SEP] asserted
in an infringement suit. Issues:
FRAND licensing in the context of the ability of an
SEP owner being able to secure coercive orders
which would potentially impact and contradict
FRAND commitments.
Royalty stacking / valuation issues - handsets v.
components
Potential exclusionary conduct (interim injunctions/
custom seizures) in context of SEPs
Competition law issues/ impact in the context of
SEPs
Conflict of Jurisdiction- WP before Delhi High Court

Thank you!
Saikrishna Rajagopal
sai@saikrishnaassociates.com