Category Archives: Intellectual Property

Rapist Claims Copyright

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True, the threshold for ‘copyrightability’ is low for literary (and other) works. A literary work must be original. It should not infringe another work’s copyright. It should be written or otherwise fixed in a tangible form. Writing it should generally involve some form of skill and labour being expended. And it need not contain an iota of merit.

That being said, there are some things which cannot be copyrighted. You cannot copyright a description of what you are. You cannot copyright a phrase used by the world plus dog. You are unlikely to be able to copyright the ordinary grocery list. You probably would not be able to copyright the text in a standard almanac or calendar. You may not be able to copyright the title of a book. And you definitely cannot copyright your name.

That, however, is exactly what a former legislator from South Dakota who was convicted in 2007 on four counts of second-degree rape has attempted to do.

Claiming that he seeks to prevent the use of his name without his consent, Ted Alvin Klaudt sent out a letter and an accompanying document labeled ‘Common Law Copyright Notice’ reserving a common-law copyright of a trade name or trademark for his name. It said no one could use his name without his consent and that anyone who did so would owe him $ 5,00,000, according to an article in the New York Times.

It would appear that Klaudt is trying to use his own rather confused version of copyright and trade mark law to ensure that he doesn’t get (? any more) bad press. However, apart from the fact that it has brought his name into the limelight in additional contexts, the fact is that the law would simply not support his claim.

For one thing, he would not be able to copyright his name. And as far as trade marks are concerned, they denote the origin of goods or services, and a name would not be a valid trade mark unless it was used in conjunction with one of the two. (Perhaps we’ll see Klaudt stationary in the market soon?)

However, even if a valid trade mark existed, Klaudt would still not be able to prevent others from using the his name for such purposes as reporting news under any law. While this is certainly an interesting way to try to prevent persons writing his name (and writing about him), it isn’t an approach which intellectual property law would support.

Interim Injunctions and Patent Litigation

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Temporary or interim injunctions are orders to stop or prevent harm to disputed property in a suit. They remain in force till the suit is disposed of or until further orders are made by the court. The Patents Act itself does not deal with interim injunctions so their grant is governed by the Code of Civil Procedure. Under Order 39 of this Code, they may be granted under a number of circumstances. For example, they may be granted if the property is in danger of being wasted, damaged or alienated by any party to the suit. They may also be granted if a debtor threatens or intends to remove or dispose of his property to defraud his creditors, or if the defendant in a suit threatens to dispossess the plaintiff or otherwise cause injury to the plaintiff in relation to the disputed  property. The harm to the property in question may be proved by affidavit or otherwise.

Contracts involving intellectual property often have clauses buried somewhere in their depths to the effect that:

ABCD acknowledges that in the event of a breach or, in the opinion of the Company, a threatened or possible or potential breach of the terms of Clause 6 (relating to the protection of Intellectual Property), the Company shall be entitled to injunctive relief (including interim injunctions) in addition to any other remedy including a claim for monetary damages. ABCD acknowledges and agrees that the Intellectual Property is valuable, unique, confidential and proprietary, and that disclosure of any Confidential Information in breach of this Agreement will result in irreparable injury to the Company.

In addition to this, there are also often clauses which specifically speak of companies’ rights to obtain interim injunctions “to maintain the status quo” while arbitration is in progress. And while that’s all very well when the alleged infringer has entered into a contractual relationship with the owner of the intellectual property, the fact of the matter is that alleged infringers rarely enter into such arrangements with the owners of intellectual property.

Unfortunately — or fortunately, depending on which side of the track you’re standing — the general understanding, in India, has been that Courts usually refuse to grant interim injunctions in patent litigation. Based on a not insignificant list of case law, this belief is hardly unjustified. [1] The basis for the belief, however, seems to be changing. The conditions required to be satisfied for the grant of an interim injunction remain unchanged. Firstly, there should be a prima facie case in favour of the patentee-plaintiff. In this context, that effectively means that the plaintiff must demonstrate that his patent is valid and that it has (at first glance) been infringed. Secondly, the patentee must show that the balance of convenience is in his favour, and finally, the patentee must demonstrate that he will suffer an irreparable loss should an interim injunction be refused.

In the case of Bajaj Auto Ltd. v. TVS Motor Company Ltd. [2008 (36) PTC 417 (Mad)], [2] the High Court of Madras granted an interim injunction to the plantiff, Bajaj Auto, in respect of a patent titled “An improved Internal combustion engine working on a four stroke principle”. And in another case — Mariappan v. A. R. Safiullah [2008 (38) PTC 341 (Mad.)] — the same High Court granted another inother interim injuction. In these cases, in considering whether the basic conditions for the grant of an interim injunction were satisfied, various factors were looked at. For example, the Court tackled the issue of whether the registration of a patent under the Patents Act would entitle it to be considered to be valid prima facie. Interpreting Section 13(4) of the Patents Act [3] — bearing in mind that Bajaj has argued for a ‘harmonious interpretation of Sections 13(4) and 48 (which lists the rights of patentees) of the Patents Act — the Court decided that the registration of a patent does not in itself create any presumption of validity although the Court did reaffirm the controversial and inexplicable ‘six-year rule’ — a rule according to which a patent should be presumed to be valid if it is more than six years old and has been used.

It may, however, be premature so say that there is now a trend allowing for the grant of interim injunctions in light of the case of F. Hoffmann la Roche Ltd., and Anr. v. Cipla Limited [2008 (37) PTC 71 (Del.)] in the Delhi High Court. Following the approach in the American Cyanamide case, the Roche v. Cipla case also, thankfully, diluted the six-year rule and treated pricing as one of the factors to be considered while deciding whether or not an interim injunction should be granted. In addition to this, the Delhi High Court also refused to grant an interim injunction to Braun to restrain Poly Medicure in the matter of B. Braun Melsungen AG & Ors. v. Rishi Baid & Ors. IA 1234/2008 in CS (OS) 186/2008. The court did, however, as had been done in the Bilcare matter, direct the alleged infringers to keep accounts of the manufacture and sale of the of the of the product whose patent they had been accused of infringing.

(This article is by Nandita Saikia and was first published at LawMatters.in.)

Footnotes:

1. Corruplast Ltd. v. George Harrison (Agencies) Ltd. [1978 RPC 761]; Standipack Pvt. Ltd. v. M/s Oswal Trading Co. Ltd. (2000, Delhi High Court); J. Mitra & Co. Pvt. Ltd. V. Kesar Medicaments: IA No. 11883/2006 in CS (OS) 2020/2006; Garware v. Mr. Kanoi (2006, Gujarat High Court); Bilcare Ltd v. Amartara Pvt. Ltd. [(2007) (34) PTC 419 (Del)]; Bilcare v. Associated Capsule (2007, Delhi High Court)

2. Reported as Patent Number 195904 online; appears to be:
Gazette: 25/12/04 
 Filing Date: 10/30/2003 
 Reference No.:  PCT/IN03/00348
Applicant: Bajaj Auto Ltd. T
itle:  Improved Internal Combustion Engine Working on Four Stroke Principle
 Class: Mech, G
 Convention: N
 S. No.: 80209

3. Section 13(4): The examination and investigations required under section 12 (examination of patent applications) and this section shall not be deemed in any way to warrant the validity of any patent, and no liability shall be incurred by the Central Government or any officer thereof by reason of, or in connection with, any such examination or investigation or any report or other proceedings consequent thereon.

Provisional Specifications in Patent Applications

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Every patent application under the Indian Patents Act, 1970 must be accompanied by the specifications of the invention. These specifications may either be provisional or complete. If the specifications are provisional, the complete specifications must be filed subsequently within a period of 12 months.

A provisional specification is not expected to fully disclose an invention with all the relevant details as these may not even be known to the applicant at the time it is filed. In fact, a provisional specification of an idea (which is in the process of being converted into an invention) may even be filed although, of course, even in such a case, a complete specification must be filed within 12 months. What a provisional specification is required to do is disclose the nature of the invention.

The provisional specification must be filed in the prescribed Form 2 which forms the first page of the specification. This Form contains the following information:
1.The Title of the Invention
2.Name, Nationality and Address of the Applicant(s)
3.Preamble to the Description: The following specification describes the invention.
4.Description (on a new page).
5.Date And Signature (to be given at the end of the last page of the specification).

The Title of the invention in a provisional specification should give a clear idea of the industry and the subject to which the invention relates. It should be brief – not more than fifteen words – precise, and descriptive of the invention. It should not contain words such as the inventor’s name, adjectives like ‘good’, ‘brilliant’, ‘best’, etc., or words in Indian languages. Some examples of the titles of patents are: Compositions comprising Carbazoles and Cyclodextrins, Novel Amino Acid Derivatives with Improved Multi-Drug Resistance Activity, A Method of Phenol Tar Desalting, Capillary Dewatering Method and Apparatus.

Form 2 is required to be filed along with Form 1 which is the application for the grant of a patent, and the information in Form 2 must correspond to that in Form 1. Form 2, however, is only the first page of the provisional specification to which additional pages which describe the nature of the invention are attached as follows: (i) an introduction mentioning what the field of the invention is and what the subject matter to which it relates is, (ii) the background of the invention containing a description of the relevant prior art along with its drawbacks, why the invention is needed and what it is to do / what problem it is to solve, (iii) a summary of the nature of the invention, (iv) a description of the invention possibly in general terms, (v) working examples and embodiments of the invention if they exist and (vi) the advantages of the invention.

Although it is permissible for the description of the invention to be in general terms, it is advisable to include as much information as is possible. This is because the claims later made in the complete specification must be fairly based on what has been disclosed in the provisional specification, and this cannot be done if the provisional specification is very sketchy. At the very least, the Description must identify what the novel features of the invention are and how they are distinct from prior art. The Description should begin with a short statement of the scope and subject of the invention such as, “This invention relates to _________,” and it should also contain:

  • The objectives of the invention possibly in the format: The principal objective of this invention is __________, Another objective of this invention is ____________, Yet another objective of this invention is _________.
  • Drawings if they are required.
  • The principle on which the invention is being developed.
  • A general statement of the essential features of the invention for which protection is desired.
  • A provisional specification does not contain claims since at the time it is filed; it is unlikely that an applicant would know what the claims are.

A provisional specification helps to identify the invention. It is typically drafted before an invention is ready in its final form and therefore focuses on the nature of the invention which it discloses. It is a document of record and it cannot be amended by adding new matter to it once it has been filed. In fact, no amendment would be allowed which has the effect of adding fresh matter or extending the scope of the invention. Deleting information would also not generally be allowed especially if such deletion would result in the scope of the invention being broadened.

The main purpose of filing an application with a provisional specification is to establish a priority date. A provisional specification establishes the earliest ownership of an invention although it does not in itself confer any legal rights. It is sometimes possible to get a provisional specification amended by post-dating the application. However, doing this would automatically result in the ‘loss’ of the priority date.

Until a complete specification is filed, an application which is filed along with a provisional specification will not be examined by an examiner of the patent office with a view to deciding whether or not a patent should be granted. If a complete specification is not filed within 12 months of the filing of the provisional specification, the application for the grant of a patent is deemed to have been abandoned. However, if a patent is subsequently granted for the invention after the filing of the complete specification, the date of the patent will be the date on which the application accompanied by the provisional specification was filed.

By Nandita Saikia

References:
Indian Patents Act, 1970
Indian Patents Rules, 2003
Subbaram on Patent Law; Wadhwa; 2007

(This article is by Nandita Saikia and was first published at LawMatters.in.)

When to File a Patent Application

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officeCreate an invention which satisfies all the requirements of patentability — non-obviousness, novelty, and utility, in a nutshell — and patent it. Or try to, at any rate. The question, however, for many businesses, is when does one patent such an invention? As soon as it is invented? Once the invention is complete? Once it has begun to take shape? Once one is ready to show it to others? Once it has been shown to others? Once one is ready to commercialise the invention?

A decision regarding whether or not to patent an invention can itself take a considerable amount of research. There are other forms of protection available in many cases, and in some cases, applying for a patent is simply not the best thing to do. For one thing, the invention may not even be patentable. If an invention is not patentable, it makes far more sense not to apply for a patent primarily because 18 months after filing for a patent, the information contained in the application becomes public and not only does the applicant not get patent protection which he is anyway not entitled to in the course of time but he also loses much of the secrecy which he might otherwise have been able to maintain. If it’s possible, it is therefore in the best interest of an applicant to maintain the invention as a trade secret.

There are of course drawbacks to this too. A trade secret is a secret for only so long as it is kept a secret. If, however, a trade secret is kept secret for longer than 20 years. the owner of the secret would, in all probability, wind up with the secret having protection for a longer duration than a patent would have accorded it. Unless the ‘secret’ is ‘discovered’ by someone else who patents it and then initiates infringement proceedings against the owner of the secret.

Assuming that an invention is patentable though, coming back to the question of when a patent should be filed, the best time to file an application would be as soon as an application can be filed. This application need not contain complete specifications of the invention; it can merely contain provisional specifications. The law allows complete specifications to be filed within 12 months after provisional specifications have been filed. It is especially important in a country such as India to file a patent application as soon as possible because India follows a first-to-file system and not a first-to-invent system. This means that if another person invented the same invention later but filed for a patent earlier, he would be granted the patent notwithstanding the fact that he was not the first to invent that invention. This is in contrast to the US patent system which follows a ‘first-to-invent’ rule and grants patents to the first person who has invented an invention.

One of the criteria for patentability is a lack of anticipation. If an invention has been anticipated, it will not be granted a patent. In certain cases, the Controller may simply refuse to accept the complete specification while in others, he may require certain changes to be made. (See Sections 13 and 18 of the Indian Patents Act.) The Patents Act itself has quite a bit to say on the subject of anticipation and provides for some ‘exceptions’ to the general rule in Chapter VI of the Act.

As a result, a good time to file a patent application is as soon as the invention gets one foot out of the laboratory, so to speak. This is so a priority date is established and the applicant does not lose out on a patent merely because by the time he files for a patent, he has lost out on novelty. There is a drawback to this though:  filing an application unduly early means that the applicant may have less information about the invention at hand an will not be able to file for the widest possible scope of protection. The most prudent approach would therefore be to file an application as soon as the applicant has a reasonable amount of information at his disposal.

(This article is by Nandita Saikia and was first published at LawMatters.in.)

Facebook URLs

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A short while ago, Facebook announced personalised URLs. For most individual users, this is probably little other than an additional feature. However, for companies, brands, products, services and public figures, it could have important intellectual property implications. If such entities / celebrities have active Facebook accounts, it would make sense for them to reserve unique usernames associated with their Profile Pages whether or not Facebook figures prominently in their business plans. If reserved, the selected username would appear as follows: facebook.com/username with the username replacing a randomly assigned numerical reference.
 
Eligibility:
Businesses or brands must have been live on Facebook before May 31, 2009 and have had at least 1,000 fans at that time to be eligible to select a username. Facebook has said that new users can reserve a username on June 28, 2009 but it is unclear if this also applies to Profile Pages for businessses.
 
Implications for trade mark owners:
If possible, it makes sense to secure a username as soon as possible so as to secure the trade mark and to prevent name/cyber squatting. The usernames cannot be changed once they are submitted at: http://www.facebook.com/username. Further, usernames cannot be assigned.
 
Prevention of unauthorised use:
The owners of registered trade marks can prevent their trade marks from being reserved as usernames by filling out (or authorising another person to fill out) an online form located at: http://www.facebook.com/help/contact.php?show_form=username_rights. However, this is unlikely to help those who do not have registered trade marks.
 
Infringement Allegations:
In case some reserves a trade mark owner’s mark as a username, the owner can report this to Facebook at: http://www.facebook.com/copyright.php?noncopyright_notice=1 although it is unclear how Facebook plans to resolve disputes. Although Facebook has reserved the right to remove usernames, it is also not clear whether removed usernames will become available for others (in this case, the trade mark owner) to use or if they will simply pass out of circulation. If the latter is the case, the trade mark will not be available to the owner which makes it important to secure it as soon as possible.

The Pirates Flounder

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By Shyam Somanadh

Entertainment Industry Wins Pirate Bay Case, Loses $390 MN business opportunity

By now it is all over the place that Pirate Bay (or at least the four defendants) has lost its lawsuit regarding their enablement of piracy using the website. Neither will this ensure that piracy related to entertainment will come to an end, nor will this ensure that artists will find another way to monetize their efforts beyond what the entertainment industry can offer.

I have no quibble with the fact that piracy is bad, what I do have a problem with is the fact that on the one hand organizations like RIAA are only happy to sue the pants off file sharers, citing ever declining numbers in their businesses, while on the other, they refuse to see that not everyone who is using P2P has price point zero as the only acceptable price range.

At this very moment, Pirate Bay’s trackers are supporting over 22,387,439 seeders and leechers over IPv4, there is a much smaller number on their IPv6 network. That is a huge number of people who are actually acquiring content, concurrently. Well, to be precise, 22 million of them in one go. And we are not even counting the users on the other networks.

If the entertainment industry can see this only as an opportunity to sue 22 million people and get a dollar off each of them they deserve to die the painful death they are undergoing now. If they can see the 22 million as a live and kicking market, they deserve to live and live well.

For those who argue that piracy is free are sadly mistaken. Every download is paid for at some point in the chain. If you do that in your office, it is your company that foots the bill. If you do it at your home, you pay for it with your DSL/Cable bill. In effect, there is no ‘free’ in the equation here, there is already a value attached to it, even when you are leeching off a torrent. The only problem in the whole picture is that the ones who are getting paid are neither the content creators, nor it is the distributors who get paid.

So, who gets paid?

The telcos who sell you bandwidth and the connection are the ones who profit most by it. Even as sneaky as that can be, it is not their fault either that people use torrents and P2P to get their fix. The fact remains that there is no simple, sane and legitimate way to consume content at a reasonable price point at the moment. The entertainment industry has always refused to embrace innovation on that front. They should de-incentivize piracy, by working hard to make non-pirated content easily available.

Instead, what do they do? They spend their time trying to keep price levels at the highest possible points, trying to maximize their margins and holding on to the days of glory days of CD and cassette tape sales, than trying to open their eyes to the new reality that this will work in their favour only if they play for scale. The average person probably does not download more than 30 songs a month on the internet. Why is it not possible to address that need at a flat rate which would make it much easier for everyone to understand and legitimately participate in the process.

You don’t even need to convert the entire 22 million users connected to the Pirate Bay tracker to make this work. At even 25% conversion, that is 6.5 million users in a month. Those users shelling out $5 per month for 30 tracks, without DRM is worth about $32.5 million in monthly revenues and $390 million in annual revenues. I am playing easy with the numbers here, but my point is valid, there is a massive business opportunity here, which is getting ignored.

Even with DRM, Apple and the iTunes franchise has shown that people can and will pay for entertainment given the right experience and a useful price point. But really, why is Apple owning that space, with Amazon competing hard with them on that front? Why is the entertainment industry a no-show here, other than the rare moments when they shake themselves out of their stupor, and trying to up their margins per track sold?

Piracy is really no news. It has been there before the internet was created and it will continue to remain with us as long as we are around. What the entertainment industry needs to recognize is that they need to change their business models and the way they operate now. And every day they spend chasing these people in court with victories that result in a minor blip on the global piracy radar, is another day they are losing to save their own livelihoods.

Copyright Lingo

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That copyright tends to create a language of its own isn’t something which is entirely surprising to anyone familiar with it. There are both advantages and disadvantages to intellectual property and the debate whether public interest is well served by the protection of private interests via the medium of intellectual property has been going on for a while now.

Intellectual property is not an especially old form of property. Copyrights, for example, were first seen in the year 1710 and arose to protect the monopoly the Stationers had earlier enjoyed as members of the Company of Stationers of London which basically acted as a private censor for the Crown. By 1710, the Crown became much less finicky about the publication and dissemination of seditious material which resulted in the stationers effectively being out of a job.

The members of the defunct company responded by petitioning Parliament to protect the intellectual property of literary works by creating an author’s copyright which they assumed (correctly) would be assigned to them. And ever since, the publishing lobby has lobbied for stronger and stronger copyright protection.

Not too surprisingly, copyright is now considered by many outside the ‘copyright community’ to be completely out of whack since it protects the private interests of copyright owners (usually publishing corporations) to an absurd degree.

In some cases this is seen in the Indian Copyright Act itself. For example, in 1994, the law was amended so that communication to the public for the purpose of determining whether or not infringement had occurred did not require any member of the public to have actually seen or heard the work communicated. In other words, the copyright is infringed by the mere transmission of the work to the public and not its communication to the public. Considering that one of the aims of copyright law is presumably not the recreation of the English language, the term communication in the statute is misleading.

Reinterpreting English in completely non-orthodox ways is not limited to legislators though. In a recent order in the case of Urooj Ahmed vs. Maya Appliances (A. No. 5533/2008 in  C S 949/2008), Justice Shivakumar of the Madras High Court decided that a suit for the infringement of a design can be filed in the place where the plaintiff resides by his interpretations of the Copyright Act and the Designs Act.

In general, a suit must be filed where the defendant resides but Section 62 of the Copyright Act institutes an exception to this rule by saying that a suit for infringement may be filed where
the plaintiff resides. There is no such provision which exists in the Designs Act but relying on Section 11 of the Designs Act which says that the registered proprietor of a design owns the copyright in the design, Justice Shivakumar has decided that the provision regarding jurisdiction in Section 62 of the Copyright Act also applies to designs under the Designs Act.

To come to such a conclusion, the assumptions seem to have been that (a) the copyright which exists in a design is the same as the copyright which exists in those works protected by the Copyright Act and (b) that copyright infringement under the Copyright Act is analogous to the infringement of a design.

The result: designs have been afforded protection not envisaged by law because of a creative interpretation of the law.

Image Source – Wikimedia Commons

 

(This article is by Nandita Saikia and was first published at LawMatters.in.)