Shemaroo Vs News Nation: Bombay High Court Rejects Fair Dealing & De Minimis Defence, Grants Injunction in Favour of Shemaroo
The Bombay High Court granted injunction in favour of Shemaroo in a copyright infringement suit against News Nation and restrained the latter from exploiting Shemaroo’s content in any manner whatsoever on their TV channels “News Nation”, “News State UP and Uttarakhand”, “News State MP and Chhattisgarh” or any other channels or any other platform. While granting the injunction the Court factored the previous license executed between the parties, the qualitative and quantitative analysis and the commercial purpose for which the content was used.
The court ruled that the defence of de minimis non curat lex is often misconstrued as an excuse to infringe copyright. Parties are often mistaken that trivial usage without seeking license is permissible. Whether the principle of de minimis will apply to a particular usage is always ascertained basis facts of each case where the courts have delved into qualitative and quantitative tests, purpose of use, effect of such use on the legal rights of the copyright owner among others.
For detailed analysis of this order, please read our post here.
Read order here.
USTR places India on priority watch list, again
The United States Trade Representative (USTR) again placed India on the ‘Priority Watch List’ along with China, Russia and four others, for lack of adequate intellectual property rights (IPR) protection and enforcement.
In its Annual Special 301 Report that identifies trade barriers to American companies due to IP laws of other countries, the USTR said that India remained one of the most challenging economies for IP enforcement and protection and the country’s overall IP enforcement was inadequate.
India remains one of the world’s most challenging major economies with respect to protection and enforcement of IP, it said in the 2022 report. Certain data governance regimes whether proposed or implemented also raise concerns for intellectual property protection in general and trade secret protection of proprietary data in particular, it highlighted.
While India’s accession to the World Intellectual Property Organization (WIPO) Performances and Phonograms Treaty and WIPO Copyright Treaty, collectively known as the WIPO Internet Treaties, in 2018 and the Nice Agreement in 2019 were positive step, the USTR said the potential threat of patent revocations, lack of presumption of patent validity and narrow patentability criteria under the Indian Patents Act impact companies across different sectors. The USTR said despite India’s justifications of limiting IP protections as a way to promote access to technologies, India maintains high customs duties on IP intensive products such as medical devices, pharmaceuticals, information and communications technology products, solar energy equipment and capital goods.
Delhi court stops movie release over alleged infringement of late Parikrama guitarist Sonam Sherpa’s works
A Delhi court has stopped release of the film Broken Wings over the works of late Parikrama band member and musician Sonam Sherpa’s works allegedly being used in the movie without consent.
The Delhi Court has prima facie found a case of copyright infringement. Restraining the release of the film, District Judge Sanjiv Jain said the film can only be released if the late artist’s works are deleted.
The court held that prima facie case exists in favour of the plaintiff. Balance of convenience also lies in favour of plaintiff as, if the defendant is allowed to use the same by the time trial comes to an end, he would exploit the musical works to his full advantage to the detriment of the plaintiff.
The court was hearing a suit filed by the late musician’s wife, Dina Ramliani Ralte. She alleged that her husband’s works were used in the film, which was set to be released on April 29, by the defendant without consent or credit.
According to the judge, Sherpa’s musical works were used in the film without the authority or consent of the plaintiff. The court decided to restrain the defendants from releasing the film if the two songs, Timro Mero and There She Goes, were not deleted till May 19, 2022.
Supreme Court Dismisses Director SJSuryah’s Plea For Injunction Against Hindi Remake Of Tamil Film ‘Valee’
A Supreme Court bench of Justices MR Shah and BV Nagarathna upheld the Madras High Court’s order dated November 12, 2021 of refusing to grant injunction against the remake of the Tamil film “Valee”. SJ Suryah, the director of the 1999 film starring Ajith and Simran, had approached the Top Court.
Although the bench upheld the High Court’s judgement, it said that if ultimately the plaintiff succeeds in the suit and establishes his right, he can claim the damages and/or compensation.
The injunction which was sought for copyright infringement was against the producer and one Fakrudeen Ali, who had bought the remake rights of the film, ‘Vaalee’.
SJ Suryah had claimed that credit for the story, screenplay and dialogue pertaining to the film was given to him.
While dismissing the plea for grant of interim relief by way of injunction, the High Court had noted that the director had failed to produce anything that prima facie denotes his rights over the screenplay and dialogue.
Read order here.
Allahabad HC Refuses To Interfere With Order Dismissing S. 156 (3) CrPC Plea Seeking FIR Against Kunal Kamra For ‘Indian Flag’ Tweet
The Allahabad High Court refused to interfere in a plea challenging a magistrate’s order dismissing an application filed under Section 156(3) CrPC seeking FIR against stand-up comedian Kunal Kamra for his tweet, which allegedly insulted the Indian flag.
Kamra had tweeted a morphed picture of the Supreme Court replacing the tricolour atop it with the flag of a political party.
It may be noted that last year a Varanasi Court had upheld the order of the Magistrate in which it dismissed the criminal revision plea filed by a local Lawyer Saurabh Tiwari. Now, challenging both these orders, a plea under Article 227 of the Constitution of India was moved by Tiwari before the HC.
Having heard the argument of the petitioner Saurabh Tiwari, the Bench of Justice Rahul Chaturvedi, refused to interfere with both the orders.
However, the bench did observe that since the 156(3) Cr.P.C. application had been rejected, therefore, in the light of the judgment of Apex Court in the case of Sakiri Vasu Vs. State of U.P. and others (2008) 2 SCC 409, the petitioner has an alternative remedy (under Section 200 of CrPC) to invoke the proper proceedings against the proposed accused if so advised.
Read order here.
Use Of Registered Mark By Competitors As Keyword In Google Ads Program Prima Facie Infringement Under Trademarks Act: Delhi High Court
The Delhi High Court recently granted injunction in favour of Make My Trip while observing that use of its registered mark by competitors even as metatags is an infringement under Trademarks Act and that third party bidding on trademarks as sponsored keywords for use by internet search engines can constitute misrepresentation.
The Court noted that the balance of convenience lies in the favour of the Plaintiff and if the injunction is not granted, Defendant and other competitors would continue to bid for its mark `MakeMyTrip’ on a daily basis, resulting in severe prejudice to the Plaintiff, its mark, its brand equity and its business.
Thus, it restrained the Defendants from using the mark ‘MakeMyTrip’ together/ in conjunction, with or without spaces for the purpose of using it as a keyword on the Google Ads Program till the next date of hearing. The Court also clarified that the said interim injunction will stay limited to the territory of India.
The Plaintiff – MakeMyTrip (India) Pvt. Ltd. had filed the suit for permanent injunction seeking protection of its registered trademarks ‘MakeMyTrip’ and its variants. It was the case of the Plaintiff that their marks are being used by Booking.com B.V. as keywords on the Google Ads Program for promoting their services as advertisements when search results are displayed on the Google search engine.
The case of the Plaintiff was that when a search is carried out for ‘MakeMyTrip’ in the Google search bar, quite often the first advertisement which is displayed in the search results in the advertisement category is that of Defendant- Booking.com, who is one of the major competitors of the Plaintiff. According to the Plaintiff, such use of its registered mark would constitute infringement, especially when done by its competitor such as booking.com.
The Court said that the use of the mark ‘MakeMyTrip’ as a keyword through Google Ads Program by one of its major competitors, Booking.com is infringing use under Sections 2(2)(b), 29(4)(c), 29(6)(d), 29(7) and 29(8)(a) of the Act. It is now well settled in India that use of a registered mark by competitors even as metatags would be infringement, though the same may be invisible to a user as held in DRS Logistics.
Read order here.
NFTs recognised as ‘legal property’ in landmark case
The UK’s High Court has recognised NFTs (non-fungible tokens) as “property” in a case which is likely to have far-reaching implications for disputes involving digital art.
The action was brought in March this year by Lavinia Osbourne, the founder of Women in Blockchain Talks, who claimed that two digital works from the Boss Beauties collection, an NFT-based initiative, had been stolen from her online wallet.
It was held that the assets were “property” and thus able to have access to legal protections in this instance, an injunction served on accounts on Ozone Networks (which hosts the NFT marketplace OpenSea), to freeze the assets.
It is of the utmost significance as, for the first time in the world, a court of law has recognised that an NFT is property capable of being frozen by way of an injunction. This ruling, therefore, removes any uncertainty that NFTs (as tokens consisting of code) are property in and of themselves, distinct from the thing they represent (e.g., a digital artwork), under the law of England and Wales.
The British School’: Delhi High Court Directs Sanjay Gandhi Educational Society To Change Name Of 4 Schools Infringing Trademark
While dealing with a trademark infringement suit filed by the British School Society over the mark ‘The British School’, the Delhi High Court has directed changing of names of four schools run by Sanjay Gandhi Educational Society, purportedly using identical name.
Justice Pratibha M Singh directed the defendants to change the name of their schools w.e.f. 1st May, 2022 and apply to the CBSE, with whom they are presently affiliated.
The Court observed that the continued use of the mark ‘The British School’ for schools of Defendants would constitute misrepresentation in the course of rendering educational services to the effect that their schools are in some way connected or affiliated with the Plaintiff.
Furthermore, the Court added that such continuous use may cause irreparable prejudice and damage not merely to the Plaintiff’s goodwill alone but to various students who may be enrolled and studying in the said school.
Opining that it will not be in the larger public interest to permit Defendants to use the mark ‘The British School’, the Court confirmed the interim order granted on 12thOctober, 2021, which was modified on 22nd December, 2021.
The Plaintiff was the British School Society running The British School in New Delhi, attached to the High Commission of the United Kingdom. Defendant No.1 was the Sanjay Gandhi Educational Society based in Panchkula, Haryana which runs four schools under the name ‘The British School’ in Punjab and Haryana viz., Mohali, Panchkula, Chandigarh, Firozpur.
The British School in Delhi was started in the year 1963 when a group of British parents, with the support of the then British High Commissioner started the school with 40 students representing six nationalities. Various British dignitaries, of the relevant time including the then British High Commissioner to India– Sir Paul Gore-Booth, were the founding members. It offers various educational programmes including EYFS Programme, the IGCSE and the IB Diploma Programme and school has more than 1200 students from 65 nationalities.
The Defendants used an identical name ‘The British School’ for 4 of their schools in Punjab & Haryana, even though the name of the society which runs the said schools was Sanjay Gandhi Educational Society.
Read order here.