Supreme Court issues notice to the States of West Bengal and Tamil Nadu on Ban of ‘The Kerala Story’ Film
The Supreme Court on 12-05-2023 issued notice to the States of West Bengal and Tamil Nadu on a writ petition filed by the makers of the controversial film ‘The Kerala Story’ challenging the decision of the West Bengal Government to ban the movie. The makers also alleged that the movie was facing a ‘shadow’ ban in Tamil Nadu and sought protection for screening the film in the southern state.
Senior Advocate Harish Salve, appearing for the producer of the film, said that on the date of the release of the movie, the Chief Minister of West Bengal made a statement against it, saying that it is against a community and the exhibition can cause law and order problems. The State banned the film after it ran for three days without any problems. Salve further said that in Tamil Nadu, the film is facing a “de facto ban”, as the exhibitors have withdrawn the movie after threats.
This submission prompted a comment from CJI :
“The film is released in the rest of the country. West Bengal is not different from other parts of the Country. If it can run on other parts of the country, why should the State of West Bengal ban the film? If the public does not think that the film is worth seeing, they will not see it. It is running in other parts of the country which have similar demographic profile as West Bengal. Why should you not allow a film to run?”.
On the contrary, the Counsel for the State of West Bengal mentioned that the State has power under Section 6 of the West Bengal Cinemas (Regulation) Act 1954 and opposed the grant of stay.
The Court however opined that no interim order shall be passed without hearing the State.
Further, the Additional Advocate General of Tamil Nadu was questioned by the CJI with respect to the steps taken by the State to ensure security and smooth running of the controversial movie in theatres. The bench further asked the State of Tamil Nadu to file an affidavit regarding the same.
In a related development, the Supreme Court agreed to hear on May 15 a special leave petition filed against the Kerala High Court’s refusal to stay the film’s exhibition.
Read order here.
Bombay High Court Restrains Trust In Late Actor Dada Kondke’s Name From Exercising Rights Over 12 Of His Films
The Bombay High Court has temporarily restrained the trust named after Marathi actor-filmmaker Dada Kondke from dealing in the copyrights of 12 of his films.
Justice Manish Pitale passed the order in an Intellectual Property Right suit filed by Everest Entertainment Ltd against Shahir Dada Kondke Pratishthan and others. Everest contended it had acquired the film’s rights from Kondke’s heir Manik Padmakar More.
The court said it was prima facie satisfied that More had acquired rights in the 12 films, under Kondke’s probated Will and therefore restrained two different organisations from handing over the film’s negatives.
Everest was constrained to approach the High Court as the film’s negatives were lying with Bombay Film Enterprises Private Limited and National Film Development Corporation (NFDC) Ltd and the trust was claiming rights over the films and seeking it negatives.
However, while grating ad-interim relief the court observed that balance of convenience was clearly in favour of the Plaintiff and if such interim injunction will not be granted then the Plaintiff would be every possibility of further complications arising in the matter and the plaintiff suffering grave and irreparable loss.
It therefore restrained the trust from dealing with the negatives lying with them and also restrained the two organisations accordingly.
Read order here.
Need To Have A Relook At Patent Law’s Provision On Exclusions In View Of Growing Innovations: Delhi High Court To Union Govt
The Delhi High Court has observed that there is a need to re-look at Section 3(k) of the Patents Act, 1970, in view of growing innovations. Section 3(k) states that a mathematical or business method or computer programe per se or algorithms will be excluded from patentability under the Patents Act.
Justice Prathiba M Singh took note of the 161st Report of the “Review of the Intellectual Property Rights Regime in India” presented by Parliamentary Standing Committee and said that a concern is expressed that a large number of inventions may be excluded from patentability in view of Section 3(k).
Noting further that a large number of inventions in emerging technologies including small and medium-sized enterprises, start-ups and educational institutions could be in the field of business methods or application of computing and digital technologies.
The court said a copy of the order be sent to the Secretary, DPIIT, Ministry of Commerce and Industry for necessary consideration.
The court made the observations while dismissing the appeal moved by a USA based entity, OpenTV Inc, challenging the order passed by Controller of Patents and Designs on May 31, 2021, refusing its application for grant of patent titled “System and method to provide gift media” under Section 15 of Patents Act.
The patent application was for a network architecture to enable the exchange of interactive media content distribution of any type of digital or tangible media. The application was rejected on the ground that the scope of the patent fell within Section 3(k) of the Act and therefore, was not patentable.
Denying relief to the entity, the court said that the exclusion in respect of business methods in section 3(k) is absolute and not restricted by the words ‘per se’ as in the case of computer programs.
The court further observed that the bar in India to grant of business method patents has to be read as an absolute bar without analysing issues relating to technical effect, implementation, technical advancement or technical contribution.
Read order here.
Delhi High Court Orders Sudarshan News, Social Media Platforms To Remove News Reports Accusing Muslim Man Of Forced Religious Conversion
The Delhi High Court on Friday directed certain news channels including Sudarshan News and social media platforms like YouTube, Google and Twitter to block links of news reports accusing a Muslim man of forcefully converting a woman to Islam.
The Court was hearing a plea moved by one Azmat Ali Khan seeking removal of news items and videos published on online platforms in respect of an FIR lodged against him on April 19 by a Delhi-based woman accusing him of forced religious conversion.
It was Khan’s case that the allegations against him are under investigation by Delhi Police and circulation of the videos is posing great threat to the independent probe as well as his safety and security.
It was submitted on behalf of Google that since the FIR has already been registered, the originators of the videos ought to be heard in the matter.
Considering the nature of the matter, the court issued notice to the respondents including Youtube, Google, Twitter, Sudarshan TV, Orissa TV, Bharat Prakashan and Suresh Chavhanke.
The court also issued notice to the Delhi Police and directed it to place on record a status report in respect of the investigation carried out in the matter.
Justice Singh also asked the counsel appearing for the Delhi Police to contact the complainant and intimate her about the pendency of the petition.
Did Not Threaten Kangana Ranaut, Suggested Her To Amicably Resolve Issues With Hrithik Roshan: Javed Akhtar To Court
In the ongoing trail between Lyricist Javed Akhtar and Kangana Ranaut, Akhtar recently testified before a Mumbai Court that he tried to get actors Hrithik Roshan and Kangana Ranaut to resolve the controversy between them amicably. Akhtar made the statement in response to Kangana’s accusations of extortion in her feud with the actor.
Akhtar was testifying before Metropolitan Magistrate RM Shaikh, Andheri, in his 2020 criminal defamation case accusing Ranaut of damaging his reputation by dragging his name in her Republic TV interview regarding actor Sushant Singh Rajput’s suicide.
Akhtar has alleged that the video of the said interview on Republic TV has been watched by millions of people on YouTube alone, which is damaging his reputation.
Ranaut has also filed a private cross complaint accusing Akhtar of extortion and criminal intimidation by asking her to give a written apology in her public feud with Hrithik Roshan in 2016. She has claimed that Akhtar called her and her sister Rangoli Chandel to his house during her feud with Hrithik Roshan with “malafide intention and ulterior motive.”
Akhtar claimed that he never came into contact with Kangana after that day till 2020. He testified that in February 2020, he read in a magazine that he had threatened Kangana but did not react to it.
Akhtar said that Ranaut, in an interview given to Republic TV in July 2020, alleged that he threatened her that she will be thrown out of the industry and will have no option but to commit suicide. She also said that he belonged to “suicide gang”, Akhtar testified.
Akhtar further deposed that for four to five months after the interview, he was under tremendous pressure and humiliation by the people in the film industry and it became embarrassing for him to survive in the industry.
Thus, he filed the private complaint against Kangana for defamation under sections 499 (defamation) and 500 (punishment for defamation) of the Indian Penal Code, Akhtar said.
Ten Events & Entertainment vs Novex Communications and ors: Delhi High Court refuses to grant omnibus declaration against Novex and ors to the effect that it is not necessary to take any licenses/NOC from the copyright holders, whose recordings would be played in wedding ceremonies
Ten Events & Entertainment, an event management services company filed a suit under Section 60 of the Copyright Act, 1957 read with Section 34 of the Specific Relief Act, 1963 against Novex Communications and others in relation to communications issued by the said defendants calling upon hotels to ensure that any person, playing songs in wedding ceremonies in which they hold copyright, obtains a license or a no objection certificate (NOC) from them before doing so. According to the plaintiff, no such license or NOC is required, in view of Section 52(1)(za) of the Copyright Act. While declining to grant any relief to the Plaintiff, the Delhi HC held the following:
- Event management company such as the plaintiff would not fall either within sub clause (i) or (ii) of Section 51(a) of the Copyright Act. Neither does the plaintiff do anything, with the recordings in which Defendants 1 to 3 hold copyright, the right to do which is vested on the said defendants by the Copyright Act, nor is the plaintiff the owner or person in control of the venue where these activities take place. The plaintiff could not, therefore, in any event, be a ―copyright infringer‖ within the meaning of Section 51 of the Copyright Act.
- Section 60 of the Copyright Act applies only in respect of threats of liability and legal proceedings held out in respect of acts of alleged infringement of copyright which already stand committed. the threat of legal proceedings, held out by Novex to Marriott, by the letter dated 14th December 2020, was not in the nature of the threat envisaged by Section 60 of the Copyright Act, as it related to an act which is yet to be committed.
- it is only a person against whom an infringement suit would be instituted by the copyright holder under the proviso to Section 60, who could be extended the benefit of the provision. A person who could not be sued for infringement, under the proviso to Section 60, cannot, therefore, be a ―person aggrieved‖ within the meaning of the main part of the provision. Any other interpretation would result in extending, to such person, the benefit of the main part of Section 60 while denying, to the copyright holder, the benefit of the proviso thereto.
- Not being the alleged copyright infringer, and not being the person to whom Novex held out a threat of legal proceedings by its notice dated 14th December 2020, the plaintiff cannot, in my view, be regarded as a ―person aggrieved‖ within the meaning of Section 60 of the Copyright Act, so as to be entitled to institute the present suit against the defendants.
- Merely by virtue of its being a self-contained code, the Copyright Act cannot foreclose the applicability of the Specific Relief Act, or of Section 34 thereof,
- In order for the playing or communication of recordings, in festivities associated with the wedding, not to amount to copyright infringement, therefore, it would be necessary for the claimant so asserting that (i) the festivity in question is a ―social festivity‖, (ii) the festivity is associated with the marriage and (iii) the festivity is bona fide.
- Undeniably, however, there exists a view, by a Division Bench of a Constitutional Court, that the exemption granted by the various clauses of Section 52(1), including clause (za) and the Explanation thereto, are not intended to apply to commercial festivities or ceremonies, but cater to non-profit activities.
- It may not be possible to ignore the fact that religious ceremonies, as also marriage processions, are non-profit events, which partake of no commercial colour or character. If, therefore, a copyrighted recording is played on either of these occasions, it is not motivated by consideration of profit, and the communication of the according to the public is not for any commercial purpose. There is, clearly, qualitatively a distinction between such a case, and a situation in which copyrighted recordings of, for example, hit Bollywood songs, are played by DJs, often for huge remunerations. The motivation of the DJ who plays the recordings, on such occasions, is clearly commercial. Given the nature of ―bona fide religious ceremonies‖ and ―marriage processions‖, it might be a moot point, not easily resolved, as to whether such commercial exploitation of copyrighted recordings, in extravagant wedding celebrations, would be entitled to the benefit of the Explanation to Section 52(1)(za), by treating them as ―social festivities associated with marriage‖.
- What, in essence, the plaintiff is seeking to obtain, through the medium of the present suit, is an advance ruling to the effect that the plaintiff can, at all venues and in perpetuity, organise wedding ceremonies – irrespective of their nature – in which the recordings of which Defendants 1 to 3 hold copyright would be played and communicated to the public, without obtaining any NOC or license from any of the said defendants. Such an advance ruling is being sought essentially on the basis of Section 52(1)(za) of the Copyright Act, read with the Explanation thereto.
- The law does not permit such an advance ruling to be sought, least of all by way of one consolidated suit. Worse, the suit does not even disclose the events that the plaintiff proposes to hold. There is no prayer, in the plaint, for enabling the plaintiff to conduct any particular identified wedding ceremony, in any of the impleaded hotels, without obtaining a license from Defendants 1 to 3
- No suit can be filed, merely seeking a declaration, declaring the legal position which already stands declared in the statute. As to whether, in a particular case, the benefit of Section 52(1)(za), all the Explanation thereto, would be available, has to be determined on the basis of the facts of that case.
- The present suit is, therefore, prima facie nothing less than and ingenious short cut, whereby the plaintiff is seeking to obtain an omnibus advance ruling, qua any and every wedding ceremony to be held in any and every venue in the country. A declaration of the law, and what the plaintiff perceives to be the legal position is, therefore, being sought even without the support of any factual foundation. In any event, Section 52(1)(za) does not justify the seeking of any such omnibus declaration of the law.
Read order here.
TRADEMARKS
Delhi High Court Permanently Restrains Hospitality Company From Using ‘Vivanta’ Trademark, Imposes ₹6 Lakh Costs
The Delhi High Court has permanently restrained a hospitality company from using “Vivanta” mark in a trademark infringement suit filed by Indian Hotels Company Limited, a part of TATA Group of Companies and registered proprietor of “Vivanta” trademark.
Justice Amit Bansal imposed costs of Rs. 6 lakhs on Vivanta Hospitality Private Limited and held that the company used the trademark “Vivanta” in its trade name “Vivanta Vacation Club” which was identical to the mark of the hotels run by the Tata Group.
The court observed that the hospitality company used the impugned mark with an intent to springboard its business by drawing an association with Indian Hotels and to ride on its goodwill and reputation.
Justice Bansal further took note that a number of consumers were duped by Vivanta Hospitality Private Limited under the pretext of its association with the Tata Sons-owned Indian Hotels.
The court remarked that the hospitality company had not only taken unfair advantage of the reputation and goodwill of Indian Hotels’ Vivanta mark, but had also deceived unwary consumers of their association with the latter- which would also lead to the dilution and tarnishment of Indian Hotels’ mark.
The court remarked that the adoption of the infringing mark by the defendant company in relation to a business identical to that of Indian Hotels’, clearly depicted its intentional malafides.
Indian Hotels claimed that it first coined and adopted the mark “Vivanta” for its hotels and other services in the year 2008, and that it is the registered proprietor of the trademark. It claimed that it has 35 Vivanta hotels across 33 destinations along with a website dedicated to its hotels under the brand name Vivanta.
It was the case of Indian Hotels that the defendant, Vivanta Hospitality Private Limited, who offers services in the hospitality sector, was initially incorporated in 2010 as “R M Y Builders & Developers Private Limited” and later in 2021, it changed its name to “Vivanta Hospitality Private Limited”.
The court further concluded that the domain name of the defendant company was also deceptively similar to that of Indian Hotels’ and was likely to deceive the public of its association with the latter.
While passing the order of permanent injunction, the court further directed destruction of the seized goods bearing the mark “Vivanta” lying in the premises of the defendant company.
Read order here.
Delhi High Court Restrains Villeroy & Boch From Using ‘Artis’ Mark In Trademark Infringement Suit By Jaquar
The Delhi High Court has temporarily restrained a German-based company Villeroy & Boch from manufacturing sanitaryware and other bathroom fitting products under ‘Artis’ mark after Jaquar filed a suit alleging infringement of its trademark ‘Artize’.
Justice Sanjeev Narula observed that not granting interim injunction would gravely prejudice Jaquar and general public, who could be misled into purchasing the products assuming there is an association between the two companies, where none exists.
“The fact that the Defendants are using “ARTIS” only with the house brand and plan to continue doing so in the future, as emphasized by Mr. Datt, does not eliminate the possibility of infringement under Section 29(1) of the Trademarks Act and dilution of Jaquar’s “ARTIZE” mark, as discussed above,” the court said.
“In the Court’s opinion, balance of convenience lies in favour of Jaquar, who has been openly and uninterruptedly been using “ARTIZE” since 2008 i.e., for about fifteen years. Compared to this, “ARTIS” entered the market much later in 2015, which was objected to by Jaquar, immediately upon knowledge. Thus, the delay in bringing the present suit by Jaquar cannot be a ground to allow Villeroy to continue infringing Jaquar’s statutory rights,” the court said.
Passing the interim injunction order, Justice Narula said that Jaquar has been utlising “Artize” mark in relation to their products since 2008 and thus, is its prior user. The court noted that even the pronunciation of the two words “Artize” and “Artis” is almost alike.
Read order here.
Delhi High Court Restrains MP-Based Liquor Manufacturer From Using Hindi Transliteration Of Mirinda Mark
The Delhi High Court has restrained a country-made liquor manufacturer from using the Mirinda mark, including its Hindi transliteration , while passing an interim injunction in favour of PepsiCo in a suit filed by the latter seeking permanent injunction against the infringement.
The court observed a prima facie finding that the adoption of the mark by Jagpin Breweries was dishonest.
While holding that Mirinda has a repute of the threshold required under Section 29(4) of the Trade Marks Act, 1999, the court said that the liquor manufacturer attempted to adopt and use PepsiCo’s trademark, only to gain advantage and mileage from the said mark.
Rejecting the plea of honest and concurrent use, the court said that Mirinda has acquired huge goodwill and reputation and going by the strength of the mark, Jagpin Breweries’s use of a mark which is a transliteration with phonetic identity, cannot be counterbalanced by the defence of honest and concurrent use.
The court reckoned that by definition, transliteration is conversion of a text from one script or alphabet to another, as opposed to translation from one language to another, and that it is well-settled that use of an infringing mark- whether as a translation or transliteration- amounts to infringement.
The bench concluded that the rival marks were phonetically, identical, and conceptually similar to each other and therefore the first ingredient of Section 29(4) stood satisfied.
The court thus confirmed the ex-parte ad interim order passed by it, restraining the defendant- company from using the trademark ‘MIRINDA’, its transliteration in Hindi and/or in any other language, and/or any deceptive variation of the same.
Read press release here.
Five Indian Cricketers Move Delhi High Court To Stop OFS Platforms From Using Their Names, Images
Five Cricketers including Mohammed Siraj and Harshal Patel approached the Delhi High Court to stop Fantasy Sports Platforms (OFS) from using NFTs (Non-fungible Tokens) bearing their names and images.
The five cricketers include Mohammed Siraj, Harshal Patel, Arshdeep Singh, Umran Malik and Shivam Mavi.
Appearing for Rario on Thursday ahead of a division bench, Saurabh Banerjee argued that there is a common misconception about where confidentiality begins and fair use ends.
In his arguments, Harish Salve submitted the OFS platforms can use the information of a player for building teams on their platforms. However, he said that if the OFS platforms creates an NFT, then it becomes a piece of property over which the player has the right. He added that without the consent of the player, the platforms cannot trade those NFTs and earn profit.
Meanwhile, appearing for players, senior advocate Mukul Rohatgi cited an example of a bat signed by Sachin Tendulkar.
“I am giving an example of a bat signed by Sachin. That bat has value because of Sachin Tendulkar’s autograph. Similarly, my photograph which is for somebody cannot be pirated by somebody else for trading. They cannot trade it without my consent,” he said.
Following the arguments, the bench directed both the sides to file their written submissions within a week. It also listed case for further consideration on 23 May.
