As the pages of 2023 turn over, it’s not just the end of another year, but also a moment of pride and reflection for us at iprmentlaw. This January marks a remarkable journey of six years – six years of growing, learning, and contributing to the vibrant world of intellectual property rights and media law.
I would like to extend a heartfelt thanks to our incredible team of contributors – Sudarshan, Akshat, Angad, Lokesh, Anusha, Aviral, Ujjawal, Vanshika, and Mridula. Their dedication and meticulous work have been the backbone of our annual highlights. Each article, each piece of analysis, and every insight shared, stands as a testament to their expertise and commitment.
2023 was a year of bustling work commitments for our team, which meant we couldn’t dive into as many extensive articles as we would have liked. However, we believe the compilation of our annual highlights encapsulates the essence of the year’s developments in our field.
As we step into 2024, we do so with renewed enthusiasm and a commitment to bring more insightful, thought-provoking content to our readers. Your constant support and engagement have been our driving force, and we look forward to another year of shared growth and learning.
Here’s to 2024 – a year we welcome with open arms and optimistic hearts. Thank you for being part of our journey.
The Annual Highlights have been bifurcated as under:
- LEGISLATIVE AND POLICY TOP 10 HIGHLIGHTS
- COPYRIGHT TOP 10 CASE HIGHLIGHTS
- TRADEMARK TOP 10 CASE HIGHLIGHTS
- PRIVACY AND PERSONALITY RIGHTS TOP 10 HIGHLIGHTS
- CONTENT REGULATION TOP 10 HIGHLIGHTS
- INFORMATION TECHNOLOGY TOP 10 HIGHLIGHTS
- SPORTS AND GAMING TOP 10 HIGHLIGHTS
A. LEGISLATIVE AND POLICY TOP 10 HIGHLIGHTS
- The Digital Personal Data Protection Act, 2023 Comes into force
The President of India on 11th of August 2023 granted assent to the Digital Personal Data Protection Bill, 2023 (“Bill”) after it was passed by both the houses of the parliament. The Bill was tabled before parliament on August 3, 2023, by withdrawing the previous data protections drafts of 2021 and 2022, this new Bill was the Indian Government’s yet another attempt at drafting a legislation related to privacy. The Bill was passed by the Lok Sabha on 07th August 2023 by voice-vote even as opposition leaders opposed it, while the Bill was unanimously passed by the Rajya Sabha on 9th August 2023. The Bill passed by both houses and assented by the President is called as “The Digital Personal Data Protection Act, 2023” (“Act”). The main objective of the Act inter alia is to regulate the processing of personal data along with ensuring a person the right to protect their data.
- Companies and business (data fiduciaries) shall not process the personal data of any individual without the explicit consent.
- The Data Fiduciaries which process such personal data must give out the exact details of the purpose and usage for which the data is being collected and processed.
- The Data Fiduciaries shall erase the personal data as and when the Data Principal withdraws her consent or as soon as it is reasonable to assume that the specified purpose is no longer being served, whichever is earlier.
- With respect to cross-border transaction, the Act has a blacklisting mechanism for processing personal data, where the government would specify certain territories where the data cannot be processed. This is a different approach in comparison to data protection acts in other jurisdictions, wherein they usually whitelist the territories where the data can be processed.
- The Act suggests for heavy penalties for per instance of a data breach along with its maximum penalty amounts, as further described below.
- The Act has proposed to set up a Data Protection Board, headed by a chairperson, among other things to investigate a complaint filed by a Data Principal.
Read Act here.
- Government notifies the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Amendment Rules, 2023 aimed to regulate online gaming
- Intermediaries are required to make a reasonable effort not to host, publish or share any online game that can cause the user harm, or that has not been verified as a permissible online game by an online gaming self-regulatory body/bodies designated by the central government.
- The intermediary will also have to ensure that no advertisement, surrogate advertisement, or promotion of an online game that is not permissible, is hosted on its platform.
- Further, the amended rules now also make it obligatory for the intermediaries not to publish, share or host fake, false or misleading information in respect of any business of the Central Government. The fake, false or misleading information will be identified by the notified Fact Check Unit of the central government.
- Additional due diligence to be observed by significant social media intermediaries have been extended for online gaming intermediaries requiring them to have to display a demonstrable and visible mark of verification of such online game by an online gaming self-regulatory body on such permissible online real money game. Further such online gaming intermediaries shall not itself finance or enable financing to be offered by third party.
- The Ministry can designate as many online gaming self-regulatory bodies as it thinks is necessary for verifying an online real money game.
- Every order passed by the Grievance Appellate Committee shall be complied with by the intermediary concerned or the online gaming self-regulatory body concerned, as the case may be, and a report to that effect shall be uploaded on its website.
- A significant social media intermediary and an online gaming intermediary who enables the users to access any permissible online real money game shall have a physical contact address in India published on its website, mobile based application or both, as the case may be, for the purposes of receiving the communication addressed to it.
- Anti-Tobacco Health Warnings for Ott Content:
The Ministry of Health and Family Welfare notified the Cigarettes and other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply and Distribution) 2023 Rules, 2023 (“2023 Rules”) on 31st May, 2023 which is to come into effect within 3 (three) months from the date of their publication in the Official Gazette. Read here.
The 2023 Rules has taken the OTT platforms with storm and as per reports, leading platforms like Netflix, Amazon and Hotstar are contemplating challenging the said 2023 Rules.
- The 2023 Rules declare that every publisher of online curated contents displaying tobacco products or their use shall
- display anti-tobacco health spots, of minimum thirty seconds duration each at the beginning and middle of the programme;
- display an anti-tobacco health warning as a prominent static message at the bottom of the screen during the period of display of the tobacco products or their use in the programme;
- display an audio-visual disclaimer on the ill-effects of tobacco use, of minimum twenty seconds duration each, in the beginning and middle of the programme.
- The anti-tobacco health spots, warning and disclaimer will be made available on “mohfw.gov.in” or “ntcp.mohfw.gov.in”, and should be in the language of the audio visual content.
- The anti-tobacco warning message should be legible and readable with font in black colour on white background and with the warnings “Tobacco causes cancer” or “Tobacco kills“.
- The anti-tobacco health warning message, health spot and audio-visual disclaimer, shall be in the same language as used in the online curated content.
- The display of tobacco products or their use in online curated content is not extended to displaying brands of cigarettes or other tobacco products or any form of tobacco product placement and tobacco products or their use in promotional materials;
- Non-compliance will result in inter-ministerial committee consisting of representatives from the Ministry of Health and Family Welfare, Ministry of Information and Broadcasting and Ministry of Electronics and Information Technology, to take action suo motu or on a complaint, and after identifying the publisher of online curated content, issue notice giving reasonable opportunity to explain such failure and make appropriate modification in the content.
- As per the 2023 Rules, “Online curated content” means, any curated catalogue of audio-visual content, other than news and current affairs content, which is owned by, licensed to, or contracted to be transmitted by a publisher of online curated content, and made available on demand, including but not limited through subscription, over the internet or computer networks, and includes films, audio visual programmes, documentaries, television programmes, serials, series, podcasts and other such content;
- “Publisher of online curated content” means, a publisher who, performing a significant role in determining the online curated content being made available, makes available to users a computer resource that enables such users to access online curated content over the internet or computer networks, and such other entity called by whatever name, which is functionally similar to publishers of online curated content but does not include any individual or user who is not transmitting online curated content in the course of systematic business, professional or commercial activity.
- Lok Sabha passes the Telecommunications Bill, 2023 to replace 138-year-old Indian Telegraph Act
On 20th December 2023, the Lok Sabha passed the Telecommunications Bill 2023 to replace the Indian Telegraph Act of 1885, the Indian Wireless Telegraphy Act of 1933 and the Telegraph Wires (Unlawful Possession) Act of 1950.
Read Bill: here
- The Bill seeks to replace the Indian Telegraph Act, 1885 and the Indian Wireless Telegraphy Act, 1933.
- Authorisation will be required from the central government to: (i) establish and operate telecommunications networks, (ii) provide telecommunications services, or (iii) possess radio equipment.
- Spectrum will be allocated through auction, except for specified entities and purposes for which it will be assigned administratively.
- Telecommunication may be intercepted on specified grounds including security of the state, public order, or prevention of offences. Telecom services may be suspended on similar grounds.
- The Bill provides a mechanism to exercise the right of way for laying telecom infrastructure in public as well as private property.
- The central government may provide for measures to protect users such as requiring prior consent to receive specified messages, and creation of a do not disturb register.
5.Central Consumer Protection Authority Issues Guidelines For Prevention And Regulation Of Dark Patterns
The Central Consumer Protection Authority (CCPA), in exercise of powers under Section 18 of the Consumer Protection Act, 2019, has issued guidelines to provide for the prevention and regulation of dark patterns. The guidelines are called the Guidelines for Prevention and Regulation of Dark Patterns, 2023. Access here.
Under the Guidelines, “dark patterns” shall mean any practices or deceptive design pattern using user interface or user experience interactions on any platform that is designed to mislead or trick users to do something they originally did not intend or want to do, by subverting or impairing the consumer autonomy, decision making or choice, amounting to misleading advertisement or unfair trade practice or violation of consumer rights;
These guidelines shall apply to – (i) all platforms, systematically offering goods or services in India; (ii) advertisers; (iii) sellers.
No person, including any platform, shall engage in any dark pattern practice. Further, any person, including any platform, shall be considered to be engaging in a dark pattern practice if it engages in any practice specified in Annexure 1 of the guidelines which provide the dark pattern practices and illustrations.
The Annexure-1 of guidelines, have a list of 11 specified dark patterns. These are— false urgency; basket sneaking; confirm shaming; forced action; subscription trap; interface interference; bait and switch; drip pricing; disguise advertisement; nagging; trick question; Saas billing; and rogue malwares.
- Union Ministry of Information and broadcasting invites comments on the Broadcasting Services (Regulation) Bill, 2023
Ministry of Information and Broadcasting has proposed a draft Broadcasting Services (Regulation) Bill, 2023. The draft Bill provides for a consolidated framework to regulate the broadcasting services in the country and seeks to replace the existing Cable Television Networks (Regulation) Act, 1995 and other Policy Guidelines currently governing the broadcasting sector in the country.
The Bill modernizes the broadcasting sector’s regulatory framework by replacing the Cable Television Networks (Regulation) Act of 1995 (“CTNR Act”) and other policy guidelines currently governing the broadcasting sector in India. CTNR Act has been in effect for three decades now, serving as the primary legislation overseeing content on linear broadcasting including cable networks, however the same is now deemed inadequate to address the dynamic changes as brought by technological advancements and with the rise of platforms such as DTH, IPTV, OTT etc there is a pressing need to modernize the regulatory framework. The Bill streamlines regulatory processes, extends its purview to cover the Over-the-Top (OTT) content and digital news, and introduces contemporary provisions for emerging technologies. The Bill further seeks to provide for content evaluation committees and a broadcast advisory council for self-regulation, different program and advertisement code for different broadcasting network operators, Accessibility measures for persons with disabilities, and statutory penalties, etc.
Proposed Bill can be accessed here.
- The Jan Vishwas (Amendment of Provisions) Act, 2023 comes into effect decriminalizing multiple offences under 42 statutes
The Jan Vishwas (Amendment of Provisions) Act, 2022 amends 42 laws, across multiple sectors, including agriculture, environment, and media and publication. Acts being amended include the Cable Television Networks Regulation Act, 1994 Copyright Act, 1957, the Patents Act, 1970, the Trade Marks Act, 1999 and the Geographical Indications Act, 1999, and the Information Technology Act, 2000.
The Act converts several fines to penalties, meaning that court prosecution is not necessary to administer punishments. It also removes imprisonment as a punishment for many offences. Fines and penalties for certain offences in specified Acts are being increased. These fines and penalties will be increased by 10% of the minimum amount every three years.
Section 16 of the Cable Television Networks (Regulation) Act, 1995 dealt with the punishment for contraventions under any of its provisions. This section had provision for imprisonment, which might extend up to two years in case of the first instance and five years for every subsequent offence.
- The Cinematograph (Amendment) Act, 2023 comes into effect
The Lok Sabha passed the Cinematograph (Amendment) Bill, 2023 after it was approved by the Rajya Sabha. The Bill shall introduce additional categories for film certification, perpetual validity of certificates and penalty for unauthorized recording of films to be imprisonment between 3 months to 3 years and a fine of Rs. 3 lakhs. The Bill shall aim to bring harmonization of law with extant executive orders, judicial decisions and other relevant legislations.
Link to the Act: here
- Unauthorised Recording Amounting to Piracy: In order to check film piracy committed by way of camcording in the theatres, and to prohibit unauthorized transmission & exhibition of a pirated copy of a film, strict penal provisions have been incorporated in the Bill under Sections 6AA and 6AB.
- Exemptions under Copyright Act: Notwithstanding the content of the Act, the exemptions to copyright infringement as laid down under Section 52 of the Copyright Act, 1957 shall continue to apply, as specifically addressed under Section 7(1A) of the Bill. Accordingly, limited use of copyrighted works without permission or authorization for private or personal use, reporting current affairs, or reviewing or critiquing the work will be allowed. However, the use of any infringing copy of the film with the intent of transmitting such film or exhibit to the public for profit shall not be exempted under the proviso of Section 7(1B).
- Age-Based Certification: The Bill under Section 2(h)(i) introduces age-based categories of certification by further diving the UA category, i.e., seven years (UA 7+), thirteen years (UA 13+), and sixteen years (UA 16+). These categories are aligned with the age-based restrictions recently implemented for over-the-top (OTT) content providers under the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 under Code of Ethics. The Bill further stipulates under Section 4(2) that if the CBFC deems it necessary, they may certify a film under Section 4(2) to be subject to parental guidance for children aged between 7 to 18 years. Accordingly, the CBFC may sanction the film for unrestricted public exhibition with an endorsement to that effect containing UA marker. The Act prior to the suggested amendment, mentioned that this shall be applicable only to children below 12 years of age.
- Making the Act Constitutionally Compliant: Under the Act prior to the amendment, the Central Government had the power under Section 6(1) to interfere with the proceeding, pending or decided, of the CBFC. The Shankarappa v. Union of India1 judgment held that Central Government must not interfere in the decisions of the CBFC. It was also held that the interference of the Executive with the Judiciary would amount to violation of separation of powers. Under Section 6(1), the Bill has omitted the revisional powers of the Central Government in order to be compliant with the Shankarappa decision. This will ensure that the Act becomes constitutionally compliant, and the CBFC shall be solely responsible to independently handle such matters.
- Perpetual Validity of Certificates: The Bill has removed the restriction of 10 years on the validity of certification granted by CBFC, and states that the certification shall now be valid in perpetuity, as per under Section 5A.
- Certification of Film for Exploitation on Television: Additionally, the Bill inserts a new provision under Section 4 (3) requiring a separate certification to be procured from the CBFC for exhibiting films on ‘television or such other media as may be prescribed’, thereby stating that the CBFC may direct the applicant to carry out such excisions or modifications in the film as it may deem fit for exploitation of the film beyond theatrical exploitation.
- Ministry of Information and Broadcasting issues notification amending the Cable Television Network Rules, 1994
The Ministry of Information and Broadcasting released a notification amending the Cable Television Network Rules, 1994, establishing a system for renewing Multi-System Operator (MSO) Registrations. Furthermore, an enabling clause has been added to the rules to allow Cable Operators to share infrastructure with Broadband Service Providers in order to enhance internet penetration to the last mile.
The revised Rules for MSO Registration require MSOs to apply for registration or renewal of registration online through the MIB Broadcast Seva Portal. MSO registrations are given or renewed for a ten-year period. The renewal of registration requires a processing fee of Rs One lakh, and the application must be submitted between seven to two months of the registration’s expiration date.
- MIB issues advisory on advertisement of online betting platforms
The Ministry of Information & Broadcasting (MIB) has advised media entities, media platforms and the online advertisement intermediaries to refrain from carrying advertisements/promotional content of betting platforms.
The Advisory has been issued to all media formats, including newspapers, television channels, and online news publishers, and showed specific examples where such advertisements have appeared in the media in recent times. This is a third instance of MIB issuing such an advisory.
The Ministry has also objected to the promotion by a specific betting platform encouraging the audience to watch a sports league on its website, which prima facie appears to be in violation of the Copyright Act, 1957.
While emphasizing on the legal obligation as well as the moral duty of the media, the Advisory refers to provisions of the Norms of Journalistic Conduct of the Press Council which, interalia, mentions that “newspapers should not publish an advertisement containing anything which is unlawful or illegal…………”, and further that “The newspapers and periodicals should scrutinize the advertisement inputs from ethical as well as legal angles in view of the editor’s responsibility for all contents including advertisement, under Section 7 of PRB Act, 1867. Revenue generation alone cannot and should not be the sole aim of the Press, juxtaposed much larger public responsibility”.
The Ministry had earlier issued Advisories in the months of June and October, 2022 stating that betting and gambling are illegal, and hence direct or surrogate advertisements of such activities falls foul of the Consumer Protection Act, 2019, the Press Council Act 1978, Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021, and other relevant statutes.
The Advisory issued can be accessed here.
Other notable highlights:
1. Madras High Court Inaugurates the IP Division and Notifies Intellectual Property Division Rules, 2022
The Madras High Court on April 12, 2023, inaugurated the Intellectual Property Rights (IPR) Division, making it the second High Court after the Delhi High Court with a dedicated IP Division to hear IPR disputes. The relevant rules governing the division- Madras High Court Intellectual Property Division Rules, 2022 were notified on April 6, 2023. Access here. The Rules are applicable with respect to practice and procedure for ordinary original, appellate, criminal, and writ jurisdiction of the Court but do not apply to penal provisions of the IP statutes.
2. ASCI Introduces New Guidelines for Advertisements for Charitable Causes, Will Now Require Crowdsourcing Platforms to Disclose Fees Charged by Them
The Advertising Standards Council of India released new guidelines for advertisements for charitable causes with emphasis on Chapters 1 & 2 which require ads to be truthful and avoid causing grave or widespread harm or offence respectively.
The guidelines include prohibiting any form of shaming or guilt-tripping individuals who do not support the charity, and avoiding the use of graphic images that disrespect the dignity of those in need, especially children. Distressing images will be required to be blurred and accessible only to interested viewers and Advertisers must disclose if funds raised for a specific case or beneficiary could be used for other purposes. Additionally, crowdsourcing platforms must transparently state any fees charged for managing or raising donor funds in the advertisements.
Read the guidelines here.
3. Centre releases additional guidelines for Health and Wellness Celebrities, Influencers and Virtual Influencers
The Department of Consumer Affairs, under the Ministry of Consumer Affairs, Food and Public Distribution, has released Additional Guidelines for celebrities, influencers and virtual influencers in the field of health and wellness. These guidelines are an extension to the Guidelines for Prevention of Misleading Advertisements and Endorsements for Misleading Advertisements, 2022.
The Additional Influencer Guidelines for Health and Wellness Celebrities, Influencers and Virtual Influencers has been developed after detailed discussions with all stakeholders including Ministry of Health, Ministry of Ayush, Food Safety and Standards Authority of India (FSSAI) and Advertising Standards Council of India (ASCI). The additional guidelines aim to deal with misleading advertisements, unsubstantiated claims and ensure transparency in health and wellness endorsements. Under the guidelines, certified medical practitioners and health & fitness experts holding certifications from recognized institutions when sharing information, promoting products or services or making any health-related claims, must disclose that they are certified health/fitness experts and medical practitioners.
Celebrities, influencers and virtual influencers presenting themselves as health experts or medical practitioners, when sharing information, promoting products or services or making any health-related claims, must provide clear disclaimers and these disclosure or disclaimers should be displayed during endorsements, promotions, or at any instance of making health-related assertions.
General wellness and health advice like ‘Drink Water and Stay Hydrated’, ‘Exercise Regularly and Be Physically Active’, ‘Reduce Sitting and Screen Time’, ‘Get Enough Good Sleep’, ‘Drink Turmeric Milk for faster recovery’, ‘Use sunscreen daily to protect from harmful UV rays’, ‘Oiling of hair for better growth’, etc not associated with specific products or services or not targeting specific health conditions or outcomes, are exempt from these regulations.
DoCA will actively monitor and enforce these guidelines. Violations may lead to penalties under the Consumer Protection Act 2019 and other relevant provisions of the law.
Click here for the guidelines.
4. Centre releases guidelines for celebrities, influencers, and virtual influencers on social media platform
The Department of Consumer Affairs has released a set of guidelines called “Endorsements Know-hows!” for celebrities, influencers, and virtual influencers on social media platforms. The guidelines aim to ensure that individuals do not mislead their audiences when endorsing products or services and that they are in compliance with the Consumer Protection Act and any associated rules or guidelines.
The guidelines state that endorsements must be made in simple, clear language, and terms such as “advertisement,” “sponsored,” “collaboration” or “paid promotion” can be used. Individuals must not endorse any product or service that they have not personally used or experienced or in which due diligence has not been done by them.
The department has observed that there is confusion regarding which disclosure word to use for what kind of partnership. Therefore, for paid or barter brand endorsement, any of the following disclosures may be used: “advertisement,” “ad,” “sponsored,” “collaboration,” or “partnership.” However, the term must be indicated as hashtag or headline text.
The guidelines state that the disclosure must be placed in the endorsement message in a manner that is clear, prominent, and extremely hard to miss.
In conclusion, the guidelines aim to ensure that individuals do not mislead their audiences when endorsing products or services, and that they are in compliance with the Consumer Protection Act and any associated rules or guidelines.
Read guidelines here.
5. Religious and Government Events exempted from paying royalty to collection societies
Keeping in view several complaints, grievances and representation from the general public as well as other stakeholders about alleged collection of royalties by copyright societies for performance of musical work in marriage functions, the Department of Promotion of Industry and Internal Trade (DPIIT), Government of India, has issued a public notice on 24th July 2023 reiterating that in accordance with Section 52(1)(za) of the Copyright Act, 1957, that performance or communication of any literary, dramatic, musical or sound recording work at any religious ceremony which includes marriage ceremony and social festivities associated with marriage shall not amount to copyright infringement.
With the notice, copyright societies have been directed to strictly refrain from contravening the above provision and a caution advisory has also been issued to the general public to not oblige to any uncalled for demands of any copyright society/individual/organization that contravenes Section 52(1)(za) of the Act.
It is important to note here that the Delhi High Court recently in Ten Events and Entertainment v. Novex Communications Pvt. Ltd., observed that the question of what celebrations or festivities would qualify as ‘social festivities associated with the marriage’ is a question of fact and has to be decided on case to case basis.
Read public notice here.
6. I&B has appointed nodal officers empowered to block any app or site for piracy
In a bid to curb film piracy, the government on Friday said it has appointed 08 (eight) nodal officers who have been authorised to direct the blocking or taking down of any website, app or weblink carrying pirated film content. As per media reports, the officers are Prithul Kumar, Joint secretary (films) at MIB, Armstrong Pame, Director (films)/deputy secretary (films), Ravinder Bhakar, the CEO of CBFC, and regional officers of CBFC from Delhi, Mumbai, Bengaluru, Chennai and Cuttack. They are now empowered to take direct action for the first time by the amended Cinematograph Act, which also imposes higher fines and prison terms on those involved in piracy.
Read more about it here.
B. COPYRIGHT TOP 10 CASE HIGHLIGHTS
1. Rights on Screenplay are held by the Author (i.e., screenwriter) or his heir after her/his death says RDB and Co. HUF v. HarperCollins Publishers India Pvt. Ltd. (Delhi High Court)
Justice C. Hari Shankar of the Delhi High Court, in May 2023, made an important judgment regarding the ownership of copyrights to the screenplay of the 1996 film ‘Nayak.’ The facts were simple- the plaintiff’s case is that the novelization of the screenplay by Bhaskar Chattopadhyay and publication of the novel by HarperCollins constituted infringement of its copyright, under Section 51 of the Copyright Act. Conversely, Harpercollins contended that the copyright in the screenplay vested in Satyajit Ray, and after he died in 1992, the same vested in his son Sandip Ray and the Society for Preservation of Satyajit Ray Archives, of which Sandip Ray is a member. HarperCollins also claimed that it had obtained a license from Sandip Ray and SPSRA to novelize the screenplay of the film. Refusing to injunct HarperCollins, the Court held that the first owner of the copyright would be Satyajit Ray, and the same now is vested in his son Sandip Ray and the SPSRA (Society of Preservation Satyajit Ray Archives). The main issue here was in case the author has been commissioned by the producer to write the screenplay, would such an author own the copyright for it, or if the copyright would vest with the producer? Firstly, the Court clarified that if a cinematographic film is made in respect of a part of a whole or another work in which separate copyright vests under Section 13(1), the copyright held in the cinematographic film would not affect such separate copyright, which concludes that the Plaintiff’s copyright for the film ‘Nayak’ remains valid. The Court interpreted the clause on ownership of work made during a contract of service (Section 17(c)) to not apply in situations where there is a contract between equals. The Court limited the scope of Section 17(c) to apply to contracts where the relationship between the parties is akin to that of an apprenticeship. This way, the Court refused to grant an injunction against the novelization of Nayak’s screenplay by Harper Collins Publishers India Pvt. Ltd.
2. Tips vs Wynk (Appeal) Division Bench of the Bombay High Court Affirms That Section 31D Cannot Be Made Applicable To Internet Based Services
A division bench of the Bombay High Court comprising Justice Gauri Godse and Justice G.S. Patel has affirmed the interim order passed by Justice S.J. Kathawalla of the Bombay High Court ruled that Section 31D of the Copyright Act, 1957 (“the Act”) is restricted to traditional non-internet based radio and television broadcasting and performances only and it cannot be applied to any internet based offering. We have dealt with the interim order of Justice Kathawalla in an earlier post here and analysis of the DB judgement here.
Read judgement here.
3. Inquiry into ‘Groundless Legal Proceedings’ cannot conclusively determine the question of copyright infringement, held the Manya Vejju @ MV Kasi vs Sapna Bhog (Bombay High Court)
Justice N.J Jamadar of the Bombay High Court in Manya Vejju @ MV Kasi vs Sapna Bhog confronted a question of whether the FIR constitutes a threat of groundless action under the main part of Section 60 or constitutes an ‘action’ under the proviso thereto. The Court held that it would be hazardous to lay down an abstract proposition that the FIR does not amount to a threat of groundless action or that once the FIR is filed. It noted that “if a proceeding partakes the character of action contemplated by Section 60, it cannot be construed as a groundless threat and, resultantly, Section 60 itself ceases to operate. The groundless threat of legal proceedings or liability can be in varied forms. The legislature has, therefore, designedly used the expression “or otherwise”. The form of a groundless threat cannot be confined in a straight jacket by making an effort to give illustrations. If properly construed, the form and manifestation of groundless threats hardly matter. What is of salience is, whether the threat of legal proceedings or liability about infringement of copyright is groundless.
Judgment is available here.
4. Whether street art is copyright infringement, raised the case St Art India Foundation v. Acko General Insurance (Delhi High Court)
An interesting case came before the Delhi High Court this year where it was to examine the legal question about Street Art being covered as a subject under the Copyright Rules. The facts are: an insurance company published a hoarding as part of its advertising campaign, using a photograph of a mural titled ‘Humanity’ painted on a public building in Mumbai. The company also promoted the campaign on its social media handles. Soon after, St+Art India Foundation, an organization that works on art projects in public spaces, along with Mexican painter and muralist Paola Delfin Gaytan, who created ‘Humanity, issued a legal notice calling upon Acko to remove the hoarding and social media posts containing images of the mural. The insurance company responded to the notice, saying that using the mural in its advertisement did not amount to copyright infringement. It claimed that the artwork is “fair use” as it is “permanently situated in a public place to which the public has access”. The court has noted that the hoarding, which has since been removed, was “clearly an advertisement”. In February 2024, we will know what will be ultimately decided. The court has meanwhile directed Acko to take down all online content about the mural.
Read the Order here.
5. IPRS won against private FM players in IPRS v. Pvt. Rajasthan Patrika and Ors (Bombay High Court)
In 2023, Justice Manish Pitale of the Bombay High Court, in the cases IPRS v Rajasthan Patrika Pvt Ltd and IPRS v Music Broadcast Limited, delivered a landmark judgment favoring authors. The court concurred with IPRS’s arguments that FM radio broadcasters, despite paying sound recording owners, must also pay royalties for utilizing underlying literary and musical works. The judgment emphasized the significant changes in favor of authors brought about by the 2012 amendments to the Copyright Act 1957. Notably, it affirmed IPRS’s right to claim royalties for literary and musical works incorporated in sound recordings or cinematograph films. The defendants were directed to pay royalties to IPRS within six weeks, facing interim injunctions if they failed, restraining the broadcast of music. The court highlighted that each public communication of the sound recording constituted the utilization of underlying literary and musical works, entitling authors to claim royalties on every such occasion, whether part of cinematographic films or otherwise.
Read Judgement here.
6. Not necessary to take any licenses/NOC from the copyright holders, whose recordings would be played in wedding ceremonies, Says the Court in Ten Events & Entertainment vs Novex Communications and ors (Delhi High Court)
The Delhi Court Court this year faced an interesting issue when 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 the 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. The plaintiff claimed that no such license or NOC is required, given Section 52(1)(a) of the Copyright Act. While declining to grant any relief to the Plaintiff, the Delhi HC, among other things (read Paragraph 209), noted that 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 based on the facts of that case. The present suit is, therefore, prima facie nothing less than an ingenious shortcut, 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)(a) does not justify the seeking of any such omnibus declaration of the law.
Read the Judgement here.
7. Civil dispute does not halt criminal proceedings under the Copyright Act, held in M/S Mangalore New Sultan Beedi vs State Of Karnataka (Karnataka High Court)
The Karnataka High Court has clarified that a civil dispute between parties does not automatically put a halt to criminal proceedings under the Copyright Act. The court underscored the distinction in the nature and objectives of civil remedies and criminal prosecutions under the Act. Civil proceedings focus on preventing, remedying, or compensating for copyright infringement, while criminal proceedings primarily serve a punitive purpose. The court emphasized that the statutory framework established by Parliament supports the concurrent continuation of criminal proceedings, irrespective of an ongoing civil dispute. It explicitly stated that the mere existence of a civil dispute does not provide grounds to suspend criminal proceedings under the Copyright Act.
Read the order here.
8. AR Rahman Faces Copyright Infringement Allegations Over ‘Veera Raja Veera’ Song
This year, renowned composer AR Rahman faced a copyright infringement lawsuit by classical singer Ustad Faiyaz Wasifuddin Dagar over the song ‘Veera Raja Veera.’ In Ustad Faiyaz Wasifuddin Dagar v/s Mr. A.R. Rahman & Ors, Dagar alleges it closely resembles his father and uncle’s composition, ‘Shiva Stuti.’ The Delhi High Court presided over by Justice Pratibha M Singh, noted the similarity in beat and rhythm. Dagar seeks credit for the song and presents a chart comparing musical notations. He emphasizes his lineage from the Dagar Gharana and the composition’s origins in the 1970s, performed internationally by his family. The court is examining the case.
Read the order here.
9. No copyright over ideas, Delhi and Bombay High Courts
This year, we got important clarifications from the Delhi High Court and the Bombay High Court. The Bombay High Court in Navigns Studios Pvt. Ltd vs Sameer Pandharinath Khandekar and others held that there can be no copyright on the subject of ‘family going to their native village in Konkan during Ganapati festival’. This case came in light of the suit filed by Navigan Studios Pvt Ltd against the web series ‘Devak Khari’ claiming copyright infringement. The web series dealt with the idea of family members visiting their native village Konkan during the Ganeshotsav. The Court rejected the said idea to be copyrightable for being a common practice in Maharashtra. In Another instance, the Delhi High Court, in the Bhaktivedanta Book Trust vs Https://Bhagavatam.In/#Gsc.Tab=0, held that there is no copyright protection for religious scriptures like the Bhagavad Gita or the Bhagavatam. However, the court highlighted that any interpretation, adaptation, or dramatic work derived from these scriptures would be eligible for copyright protection. Justice Prathiba M Singh emphasized that while the literal copying of the texts is not an issue, copyright law comes into play concerning how these texts are interpreted by Gurus and spiritual teachers. This ruling was made in the context of a copyright infringement claim filed by Bhaktivedanta Book Trust.
Read the Bombay High Court order here
Read the Delhi High Court order here
10. Madras High Court rules that SIMCA not bound bound by Copyright Board Order of 2010, further upholds the 2% NAR royalty and modifies the CRB order by providing Rs. 660 per needle hour as minimum floor rate
The Madras High Court recently in a case titled M/s.Phonographic Performance Limited v Entertainment Network (India) in relation to Copyright Board Order Appeals stated that South India Music Company Association (SIMCA) is not bound by the Copyright Board Order. Further, upholding the royalty determined by the Copyright Board at 2% of the net advertising revenue to be paid by radio stations as compulsory license fees to copyright owners and additionally, the order also modified by providing a minimum floor rate payable to the Appellants at Rs.660/- (Rupees Six Hundred and Sixty only) per needle hour uniformly irrespective of the timing or city/town when the songs were played.
Read order here.
Other notable cases:
1. Humans of Bombay, PoI cannot use each other’s copyrighted material, but no copyright over ideas, held in Humans of Bombay Stories Private Limited vs POI Social Media Private Limited. (Delhi High Court)
If you follow Instagram, you will know who are Humans of Bombay and PoI are. And if you knew them, you would not have missed the recent copyright combat between HoM and PoI. The case was initiated by HoM against PoI, alleging copyright infringement for copying their unique storytelling format and content without consent. PoI argued that HoM had borrowed content and the storytelling concept from Humans of New York (HONY). The court, while deciding the case, emphasized the established legal principle of the idea-expression dichotomy. This means that while platforms cannot use each other’s copyrighted work, there can be no monopoly in running a storytelling platform. The court recognized the need for every platform to adopt its creative expression to convey and express public stories. SpicyIP carried an excellent post on this, here.
Read the order here.
2. Section 32 license granted to translate literary work in Marathi, in Anil Karkhanis v. Kirloskar Press and Anr (Bombay High Court)
This year, the Bombay High Court in Anil Karkhanis v. Kirloskar Press and Anr (assumably) granted the first Section 32 license to translate literary work in Marathi from English. The ex-parte judgment, filed by Anil Kharkhanis for translating Madeleine Slade’s autobiography, “The Spirit’s Pilgrimage” (Mira Behn), meticulously outlined the Section 32 requirements and Rules 32-35. The judgment’s topical importance aside, it is poised to serve as a valuable reference for future courts dealing with similar translation license matters.
Read the Judgment here.
3. Delhi High Court passes its first ‘Dynamic Injunction’ order against ‘Stream Ripping’ websites in a Copyright Infringement Suit filed by Music Labels.
Delhi High Court, in a first of its kind order, restrained rogue websites by way of dynamic injunction conducting infringement activities in the nature of ‘Stream Ripping’. The order was passed in a copyright infringement suit, being CS(COMM) 13 of 2023, filed by three music labels viz. Sony Music Entertainment India Private Limited, Universal Music India Private Limited and Warner Music India Private Limited.
Infringement by way of ‘Stream Ripping’ allows any users to be able to download permanent audio/video MP3/MP4 on any device. The Defendants’ websites were allowing permanent downloads of Plaintiffs’ songs on any user device, thus, bypassing technology protection measures of the online streaming platforms.
A user in such case has to simply go to any online platform, let’s say for the purpose of illustration the same being ‘YouTube’, which also delivers video and audio content of Plaintiffs’ works; search for the relevant song/audio-visual recording which is being streamed on YouTube in an authorized manner; copy the URL from YouTube; simply paste the same in the search box of the infringing Stream Ripping Website of the Defendants; the said infringing website of the Defendants would then convert the said content into MP3 and MP4 format and make the same available for download, which is otherwise not available for download on YouTube, thus, bypassing/circumventing/violating technology protection measures of YouTube and actively participating and/or providing tools for conducting infringing activities.
Read order here.
4. Bombay High Court passes its first ‘Dynamic Injunction’ directing ‘Instagram’ to remove the infringing content of web-series ‘Scam 1992: The Harshad Mehta Story’ being used by various Instagram accounts/handles.
Hon’ble Bombay High Court, inter alia, for the first time directed ‘Instagram’ the social media platform owned and operated by Meta Platforms Inc. by way of dynamic injunction to remove/delete/take down/disable infringing URLs/content/handles/posts shared by the Plaintiff pertaining to their popular web-series ‘Scam 1992: The Harshad Mehta Story’. This dynamic injunction was in addition to the injunction granted by the Hon’ble Court against Defendant Nos. 2 to 34, which are Instagram handles, identified by the Plaintiff as being infringing their copyright in the said web-series.
The Plaintiff, in this case, claimed to be the owner of copyright in the said web-series, who thereafter provided a licence to Sony Pictures Network India Pvt. Ltd. to stream the said web-series on their OTT platform viz. SonyLiv. Defendant No. 1 is Meta Platforms Inc. who owns ‘Instagram’ and Defendant Nos. 2 to 34 are Instagram Handles/accounts who were found to be illegally using/reproducing clips / abridged versions / short versions / short snippets of the audio-visual recordings, as well as images / stills, forming part of the said web-series without any permission/authorisation of Plaintiff, thus, inter alia infringing Plaintiff’s copyright in the said web-series. The Plaintiff had lodged several complaints with Defendant No. 1 using their grievance mechanism but the issues were not addressed.
After perusal the material, the Court observed that
“The plaintiff has placed on record the steps taken in the matter for redressal of its grievance. The plaintiff has repeatedly approached defendant No.1 for redressal of its grievance. It seems that defendant No.1 has not been able to respond in a positive manner and as on date, it does not appear that defendant No.1 has shown any inclination to take appropriate action against the said activities of defendant Nos.2 to 34. could be termed as a dynamic injunction. In the facts and circumstances of the present case and the manner in which defendant Nos.2 to 34 appear to be using Instagram platform, this Court is of the opinion that a strong prima facie case is indeed made out on behalf of the plaintiff for granting such exparte ad-interim relief, which may amount to a dynamic injunction.”
Read order here.
5. Delhi High Court restrains 44 rogue websites from streaming content of six American studios
The Delhi High Court granted a ‘dynamic+ injunction’ order in favour of six America studios viz, Netflix Studios, Disney Enterprises, Warners Bros, Columbia Pictures, Paramount Pictures, and Universal City Studios and restrained 45 rogue websites as well as their mirror/redirects or alphanumeric variations from streaming or making available for download existing and future content of these studios [Universal City Studios LLC & Ors v Fztvseries.mobi & Ors].
“Accordingly, Defendant Nos. 1 to 45 arrayed as Annexure A, which are all rogue websites shall stand restrained from streaming, reproducing, distributing, making available to the public and/or communicating to the public, in any manner, any copyrighted content of the Plaintiffs including future works of the Plaintiffs,” the Court ordered. The Internet Service Providers (ISPs), Department of Telecommunications and the Ministry of Electronics and Information Technology (MeitY) were ordered to block these websites.
“The Domain Name Registrars (DNRs) of the rogue websites’ domain names, upon being intimated by the Plaintiffs shall lock and suspend the said domain names. In addition, any details relating to the registrants of the said domain names including KYC, credit card, mobile number, etc. be also provided to the Plaintiffs,” the Court said.
Read order here.
C. TRADEMARK TOP 10 CASE HIGHLIGHTS
1. Delhi High Court holds that trade marks can be used as Google Ad keywords
The Ld. Division Bench of the Hon’ble Delhi High Court recently revoked the injunction granted in favor of MakeMyTrip by the Ld. Single Judge against Google, Google India (collectively, “Google”) Booking Netherlands and Booking India (collectively, “Booking.com”) for using the trade mark ‘MakeMyTrip’ together/in conjunction, with or without spaces as a keyword in Google Ads Program (Google Ads program makes use of keywords for displaying of sponsored Ads on the search engine result page).
It was MakeMyTrip’s case that upon a google search of the term ‘MakeMyTrip’, the sponsored links of Booking.com advertisements should not appear on the result page. The Bench held that MakeMyTrip cannot seek such injunction on the basis of their trademark rights.
The Bench held that since Booking.com is a popular website, there are little chances of a consumer being confused by the said website with respect to MakeMyTrip. In order to come to the conclusion, the primary issue that was dealt with by the Hon’ble Court if the mark MMT was infringed by Booking.com. The Hon’ble Court answered this issue in negative since every use of a trade mark cannot amount to its infringement.
The judgement has led to a debate in the IP circuit of India as this opens floodgates for third-party to pay for ads to be associated with a prominent keyword, when the parties are in the similar/same field of business and have their own set reputation and the target consumers are educated enough to understand the difference in the two entities.
Read judgement here.
2. Delhi High Court Division Bench: All IPR suits cannot be valued over 3 lakhs
The Division Bench of the Delhi High Court in Pankaj Ravjibhai Patel trading as Rakesh Pharmaceuticals v. SSS Pharmachem Pvt Ltd, has overruled the Judgement passed by the Single Judge in Vishal Pipes Ltd. vs. Bhavya Pipe Industries (2022). While dealing with an appeal wherein the appellant argued that the commercial court decided to assess the specified value and suit value on the basis of Vishal Pipes, ignoring that the suit was already valued at 10 lakhs, thus exceeding the 3 lakhs threshold.
The Bench set aside the impugned order stating that the mistake on the part of the appellant to submit particulars to justify the specified value was curable and did not merit vacation of the injunction. In doing so, the court expressed its reservation on some of the findings of the Vishal Pipes judgement and went on to assess the directions passed in it.
The Division Bench further observed that Vishal Pipes paint a general picture and cannot be applied to all cases. The Bench further passed a direction to revert the matters that may have been transferred owing to the Vishal Pipes judgement.
Read judgement here.
3. Trademark Registry Can Send Documents Via Email
The Delhi High Court in M/s Mex Switchgears Pvt. Ltd vs Vikram Suri has held that where an applicant or opponent provides an e-mail ID, on which official communication are sent by the Registry of Trade Marks, in the application or notice of opposition constitutes an “address for service” within the meaning of Section 143 of the Trade Marks Act.
Justice Shankar said that the words “leaving them at” as employed in the provision have to be read expansively enough to cover service by e-mail ID provided by the applicant or the opponent in the application or notice of opposition.
However, Justice Shankar clarified that where no e-mail ID is provided, then sending documents by e-mail, even if it is sent to the e-mail ID of the party concerned, would not constitute service of documents.
Read order here.
4. Supreme Court on Establishing Goodwill in Passing-Off Suits –Plaintiff Required To Prove Figures Of Sale/ Advertisement Expenses To Establish Goodwill
Recently, in Brihan Karan Sugar Syndicate Private Limited vs Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, the Supreme Court has reiterated that in a passing-off lawsuit, where the establishment of goodwill associated with a product is crucial, the plaintiff must provide evidence of the product’s sales figures and furnish the expenses incurred on its promotion and advertising. It pointed out that although the plaintiff had submitted statements of sales, advertising, and sales promotion expenses in the suit, duly certified by a Chartered Accountant, the Chartered Accountant had not been presented as a witness to verify these statements. The court emphasized that while these statements could serve as important materials for assessing whether the plaintiff had made a prima facie case against the opposing party, during the final hearing of the lawsuit, the figures needed to be proven in accordance with legal procedures and standards.
Read judgement here.
5. Whether Procedural Changes Introduced By 2017 Trademark Rules Apply Retrospectively To Proceedings Under 2002 Rules? Delhi HC Larger Bench To Decide
The Delhi High Court in Sap Se Vs Swiss Auto Products And Anr has referred to the larger bench the issue of whether the rules dealing with procedural aspects, including those relating to the filing of evidence introduced by the Trademarks Rules, 2017, would apply retrospectively to proceedings initiated under the Trademarks Rules, 2002.
The bench of Justice Sanjeev Narula made the larger bench reference while dealing with the issue if the Registrar of Trademarks had rightly employed the 2002 Rules qua filing of evidence in the proceedings relating to the trademark application and opposition, while the Rules were in force.
The bench remarked that it was unable to concur with the view expressed by the Co-ordinate Bench in Mahesh Gupta v. Registrar of Trademarks and Anr, where the court had held that even after the enactment of the Trademarks Rules, 2017, the filing of evidence would be governed by the 2002 Rules if the proceedings relating to the trademark application and opposition were initiated under the 2002 Rules.
While holding that the provisions regarding the timelines for filing of evidence are merely procedural in nature, the court held that Mahesh Gupta judgment does not take note of the decisions of the Supreme Court regarding the retrospective application of procedural amendments.
The bench ruled that there was a need for clarity on whether the procedural changes introduced by the 2017 Rules apply retrospectively to the ongoing proceedings initiated under the 2002 Rules.
Noting that the 2017 Rules relating to filing of evidence have undergone considerable changes, the court said that a determination on this crucial aspect is imperative and that different interpretations would lead to different outcomes resulting in legal uncertainty.
Therefore, the court said that a definite ruling by a Larger Bench would ensure consistency and predictability in the application of the Rules.
The court has also referred to the larger bench the issue regarding whether the failure to file evidence in support of the trademark application would tantamount to ‘anything done under the Trademarks Rules, 2002’, which is saved by Rule 158 of the 2017 Rules and would continue to be governed by the 2002 Rules.
Read order here.
6. Evidence By Way Of Affidavit Not Mandatory When Documentary Evidence Sufficient For Determining Well-Known Status Of Trademark: Delhi High Court
The Delhi High Court in Kamdhenu Ltd vs Registrar of Trademarks has held that when documentary evidence is sufficient for determining the well-known status of a trademark, the filing of evidence by way of affidavit is not mandatory.
Justice Prathiba M. Singh considered the question about the nature of the evidence, and the documents required to be filed by an applicant for determination as a well-known trademark under Section 11 of the Trade Marks Act, 1999, read with Rule 124 of the Trade Mark Rules, 2017.
The court said the evidence would have to be substantially documentary in nature, which would establish contemporaneous and continuous use, reputation and goodwill.
The court noted that Rule 124 of the 2017 Rules uses the word “evidence and documents” and said the same could also include affidavits by way of evidence and other documents.
The court said the nature of the determination by the Registrar would in any event entail filing of the documentary evidence, as mere affidavits by way of evidence without supporting documents may not even be sufficient to establish the well- known status of the mark.
Considering the legal position, particularly the Evidence Act and the Public Notice issued for inviting applications to recognize well-known trademark, the court held that in order for a determination of well-known status of a trademark, affidavit by way of evidence cannot be held to be a mandatory requirement for grant of well- known status under the 1999 Act and the 2017 Rules. “However, documentary evidence would be required,” it added.
Analyzing the Trademarks Act and Rules, the court added that if the Registrar is of the opinion that any particular documents need to be supported by way of an affidavit, an opportunity can be given to the applicant to file such an affidavit rather than rejecting the application in a completely summary manner.
Read order here.
- Delhi High Court: “SUBERB” is not phonetically similar to “SUBWAY”
Vide order dated 12.01.2023, the Hon’ble Single Judge of the Delhi High Court had dismissed SUBWAY”s prayer for interim injunction. The Delhi High Court had held that Subway LLC cannot claim exclusivity over the word “SUB” in the content of eateries serving submarine sandwiches.
The Court further noted that the word “SUB” is publici juris in terms of eateries. The order has come in the suit filed by Subway LLC against Suberb, alleging deceptive similarity. ‘Subs’, being well-known abbreviation of submarine sandwiches, are part of common knowledge.
Subway IP LLC last year moved court against Infinity Foods LLP and other individuals being aggrieved by the use of brand name and logo “Suberb” with a yellow and green colour scheme, alleging that it was identical to its mark “Subway”.
The Representation of the Marks is as under:
During the pendency of the suit, the defendants sent an e-mail to Subway offering to make certain changes in their logo, colour combination used in signage outside their restaurants.
The email said that the defendants will not use yellow or green colour either in the signage or the S logo and that they will pull down the websites which copied the text found on Subway’s website. It was also undertaken that the names of the sandwiches “Veggie Delicious” and “Sub on a club” will be changed to “Veg loaded regular” and “Torta Club.”
The court also said that the modifications carried out by the defendants in respect of the two marks concerning the sandwiches, “sets at rest” any allegation of infringement which could be levelled by Subway.
Justice Shankar also said that the marks “Subway” and “Suberb”, when used in the context of eateries serving submarine sandwiches, are not deceptively similar, as the word “Sub” is publici juris and common to the trade.
The court added that the words “Way” and “Erb” are neither phonetically nor otherwise similar.
Read order here
8. Bombay High Court directs GoDaddy to inform Swiggy about each instance when a domain name containing trademark ‘SWIGGY’ is registered
The Bombay High Court ordered GoDaddy, a Domain Name Registrar, to notify Swiggy whenever a domain name containing its trademark ‘SWIGGY’ is registered. However, the court refused to prevent GoDaddy from registering future domain names that infringed on Swiggy’s trademark. The Hon’ble Court further said that Swiggy will be free to seek relief against any future infringements as soon as GoDaddy becomes aware of them.
The Hon’ble Court, however refused Swiggy an omnibus and global temporary injunction. To come to this conclusion, the Court relied on the Snapdeal case decided by the Hon’ble Delhi High Court.
Read order here.
9. Delhi High Court grants interim injunction in favour of Casio musical keyboard
The Delhi High Court recently granted a permanent injunction in favor of the Japanese electronics company Casio regarding its “Electronic Keyboard” musical keyboards. Casio took legal action against Riddhi Siddhi Retail Venture for selling musical keyboards under the brand name Nexus 32 and with the registered trademark Blueberry, which closely resembled Casio’s design and features. Despite the defendant’s argument that the plaintiff’s design was not unique and similar to other products in the market, the court determined, after reviewing the physical samples of both keyboards, that the two were deceptively similar in design.
Read order here
10. “FABIO” or “FAB!O” vs OREO – the Delhi High Court restrains Parle from using “FABIO/FAB!O after OREO alleges infringement
In its recent order in Intercontinental Great Brands v Parle Product Private Limited, the Delhi High Court restrained food processing company Parle from selling its vanilla cream-filled chocolate sandwich biscuits in the packaging with the mark ‘FABIO’ or ‘FAB!O’ because of its resemblance and deceptive similarity to ‘OREO’ biscuit. The judge said that the way in which the defendant has declared that its ‘FAB!O’ mark is required to be pronounced as ‘fab-ee-yo’ amounts to a candid acknowledgement that ‘FAB!O’ is required to be pronounced like ‘OREO’, which would be pronounced ‘or-ee-yo’.
Further, the court went on to hold that a consumer of average intelligence and imperfect recollection who has earlier purchased and had the Oreo cookie would, when he sees the Fab!o cookie pack, be clearly likely to associate the Fab!o cookie with the Oreo cookie that he had earlier enjoyed.
The defendant vide the order was also restrained from manufacturing, packing or selling their vanilla cream filled chocolate sandwich biscuits in the impugned pack or using the impugned trade dress.
A comparison of the Plaintiff’s and the Defendants packaging/trade dress is as under;
Read order here.
OTHER NOTABLE TM CASES
1. Fevicol v. Tickawoo: Bombay High Court Finds No Prima Facie “Deceptive Similarity” In Logos, Grants Interim Relief For Certain Products
The Bombay High Court held that there is no prima facie deceptive similarity between Fevicol manufacturer Pidilite Industries’ logo having two elephants against backdrop of a sunset and Chiripal Industries’ logo containing word Tikawoo with the device of a rhino against the backdrop of sun.
“Merely because Sun is shown in the background of the image of a Rhino in the impugned mark of the defendant (Chiripal), it cannot be said that there is either deceptive similarity or a case of slavish copying of the registered trademark of the plaintiff (Pidilite) or artistic work in the trademark of the plaintiff, which consists of two elephants pulling in the opposite direction with Sunset in the background, Justice Manish Pitale held while refusing to restrain the defendant from using the logo.
The court however, granted interim injunction in favour of Pidilite restraining Chiripal from using marks similar or identical to plaintiff’s “HEATX”, “LW+” and “LW” marks.
The court reiterated that while comparing rival marks, overall impression must be appreciated rather than going into each feature of the marks to ascertain similarity or difference.
The court held that the prima facie plaintiff’s registered trademark HEATX and the defendant’s mark HEAT-TIK can give rise to confusion. The court accepted the plaintiff’s contention that if the two words are spoken in hurried manner, there can be confusion as persons from different backgrounds and coming from various parts of the country can pronounce English words in a manner that can give rise to confusion. Further, the overall colour scheme of the defendant’s product with the use of the impugned mark HEAT-TIK is likely to create confusion in the minds of the consumer when compared with plaintiff’s HEATX presented in specific colour scheme, the court held.
The court further said that the there is no prima facie case showing deceptive similarity between the words Dr. Fixit and Mr. Engineer. It compared the image of the man wearing yellow construction helmet in the plaintiff’s registered mark with the image of a man wearing a construction helmet in the defendants registered mark and held that there is no prima facie case of deceptive similarity or copying on part of the defendant.
The court held that there is prima facie deceptive similarity in terms of the plaintiff’s marks LW and LW+ against the defendant’s mark LWP+. It rejected the defendant’s contention that Pidilite cannot claim monopoly over LW and LW+ as they are short for liquid waterproofing which is a descriptive term. The defendant failed to show prima facie unsustainability of the registration of the plaintiff’s trademarks LW and LW+.
Read order here.
2. Bombay High Court denies interim relief to ‘Phonepe’ in trademark infringement suit; Holds that trademarks ‘phonepe’ and ‘postpe’ have no phonetic similarity
The Bombay High Court refused to grant interim relief to PhonePe for alleged infringement of its trademark “PhonePe” by Resilient Innovations’ trademark “postpe”. Justice Manish Pitale cited contradictions between PhonePe’s stand taken before the Delhi High Court and the Bombay High Court regarding the meaning of the word “pe”
PhonePe Private Ltd. in the present case claimed that the suffix “Pe” after the word “Phone” in its trademark has the colloquial Hindi meaning “On”. Therefore, PhonePe means services on the phone, it said. However, in a 2019 suit pending before the Delhi High Court for alleged infringement of “PhonePe” through defendant’s mark “BharatPe”, the plaintiff has claimed that the term “Pe” means the action of payment and it was a misspelling of the word “Pay”.
The Court affirmed the findings of the Delhi High Court in the earlier suit and noted, that whether the claim of the plaintiff’s suffix ‘pe’ had acquired distinctiveness and secondary meaning to the extent that the consuming public now invariably associated the mark with only the services provided by the plaintiff, is a matter for trial. Thus, when the remaining parts of the marks i.e., ‘phone’ and ‘post’ were compared, the Court did not find a prima facie case made out by the plaintiff about the similarity between the two. The Court said that “the words, ‘phone’ and ‘post’ have distinct dictionary meanings with no possibility of confusion between the two. The Court did not find phonetic similarity between the two marks, for the plaintiff to claim that a strong prima facie case was made out to grant interim relief”.
Read order here.
3. Delhi High Court Rules in Favor of BPI Sports: ‘Trade Mark Squatting’ Amounts To ‘Bad Faith’ under Trade Marks Act
The Delhi High Court observed that, ‘Trade mark squatting’ which is an internationally known intellectual property misdemeanor, amounts to ‘bad faith’ within the meaning of Section 11(10)(ii) of the Trade Marks Act, though it does not find specific place in the Trade Marks Act.
The Court was adjudicating a petition filed under Section 57 of the Trade Marks Act, filed by the BPI SPORT ’LLC, seeking removal of the trademark ‘BPI SPORTS’ registered in favor of a certain Saurabh Gulati. The US based company further said that it is a leading player in the dietary and nutritional supplements sector and that the word mark “BPI SPORTS” stands registered in its favour in the US in respect of dietary and nutritional supplements. As per the company, it started using the mark “BPI SPORTS ” in India in January 2019.
The bench observed that Gulati was aware that the mark was registered in the name of BPI Sports in the USA in the capacity of importer of the company for the India jurisdiction and that the company enjoyed global repute in the said mark. In this regard, the court noted “The intention of the respondent to capitalise on the petitioner‟s reputation with respect to the said mark appears, therefore, to be transparent”
The court however dismissed the contention of the petitioner-company that the registration of the word mark “BPI SPORTS” in favour of Gulati infringed its registered trade mark and noted “This is an obviously incorrect submission, as the petitioner holds no registration in its favour in India of the mark BPI SPORTS either as a word mark or as a devicemark, and infringement, under Section 29 of the Trade Marks Act, can only be of a registered trade mark,” It further noted that the plaint invoked Section 11(1), (2) and (3) of the Trade Marks Act and observed that “Section 11(1) and (2) are applicable where the mark whose registration is sought, is identical with, or similar to, an “earlier trade mark”.
The Court perused the provision defining ‘well known trade mark’, under clause (zg) of Section 2(1) of the Trade Marks Act, and observed that there was no declaration of the petitioner’s mark as a ‘well-known trade mark.’
Considering the facts of the case, the Court found that the petitioner was, however, entitled to relief on the basis of Section 11(10)(ii)21 of the Trade Marks Act, which requires the Registrar, while registering the mark, to take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trademark. Perusing Section 11(10)(ii), the Court said, “though the provision is worded in a somewhat open-ended fashion, requiring the Registrar to, while registering a mark, ‘take into consideration’ the bad faith of the applicant, it does not expressly state that the existence of bad faith would disentitle the applicant to registration. Statutory provisions have, however, to be interpreted in a purposive manner, and cannot be regarded as mere superfluity. Even otherwise, plainly read, the intent and purpose of Section 11(10)(ii) is obviously to disentitle registration of a mark, the request for registration of which is tainted by bad faith.”
Click here to read order.
4. 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 Narulaobserved 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.
5. 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 order here.
6. Aditya Birla restrained by Delhi High Court from Infringing Trademark registered by Under Armour
The Court held that the Aditya Birla’s mark Street Armour was deceptively similar to the Plaintiff’s under armour mark.
The main essence of Under Armour’s submission was that ARMOUR is the dominant part of UNDER ARMOUR and as the defendant’s impugned marks too end with ARMOUR, causing an infringement.
The Court admitted that there are chances that a consumer may assume that there is a relationship between the mark of the defendant and the earlier mark of Under Armour, which is a ‘prima facie’ infringement.
In the Court’s preliminary opinion, the defendant’s marks are recognised as infringing the plaintiff’s marks under Section 29(2)(b)9 of the Trade Marks Act when evaluated as complete marks.
The Court held that on the aspect of infringement and passing off, in favour of Under Armour on merits, an injunction must follow.
The court restrained the defendant from using the impugned marks and logos mentioned or any other mark which is confusingly or deceptively similar to the said marks of the plaintiff, in respect of apparel or any other goods or services which may be regarded as similar or allied to the goods in respect of which Under Armour uses its marks.
Read order here.
D. PRIVACY AND PERSONALITY RIGHTS TOP 10 HIGHLIGHTS
1. Digital Collectibles Pte. Ltd vs Galactus Funware Technology Private Limited and Anr: Delhi HC rules that use of celebrity names for art, satire permissible under right to freedom of speech.
The instant suit was filed by Digital Collectibles Pte. Ltd. (plaintiff), Dream 11’s subsidiary and a company incorporated in Singapore and carries on its business in India and worldwide under the trade name “Rario,” seeking relief of permanent injunction, on account of unlawful use of player marks and other attributes amounting to unfair competition (including passing off); unjust enrichment; tortious or unlawful interference with economic interest of the plaintiffs; and breach of personality rights against “Mobile Premier League” and an application “Striker.” Both the parties to the suit were engaged in a similar business. The suit claimed that the defendants were minting and distributing non-fungible tokens, which captured the images of players with whom the plaintiff had exclusive license agreements. The plaintiffs had alleged that the defendants had violated the “mobile rights” and “mobile activation rights” of the plaintiffs that were exclusively assigned to them by the BCCI and filed the suit for injunction and damages.
In this regard, the Delhi High Court Bench of Justice Amit Bansal observed that “In my opinion, use of celebrity names, images for the purposes of lampooning, satire, parodies, art, scholarship, music, academics, news and other similar uses would be permissible as facets of the right of freedom of speech and expression under Article 19(1)(a) of the Constitution of India and would not fall foul to the tort of infringement of the right of publicity“.
The Court noted that the information used by the defendants, i.e., player name and data concerning a player’s real-word match performance, was freely available in the public domain and could be used by anyone and in view of the same stated that “In my considered view, the use of the name and/or the image of a celebrity along with data with regard to his on-field performances by OFS platforms is protected by the right to freedom of speech and expression under Article 19(1)(a) of the Constitution of India. It is a settled position of law that protection under Article 19(1)(a) extends to commercial speech as well. Therefore, even if the defendants are using players’ names, images and statistics for commercial gain, this would be protected under Article 19(1)(a) of the Constitution of India”. Further, it noted that “It is not the plaintiffs’ case that the defendants are using any personal information such as the height and weight of the players, which is not in the public domain. The information which is available in public domain cannot be owned by anybody, including the players themselves. Therefore, such publicly available information cannot be the subject matter of an exclusive license by the player in favor of a third party.” Further, it was taken into account by the Court that “Facts which are available in public domain such as match information cannot be monopolized and even if a third-party were to publish such information for commercial gain, no actionable right arises in favour of the plaintiffs”.
The Court further took into account that the defendant uses the artwork of the players on its Digital Player Cards and not the actual photographs and took the view that “These artworks contain creative elements that distinguish them from the actual image of the players in question. As noted above, the Supreme Court of California in DC Comics (supra) held that when a work contains significant number of transformative elements or creative contributions, they become the defendant’s own expression rather than the celebrities’ likeness and would therefore be entitled to the protection under the First Amendment. As noted in Cardtoons (supra), the use of transformative elements and artistic contributions in the player cards of the defendants would be in the nature of caricature, which would constitute permissive use. Such use, in my view, would also be protected under Article 19(1)(a) of the Constitution of India“.
The court opined that the balance of convenience and irreparable harm factors are in favor of the defendants and against the plaintiffs and held that “An injunction granted at this stage would result in the closure of the business of the defendant no.2 and cause huge financial losses not only to defendant no.2 but also to the users of the Striker platform”.
A copy of the order can be accessed here.
2. Delhi High Court passes an omnibus order for Anil Kapoor to prevent misuse of his personal attributes by AI
The Delhi High Court granted an ex-parte, omnibus injunction that effectively restrained 16 entities, and the world at large, from utilizing Mr. Anil Kapoor’s name, likeness, image, and employing technological tools such as AI, face morphing, and GIFs for financial gain or commercial purposes. The Court delineated instances like parody and satire where free speech in the context of well-known persons may be protected. However, it held that tarnishing, blackening or jeopardising an individual’s personality or its attributes would be illegal.
A copy of the order can be accessed here.
3. Delhi High Court refuses to stay “Nyay: The Justice” movie based on Sushant Singh Rajput, holds that Publicity and personality rights are not heritable and do not survive the death of the celebrity
In Krishna Kishore Singh vs Sarla Saraogi, filed in the Delhi High Court, by late actor Sushant Singh Rajput’s father seeking a permanent injunction restraining the film makers of “Nyay: The Justice” from using Rajput’s name, caricature, likeness without prior permission of the legal representatives of the late actor, the single bench of Justice C. Hari Shankar held firstly that the impugned film was an overt re-enactment of the late actor’s life with an exaggerated emphasis on the circumstances that led to Rajput’s death and the following investigation.
The film in question was released in 2021 one the OTT Platform, Lapalap. While the film is touted to be a biopic of Sushant Singh Rajput and it can be deduced that any discerning viewer can draw an easy reference to the similarity of facts as portrayed in the film, the film makers argued that the film does not make any reference to the name, image or photograph of the late actor.
The Court relied on several landmark precedents pertaining to personality rights in the case of Khushwant Singh vs Maneka Gandhi [2001 SCC Online Del 1030], Titan Industries vs Ramkumar Jewellers [2012 SCC Online Del 2382], Shivaji Rao Gaikwad vs Varsha Productions [2015 SCC Online Mad 158] and opined as follows:
- That the right to publish and disseminate information in the form of a cinematographic film was guaranteed under Article 19 (1) (a) of the Constitution, as long as the same does not come under the reasonable restrictions under Article 19 (2).
- Personality rights protect the individual’s interest in his image, voice or likeness.
- Publicity and personality rights are not heritable. The right to publicity, personality and privacy rights of Sushant Singh Rajput died with his death. The same do not survive for espousal by the late actor’s father.
The Court also made a remarkable observation that the concept of ‘celebrity rights’ is completely a made-up concept and the same are not exclusive rights which are available only to celebrities. The law cannot be a tool to promote a sense of celebrity culture. Rights which emanate from one’s personality, and persona, would be available to everyone, and not only to celebrities.
Thereby, the injunction to the late actor’s father was refused by the Delhi High Court.
A copy of the order can be accessed here.
4. Bombay High Court Denies Urgent Relief to Chhota Rajan in ‘Scoop’ Series Dispute, Allows Amendment of Intellectual Property Suit
The Bombay High Court, on June 02 2023, rejected the request for immediate relief from incarcerated gangster Rajendra Sadashiv Nikalje, also known as Chhota Rajan. Rajan had sought a permanent injunction to prevent the release of the Netflix series ‘Scoop’. However, the court did grant permission to amend the commercial intellectual property suit filed by Rajan, allowing him to include the challenge against the unauthorized use of his photograph in the TV series. Rajan argued that using his photograph without his permission violated his personality rights and constituted a copyright infringement.
You may access the order here.
5. Delhi High Court Issues Notice on Penguin’s Plea Against Injunction Order On Book About Rana Kapoor:
Penguin Random House, a publishing company, had filed a plea in the Delhi High Court against a trial court order that restricted the sale and distribution of a book titled “The Banker Who Crushed His Diamonds: The YES Bank Story” about former Yes Bank CEO Rana Kapoor. The trial court had issued an ex parte ad interim injunction against the book’s publication. The High Court has asked Rana to respond to the plea and directed the trial court record be requisitioned. In the plea, Penguin has argued that the book contains fair comments based on multiple newspaper reports about Kapoor and that it does not violate Kapoor’s personality rights. It also states that the freedom of press includes reporting on the private lives of public figures, and those in public life should not be “thin-skinned.” The publishing house has further submitted that the book is in the public interest, and Kapoor had acquiesced to various stories around him, waiving his right to object to the publication of the book.
You may access the order here
6. Uphaar fire tragedy – Delhi HC declines to stay web series ‘Trial by Fire’
The Delhi High Court declined, to stay the release of web series ‘Trial by Fire’. The plea was filed by Sushil Ansal, one of the convicts in the 1997 Uphar Cinema Fire Case on which the web series is based, seeking permanent and mandatory injunction against the series and restraint of further publication and circulation of the book titled “Trail By Fire- The tragic tale of the Uphaar Tragedy”. The Court observed “Undisputedly the work authored by defendants 4 and 5 was published way back in 2016. This is clearly evident from the various newspaper articles and media reports which have been placed for the perusal of the Court. The plaintiff chose, for reasons best known to him, not to initiate any injunctive action in respect of the said work when it came to be originally published on 19 September 2016. A slothful or sluggish plaintiff seeking a seeking an injunction of the nature which is sought in these proceedings cannot be allowed to claim such reliefs”
You may access the order: here
7. Bombay High Court refuses to stay the release of The Railway Men
The Bombay High Court in Satya Prakash Chaudhary vs Yash Raj Films & Ors, via a vacation bench led by a single judge Justice Arif Doctor, declined to stay the release of the Hindi web series “The Railway Men – The Untold Story of Bhopal 1984,” The court upheld the previous decisions of the Mumbai city civil court rejecting a stay on the series. Two former Union Carbide India Limited (UCIL) employees convicted in connection with the 1984 Bhopal gas leak incident had filed appeals against the Mumbai court’s rulings. They requested a stay, claiming that the web series would be detrimental to any legal proceedings challenging their conviction.
The High Court rejected this argument, pointing out that the producers, Yash Raj Films, had announced the web series’ release date as early as November 25, 2022. It also stated that the series would include a disclaimer stating that it was a “work of fiction” inspired by true events.
You may access the order here
8. Rajasthan High Court Refuses To Stay Release Of Film ‘Sirf Ek Banda Kaafi Hai’ Allegedly Made On Life Of Asaram Bapu
The Rajasthan High Court refused an interim application seeking stay on the release of Manoj Bajpayee starrer ‘Sirf Ek Banda Kaafi Hai’, allegedly based on the life of Asaram Bapu.
The Court said that there is nothing directly found related to Asaram Bapu, which could persuade this Court to grant the relief prayed for by the petitioners.
The Court however said dismissal of the stay application will not preclude either of the parties to raise their legal issues at the time of final disposal of the writ petition, on merits.
The plea has been moved by Asaram Bapu, who is currently in jail in a rape case, and Om Prakash Lakhani, a trustee of Sant Shri Asaram Ji Ashram Charitable Trust. The plea alleges that the movie has been made on the life of Asaram Bapu without his permission and depicts him in a negative character.
Actor Manoj Vajpayee is playing the lead role in the film, which is directed by Apoorv Singh Karki and produced by Zee5 Studio and others.
According to the petition, Asaram’s reputation and privacy rights have been violated by the film, which allegedly portrays him as a villainous character named “Ravana” who has committed heinous crimes.
Considering that the movie was already been released on OTT Platform on May 23, the Court held that any interim order restraining the release of the movie at this moment would result into unwarranted and huge financial loss to the respondent-producer of the film.
Justice Pushpendra added that petitioners may later seek compensation against damages and defamation, if there is any violation of their reputation and dignity.
You may access the order here.
9. Kerala High Court dismisses PIL alleging that the movie ‘Kurup’ violated right to privacy of Sukumara Kurup
The plea was filed by an Advocate against the release of Malayalam movie ‘Kurup’ on the ground that it violated the privacy of Sukumara Kurup, a proclaimed offender, was dismissed by the Kerala High Court. The Court observed that although the movie is inspired from the life story of a proclaimed offender. However, it did not indicate the complete life story of that person, nor that the same would affect his right to privacy.
The Court further held that issuance of the certificate by the CBFC further evidenced that the concerned authorities had taken into account all the aspects regarding the movie and found it fit for certification.
You may access the order here
10. Calcutta High Court Dismisses PIL Accusing Invasion of Privacy via Pegasus and Other Software
The Calcutta High Court has rejected a Public Interest Litigation (PIL) filed by Sujit Kumar Dutta which alleged the use of gadgets and spyware like Pegasus to invade the privacy of civil society. The division bench of Chief Justice TS Sivagnanam and Justice Hiranmay Bhattacharyya found the prayers made by the petitioner to be vague and declined to entertain the petition but granted the petitioner the liberty to approach appropriate authorities if their individual privacy is invaded.
Other Notable cases:
1. Delhi HC Directed Indian Kanoon to mask an acquitted person’s identity
On 29th May 2023, an order came from the Delhi High Court SK vs Union of India directing Indian Kanoon to Mask the name of the man acquitted and disclose its policy on the Right To Be Forgotten (“RTBF”). While there is nothing novel in the case as we have had cases on the issue in the recent past (see e.g. here), this issue made us think what if this RTBF and masking the name of acquitted defendants becomes a trend. We wonder what gives impetus to the possibility of erasing or forgetting.
There can be two arguable (to some extent, overlapping) reasons for this – 1.) society’s perception when a person faces legal proceedings i.e. the perception of “the Accused is a Convict” 2.) the malicious prosecution of innocents. Appositely, the issue of RTBF is complex and judgments are not crystal clear on this in our opinion. Though the recent judgment Vysakh K.G. v. Union of India & Anr. And Other Connected Cases from the Kerala High Court is worth reading as it specifically asked legislature to make a law on this. Here, the Court negatively answered the question of, whether “Publishers of judgments, like Indian Kanoon, and other law journals, have no right to publish the details of parties ignoring the privacy rights of litigants which includes their right to be forgotten.” It instead noted that “Reporting and publishing judgments are part of freedom of speech and expression and that cannot be taken away lightly without the aid of the law.” Last year, the Madras High Court in Karthick Theodre v. Registrar General also remarked that “the “right to be forgotten” cannot exist in the sphere of the administration of justice particularly in the context of judgments delivered by Courts.” In this short post, we do not delve into the jurisprudence of RTBF or take any for/against stand, but only want the broach some questions that may help us frame better policy goals concerning RTBF.
Facts: The Petitioner is 29 years old who was acquitted in a Judgment where an FIR was registered against him under Section 376/506 of the Indian Penal Code, 1860 and charge sheet was filed. He approached the Court seeking masking of his name in a judgment. As per the said judgment, a reason he was acquitted was because “the prosecutrix’s testimony was held to be not trustworthy and reliable and was also held to be not corroborated on material points with the testimony of other prosecution witnesses.” The petitioner claimed to have suffered in his personal and family lives because of the existence of the said judgment on the internet.
Accepting the averments of plaintiff, the Court held that “since the judgment is openly available on the Indian Kanoon website and is also accessible through any web search including Google Search, till the next date of hearing it is directed that the name of the Petitioner shall be masked on the Indian Kanoon portal. In effect, therefore, if the said judgment becomes visible in a search result or google search, the name would also not be visible.” The Court also asked the respondent no. 3 (which I suppose would be Indian Kanoon, please correct us if we are mistaken as the judgment does not list all the defendants) to “place on record an affidavit stating the policy in respect of the right to be forgotten as also as to the policy in respect of masking of names in such cases including in judgments of this Court as also in orders/ decisions passed by the Trial Courts”.
Around a week or so, Indian Kanoon posted (which seems to be a response to this DHC order?) the following message on its LinkedIn page –
“Name removal from court records is no longer a grey area. The law is now well settled with Supreme Court upholding R. Rajagopal vs State Of T.N (https://lnkd.in/g3Ffasfn) in Puttaswamy judgment and very detailed order from Kerala High Court upholding our right to publish court records in Dr.Krishna Menon vs High Court Of Kerala (https://lnkd.in/gqk9nfeu).
Similarly Madras High Court in a detailed judgment has upheld our right in Karthick Theodre vs The Registrar General (https://lnkd.in/gYjRQH7t) and the Gujarat High Court has very categorically denied the applicability of Article 226 to remove court judgments from private website in Dharamraj Bhanushankar Dave vs State Of Gujarat (https://lnkd.in/g9W7YwqU).
The law is on our side and the high courts are bound by the Supreme Court decision in R. Rajagopal vs State Of T.N. Also the courts can go through the final judgments from various high courts that have upheld our right to publish court records. Judicial discipline now requires courts to issue us notice in case of a doubt and we will file detailed reply. The courts should no longer grant ex-parte interim orders.
Reputation is not harmed by publication of public records. In fact the reputation is determined by what public records say. Not how much bank balance one has.”
Surely, the cases provided by Indian Kanoon are worth taking a look at to understand the status of RTBF. But let’s also look at other obvious but not-so-apparent details and implications that the RTBF trend carries.
E.g. the Court provided the Indian Kanoon link of the judgment (here: https://indiankanoon.org/doc/162755898/) wherein the name of the Petitioner is to be masked within a week. However, the link is not working currently and the entire judgment is unavailable. Given the masking of a name from the judgment is a technical terrain of Indian Kanoon, we wouldn’t wade into that. However, the unavailability of the judgment does signal something undesirable towards its impact on the access to knowledge.
What wonders us more is whether IndianKanoon is the only place where the judgment was available. There would be other websites where the same would be available freely or by payment. Google is a gigantic zone! Should all those websites/repositories erase (or forget!) the name of the petitioner? Should the official records of the court as available on the Court websites also erase the name of the petitioner?
Before further legitimizing this tricky terrain of RTBF, a thorough thought should be given to – who accesses and wants to access petitioner’s presence in the judicial proceedings and a judgment mentioning his name. Simultaneously, the question that how a person’s name in the judgment is accessed needs to be carefully deliberated. Not everyone would be interested in finding a judgment/order or trace legal proceeding where the petitioner is accused. But if someone is interested in finding the name of petitions s/he can anyway find it. More importantly, not every Google search with petitioner’s name would produce the results pertaining to petitioner’s pending or decided cases unless the petitioner’s name is super-rare or/and the case is very famous. In the later scenario, there is anyway less sense erasing the name as everyone knows about the case. It is an open secret that corruption is inevitable in any political setting, hostile witness is a known judicial phenomenon, the death (or murder) of witness before/during the trial/evidence is not unimaginable. An innocent can end up being convicted and a criminals can be proven innocent.
Given all these problematic possibilities, the present order serves as a valuable lesson to approach the Right to Be Forgotten (RTBF) trend with caution and contemplate their implications thoroughly before embracing them without reservation.
E. CONTENT REGULATION TOP 10 HIGHLIGHTS
1. Case against Fact Check Unit | Madras High Court decides to await Bombay High Court verdict
The Madras High Court on Monday decided to await the decision of the Bombay High Court in a case filed by satirist Kunal Kamra against the Centre’s decision to establish a Fact Check Unit (FCU), before taking a call in a case filed against a similar FCU established by the Tamil Nadu government.
Chief Justice Sanjay V. Gangapurwala and Justice D. Bharatha Chakravarthy adjourned a public interest litigation petition filed against the State government’s FCU to December 6, after they were informed by the counsel for the parties that the Bombay High Court was expected to deliver its verdict on December 1.
The AIADMK’s IT wing office-bearer, R. Nirmal Kumar, had filed the PIL. In the PIL, it has been said that the government had made a statement in the Assembly only for setting up a social media cell in the Directorate of Information and Public Relations (DIPR).
However, it had gone about creating a FCU which, as per law, could be created only by the Centre under the Information Technology Act and the statutory rules framed thereunder. Even the Centre’s power had been questioned before the Supreme Court as well as the Bombay High Court, the Petitioner claimed.
When the Chief Justice sought to know what was wrong in establishing the FCU, which could help the police in identifying fake news, the senior counsel for the Petitioner said there was a threat of the FCU turning out to be an agency to impose censorship as far as criticism of government activities were concerned.
The world over, governments have stayed from constituting such FCUs. Fact checking of social media content was being done only by private entities affiliated to the International Fact Checking Network, he added.
He also told the court that the State government had created as many as 80 posts in the FCU and appointed a Mission Director too without publicising the recruitment process. However, senior counsel P.S. Raman and Additional Advocate-General J. Ravindran said only eight posts had been filled so far.
They also told the Division Bench that the FCU was necessitated in view of falsehoods such as the fake news on mass killing of Biharis in Tamil Nadu having been shared widely on social media recently. The judges decided to hear them further on December 6.
2. Centre planning new regulations, penalties for both creators and platforms to deal with deepfakes
The government is planning new regulations that may impose penalties on both creator and platform hosting deepfakes as it looks to clamp down on what is described as “a threat to democracy”.
Amid some celebrities reporting their faces being manipulated onto another video, new protection regulations being considered will look at measures including watermarking AI-generated content, deepfake detection, rules for data bias, privacy and guards against concentration.
India has over 80 crore internet users, which are projected to cross 120 crore in two years. Deepfake is a piece of technology that leverages AI to alter a person’s appearance, voice, or actions in a way that can be realistic and challenging to discern from authentic, unaltered content. Recent deepfakes have brought to the fore the urgency of a regulatory framework for AI in the new Digital India law.
Deepfakes shot into prominence after actor Rashmika Mandanna’s face was found to have been used in an embarrassing video earlier this month. Some other celebrities including Katrina Kaif and Kajol were also reported to be victims of deepfake.
3. Ministry of Information and Broadcasting asked three OTT platforms to remove ‘obscene’ content
The Ministry of Information and Technology has pulled by three OTT platforms, namely, Hunters, Besharams and Prime Play for hosting obscene content and have ordered the said platforms to take down such content or face action in this regard. According to authorities, various web-series on these platforms were evaluated, and the content was judged to be prima facie obscene and borderline sexual. As a result, in the last week of October, notices were issued for violations of the IT Rules, 2021, and other laws related to obscenity and vulgarity, including Sections 67 (publishing or transmitting obscene material) and 67A (publishing or transmitting material containing sexually explicit act) of the IT Act, 2000. Five days were provided to the platforms to guarantee compliance.
4. ‘Fact Finding Committee’ To Watch Controversial Film On Bhagwan Mahavir
Amid the allegation of the Mumbai’s Jain community that a film on Bhagwan Mahavir offends their religious sentiments, the Maharashtra State Human Rights Commission (MSHRC) has now ordered the formation of a fact finding committee.
The Hindi language feature film, 1080 Legacy of Mahaveer, based on the lives of Mahavir and Tirthankars or teachers of the Jain faith was slated for release on October 27. However, the launch has been indefinitely postponed owing to the controversy.
5. Central Government says that IT Rules amendment is to control fake news, not to target satire against government
The Central government informed the Bombay High Court during the hearing of petitions challenging amendments to the Information Technology Rules of 2023 that humour or satire against any administration is always welcome as long as it is not abusive or involves obscenity. Solicitor General Tushar Mehta, arguing on behalf of the Ministry of Electronics and Information Technology (MeitY), stated that the guidelines do not ban expressing one’s viewpoint or critical analysis of the government, but are simply meant to limit false news.
6. Supreme Court: Self Regulation of news channels needs to be strengthened
A bench of Chief Justice of India DY Chandrachud and Justices JB Pardiwala and Manoj Misra observed that the apex court wants to ensure that the self-regulatory mechanism for for monitory television news channels is strengthened. The Court has News Broadcasters and Digital Association to come up with a revised set of self-regulatory guidelines.
7. OTT content in line with the IT Rules: Industry lobbying groups tell MIB
Two of India’s biggest over-the-top (OTT) industry lobbying groups have informed the government that their OTT platforms ensure compliance with IT Rules before the content is uploaded. In separate but identical letters to the Ministry of Information and Broadcasting (MIB), the Indian Digital Media Industry Foundation (IDMIF) and the Internet and Mobile Association of India (IAMAI) stated that OTT platforms have agreed to go through a thorough process to ensure that the content they produce is in accordance with the Code of Ethics of the IT Rules 2021.
8. Anurag Thakur Meets with OTT Platforms; Discusses Content Regulation, User Experience and Accessibility for the Specially Abled
The Minister of Information & Broadcasting met with various OTT platform representatives in New Delhi and discussed content regulation, user experience, enhancing accessibility for the specially-abled, and overall growth & innovation of the sector.
Having announced a new ‘Best Web Series Award’ at the International Film Festival in Goa to be presented to a web series showcasing exceptional original work in an Indian language earlier in the day, he emphasised the responsibility of platforms to avoid vulgarity and abuse camouflaged as ‘creative expression’ in the meeting.
“India is a diverse country; OTTs must also reflect the collective conscience of the country and provide a healthy viewing experience for people of all age groups.” he said in a tweet.
9. Government Informs Bombay High Court: Websites Hosting ‘False’ or ‘Misleading’ Content Despite Being Flagged Will Have to Defend Their Decision in Court
According to an affidavit submitted by the Union Ministry of Electronics and Information Technology (MeitY) to the Bombay High Court, websites hosting information flagged as ‘false’ or ‘misleading’ by the Government’s Fact Checking Unit (FCU) will have to be prepared to justify their decision in court if action is taken. The affidavit stated that the immunity from liability granted to websites under Section 79 of the IT Act would not apply if they disregarded the FCU’s flags.
E. INFORMATION TECHNOLOGY TOP 10 HIGHLIGHTS
1. Centre constitutes three Appellate Committees under the IT Rules, 2021
Based on the recently amended Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021, the Centre established three Grievance Appellate Committees (“GAC”). The notification to that effect was issued on January 28, 2023. According to the notification, three Grievance Appellate Committees with three members each have been formed. According to the notification, three Grievance Appellate Committees with three members each have been formed. The need for GAC arose as a result of a large number of grievances being left unresolved or inadequately addressed by Internet Intermediaries. GAC is expected to foster a responsive culture among all Internet Platforms and Intermediaries toward their customers. The GAC will be a virtual Digital platform that will only operate online and digitally, with the entire appeal process, from filing to decision, taking place digitally.
2. Government to ensure strict action to stop vulgar content on OTT Platform says India’s I&B Minister
India’s Minister of Information and Broadcasting (I&B Ministry) Anurag Thakur said at a press conference on March 19, 2023 said that the government is ready to amend rules for over-the-top (OTT) streaming platforms like Netflix, Prime Video, and Disney+ Hotstar to curb obscenity and profanity if the need arises. Shri Anurag Thakur said, “abusive language in the name of creativity will not be tolerated. The government is serious about the complaints of increasing abusive and obscene content on OTT platforms. If there is a need to make any changes in the rules regarding this, the ministry is willing to consider that. These platforms were given freedom for creativity, not obscenity. Whatever necessary action needs to be taken on this, the government will not back down from it.
3. Intermediary not required to take action against alleged infringers on user’s complaint under Rule 03 of the IT Rules, 2021: Delhi High Court
The Delhi High Court while hearing a suit filed by a manufacture and seller of car covers against Flipkart and eight entities who were allegedly selling similar products by copying the design, look and feel of the car covers sold by it on the e-commerce platforms observed that an intermediary is not required to take action against alleged infringers on receiving a complaint of the user regarding the infringing acts on the portal under Rule 3 of the IT Rules, 2021.
The Plaintiff alleged that by failing to remove the allegedly infringing lists from its website despite an intimation by the Plaintiff, Flipkart infringed the statutory provisions under the IT Rules, 2021. The Counsel appearing for the Plaintiff submitted that Flipkart has violated Rule 3(2) of the IT Rules, 2021, by failing to act on its complaints.
The Court observed that Rule 3(2)(a) only envisages complaints regarding violation of the provision of Rule 03. There is no provision in Rule 03 which requires an intermediary, on receipt of a complaint regarding infringing activities on its port, to take any action against the alleged infringers. All that is required of a intermediary in this clause is to inform the user not to display or host infringing content.
4. Bihar police reach out to IT ministry seeking ban on 100 gambling, gaming and illegal loan apps
The Economic Offences Unit (EOU) of Bihar police has recently approached the ministry of electronics and information technology (Meity) seeking a ban on more than 100 gambling/gaming and loan lending apps that are allegedly engaged in money laundering and pose a threat to the financial security of the country. As per the ADG (Bihar Police) the decision is taken after confirming that these apps attract Section 69 of the Information Technology (IT) Act since they contain materials which is prejudicial to the sovereignty and integrity of India. He further informed that several complaints have been received of extortion and harassment from people who had borrowed very small amounts through such loan lending apps. Section 69A of the IT Act empowers the government to restrict access to any online content to protect the interest of sovereignty and integrity of the nation, security of the state, friendly relations with foreign states and public order.
The EOU mentioned the fact that these offences are serious in nature and such digital lending, gaming and gambling apps must be banned as they pose a threat to financial security of the country. He claimed that the EOU has been creating awareness among the masses about such apps and requests the public not to take any loans from unregistered or illegal loan apps available on the Internet and Playstore. Explaining the modus operandi, the ADG said, “These loan apps on pretext of advancing loan also access or hack all information from the customers’ phone. And that might be used by the accused company to perpetrate other financial crimes. Most of the time such apps harass the customer by charging not only a high rate of interest, but by failure to repay the same, harass them by sending obscene materials to their contact list.”
The ministry of information and broadcasting (MIB) has already issued an advisory stating that since betting and gambling are illegal in most parts of the country, advertisements of these betting platforms, as well as their surrogates, are also illegal under the provisions of the Consumer Protection Act 2019, Cable TV Network Regulation Act 1995 and the IT Rules, 2021.
5. Ministry of I/B Issues Advisory, Publishers of Online Content to Include Classification Rating
The Ministry of Information and Broadcasting on Tuesday issued an advisory directing publishers of online curated content to display age-based classification ratings in advertisements and other promotional material used by them on various media platforms.
6. Delhi High Court rules that Google is not entitled to the safe harbour protection under the Information Technology Act, 2000, as well as from the liability of trademark infringement where it uses a trademark as a keyword in its Ads Programme.
The Delhi High Court in the case of Google LLC v DRS Logistics (P) Ltd & Ors has held that Google’s use of trademarks as keywords for its ‘Ads Programme’ amounts to ‘use’ of trademarks under the Trademarks Act and that the benefit of safe harbour available to an intermediary would not be available to Google if such keywords infringes on the concerned trademark. A division bench of Justices Vibhu Bakhru and Amit Mahajan noted that the Ads Programme is a commercial venture by Google. Therefore, the use of a trademark as a keyword for the display of advertisements for goods or services amounts to the use of the trademark in advertising within the meaning of Section 29(6) of the Trademarks Act.The Court, however, added that the use of these trademarks as keywords would not amount to infringement if there is no confusion, dilution, or compromise of the trademark.
7. Kunal Kamra moves Bombay High Court against IT Rules Amendment
Stand-up comedian Kunal Kamra has approached the Bombay High Court challenging the new amendment to Information Technology Rules that empower the Central Government to identify ‘Fake News’ about itself in the social media. On 6th April 2023, the Ministry of Electronics, and Information Technology (MeitY), Government of India, notified the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Amendment Rules, 2023. The Rule 3(i)(II)(C) of the 2023 amendment empowers MeitY to notify a fact check unit of the Central Government that will identify fake or false or misleading online content in respect to any business of the Central Government. The effect of this amendment would be that social media sites (Facebook, Twitter etc.) and telecom service providers have to inform the user not to host, display, upload, modify, publish, transmit, store, update or share any information in respect of any business of the Central Government, that is identified as fake or false or misleading by such fact check unit.
8. Red Chillies Entertainment files case under Section 43 (b) of the Information Technology Act
Red Chillies Entertainment filed a case against an unidentified individual. The Santacruz police station filed an FIR under sections for Information Technology Act. The entertainment company claimed copyright was violated. The five Twitter handles that had shared the clips had all been sent legal notices.
The case was registered under sections for theft (379) of the IPC and 43(b) of the Information Technology Act.
9. Karnataka High Court imposes cost of Rs. 50 lakhs on Twitter Incorporation against a petition filed by Twitter challenging the blocking orders issued to it by Ministry of Electronics and Information Technology (MeiTY)
The Karnataka High Court has dismissed the petition filed by Twitter Inc, challenging the blocking orders issued to it by the Ministry of Electronics and Information Technology (MeiTY) under Section 69A of the Information Technology Act
The Court observed as follows: “”Your client (Twitter) was given notices and your client did not comply…Punishment for non-compliance is 7 years imprisonment and unlimited fine. That also did not deter your client. So you have not given any reason why you delayed compliance, more than a year of delay…then all of sudden you comply and approach the Court. You are not a farmer but a billion dollar company,” the Bench said while pronouncing the verdict.”
A single judge bench of Justice Krishna S Dixit also imposed cost of Rs. 50 lakh on the microblogging platform, citing its conduct. It also refused Twitter’s request to stay the operation of the order.
10. Allahabad High Court rules that merely liking a post not an offence under IT Act
The Allahabad High Court has now held in a recent judgement that Liking a post on social media applications like Facebook or X (formerly Twitter) cannot be punishable under Section 67 of the Information Technology Act because it does not amount to “publishing or transmitting” the post. The Single Judge Bench of Justice Arun Kumar Singh Deshwal was hearing an application to quash charges filed against one Mohammed Imran Kazi, who had been accused by Agra police in 2019 of making posts that led to the assembly of 600-700 Muslims for a procession without permit, thereby threatening peace and security. During the hearing, the Investigating Officer of the case relied on the fact that Mr. Kazi had liked a post on social media, calling for the assembly – despite being unable to provide evidence of Mr. Kazi himself having posted the content or shared it. The High Court also noted that the Section 67 of the IT Act is for obscene material as opposed to just provocative materials. “The words ‘lascivious or appeals to the prurient interest’ mean relating to sexual interest and desire, therefore, Section 67 I.T. Act does not prescribe any punishment for other provocative material.”
Other Notable Cases:
1. Calcutta High Court Rules Being Tagged in Social Media Comments Doesn’t Impose Liability
Calcutta High Court, in a Sri Protip Roy Basunia vs. The State of West Bengal, involving accusations of spreading communal hatred on Facebook, ruled that being tagged in social media comments by another person does not automatically impose liability. Justice Ananya Bandyopadhyay, as a single judge, emphasized that there was no substantial evidence indicating that the petitioner, tagged in the disputed Facebook post, had made inflammatory comments to incite religious hatred. The court cautioned against subjecting individuals to trial based on mere assumptions and suspicions, highlighting the potential for abuse of the legal process without criminal intent or ulterior motive.
Read the order here.
G. SPORTS AND GAMING TOP 10 HIGHLIGHTS
1. Esports recognised as official sports by the Indian Government in their attempt to distinguish online games and esports
The Indian Government has revised the Government of India (Allocation of Business) Rules, 1961, under the 317th Amendment to the Indian Constitution. Now known as the Government of India (Allocation of Business) Rules, 2022, a recent notification from the Cabinet Secretariat of India states the modification of the country’s classification of online gaming and esports. The Government of India officially recognised esports as a ‘multisports event’ under the Ministry of Youth Affairs.
The Government of India has officially classified and sought legal distinction between Esports and Online Gaming.
According to the Act mentioned above, Online Gaming has now been put under the heading of ‘The Ministry of Electronics and Information Technology’ under entry 5A of the Act. While, Esports has been classified under entry 2A of the Act.
India is deemed to be a juggernaut in Esports in the coming years and this formal support in developing its infrastructure by the government will add a massive boost to this process.
Read notification here.
2. Government to constitute a panel of ministers to supervise the regulation of online gaming
As per an article on ET, the government is considering establishing a Group of Ministers (GoM) to examine the regulatory framework for the gaming industry in India. The GoM will likely include home minister Amit Shah, finance minister Nirmala Sitharaman, IT minister Ashwini Vaishnaw, Information and broadcasting minister Anurag Thakur as members and they will be assisted by senior officials from the department of revenue, income tax and Department for Promotion of Industry and Internal Trade (DPIIT) among others.
Read more about it here.
3. Government to Unveil Gaming SROs for Real Money Games Certification
The government is set to announce the gaming self-regulatory organizations (SROs) responsible for certifying permissible online real money games by the end of this month. Currently, the Ministry of Electronics and Information Technology (MeitY) is in the process of evaluating the four proposals put forth by the All India Gaming Federation (AIGF), Esports Players Welfare Association (EPWA), All India Gaming Regulator (AIGR) Foundation, and a consortium formed by the E-Gaming Federation (EGF) and the Federation of Indian Fantasy Sports (FIFS). As per the rules, online real money games will only be considered permissible when they are verified by a self-regulatory organization (SRO). Online games that don’t involve real money do not require any verification from an SRO.
4. PIL in Delhi HC challenges new online gaming rules
An NGO based in Noida filed a Public Interest Litigation (PIL) in the Delhi High Court questioning the legislative and constitutional validity of the Information Technology Intermediary Guidelines and Digital Media Ethics Code Amendment Rules, 2023, specifically regarding online gaming [Social Organisation for Creating Humanity v. Union of India]. The NGO argues that these rules exceed the legislative competence of the Union Government, as the Constitution grants exclusive powers to states to formulate laws on “betting and gambling.” The NGO also points out that the introduction of rules by the Central Government has led to regulatory confusion, resulting in a conflicting set of laws concerning online gaming. It is currently unclear whether state or central laws should be followed in relation to online gaming. Additionally, the NGO has expressed concerns about the government’s move towards establishing self-regulatory bodies (SRBs). The rules outsource regulatory powers of the state to SRBs, with online gaming companies financing these bodies.
5. Online Gaming Companies put forth that the State cannot abolish distinction between ‘game of skill’ and ‘game of chance’ while challenging the Tamil Nadu Prohibition of Online Gambling and Regulation Of Online Games Act 2022
In the matter of All India Gaming Federation vs State of Tamil Nadu & Ors[i], the Division bench of Chief Justice SV Gangapurwala and Justice PD Audikesavalu earlier had refused an interim relief to the gaming companies.
This litigation comes forth as the gaming companies while challenging Tamil Nadu Prohibition of Online Gambling and Regulation Of Online Games Act, 2022, state that there is a considerable distinction between a ‘game of skill’ and ‘game of chance’ and the same could not be abolished by enactments of the State.
Senior Counsel AM Singhvi quoted that “Games of skill are per se always a distinct class differentiated from game of chance. Watershed distinction cannot be abolished by a deeming function” while laying emphasis on the fact that this very distinction has existed for more than 100 years. Furthermore, even the predominant nature of the game has to be looked into and an ‘element of chance’ in a game of skill would not change the nature of the game.
The arguments by the Counsel also went further to draw a comparison with games of bridge, chess and the cards and quoted as follows, “Take the game of bridge. No one will say it’s a game of chance. It’s a game of skill. Same in chess. But even in these games, when I give out the cards, there’s some chance. Que is an element of chance in an admitted game of skill will change its nature. Then comes the predominance test. Some element of chance will not change the predominant nature.”
The State of Tamil Nadu has been seeking a complete prohibition / ban instead of a proposed regulation of the games. Tamil Nadu Gaming Act had been in existence since 1930 to regulate the physical games. The State government amended it in 2021 for banning online games, but the then first Division Bench of the High Court struck down the amendment. The State claims that the games are a root cause of several suicides and poverty among families. Senior Counsel Kapil Sibal for the State concluded that the prohibition which crux of this litigation has been a move for public interest. He quoted, “My point is that it is private interest versus public interest. These online gaming platforms are there to make money and destroy the lives of families. Your Lordships will have to decide how to interpret an Act which provides for protection of families in this State.”
The matter has been listed for further arguments on July 18. It will be intriguing to see how the situation of online gaming prohibition unfolds in Tamil Nadu.
6. Introduction of 30% withholding tax on net winnings for OGIs
The Finance Act, 2023 overhauled the tax regime for income from online games and created a distinction between taxation of online and offline games. In this regard, Section 115BBJ was introduced in the Income Tax Act, 1961 (ITA) to provide for 30% tax on net winnings from “online game”. An “online game” is defined to mean a game that is offered on the internet and is accessible by a user through a computer resource, including any telecommunication device. Hence, the obligation is applicable to all types of online games, i.e., games of skill or games of chance. The obligation to withhold tax will apply even in cases where the players do not make a deposit for participating in the game.
Section 194BA was also introduced in the ITA to impose an obligation to withhold tax on the person responsible for paying any income by way of winnings from any online game during a financial year at the rates in force. These provisions have been effective from 1 April 2023.
7. Introduction of 28% Goods and Services Tax for online gaming, casinos and horse racing
In August and September 2023, the central government notified the amendments to the Central Goods and Services Tax Act, 2017 (the “CGST Amendment Act”) as well as the Central Goods and Services Tax (Third Amendment) Rules, 2023 (the “CGST Amendment Rules”) to implement the goods and services tax (GST) at the rate of 28% on the full value of the amount paid, or payable to, or deposited with, the online gaming platform, starting 1 October 2023. Multiple states including Uttar Pradesh, Karnataka, and Goa have notified implementation of the GST rate in the respective states, while states like Kerala and Madhya Pradesh are in the process of introducing the same.
8. Tamil Nadu Governor gives assent to Bill on Prohibition of Online Gaming
In August 2021, the High Court of Madras struck down certain amendments to a law seeking to prohibit online games of skill for stakes in Tamil Nadu as unconstitutional. The state government filed an appeal against the High Court’s order before the Supreme Court, which is still pending. In parallel, Tamil Nadu enacted the Tamil Nadu Prohibition of Online Gambling and Regulation of Online Games Act, 2023 effective on 10 April 2023 (the “Tamil Nadu Act”).The Tamil Nadu Act: prescribes registration of local online games providers, being online games providers, whose central management and control of the service is in Tamil Nadu; and prohibits offering, playing and advertising online gambling on games of chance with stakes, which include those games that: (a) have elements of chance and skill and the element of chance dominates over the element of skill; (b) require superlative skill to dominate chance; (c) are presented as involving an element of chance; or (d) involve any element of random event generation (eg, cards, dice or wheel).
The Tamil Nadu Regulation of Online Games Rules, 2023 came into force on 21 April 2023, which prescribes the form and manner for applying for registration, manner of constitution of the TN Gaming Authority, manner of filing appeals to the appellate authority, among others.
In August 2023, the five-member TN Gaming Authority was constituted.
On 9 November 2023, the High Court of Madras struck down the prohibition on rummy and poker as unconstitutional. The High Court also held that the prohibitions under the Tamil Nadu Act were to be read to apply to only games of chance, and not games of skill.
9. Online gaming industry signs voluntary code of ethics
Online gaming industry leaders including the Federation of Indian Fantasy Sports (FIFS), the E-Gaming Federation (EGF), and the All India Gaming Federation (AIGF) have signed the “Code of Ethics for Online Gaming Industries” during the Indian Gaming Convention (IGC) hosted by the Internet and Mobile Association of India (IAMAI) on December 5.
As part of it, the industry leaders will be working towards safeguarding the online gaming experience and building a trusted and accountable digital gaming industry for everyone.
10. Centre tells Delhi High Court it has competence to regulate online gaming; says it is necessary to protect children
The central government has submitted its response to the Delhi High Court in the case brought by the Social Organization for Creating Humanity (SOCH). The NGO had challenged the constitutional and legislative validity of the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Amendment Rules, 2023, which aims to regulate online gaming.
In a robust defence of its legislative competence, the government cites the Constitution of India, asserting its authority under Entry 31 of List I (Union List) and Entry 97 (residual powers) to regulate matters of online gaming, which transcends state boundaries and falls within the realm of ‘Inter-State trade and commerce’.
The government’s response comes after SOCH contended that these rules exceeded the central government’s legislative competence and resulted in regulatory confusion. The case has raised questions about the division of powers between the central and state governments regarding online gaming regulation.
Labeling the plea as a proxy litigation, the government’s reply contends that SOCH lacks the necessary legal standing to challenge the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Amendment Rules, 2023. The Ministry of Electronics and Information Technology (MeitY) emphasises that the rules were framed after comprehensive stakeholder consultations and that the MeitY had allowed for public commentary on the draft rules, a process in which SOCH did not participate.
The central government also contended that the NGO’s claim of outsourcing regulatory responsibilities, clarifying that the formation of self-regulatory bodies (SRBs) is part of a larger framework intended to bolster the safety and integrity of online gaming platforms.
Other notable updates:
1. Ranbir Kapoor Summoned In Mahadev Gaming App Case
Actor Ranbir Kapoor has been summoned by the Enforcement Directorate in a case involving an online gaming app.
Ranbir Kapoor appeared in the promotions for the Mahadev Online Book App. The ED has claimed that he was given a large amount of money in exchange, which was from the proceeds of a crime.
The agency said 12 other actors, from Bollywood and Tollywood, are on the agency’s radar. At least 100 influencers are also under the scanner and all of these people may be summoned as part of the investigation.
The promoters, Sourabh Chandrakar and Ravi Uppal, hail from Bhilai in Chhattisgarh but the app was being run from the company’s headquarters in UAE. It has call centres in Sri Lanka, Nepal and UAE.
The agency claimed the Mahadev app is part of an umbrella syndicate arranging online platforms for illegal betting websites to enrol new users, create user IDs and launder money through a layered web of benami bank accounts.
An ED official said the promoters ran 4-5 such apps, which have been raking in profits of ₹ 200 crore every day.
Last month, the agency had conducted searches against the money-laundering networks linked with the Mahadev app in Kolkata, Bhopal and Mumbai, among other places, and retrieved incriminating evidence. It had also frozen or seized proceeds of crime worth ₹ 417 crore.
Ranbir Kapoor has sought two weeks time to appear before the Enforcement Directorate in connection with the Mahadev betting app case.
2. Online gaming company PlayGames 24×7 moves Madras High Court alleging harassment by Tamil Nadu police after suicide by gamer
The Madras High Court on March 10 issued notice to the Tamil Nadu police on a petition filed by online gaming company PlayGames 24×7 claiming that the city police’ crime branch was harassing it in the name of inquiry into the suicide of a person. Justice G Chandrasekharan directed the Tamil Nadu government and the crime branch, CID, metro wing of the Chennai police to respond to the petition filed by the company PlayGames 24×7 by March 14.
The petitioner-company told the Court that it had received a notice from the crime branch last year informing it that an inquiry under Section 174 of the Criminal Procedure Code (CrPC) was being conducted to probe the death of one Manikandan, who had died of suicide on January 2, 2022 allegedly after playing the online game.
Read more here
- Centre blocks more than 200 offshore gambling, predatory loan platforms
The Ministry of Electronics and Information Technology (MeitY) has blocked more than 200 sites and apps associated with offshore betting and gambling platforms, including Betway and Dafabet. In addition, over 90 apps involved in unauthorized loan services have also been blocked, some of which are believed to have links to China and were involved in unacceptable data transfers and storage. These blocking orders were made under Section 69(A) of the Information Technology Act 2000 and were carried out based on instructions from the Ministry of Home Affairs. A senior government official stated, “The Ministry issued orders to block 138 apps involved in betting, gambling, and money laundering yesterday, and a separate order to block 94 apps engaged in unauthorized loan services has also been issued.”
1. Kerala High Court discusses the difference between a professional movie review and an opinion of the same
One case from the Kerala High Court this year seems like a sigh of relief for the Indian film industry. The Court here addressed concerns within the Indian film industry regarding negative movie reviews by vloggers with potential vested interests. The court directed the police to investigate and take action against vloggers posting derogatory and calculated movie reviews. Seeking inputs from the State Police Chief, the court aimed to facilitate complaints from individuals associated with a movie against attempts to denigrate it. The directive was issued in response to a plea by the director of ‘Aromalinte Adyathe Pranayam’ seeking a gag order to prevent social media influencers and vloggers from publishing reviews for at least 7 days after the film’s release. Terming movies as intellectual properties involving the ‘reputations, sweat and blood, and aspirations’ of several people associated with it, Justice Devan Ramachandran ntoed: “While the right of free speech is inherent and constitutionally guaranteed, it certainly has to be tempered with reason and restraint, as are constitutionally required under Article 19(2). A fair criticism of an intellectual property, be that a movie or otherwise, and a pernicious attempt to blackmail, and extort, are two different aspects, which have to be clearly seen through and dealt with distinctly. Just as an attack on a property is a criminal offence, a pestilential review deliberately done with the afore intent is no less, because eventually, both are attacks on tangible properties”.
2. Process guidelines to make films disabled friendly: Delhi HC
The Delhi High Court on Thursday asked the Centre to put in public domain the draft guidelines for making the experience of watching films friendly for those with disabilities like hearing and visual impairment, and process them for due approval upon receiving comments from stakeholders.
The court sought a status report from the central government after it was informed the draft guidelines are under consideration and the process of finalisation will take some time.
“Let Ministry of Information and Broadcasting first publish the draft guidelines and after receiving stakeholder comments, process the guidelines for approval of ministry concerned. Let status report be filed on record,” ordered Justice Prathiba M Singh during a hearing held in the presence of sign language interpreters for hearing-impaired persons.
Read more about it here.
3. Delhi High Court Dismisses Plea Against Broadcasting Of ‘Shamshera’ Film: No Copyright in Idea or Themes
The Delhi High Court dismissed an appeal seeking an interim injunction against the streaming and broadcasting of the film “Shamshera” in a petition filed by certain Bikramjeet Singh Bhullar, who claimed that the film infringed on his copyrighted script “Kabu na chhadein Khet.”
Justice Jyoti Singh stated that there could be no copyright in ideas and themes but added that her remarks would have no bearing on the trial or final judgement of Bhullar’s copyright infringement claim on the merits.
Justice Singh rejected the plea stating that themes such as father-son stories in which the two look alike, the use of children, birds, hot oil, horses, underground tunnels, and so on are every day in most Bollywood films and that agreeing with Bhullar’s claim would amount to granting a monopoly over ideas, which would be contrary to established legal principals.
With that background, the Court held that, “the ideas in the script of the Plaintiff cannot be given copyright protection and more so in the stock elements. A comparison of the script and the impugned film does not leave an impression that one is a substantial copy of the other.”
This ruling reaffirms the principle that copyright protection does not extend to ideas, themes, or plots, but only to the expression of these ideas.
A copy of the order can be accessed here.
4. Bombay HC Restrains Mumbai Hotel from Playing Copyrighted Songs On New Year’s Eve Without PPL License
The Bombay High Court has granted ad-interim relief to Phonographic Performance Ltd. (PPL) by restraining Kamakazi Solution Pvt. Ltd. to play repertoire of 400 music labels with more than 45 lakh international and domestic sound recordings at a hotel in Mumbai.
The Court observed, “In my view, in the absence of ad-interim relief, the Plaintiff will suffer grave irreparable loss. A prima facie case made out of the likelihood of infringement of the Plaintiff copyrighted works. This Court is of the prima facie view that the balance of convenience is in favour of the Plaintiff and the Defendants have chosen not to make an appearance despite service. Hence, the ad-interim relief is being granted”
A copy of the order can be accessed here.
5. Delhi HC directs Ministry of Information and Broadcasting: Consider uploading fresh copy of film ‘Jawan’ with accessibility features on OTT platforms
The Union Ministry of Information and Broadcasting has been requested by the Delhi High Court to upload a fresh version of Jawan, starring Shah Rukh Khan, in order to emphasize the value of adding accessibility features in the movie’s OTT version.
The application was moved by Akshat Baldwa submitting that the film ‘Jawan’ was already released theatrically as well as on OTT platforms and insofar as the film ‘Hi Papa’ was concerned, the OTT release was to take place in March 2024. It was submitted that the accessibility features were not being followed on OTT platforms, therefore, a direction should be issued that on OTT platforms, features should be made available for persons with disabilities.
In this regard, the Court opined that since it was easier to replace a particular copy of the film on OTT, uploading a fresh copy of the film ‘Jawan’ with accessibility features on OTT platforms should be considered.
The Court directed the I&B Ministry to submit a status report before the hearing of the matter on 31 January 2024.
A copy of the order can be accessed here.
6. Delhi High Court rejects TV Today plea against MIB order to run apology scrolls for displaying liquor ads
The Delhi High Court dismissed a petition filed by TV Today Network (which runs news channels Aaj Tak and India Today among others) challenging a Government order dated June 14, 2022 directing the media network to run apologies scrolls in bold, legible font at the bottom of the screen four times a day for three consecutive days between 9 AM and 9 PM for broadcasting liquor commercials of 100 Pipers Music CDs and All Seasons Club Soda on its news channels.
The Court rejected the plea noting that TV Today had clearly violated Rule 7 (Advertising Code) of the Cable Television Networks Rules, 1994 by displaying the logo of ‘100 Pipers’ while displaying an advertisement for 100 Pipers Music CDs.
The Court observed “The display of the logo of ‘100 Pipers’ would thus appear to be in contravention of that Rule. Since the provisions of Rule 7 has not been complied with, the contention of the learned Counsel for the Petitioner that they had proceeded in good faith on the basis of the CBFC [Central Board of Film Certification] certificate which was submitted by the advertiser cannot be accepted as the Rules do not permit the broadcaster to independently ascertain the veracity of the clip that is provided by the advertiser,”
Regarding the issue of running the ‘All Seasons Club Soda’ advertisement, the Court found that the said advertisement was not even certified by the CBFC.
A copy of the order can be accessed here.
7. Government issues advisory to social media platforms on deep fake menace
The Government has issued another advisory to all social media and internet intermediaries, seeking strict compliance with the existing IT rules, specifically targeting growing concerns around information powered by deepfake technology.
Over the next few weeks, “the IT ministry will closely observe the compliance of these advisories by social media and internet intermediaries and make amendments to the IT Rules or law if required”, minister of state for electronics and information technology Chandrasekhar said.
Click here to view the advisory
8. Complaint filed against Ranbir Kapoor for ‘hurting religious sentiments’ in viral Christmas video
A complaint has been filed against actor Ranbir Kapoor and his family members in Mumbai for allegedly hurting religious sentiments. The bone of contention is a viral video from the family’s annual Christmas party in which Kapoor was heard saying “Jai Mata Di” after pouring liquor on a cake.
Read more about it here.
9. New York Times sues Open AI and Microsoft for using its stories to train its chatbots
The New York Times becomes the first major media organisation to sue OpenAI, creator of the popular artificial-intelligence platform ChatGPT, and Microsoft, an OpenAI investor and creator of the AI platform now known as Copilot, over the unauthorized use of published work to train artificial intelligence technologies.
As per NYT article, the suit does not include an exact monetary demand. But it says the defendants should be held responsible for “billions of dollars in statutory and actual damages” related to the “unlawful copying and use of The Times’s uniquely valuable works.” It also calls for the companies to destroy any chatbot models and training data that use copyrighted material from The Times.
Read more about it here.
10. Mickey Mouse entering into public domain in 2024
The earliest iterations of Mickey Mouse along with other iconic Disney characters will join the public domain for the first time on January 01, 2024.
The first movies in which the iconic mouse appeared were Steamboat Willie and the silent version of Plane Crazy, both made in 1928 and works from that year go into the public domain in the US on New Year’s Day in 2024. However, the later versions of the characters like those in the 1940 film, ‘Fantasia’ are not in public domain.
Read here for more details.