Delhi High Court re-affirms that there can be no copyright in an idea

In the matter of Vinay Vats v. Fox Star Studios India Pvt. Ltd. & Anr. [I.A. 6351/2020 in CS(COMM) 291/2020], the Delhi High Court, vide order dated July 30, 2020, refused to grant an interim injunction in a copyright infringement suit, and re-affirmed that there can be no copyright in an “idea”. 

The Plaintiff claimed to be the author and the first copyright owner of a script titled “Tukkaa Fitt”, written in 2010-2011. As per the Plaintiff, a trailer of a film based on this script was released in March 2011. While the film allegedly completed production in 2012, it was never released.

The Defendants allegedly released a trailer of a film titled “Lootcase” on July 16, 2020. The Plaintiff asserted that the plot of the Defendants’ film (set to be released on July 31, 2020), as ascertained from the trailer, bears substantial similarities to the Plaintiff’s earlier script. Alleging copyright infringement, the Plaintiff sought an interim injunction against release of the Defendants’ film “Lootcase”.

The Defendants contended, inter alia, that there is no sustainable cause of action as the Plaintiff’s script was never in the public domain, and the movie based on the script was never released.

The Court, placing reliance on RG Anand v. M/s Delux Films, 1978 (4) SCC 118, rejected the Plaintiff’s interim application and held, “..there is no copyright in any idea, subject matter, theme or plot, and violation of copyright is confined to the form, manner and arrangement and the expression of the idea by the author of the copyright at work. In the present case, there is no earlier film, based on the script of the plaintiff, which could for the basis of a claim to copyright. The plaintiff…bases his cause of action on a script, which never came in the public domain, and public knowledge of which is being sought to be attributed on the basis of a trailer, for a film which never saw the light of day. The cause of action, on the basis whereof the plaintiff premises his case, therefore, essentially remained inchoate…It is prima facie questionable…whether any claim of copyright can be laid by the present plaintiff at all, in such circumstances..

The Court further observed that, prima facie, the Plaintiff has nothing to lay claim to any such ‘novelty’ in its script, as could be said to have been filched by the Defendants.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Domain name Registrars cannot block access to or ensure the continued suspension of domain names

In the matter of Hindustan Unilever Limited v. Endurance Domains Technology LLP & Ors [IA No. 1 of 2020 in LC-VC-GSP-24 of 2020], the Bombay High Court, vide its order dated June 12, 2020, held that Domain Name Registrars can merely suspend the registration of domain names, but cannot block access to or ensure their continued suspension.

The Plaintiff claimed to be the registered proprietor of a number of trademarks covering a range of products, and of the domain names www.hul.co.in and www.unilever.com.

The suit was filed in relation to certain domain names which were, as alleged by the Plaintiff, fraudulently using variants of the Plaintiff’s domain name. Domain Name Registrars viz. Endurance Domains Technology LLP, GoDaddy LLC and Porkbun LLC were also added as Defendants.

The Court agreed that the registration of the aforementioned domain names, prima facie, constitutes an infringement of the Plaintiff’s rights.

While adjudicating on the forms of interim relief prayed, inter alia, continued suspension and blocking of the infringing domain names by the Domain Name Registrars and a dynamic injunction, the Court observed that the process of domain name registration is a fully automated one and requires no manual/human intervention on part of the Domain Name Registrars. The Court further observed that the Domain Name Registrars cannot ‘block access’ to a domain name, which is usually done under directions of a government agency, issued to internet service providers.

Partially granting the interim relief prayed, the Court held that “ …a domain name may have its registration suspended, but the domain name registrar cannot ‘block access’ to that domain name. …the entire process of registration itself is entirely automated and machine-driven. No domain name registrar can put any domain names on a black list or a block list. The notion that domain name registrar’s have a person or a team of persons scanning and checking every domain name application betrays a wholesale lack of understanding of how domain name registration actually works…..A ‘continued suspension’ is…not possible or practicable at least in the current technology…it is therefore not possible to allow the prayer clause…to include the words ‘ensure continued suspension of and block access to’.”

The Court denied grant of a dynamic injunction and held that “…for the technical reasons I have outlined above, it is not possible to pass an order granting an injunction operating either dynamically or otherwise in future in this fashion. The very technology behind domain name registration does not permit this.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Delay in registration of trademark assignment by TM Registry cannot prejudice assignee’s rights

Author: Sunidhi Bansal

In the connected matters of M/s Liberty Footwear Company v. Liberty Innovative Outfits Limited and M/s Liberty Footwear Company v. M/s Liberty Fashion Outfit [CS(COMM) 637/2019 and 638/2019], the Delhi High Court, vide its order dated May 26, 2020 in a suit for trademark infringement, held that a delay by the TM Registry in registering an assignment cannot preclude the assignee from claiming rights in the assigned mark.

The Plaintiff claimed to be the proprietor of the mark LIBERTY in respect of footwear. The Plaintiff is a part of a group of companies, which includes, inter alia, a partnership firm – Liberty Enterprises (“LE”). The Plaintiff was aggrieved by the Defendants’ use of the mark LIBERTY for similar goods.

The Defendants alleged that since the trademark registrations on which the Plaintiff was relying were in the name of LE, and the request for assignment of the same from LE to the Plaintiff had not been recorded by the TM Registry, the Plaintiff could not claim any ownership therein.

The Plaintiff argued that it acquired rights in the LIBERTY marks immediately upon execution of the assignments and mere non-registration of the assignments did not preclude it from asserting its rights, especially when the requests for registration of assignments were pending with the TM Registry.

The Court noted that that (i) as per Section 45 of the Trade Marks Act, 1999, registration of assignment is mandatory; and (ii) it is mandatory for an assignee of a registered trade mark to apply in the prescribed manner to the Registrar of Trade Marks to register his title.

Observing that the Plaintiff had been assigned the trademarks and had also filed requests for registration of the assignment, the Court accepted the Plaintiff’s contentions and granted an interim injunction. While placing reliance on Sun Pharma Industries vs. Cipla Ltd., 2009 (108) DRJ 207, the Court held that, “Any delay on the part of the Trade Marks Registry cannot…prejudice…the plaintiff…. The observation…in Sun Pharmaceuticals…that, “…allowing a person who is divested by assignment of title to registered trade mark to nevertheless continue exercising such rights…would play havoc with assignability and trading in trade mark, expressly permitted under the Act. If the person in whom title has vested by assignment is held to be not entitled to exercise such rights owing to non-registration, the same result will follow besides giving premium to third parties”, is important and conclusive.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Unique combinations of descriptive words protected as trademarks

In the matter of Sky Enterprise Private Ltd. vs. Abaad Masala and Co. [Interim Application No. 01 of 2019 in Commercial I.P. Suit (L) No. 1124 of 2019], the Bombay High Court, vide its order dated January 8, 2020, granted an interim injunction restraining the Defendant’s use of the marks “White Chinese Pepper Masala” and “Black Chinese Pepper Masala”.

The Plaintiff is the registered proprietor and user of various marks including but not limited to “Black Chinese Pepper Curry Powder”, “Black Chinese Masala”, “White Chinese Pepper Masala” and “Black Chinese Pepper Masala”, in Class 30, in respect of different masala powders.

The Defendant, who is also engaged in a similar business, had adopted identical marks such as “White Chinese Pepper Masala” and “Black Chinese Pepper Masala”. The Defendant contended that the Plaintiff cannot enjoy exclusivity over these marks as they are generic and descriptive, and that it is using the said marks only as descriptions for its goods.

The Court rejected the Defendant’s arguments that the marks were generic and that they were used in a descriptive sense. The Court while granting the temporary injunction in favour of the Plaintiff held that “…each individual word forming part of its registered trademark may well be a descriptive word; it may not be possible to claim any proprietary right over it; but no rival trader can use the particular combination and order in which the Plaintiff uses these words in its registered trademark to distinguish its goods, if the particular combination or order is not generally used in the trade for describing the character or quality of goods. A rival trader, for example, in the present case, may describe his product as ‘pepper masala’; he may describe it as ‘Chinese masala’…he may even write on the label that the product is a black masala made of pepper and is for Chinese cookery. But he surely cannot describe his goods as ‘White Chinese Pepper Masala’ or ‘Black Chinese Pepper Masala’, using the very same combination and order of words, which form the registered trademarks of the Plaintiff.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Distinctiveness acquired post registration cannot be considered in a trademark infringement suit

In the matter of Peps Industries Private Limited vs Kurlon Limited [CS(COMM) 174/2019 with IA 4871/2019 & IA 6715/2019], the Delhi High Court (Mukta Gupta, J.), vide its order dated March 16, 2020 refused the Plaintiff’s interim injunction application in a suit for infringement and passing off, on the ground that the Plaintiff had failed to establish that its mark had acquired distinctiveness as on the date of registration.

The Plaintiff owned a registration for the mark NO TURN as of January 2, 2008 and had commenced use of the mark on January 15, 2008 in respect of mattresses. The Defendant had filed an application for the mark NO TURN on December 24, 2018, claiming prior use since October 8, 2007. Aggrieved by the Defendant’s adoption and use of the mark NO TURN in respect of mattresses, the Plaintiff filed the instant suit.

The Defendant contended that being the prior user of the mark NO TURN, it is protected under Section 34 of the Trade Marks Act, 1999, which prohibits a registered proprietor from restraining a prior user of a similar mark. The Plaintiff countered that the Defendant had been using the mark NO TURN intermittently and in a descriptive sense and could not avail the benefit of Section 34.

The Court concurred with the Plaintiff’s contention and held that the Defendant was not entitled to the benefit of Section 34. The Court then looked into the issue of descriptiveness of the Plaintiff’s mark NO TURN and examined whether evidence of distinctiveness acquired after registration can be considered, as the Plaintiff had not submitted such evidence at the time of registration of the mark.

Analysing the relevant statutory provisions, the Court held that, “…ordinarily evidence of distinctiveness by use ought to be as available on the date of the filing of the application…however, there is a relaxation by extending this period…to the actual date of registration by virtue of Section 31(2)…The evidence in the period post registration of the trademark can only be looked into in proceedings to declare the trademark invalid under Section 57 of the Act and not in a civil suit in a civil court where infringement action of a registered trademark is filed.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

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