Article: When Can Parody Be Cited As Fair Dealing In A Copyright Dispute?

Introduction

Section 52(1)(a) [1] of the Copyright Act, 1957 (“the Act”) provides that certain acts are to be infringement of copyright. It reads:

(1) The following acts shall not constitute an infringement of copyright, namely-

(a) a fair dealing with any work, not being a computer programme, for the purpose of…

(ii) criticism or review, whether of that work or of any other work”.

Which recreation of original works is parody and which isn’t? In what situations would unauthorized use of an original work for creation of a parody fall under the scope of fair dealing?

With the rise in social media, an exponential rise in copied works can be seen. Memes, reviews, satires have taken the Internet by storm. Accordingly, this statutory interpretational issue is contested every now and then. 

What is Parody

A parody is an intentional exaggeration or imitation of someone else’s original work in such a manner that it humorously and critically comments on an existing work to mock or criticize such work. Therefore, parody by its very nature is reliant upon the original work and is typically created without permission from the original creator.

The Purpose and Competition Test

If a parodist or spoof-maker does not compete with the original work and merely criticizes or ridicules the original, should then their work constitute fair dealing?  In Blackwood and Sons Ltd. And Ors. v. AN Parasuraman  [2] [AIR 1959 Mad 410] a single judge bench of the Madras High Court  [R Ayyangar J.] laid down two conditions to explain the term “fair” in “fair dealing”: 

“(1) that in order to constitute unfairness there must be an intention to compete and to derive profit from such competition and (2) that unless the motive of the infringer were unfair in the sense of being improper or oblique the dealing would be fair.”

In most cases, parodies do not seek to compete with the original but simply ridicule or criticize the original in a way that uncovers its flaws. However, it is unclear when an infringer’s motive could be termed as improper or oblique. 

This aspect was clarified in Civic Chandran v. C. Ammini Amma [3] [16 PTC 329 Ker] wherein a single judge bench of the Kerala High Court [T.V. Ramakrishnan J.] was examining the motive of a counter-drama of a famous drama ‘Ningal Enne Communistakki’. Accepting the Blackwood ruling, the Court gave a further three-point test stating “..court will have to take into consideration (1) the quantum and value of the matter taken in relation to the comments or criticism; (2) the purpose for which it is taken; (3) the likelihood of competition between the two works.”

The Court observed that the purpose was not to misappropriate the theme, form of presentation, character, dialogues and the techniques adopted in writing the drama or to imitate the drama or to produce anything similar. The real motive of the counter-drama was to criticize the ideology depicted in the drama and how it was unsuccessful in accomplishing the targets it had intended to achieve. Therefore, an improper motive would have been the counter-drama intending to misappropriate from the original by creating something similar.

When will Parody not be fair dealing?

Will a parody be fair use if it does not meet the above-mentioned criteria? Courts have acknowledged that parodies by their very nature demand some taking from the existing work unlike other forms of fair dealing, which is why the use of or replication of the original work in parodies is permitted to some extent. For instance, in a peculiar situation a division bench of the Delhi High Court [U Mehra, O Dwivedi JJ.] in  Pepsi Co v. Hindustan Coca Cola Ltd. [4] [2003 (27) PTC 305 Del] , held that “… it can prima facie be concluded that the roller coaster commercial of the respondent is nothing but a literal imitation of the copyright work of the appellant with some variations here and there.” The Defendant claimed the defense of parody in a suit for infringement brought by the Plaintiff with respect to its popular slogan “Yeh Dil Maange More”. The Defendant was unauthorizedly using a similar slogan “Kyo Dil Maange No More” in their advertisement.  The Court restrained Hindustan Coca Cola and held that it was a colourable imitation of Pepsi Co.’s commercial.

Therefore, when parody is a mere imitation and nothing more or if it intends to compete with the original, the defence of fair dealing cannot be claimed.

 Conclusion

‘Parody’ lacks a concrete definition or scope thus, making each case extremely subjective and ambiguous. However, in line with the object of the Copyright Act, parodies promote creativity and the growth of ideas. This has necessitated Courts to strike a balance between rights of the author in his copyrighted work and the interests of society at large.

Indian copyright laws do provide sufficient protection to parodists against infringement in a copyright dispute. However, the parodist must show that he/she has no intention to compete with such copyright holder or to derive profits from such competition and that it is a sheer exaggeration of facts for entertainment and to expose certain shortcomings.


Endnotes:

[1] https://copyright.gov.in/Copyright_Act_1957/chapter_xi.html

[2] Blackwood and Sons Ltd. And Ors. v. AN Parasuraman [AIR 1959 Mad 410]

[3] Civic Chandran and Others v. C. Ammini Amma [16 PTC 329 Ker]

[4] Pepsi Co v. Hindustan Coca Cola Ltd. [2003 (27) PTC 305 Del] 

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

Review: ‘Guidelines For Advertising Of Virtual Digital Assets And Linked Services’ (The Advertising Standards Council Of India)

Citation: “Guidelines for Advertising of Virtual Digital Assets and Linked Services”, TheAdvertising Standards Council of India, (2022) <https://ascionline.in/images/pdf/vda-guidelines-23.02.22.pdf >

Introduction

The Advertising Standards Council of India (hereinafter referred to as “ASCI”) has recently published its guidelines on the advertising of Virtual Digital Assets and linked services on February 23, 2022.

The guidelines comprise a detailed list of dos and don’ts concerning advertisements involving any virtual digital assets and other services linked with the same. These guidelines mandate the presence of disclaimers in all such advertisements. The guidelines will apply to all the advertisements that are released or published on or after April 1, 2022. Additionally, these guidelines will apply to all earlier advertisements, and advertisements are not to appear in any public domain unless they comply with the guidelines, post-April 15, 2022.

   Concept of Virtual Digital Asset

   The definition of a Virtual Digital Asset (hereinafter referred to as “VDA”) has been imported from the newly inserted clause 47A under Section 2 of the Income Tax Act and forms a part of the Preamble to the guidelines. VDAs have been defined as “any information or code or number or token (not being Indian currency or foreign currency), generated through cryptographic means or otherwise, by whatever name called, providing a digital representation of value exchanged with or without consideration, with the promise or representation of having inherent value, or functions as a store of value or a unit of account including its use in any financial transaction or investment, but not limited to investment scheme, and can be transferred, stored or traded electronically”. The definition of VDAs also includes Non-Fungible Tokens (NFTs) or any other token of a similar nature.

   The guidelines correctly address the fact that these VDAs are novel and currently evolving forms of investments. The guidelines highlight that there is a strong need to make known to all potential consumers and investors the risks involved in trading and investing in these novel VDAs. These guidelines place importance on how all potential traders and investors in this sphere should not be misled and are to be forewarned to mitigate any risks that they might have to face. While there are practical implications to this approach, this might also prove to deter interested parties from exploring new avenues which can perhaps yield better fruits in terms of gains and returns on their investments. Further, the use of terminologies that at the outset convey that investments and returns from investments and trading in such VDAs lack predictability and are ambiguous it is likely to demotivate interested parties from making any form of investments in such VDAs.

Unregulated and Highly Risky

The guidelines provide that the market for VDAs is still unregulated and can be very volatile especially because VDAs aren’t backed by any tangible assets. Under the guidelines, all advertisements featuring VDAs or are related to VDA products or exchanges must feature the disclaimer that VDAs are unregulated and potentially very risky, and no regulatory recourse might be available from any loss from these transactions. Additionally, these guidelines elucidate the acceptable manners in which the disclaimers should feature across different media so that they stand out and are not missed by an average consumer. The guidelines include how such disclaimers are to be inserted and various related parameters like background, font, duration, language, costs, etc. have been elaborated upon therein. Moreover, the guidelines are prohibitory with relation to certain words like ‘securities’, ‘currencies’ etc. which must not be included in such advertisements.

Further to these, all disclaimers should also meet minimum ASCI guidelines. ASCI generally requires all its advertisements to be truthful, not mislead consumers by implication, ambiguity, exaggeration, or omission, and must not be framed in a way that they abuse their trust or exploit their lack of knowledge and the guidelines are consistent with their practice.

It is crucial to note that even though VDAs are now being recognized in statutes and are becoming immensely popular across sectors, the lack of faith in them as they are backed mostly by intangible assets rather than tangible ones is detrimental to any recognition of them as a plausible channel of investment. It is commonplace that IP is still relegated to an inferior level when it comes to its usage/recognition as a form of asset/security vis-à-vis traditional forms of assets that are tangible and NFTs and all other VDAs are also falling prey to the same notion.

Curtailment of creative freedom

As these VDAs are considered highly risky, any prominent personality or celebrity that is engaged for their advertisements would also need to undertake due diligence so as not to mislead anyone that might get influenced by any such associations. Even investing in mutual funds come with a disclaimer: “mutual funds are subject to market risks” however, there is ample awareness regarding the benefits of investing in the same but simply because VDAs are new and upcoming ASCI’s take in these guidelines should not be strictly prohibitory but rather it should be precautionary and perhaps should have been a little more explanatory. On the whole, the guidelines do not provide a neutral take on VDAs rather it is very critical of VDAs and their reliability.

Conclusion

These guidelines are on the whole very stringent and might prove to dissuade potential investors from investing in such VDAs in the future. It is essential to adapt to the changing times and also to explore new areas and develop experience from trial and error. Invention and creation is the basis of intellectual property and the creation of novel and varied types of VDAs should not suffer or get disincentivized because of a framework that is too harsh on inventors and creators who might want to think out of the box to attract people to such novel concepts like VDAs. The guidelines might deter people from selling and buying different kinds of VDAs and in a way limit people from exploiting their intellectual properties.

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.

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Article: Whether Street Art & Graffiti Can Be Protected As Artistic Works Under Indian Copyright Law?

Introduction

Section 2(c)(i)  [1] of the Copyright Act, 1957 (hereinafter referred to as the “Act”) states “ artistic work means,— a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality”. The question that arises on reading this section is whether Street Art & Graffiti can be treated as artistic work for copyright to subsist in them?

Emphasis on Originality

This statutory interpretational issue has gained significant attention in recent years as the quantum of such kinds of art in public spaces have increased manifold and which may or may not be original work of art. Currently, there is no judicial precedent that discusses whether or not various kinds of street art and graffiti can be extended protection under the Act. While paintings and  drawings are protected as artistic works, the question arises, ‘whether street art and graffiti can be extended an equivalent protection as original works capable of copyright?’ The aim of this article is to analyze whether they fall within the umbrella of copyrightable artistic works. 

As per the Practice And Procedure Manual for Artistic Works 2018, [2] “Any work which is an original creation of an author, or an owner fixed in a tangible form, is capable of being entered into the Register of Copyrights, irrespective of the  fact that whether such work possess any artistic quality or not.”

Thus, in order to qualify for copyright protection a work must be original and must be capable of being fixed in a tangible form. (Emphasis added)

A simple understanding of the nature of street art or graffiti would explain that both the requirements as laid down in the Practice Manual are satisfied by these art forms and therefore, they are capable of  being recognized worthy of copyright protection. However, as the scope of the term ‘drawing’  is not defined in the statute itself, there is a need to amend the current provisions of the statute and  go beyond the existing statutory provision and understand the possible connotations it might have.

Relevance of Expression of Ideas

The courts have upheld the importance of expression of ideas through different kinds of art in their different forms. In Maqbool Fida Husain v. Raj Kumar Pandey [3] [2008 CriLJ  4107] a Single Judge Bench (Sanjay Kishan Kaul, J.) of the High Court of Delhi in its judgment held in favour of democratization of art and held amongst other things, “a liberal tolerance of a different point of view causes no damage. It means only a greater self-restraint. Diversity in expression of views whether in writings, painting or visual media encourages debate. A debate should never be shut out. ‘I am right’ does not necessarily imply ‘You are wrong’. Our culture breeds tolerance- both in thought and in actions.”

The liberal expression of thoughts and ideas was discussed in the famous landmark decision of the Supreme Court of India in  R.G. Anand v. Deluxe Films and Ors [4] [AIR 1978 SC 1613] where a Division Bench comprising (Fazalali, Syed Murtaza J. and Singh, Jaswant Pathak, R.S. J.) of the Hon’ble Supreme Court of India held  “It is always open to any person to choose an idea as a subject matter and develop it in his own manner and give expression to the idea by treating it differently from others.

 “There can be no copyright in an idea, subject matter, themes…copyright in such cases is confined to the form, manner, arrangement and expression of the idea by the author of the copyright work.” “What is protected is…the original expression of thought or information in some concrete form.” (Emphasis added)

Street arts do involve creativity and skill and labour and they must be righteously recognized as artistic works.

Conclusion

To sum up, freedom of expression of thoughts and ideas is protected as Fundamental Rights guaranteed by the Constitution of India. When the same are portrayed through various art forms, they are still very much an expression worthy of protection and IP laws being in consonance with the Constitution will not be an impediment for the same. However, it is difficult to ascertain whether or not street art and graffiti which are newer forms of art and which may or may not be confined to only paintings or drawings can be considered within the scope of artistic work under the Act. Moreover, certain states do have their specific laws which recognizes these art forms as defacement of property and have some penal consequences attached to the unauthorized creation of these forms of art in public spaces. No formal legal protection has been conferred on street art and graffiti till now. 

Endnotes:

[1] https://copyright.gov.in/Copyright_Act_1957/chapter_i.html

[2] https://copyright.gov.in/Documents/Manuals/Artistic_Manual.pdf

[3] Maqbool Fida Husain v. Raj Kumar Pandey  [2008 CriLJ  4107]

[4]. R.G. Anand v. Deluxe Films and Ors [AIR 1978 SC 1613]  

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

Review: ‘Comments On The Draft Geographical Indications Guidelines: Implications And Discrepancies’ By Sulok S.K.

Citation: Sulok S.K., “Comments on the Draft Geographical Indications Guidelines: Implications and Discrepancies”, The NUALS Intellectual Property Law Review, Volume II (2020), pp. 130-145, <http://lawreview.ciprnuals.in/2020/05/04/comments-on-the-draft-geographical-indications-guidelines/>

Introduction

The aforesaid article provides a detailed analysis of the Draft Guidelines for Usage of GI Logo and Tagline notified by the Department for Promotion of Industry and Internal Trade (“DPIIT”) on June 24, 2019.

The article details the objective behind the guidelines regarding promotion of Indian Geographical Indications (“GI”) with the use of GI logo and tagline, and delves into the effectiveness of the proposed mechanism. It raises certain pertinent question regarding the implementation of the guidelines and lists a number of possible challenges it might face after it is enforced. Based on the various arguments put forth in the article, it concludes that in the present form the guidelines will not be able to have any significant impact in achieving its objective.

Permitted Usage

The article discusses the inconsistency of the guideline with the provisions of Geographical Indications of Goods (Registration and Protection) Act, 1999 (“GI Act”) in allowing the registered proprietor of a GI along with the Authorized User(s) to use the GI logo and tagline without any prior permission from DPIIT. The article does not take note of the fact that these guidelines do not have a force of law and are limited in scope. The guidelines are just complimentary to the provisions of the GI Act and not in derogation thereof.

The article elucidates on the silence of the guidelines regarding permission requirement for the use of GI logo and tagline for sale of genuine GI products by third parties such as retail and wholesale outlets. The article asserts that DPIIT would be flooded with applications from these retail and wholesale outlets for use of GI logo and tagline which in the absence of any surveillance and monitoring mechanism would lead to dilution of the logo. The article however fails to provide any coherent evidence supporting such assertions and takes a rather pessimistic view of the future possibilities. It also does not consider the lack of awareness in Indian consumers regarding GIs which would not have any major impact on the sale of GI products with or without the logo and tagline.

National GI Preference

The article highlights the discrimination between Indian GI products and foreign GI products with the guidelines limiting the use of GI logo and tagline for the former. It states that guidelines are in conflict with India’s obligation under the TRIPS Agreement for national treatment which has also been envisaged under the GI Act. The article makes a reference to two WTO Panel Reports where complaints were filed by United States [1] and Australia [2] against a labelling regulation in EU [3]. Based on the interpretation in the aforesaid panel reports, the article provides that the guidelines are in violation of India’s international commitments under TRIPS, GATT and TBT Agreements. Although the article rightly points out the apparent discrimination in the guidelines but it fails to take into consideration the non-mandatory nature of the guidelines which makes the use of the GI logo optional. Hence, the guidelines differ in scope from the mandatory EU regulations discussed in the panel reports.

Problematic Conditions

The article discusses certain problematic terms and conditions of the guidelines. It points out the inherent lack of framework for accountability for ensuring the quality or authenticity of the products using the GI logo or tagline thereby defeating the purpose of the guidelines itself. The article emphasizes about the absence of time limit in the application process and discretionary powers of DPIIT against unauthorized use. It contends for inclusion of monitoring system under the guidelines as the same is absent in the GI Act as well. The contention of lack of such provisions is disingenuous as the guidelines are limited to the use of GI logo and it would be more suitable for the legislature to implement adequate quality control provisions and mechanisms in the GI Act itself.

The article mentions about the lack of penal provisions in the guidelines for violations and seeks reforms in the GI regime for punishment of infringers along with a shift in the responsibility for ensuring the genuineness of products and initiating infringement actions. The article correctly points out this essential need for reforms in the Indian GI regime. The article discusses the inconsistencies in the Authorized User requirement as well as the data of the Registry. The article also states that approach of the government as followed in the guidelines and GI Act is of least intervention with a presumption that GI holders are capable of protecting their rights. This has been rightly indicated by the article as there is an intrinsic lack of awareness in the GI holders about their rights.

Conclusion

The article analyses and critiques various aspects of the guidelines in detail and raises certain pertinent questions about the effectiveness of the guidelines. It however fails to take note of certain limitations in the scope of guidelines and contends to overhaul the GI regime through the same. In spite of these limitations, the article rightly raises certain vital issues in the guidelines which are problematic in their scope and would need better implementation.

Endnotes

[1] Panel Report, European Communities-Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs, https://www.wto.org/english/tratop_e/dispu_e/cases_e/ds174_e.htm

[2] Panel Report, European Communities-Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs, https://www.wto.org/english/tratop_e/dispu_e/cases_e/ds290_e.htm

[3] Council Regulation on the protection of geographical indications and designations of origin for agricultural products and foodstuffs, https://eur-lex.europa.eu/legal-content/EN/TXT/HTML/?uri=CELEX:32012R1151&rid=1

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.

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Article: Can A Composite Trademark Be Dissected Into Its Constituent Elements To Determine Infringement?

Introduction

Section 17(2)(b) [1] of the Trade Marks Act, 1999 states that “when a trademark contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered”. This section prescribes that a trademark must be viewed as an indivisible whole. The fundamental questions which arise are: whether a proprietor can claim an exclusive right in the dominant part of the whole of the trademark? and whether a composite trademark can be dissected into its constituent elements for determining infringement?

The Anti-Dissection Rule

The above statutory provision embodies the anti-dissection rule. In cases of trademark infringement which involve composite marks, the anti-dissection rule requires the Courts to consider the composite marks as an indivisible whole rather than truncating or dissecting them into component parts to determine deceptive similarity between the marks. This rule is based on the notion that a typical prospective customer will be impressed by the composite mark as a whole rather than its individual components. Such a dissection of a trademark has been discouraged by the Supreme Court while laying down the guidelines for comparison of trademarks, as enumerated below, in Cadilla Healthcare Ltd. v. Cadilla Pharmaceuticals Ltd. [2001 (2) PTC 541 SC] (B. N. Kirpal, Doraswamy Raju, British Kumar, JJ.):

  1. The trademark must be considered as a whole. It is not right to take a part of the trademark and compare it with part of the other trademark
  2. No meticulous or letter by letter comparisonis required. Side by side comparison is not the correct test
  3. Comparison should be made from the point of view of a person of average intelligence and of imperfect recollection.
  4. The overall structural, visual & phonetic similarity and similarity of the idea in the two marks and the fact as to whether it is reasonable likelihood to cause confusion should be taken into account.

Thus, the Apex Court reinforced the statutory rule of anti-dissection by laying down that a mark must be considered as an indivisible whole while comparing it with another mark. However, since there cannot be any straitjacket formula to determine deceptive similarity, the Courts have often deviated from the anti-dissection rule and evolved the rule of dominant feature.

The Rule of Dominant Feature

The dominant feature rule states that a trader is considered to have infringed on a mark even if he or she uses one or more of its dominant elements without using the entire mark. The Courts have noted that dominant features are significant because they attract attention and consumers are more likely to remember and rely on them for purposes of identification of the product. The rule of dominant feature is refelcts in Section 11(1)(b) [3] of the Act, which provides that “…a trademark shall not be registered if, because of, its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark”. It can be inferred that where a mark copies a dominant feature of another mark, it can be said to infringe the mark due to deceptive similarity.

Thus, technically, the rule of dominant feature permits the Courts to dissect a composite mark and consider only a dominant part of the whole trademark to determine deceptive similarity, rather than considering the trademark as an indivisible whole. The very nature of this rule makes it adverse to the rule of anti-dissection, thereby leading to an anomaly in judicial decisions. However, the Courts have clarified that the two rules are not antithetical to each other. The notion that the anti-dissection rule does not impose a complete embargo on the consideration of constituent elements in a composite mark was made abundantly clear by a Division Bench (Pradeep Nandrajog, Mukta Gupta, JJ.) of the Delhi High Court in South India Beverages Ltd. v. General Mills Marketing Inc. [2015 (61) PTC] [4]. The Court had effectively held that “the principle of ‘anti dissection’ and identification of ‘dominant mark’ are not antithetical to one another and… the said principles rather compliment each other…”. Thus, the Court observed that the rule of dominant feature is not averse to the rule of anti-dissection rule, and that the two rules work in tandem.

Conclusion

In conclusion, there is no bar on consideration of constituent elements of a mark for determining deceptive similarity. The courts are permitted to dissect a composite mark and apply the rule of dominant feature to ascertain deceptive similarity between the two marks as and where required. The rule of dominant feature is therefore not an exception nor is contradictory to the statutory rule of anti-dissection.

Endnotes:

  1. Section 17(2)(b) of the Trade Marks Act, 1999
  2. Cadilla Healthcare Ltd. v. Cadilla Pharmaceuticals Ltd. [2001 (2) PTC 541 SC]
  3. Section 11(1)(b) of the Trade Marks Act, 1999
  4. South India Beverages Ltd. v. General Mills Marketing Inc. [2015 (61) PTC]

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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