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.

In interlocutory applications in the commercial suit titled Bigtree Entertainment Pvt Ltd v. D Sharma & Anr. [I.A. 1345/2015 & 12014/2016 in CS(COMM) 609/2016], the Delhi High Court, (Nath, J.) vide its order dated 2019.1.21, has dealt with the issue of granting exclusivity over the prefix part of a registered mark. The suit for infringement and passing off had been filed by the plaintiff for protection of its mark ‘BOOKMYSHOW’ registered as of 2007.4.12, and also for protection of the unregistered prefix part thereof, viz. ‘BOOKMY’, seeking an order of permanent injunction against the defendant’s use of the unregistered mark ‘BOOKMYEVENT’, or of any other mark with the prefix ‘BOOKMY’; both parties’ marks being used in respect of online ticket reservation services. Though it had earlier granted an ex parte interim injunction, the court allowed the defendant’s interlocutory application for vacating it and dismissed the plaintiff’s application for an interim injunction pending disposal of the suit.

The plaintiff asserted that since its launch in 2007, its ‘BOOKMYSHOW’ venture had grown into a leading entertainment event reservation portal in India, as a result of which not just its mark as a whole but also its prefix ‘BOOKMY’ had acquired distinctiveness and both had come to be associated exclusively with the plaintiff. The plaintiff contended that the defendant’s mark ‘BOOKMYEVENT’ was deceptively similar. The plaintiff further contended that ‘BOOKMY’ was an essential part of its registered mark, and thus warranted protection. The defendant claiming use by it of its mark since 2011, which it denied as being deceptively similar, also countered that no exclusivity can be granted in a part of a mark especially when such part is descriptive.

The court did not prima facie find deceptive similarity between the marks and noting that the BOOKMY prefix part was neither coined nor invented, it prima facie found it not to be distinctive but instead descriptive for the concerned services. In light of Section 17 negativing any exclusivity to a part of a registered mark if the part comprises matter of a non-distinctive character, the plaintiff’s contention that the prefix part has acquired distinctiveness under the Proviso to Section 9(1) from use since adoption, came to the fore. The defendant’s objection that this is legally impossible owing to the prefix part admittedly never having been used independently by itself led the court to the statutory-interpretational issue of whether “use” of a mark under the Proviso to Section 9(1) of the Trade Marks Act only includes its use independently by itself or also its use only as part of a larger mark. The Proviso to Section 9(1) states that a mark can acquire a distinctive character as a result of its use, so an expansive interpretation thereof that “use” also means use only as part of a larger mark, would then render the question of acquired distinctiveness of the prefix part a question of fact for a prima facie view required to be taken thereon. The plaintiff urged this approach arguing that a part of a registered mark did warrant the expansive interpretation.

The court stated that “The plaintiff is using the mark ‘BOOK MY SHOW’ and claims that the plaintiff has earned a strong reputation in the market. Based on this, it has been pleaded that the prefix ‘BOOKMY’ has attained exclusive meaning under which only the plaintiff can claim rights. As noted in the above judgment it cannot be forgotten that ‘BOOK MY’ is a common English term. Its link with booking for shows, events, films etc is but obvious. It is a common general term descriptive of the services which are sought to be provided, namely, booking of a show, event, movie etc.”

The court appears thus to have taken the position at the pre-trial stage that “use” in the Proviso to Section 9(1) means use of the mark independently and does not also mean use as part of a larger mark; and that this is so even when the larger mark is a registered one. In other words, the court appears thus to have proceeded on a prima facie view at the interim stage pending trial that a descriptive part of a mark cannot acquire secondary meaning and distinctive character through its use only as part of the mark as a whole, and that this position does not change even if the larger mark is a registered one.  The court noted its earlier 2017 order on the same plaintiff’s similar interim injunction application in its another earlier suit [Brain Seed case] in which its same prefix ‘BOOKMY’ had been found prima facie pending trial to be descriptive initially and not having acquired distinctiveness from use of the larger mark since, and therefore no exclusivity had been granted over the same at the interim stage. The court also found applicable its earlier 2016 decision [Living Media case] wherein the plaintiff had claimed exclusive rights in the mark ‘TODAY’ on the ground of its continuous use, with variants, since 1975, but the court had held after trial that continuous use of the mark only as a whole could not result in a part thereof, being a common/dictionary word, acquiring distinctiveness. In the instant interlocutory applications, apart from dealing with the question of exclusivity over a part of a registered mark, the court had to also make a prima facie determination of overall deceptive similarity between the two marks which had the common prefix ‘BOOKMY’.

The court took a prima facie view pending trial that the defendant’s mark as a whole was dissimilar to the plaintiff’s mark as a whole, on an overall comparison – “Prima facie the colour scheme, the font used by the defendant are entirely different and people are unlikely to be misguided or confused by the said trade names and looks of the defendant’s trade mark. I agree with the judgment of this court in Bigtree Entertainment Pvt. Ltd. vs. Brain Seeds Sportainment Pvt. Ltd. (supra) that prefix BOOKMY is not an invented word. In fact, it is an apt description of a business that is involved, namely, booking of tickets for shows, events, films, etc.”.

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.

While allowing Monsanto’s civil appeals Monsanto Technology LLC & Ors. v. Nuziveedu Seeds Limited & Ors., CA No. 4616-4617/2018, setting aside the judgments of a Division Bench of the Delhi High Court, the Supreme Court (Sinha, J. and Nariman, J.), vide its judgment dated 2019.8.1, has ruled that a Court cannot decide invalidity of a patent in summary manner without full trial.

Nuziveedu and other seed companies entered into an agreement with Monsanto to develop “Genetically Modified Hybrid Cotton Planting Seeds” utilizing Monsanto’s patented invention “Methods for transforming plants to express bacillus thuringiensis delta-endotoxins”, and to commercially exploit thereby developed seeds against payment of license fee to Monsanto. The agreement was ultimately terminated by Monsanto which initiated arbitration for recovery of monies claimed as due. A patent and trademark infringement suit was also filed by Monsanto before the Delhi High Court seeking permanent injunction and related reliefs. Nuziveedu and the others entered contest and also filed a counterclaim seeking revocation of the suit patent as being invalid. The Delhi High Court (Gauba, J.) while relegating the defense plea of patent invalidity to trial, declined Monsanto any interim injunction against use of the patent by Nuziveedu and the others on a prima facie view that Monsanto’s earlier termination of the agreement was illegal. This order had the effect of allowing Nuziveedu and the others to continue using the technology under the suit patent provided they continued paying license fee during pendency of the suit. In internal cross-appeals by Monsanto and by Nuziveedu et. al, the Delhi High Court Division Bench (Bhat, J. and Khanna, J.), decreed the counter claim declaring the suit patent invalid giving three months to Monsanto to seek registration as a breeder’s plant variety under the Plant Variety Protection & Farmers’ Rights Act, 2002 and also confirmed the interim arrangement as ordained by the Learned Single Judge. The suit was permitted to continue for trademark infringement and damages.

The Supreme Court’s ruling is seen to deal with the question whether a patent invalidity revocation counterclaim under Section 64(1) (d) of the Patents Act, 1970 “…a patent…may be revoked…on grounds that…the subject of any claim of the complete specification is not an invention…” read with Section 3(j) “plants…in whole or any part thereof other than microorganisms but including seeds, varieties…are not inventions…”, raises a mixed question of law and fact such as requires evidence, possibly expert evidence, for a determination necessitating a full elaborate trial procedure. The question that is thus implicated is whether a judicial determination of the applicability of the statutory phrases “…is not an invention” [Section 64(1)(d)] because it is a “plant..seeds…” which “…are not inventions…” [Section 3(j)] requires an adjudication of a pure question of law or instead of a mixed question of law and fact.

The Supreme Court held – “Section 64 … necessarily presupposes a valid consideration of the claims in the suit and the counterclaim in accordance with law and not summary adjudication sans evidence by abstract consideration based on text books only…A suit can be disposed of at the initial stage only on an admission inter alia under Order 12 Rule 6 or when the parties are not in issue under Order 16 Rule 1 and the other grounds mentioned therein, none of which are applicable herein…The suit involved complicated mixed questions of law and facts with regard to patentability and exclusion of patent which could be examined in the suit on basis of evidence…the issues raised were complicated requiring technological and expert evidence … whether the nucleic acid sequence trait once inserted could be removed from that variety or not and whether the patented DNA sequence was a plant or a part of a plant etc…”

Being satisfied with the nature of the interim arrangement ordained by the Learned Single Judge, the order of the Single Judge was reaffirmed, and the orders of the Division Bench vacated with the result that the counterclaim is restored on the file of the suit and the dismissed-in-default part of the patent infringement suit is also restored on the file of the suit, and both remanded to the Delhi High Court where the Learned Single Judge is expected to take them up for trial.

The Supreme Court also found fault with the manner in which the Division Bench of the High Court had proceeded to arrogate non-existent jurisdiction to itself in the appeals before it which were of a limited scope –  “The Division Bench ought to have confined itself to an examination of the validity of only the injunction granted by the learned Single Judge…The Plaintiff has never consented to a summary adjudication regarding the validity of its patent. The consent referred …has been given only to decide …to allow or disallow the relief of injunction … We are therefore satisfied that the Division Bench ought not to have disposed of the suit in a summary manner by relying on documents only, extract from the public domain, and not even filed as exhibits in the suit, much less examination of expert witnesses…”

In the civil suit titled Christian Louboutin SAS v. Nakul Bajaj & Ors., [CS(COMM) 344/2018] the Delhi High Court (Singh, J.) has, vide its order dated 2018.11.2, dealt with the issue of intermediary liability for trademark infringement in light of the safe harbour provision of Section 79 of the Information Technology Act, 2000 (“IT Act”) which exempts an E-commerce intermediary from liability for acting as an information technology-platform, hosting platform and content for third-party sellers that commit trademark infringement. The suit has been decreed in favour of the Plaintiff by the said judgement, directing the Defendants to, inter alia, cease use of meta-tags consisting of the Plaintiff’s marks and specifically directing the Defendant, Darveys.com, to disclose by filing onto the record of the suit being disposed-off, details of the identities of sellers hosted on its website whose products have been held to infringe the Plaintiff’s trademarks. The Defendants including their website Darveys.com have been denied protection under Section 79 of the IT Act.

The Plaintiff claimed that the Defendants operate the website www.darveys.com (“Darveys.com”) and sought an injunction against the Defendants’ use of its CHRISTIAN LOUBOUTIN trademarks and sale of goods-products under the said marks on this website. The Defendants claiming immunity under Section 79 of the IT Act took the plea that they are merely an E-commerce provider acting as an intermediary; that they are not involved in the manufacture, sale or purchase of the products by the sellers; that they only provide a website-portal as a technological interface to arms-length sellers with the potential and actual purchasers-customers of the sellers, and that the website provides for an adequate take-down policy for anyone complaining of trademark infringement by a hosted seller. The Defendants also submitted that no actual sales of products featuring the Plaintiff’s marks have yet transpired on Darveys.com. The Plaintiff pleaded that Defendants are themselves engaged actively in offering for sale counterfeits on their website Darveys.com, and in meta tagging, and that therefore the Defendants act together jointly as much more than a mere intermediary as claimed; that the customers are in fact of the Defendants themselves than of the hosted sellers, and that thus the Defendants themselves infringe and so are disentitled to shelter under Section 79 of the IT Act. By consent of parties, the court framed the availability of Section 79 defense as an issue to be decided as a pure question of law without any evidence as no relevant fact was in dispute. No other issue was framed except the pro forma issue of what reliefs to decree if Defendants failed on the Section 79 issue.

The question that therefore needed addressing was whether qua an E-commerce platform such as a website that happens to have an active and substantive role in the management of and control over the information, data or communication link made available by it or hosted by it, such information, data or communication link could still be treated as that of a “third party” as featuring in Section 79 (1) of the IT Act that exempts E-commerce platforms as intermediaries from liability, or whether such treatment is unwarranted? Whether it should instead be treated as of itself (of the E-commerce provider rather than of any third party) that is to say as owned by or belonging to itself (than to any third party)? A related question that arises is whether an E-commerce platform that happens to have the kind of management and control as described above would nevertheless be considered as receiving, storing or transmitting or providing services with respect to a particular electronic mere “record” as featuring in  the definition of an intermediary in Section 2(w) of the IT Act, or whether the described role is doing more than dealing with mere record?

In its decision, the Court analyzed the concept of E-commerce platforms of various business models and functioning thereof, and noted that an examination of various tasks such as provision of transportation, quality assurance, authenticity guarantees, reviews, collection of payment, advertisement and promotion of the product, enrolling members upon payment of membership fees, using trademarks through meta-tags etc., when performed by an E-commerce platform or an online marketplace, “..would be key to determining whether an online marketplace or an e-commerce website is conspiring, abetting, aiding or inducing and is thereby contributing to the sale of counterfeit products on its platform” thus rendering the conduct of the platform as more than that of merely an ‘intermediary’.

The Court analyzed the functioning of the website Darveys.com in light of the above test and noted that as per its own claims and policies, Defendants themselves take responsibility for the authenticity of the goods, themselves arrange for the transport and delivery of goods, and themselves maintain and change prices of the goods-products at their own discretion. The Court further noted that the sellers are unknown and that the Defendants, in fact, exercise complete control over the infringing products on Darveys.com.

The Court opined that “While the so-called safe harbour provisions for intermediaries are meant for promoting genuine businesses which are inactive intermediaries, and not to harass intermediaries in any way, … e-commerce platforms which actively conspire, abet or aid, or induce commission of unlawful acts on their website cannot go scot free.”. Thus, the Court while holding “The role of Darveys.com is much more than that of an intermediary.”, concluded that “… if the sellers themselves are located on foreign shores and the trade mark owner cannot exercise any remedy against the said seller who is selling counterfeits on the e-commerce platform, then the trade mark owner cannot be left remediless.”

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.

Rejecting an application by Defendants to dismiss for want of territorial jurisdiction at the threshold itself a commercial suit titled Burger King Corporation vs. Techchand Shewakramani and Ors., [CC (COMM) 122/2017 in CS (COMM) 919/2016], the Delhi High Court (Singh J.), vide its order dated 2018.8.27 has clarified that actions such as promotion, advertising, publicity etc. of trademark by a Defendant is also be liable to be construed as ‘use’ of trademark for the purposes of Section 2 (2)(c) of the Trade Marks Act, 1999 read with Section 20(c) of the Civil Procedure Code, 1908 (CPC).

The suit was filed in Delhi seeking permanent injunction restraining infringement, passing off, damages and related reliefs in respect of the Plaintiff’s trademark ‘Burger King’. Territorial jurisdiction of the Court was challenged on the ground that the plaint fails to aver the Mumbai-based Defendants as residing or working for gain in Delhi or as operating even a single outlet under the ‘Burger King’ brand in Delhi. It was countered that even if there is no territorial jurisdiction under Section 134 of the Trade Marks Act, 1999 over infringement there is still territorial jurisdiction under Section 20(c) of the CPC over not only infringement but also over passing off by the plaint averring the Defendants have ‘used’ the trademark in Delhi forming part of the cause of action. The plaint alleged use – “a) by promoting the mark Burger King in Delhi; b) by entertaining franchisee queries from the territory of Delhi; c) by seeking franchise requests through the website theburgerking.in; d) by openly and publicly expressing their intention to expand all across the country including Delhi; e) by allowing would be franchisees to apply through the website by filling a form.”

The question before the Court was whether at the preliminary pre-trial stage itself, the aforesaid alleged acts of the Defendants even if true as proven eventually in trial, are insufficient to constitute ‘use’ by them of the trademark for the purposes of Section 2 (2)(c) of the Trade Marks Act, 1999 thereby forming ‘part of the cause of action’ under Section 20(c) of the CPC, or whether instead they are sufficient? Is it that only if Defendants would have actually entered into a franchise agreement with some person in a place and possibly further that through that franchisee actually opened an outlet under the trademark in that place, that the mark would have been ‘used’ by them in that place for the purposes of the aforementioned statutory provisions, or whether that is not a necessary ingredient of those statutory provisions?

The Court took note of the definition of ‘use of a mark’ as provided by Section 2 (2)(c) of the Trade Marks Act, 1999 which states that ‘use’ could either be in a physical form or ‘in any other relation whatsoever to such goods’. The Court observed: “The phrase `in relation to’ has been interpreted to include advertising, promotion, publicity, etc. Thus, in addition to actual sale of goods and providing services, if a person advertises his or her business under the mark in a territory, promotes his or her business under the mark in a territory or for example invites franchisee queries from a particular territory, sources goods from a particular territory, manufactures goods in a particular territory, assembles goods in a particular territory, undertakes printing of packaging in a particular territory, exports goods from a particular territory, it would constitute `use of a mark’.” Accordingly, the Court proceeded to a prima facie finding subject to final determination in trial that the plaint along with documents does disclose use of trademark in Delhi by Defendants and thus that the Court in Delhi is vested with the necessary territorial jurisdiction.

The Court distinguished the judgements relied upon by Defendants to urge a contrary statutory interpretation. It found the reliance misplaced for only interpreting Section 134 of the Trade Marks Act, 1999 but not diluting the principle of or the position under Section 20(c) of the CPC, a separate independent gateway for territorial jurisdiction.

On this aspect, the judgement held: “ the provisions of Section 134 of the TM Act and Section 62 of the Copyright Act are in addition to and not in exclusion of Section 20 of the CPC. If the Plaintiff can make out a cause of action within the territorial jurisdiction of this Court under Section 20, no reference needs to be made to Section 134.”