IPR NEWS – WEEKLY UPDATES FROM 14TH AUG – 20TH AUG
FLIPKART INTERNET PRIVATE LTD. v. STATE OF NCT OF DELHI & ANR.
The respondent company Sanash Impex Pvt. Ltd have procured the authorized rights to sell the cosmetic products of a Czech based company ‘DC DERMACOL’ in India . A FIR was filed against Flipkart by the complainant for trademark infringement of their mark ‘DC DERMACOL’ by unauthorized resellers who were selling fake products in Flipkart and Amazon. The complainant also alleged that this act was committed by them in collaboration and connivance with Flipkart, thereby accusing Flipkart of enabling the sale of fake DC DERMACOL cosmetics and charging the resellers under Section 63 of the Copyright Act, 1957 and sec. 103 and 104 of the Trade Marks Act, 1999 and Flipkart is an intermediary as per sec. 2(1) (w) of the IT Act.
The Delhi High Court squashed the FIR stating that even though Intermediaries have an important duty to follow ‘due diligence’ as given under Rule 3(1) of the IT Rules, breach of such duty has not be termed as an offence. To charge a criminal liability, the proof established must be beyond reasonable doubt by the prosecution. With regards to the case at hand, Flipkart has complied with due diligence under Rule 3(2) and unless the presence of active role is established, the intermediaries have a safe harbor protection under Section 79 of the IT Act, 2000 and therefore will not be liable for act of third party information if there is no conspiracy between the two parties. Incidentally, the Court also opinioned that only Flipkart and one other platform is mentioned leaving the other parties who are selling the fake products. Therefore the Court squashed the FIR and directed the conduct of further investigations to make the unauthorized sellers responsible for IP infringement.
CRAMER V. NETFLIX INC.
A tattoo artist has alleged that the image of the Joe Exotic tattoo that she created during the pandemic was used by Netflix in the second season of their series ‘Tiger King’ whereby the image of the tattoo had featured in the 1st episode for over three seconds. The complainant has accused the defendants that they didn’t seek permission to use her work and neither did they render any monetary benefit to her nor did they remove the same after her requests. The tattoo created by Cramer on her husband was done after getting permission from Joe Exotic through a friendly letter and she copyrighted the work titled ‘Quarantine 2020’ in January. Cramer has filed for damages of $150,000 and share in the profits as well against Netflix.
ANDY WARHOL V. LYNN GOLDSMITH
This case pertains to the principle of Fair Use and Transformative work as per Section 107 of US Copyright Act. According to this case, Andy Warhol in 1981 had used the photograph of Prince shot by Lynn Goldsmith (which was subsequently licensed to many magazines) as an inspiration for his paintings and prints. In 2017, the Warhol foundation had filed a preemptive suit against Goldsmith and later in appeal, the decision was overturned in 2021. The case has come before the Supreme Court, to be decided in October 2022 and amicus briefs have been invited from interested parties who are not part of the suit until August 2nd week. The US Copyright Office along with the National Press Photographer’s Association (NPPA) and Thomas Maddrey of the American Society of Media Photographers (ASMP), mirrored their opinion with the Court of Appeal’s judgment on 29.3.2021, that the prints made by Andy Warhol is not fair use and amounts to copyright infringement of Lynn Goldsmith’s photograph. The decision of this case will have a great impact on the visual arts community and in general the concept of fair use and transformative work.
SETTLEMENT BETWEEN INTERCEPT PHARMACEUTICALS AND DR. REDDY’S LABORATORIES
The Indian based pharmaceutical company, Dr. Reddy’s Laboratories and Intercept Pharmaceuticals have agreed to reach a settlement for their lawsuit with regards to the selling of generic version of Intercept’s (ICPT) liver disease therapy Ocaliva by Dr. Reddy. The plan for Dr. Reddy’s is to market 5 mg and 10 mg tablets of generic OCA before the expiration of Intercept’s patents. The settlement that has been arrived gives Dr. Reddy non-exclusive, sublicense restricted, non-transferable, royalty free license to market this drug in US from October 2023 subject to the approval and conditions levied by the Court.
EGENERA INC. V. CISCO SYSTEMS INC.
The plaintiff company based in Massachusetts had filed a law suit against the defendant for patent infringement (US Patent No.7, 231,430) and alleged that the defendant company had copied their software platform Bladeframe to create their own server and had managed to generate a sum of $5 billion in as revenue. The Boston jury held that Cisco did not commit patent infringement and is not liable to pay $371 million in royalties.
INDIA SEEKS TO EXPAND COVID IP WAIVER
India has asked for a special meeting of the General Council of the WTO before the actual meeting scheduled in December for discussions relating to expanding the spectrum of Covid-19 vaccine waiver to diagnostics and therapeutics within six months as envisioned in the 12th ministerial conference that took place in June. This meeting has been requested due to the “hesitation” received from TRIPS council regarding the IP waiver expansion, therefore turning towards WTO for managing and controlling the impacts of Covid-19.
EGGLESTON V. TWENTIETH CENTURY FOX CORP.
A copyright infringement suit was filed by Sophia Eggleston against Fox Corporation’s television series “Empire” for mirroring the portrayal of the drug lord character of the series from her memoir “The Hidden Hand” which is about the “her life of crime, imprisonment and redemption”. The Federal Judge held that bare facts which are based on a real person’s life can’t be protected under copyright law but the way of expression can be copyrighted. In this present case, the judge opinioned that the plaintiff never showed any creative expressions from the show which was copied from her memoir, therefore the suit was dismissed in favor of the defendants.
EXPANDING THE ACCESS TO TRADITIONAL KNOWLEDGE DIGITAL LIBRARY (TKDL) FOR USERS.
On 16th August 2022, the Union Cabinet has approved the plan to increase the access of Traditional Knowledge Digital Library (TKDL) for users. The proposal is to facilitate the incorporation of traditional knowledge with latest practices to fuel innovation and trade and also expand its scope beyond the database of patent offices. The key aspects of knowledge and leadership as envisioned in the New Education Policy 2020 through Bharatiya Gnana Parampara would be boosted by the opening up of TKDL. The pandemic has witnessed the economic and social benefits of traditional knowledge such as Ayurveda, Siddha, Unani, and Yoga and expanding the same will accelerate growth and innovation as well.
TESLA INC. V. YATSKOV
The plaintiff company had sued the defendant for leaking and stealing the trade secrets of Tesla’s product ‘Project Dojo” which is a super computer technology and also for breaching employment agreements by possessing confidential information in his personal computer. The Federal Court in California held that Tesla can seek the method of arbitration to settle the dispute of trade secret levied by Tesla against their former employee. The right of Tesla to arbitrate is not vitiated because of obtaining a temporary injunction from the Court. Moreover the employment contract between Tesla and the defendant has also mentioned that both parties can seek primary relief in court and still be able to adjudicate via arbitration also, therefore there is no waiver of rights.
THE FIFTEENTH SESSION OF THE ADVISORY COMMITTEE ON ENFORCEMENT (ACE)
The 15th session of the Advisory Committee on Enforcement (ACE) will be conducted from 31st August 2022- 2nd September 2022, in a hybrid manner, both at the WIPO headquarters in Geneva and from the online platform. The Building Respect for IP Division is organizing this international conference to discuss various issues surround IP across the world, such as Adjudication of IP infringement cases, institutional arrangements to address online IP infringements, IP enforcement and prevention, Role of Intermediaries in IP enforcement and coordination among them, etc., by eminent scholars from developing and developed nations. The member states and concerned stakeholders from both developing and developed nations are invited to register and participate for the same.