IPR NEWS – WEEKLY UPDATES FROM 30th OCT – 5th NOV
LOUIS VUITTON MALLETIER V. FUTURETIMES TECHNOLOGY INDIA PRIVATE LIMITED & ORS
The Delhi High Court on November 3 has granted Louis Vuitton Malletier, a French luxury fashion brand, Rs. 20 lakhs in fees in its trademark infringement case against Club Factory, a Chinese e-commerce platform that was outlawed in India in 2021. Louis Vuitton’s attorney informed the court on November 3 that the plaintiff only wishes to pursue costs in the case, despite the fact that the lawsuit was officially decided on March 24 when a permanent injunction was granted against the Chinese website and it was now scheduled for ex-parte testimony in regard to the relief of damages. The defendants were permanently prohibited from producing, offering for sale, or selling any products, including face masks and other items, bearing the registered trademarks of Louis Vuitton on its portal or any other portal owned by the defendants by Justice Singh in March. The Department of Telecommunications (DoT) and Ministry of Electronic and Information Technology (MeiTY) were also instructed by the Court to issue directives to all internet service providers to block the website www.clubfactory.com so that it is inaccessible via VPN or other platforms.
ELSEVIER LTD. AND ORS. V. ALEXANDRA ELBAKYAN AND ORS.
The Delhi High Court on November 3 denied Alexandra Elbakyan’s request to remove an earlier admission admitting the ownership of the American Chemical Society, Wiley, and Elsevier’s copyright in a pending dispute. Elbakyan is the creator of the shadow library website Sci Hub, and she admitted as much in a written deposition in response to a lawsuit brought by the American Chemical Society, Wiley India, Elsevier, and other big publishing firms. The publishers claim that by making their literary works freely available to the public on the websites Sci-Hub and Libgen, they are engaging in online piracy. Rejecting the application seeking amendment in the written statement, the court held that amendment is not in nature of a clarification or an explanation to the admission made in the written statement but seeks a complete withdrawal of the said admission.
SOTKON SP SLU V. WESTERN IMAGINARY TRANSCON PRIVATE LIMITED AND OTHERS
The Delhi High Court on October 31 held that the Western Imaginary Transcon Private Limited a Mumbai-based corporation is violating an interim injunction it gave to a global waste management company Sotkon, by continuing to provide trash cans to Gandhinagar Municipal Corporation. Sotkon filed a lawsuit for patent infringement last year, and the court heard it. In an interim order, the court prohibited the defendant, Western Imaginary Transcon Private Limited, from violating Sotkon’s registered patent. Sotkon had claimed that the Mumbai-based company had improperly used images of its products, drawings, and illustrations from its brochure. Additionally, while making a bid in response to a request for proposals (RFP) issued by the Gandhinagar municipal body in 2020 for the installation of smart underground bins, they plagiarized the technical specifications of their products. The defendants must now file a proper application with the court beforehand if they plan to supply any additional bins that are the subject of this lawsuit to any other organization, as the court has now directed.
TIM HORTONS CANADIAN IP HOLDINGS CORPORATION V. IN-N-OUT BURGERS
A reassessment of In-N-trademark Out’s ownership was requested in 2019 by Tim Hortons Canadian IP Holdings Corporation. The right to use a term or phrase as a trademark can be deleted if a corporation owns it but cannot demonstrate that it has been used in the previous three years, making it available for registration by another party. However, the Canadian Intellectual Property Office on November 1 found that due to the company’s yearly burger sales at the Langley Good Times Cruise-In, In-N-Out Burger had been actively using the brand. Timothy Stevenson, a member of the Trademarks Opposition Board, stated: “In addition to using its cookout trucks to sell food goods in some regions in the United States, the owner [In-N-Out Burger] has also utilised its cookout trucks to sell food products in Canada for many years.”
ABITRON AUSTRIA GMBH V. HETRONIC INTERNATIONAL INC,
The Supreme Court of the United States on November 4 said that it would consider a $114 million victory for industrial remote-control manufacturer Hetronic International over its former European distributor Abitron Germany GmbH in a trademark dispute. The subject of when a U.S. corporation can obtain damages for trademark infringement based on overseas sales will be discussed by the high court. Crane remote controls are produced by Hetronic International, a Methode Electronics subsidiary with a location in Oklahoma. Europe was where Hetronic Germany’s products were supplied before Abitron acquired it. In Oklahoma City federal court, Hetronic filed a lawsuit against Abitron and its affiliates for producing and marketing products using the Hetronic trademark using unlicensed components. The court granted Hetronic $114 million in damages following a jury’s verdict, of which $90 million was for infringements of federal trademark law.
AMGEN V. SANOFI
The Federal Circuit’s enablement review of Amgen’s PCSK9 antibody patents covering evolocumab (Repatha) was the subject of a challenge by Amgen, which the U.S. Supreme Court accepted on November 4 notwithstanding the government’s guidance. Amgen claims in its appeal that the Federal Circuit overstepped its bounds in rejecting its PCSK9 antibody patents by placing a disclosure burden above what is required by 35 U.S.C. 112. Notably, the Supreme Court recently declined to consider a number of other cases that raised difficulties with the Federal Circuit’s enabling precedent, albeit with a different makeup.
UNILOC USA, INC. V. MOTOROLA MOBILITY LLC
The Federal Circuit on November 4 used collateral estoppel from a prior Uniloc appeal against Apple to determine that Uniloc’s transfer of a right to sublicense to Fortress precluded standing against the appellants in that case, which involved appeals from patent cases against Motorola and Blackboard. Even though he agreed that Uniloc lost the current appeal because it didn’t appeal the ruling in Apple’s favour, Circuit Judge Alan Lourie noted in the Motorola Mobility decision that patent owners don’t lose the right to sue infringers just because they have given the right to sublicense the patent to a different entity.
FINJAN LLC V. ESET, LLC
The U.S. Court of Appeals for the Federal Circuit reversed the Southern District of California’s invalidation of Finjan’s asserted patent claims for indefiniteness under 35 U.S.C. 112 in this precedential ruling, which was published on November 1. While such definitions can provide context, the Federal Circuit noted that “incorporation by reference does not convert the invention of the incorporated patent into the invention of the host patent,” finding that the district court had erred in limiting the definition for the claim term “downloadable” in the asserted patents in accordance with a definition for that claim term from a patent incorporated by reference into the asserted patent.
VIVEK PURWAR AND ANR. V. HARI RAM AND SONS
The Delhi High Court on November 2 has stated that the trial court in this case does not have jurisdiction to hear a plaintiff’s lawsuit alleging trademark infringement and passing off simply because the defendant promoted its products while conducting business in Delhi. Owners of M/s. Hari Ram and Sons filed the lawsuit, stating that the defendants used the same trademark for a related line of business. Both parties filed cross appeals with the High Court in an effort to overturn the trial court’s decision. The defendants were aggrieved since the trial court could not have decreed the same in the plaintiff’s favour after categorically ruling that it had territorial authority to hear the case.
J. DOE 1 AND J. DOE 2 V. GITHUB,INC
A proposed class action complaint on November 3 names Microsoft, its subsidiary GitHub, and its business partner OpenAI, alleging that their development of the AI-powered coding assistant GitHub Copilot depends on “software theft on an unprecedented scale.” The case is still in its early stages, but it has the potential to have a significant impact on the wider field of AI, where businesses are generating fortunes by teaching software using data that is copyright-protected. Copilot, which Microsoft-owned GitHub launched in June 2021, is trained on web scraped public code repositories, many of which are made available under licences that oblige anyone using the code to give credit to its authors. Copilot has been found to reuse substantial chunks of licensed code without giving credit, which has led to this lawsuit accusing the companies of flagrant copyright law violations.
ONTARIO INC. V. BHAGWANI
An interlocutory injunction forbidding the defendants from calling any restaurant or franchise they run “Bombay Frankie” was overturned by the Divisional Court on November 2. The previous ruling had drawn heavy criticism for applying basic trademark law principles incorrectly (and the test for granting an interlocutory injunction). The decision in first instance specifically granted the plaintiff, who was the first to submit a trademark application for the name “Bombay Frankies” but who had not yet used the mark, an interlocutory injunction prohibiting the defendants, who were already running two restaurants with the name “Bombay Frankie,” from using that mark until the trial.