Topical Updates: To IP & Beyond
Snapshots
PUNJAB AND HARYANA HIGH COURT
The Court allowed a petition under S. 482 CrPC and quashed criminal proceedings under S. 63 and 65 of the Copyright Act, 1957, and S. 103 and 104 of the Trademarks Act, 1999, arising out of the alleged manufacture and sale of counterfeit ‘Puma’ garments by the Petitioner. Held, the prosecution of the Petitioner under the Copyright Act was unsustainable since there can be no copyright in manufacture and sale of garments. Further, failure to comply with S. 115(4) of the Trademarks Act – requiring investigation by a Deputy Superintendent or higher, and the absence of the Trade Marks Registrar’s opinion before conducting search/seizure, rendered prosecution under the said Act, unsustainable.
The Division Bench overturned the Trial Court’s decree which dismissed Sagar Ratna’s trademark and copyright infringement suit on the ground that it was filed without availing the mandatory pre-institution mediation proceedings provided under S. 12A of the Commercial Courts Act. Held, the Trial Court erred in invoking Order VII Rule 11, CPC to reject the plaint as being ‘barred under any law’. The Supreme Court’s position in Yamini Manohar was relied on by the Court to emphasize that compliance with the provision of S. 12A may be exempted if urgent interim relief has been prayed for, and the condition that the plaint “contemplates” an urgent interim relief, issatisfied. Accordingly, the matter was remanded back for fresh adjudication.
DELHI HIGH COURT
In the first copyright infringement suit filed against an Artificial Intelligence (AI) platform (ChatGPT) in India, OpenAI at the outset stated to have blocklisted ANI’s domain from their software, thereby ensuring that the said domain shall be excluded from ChatGPT’s future training. However, the Court appointed Amici Curiae for consideration of novel questions pertaining to recent technological advancements, viz. whether the “storage” of ANI’s copyrighted content for ChatGPT’s training, and/ or use by ChatGPT of such content to generate responses for its users amounts to infringement or qualifies as ‘fair use’ under S. 52 of the Copyright Act, 1957.
DELHI HIGH COURT
An appeal was filed by Wikimedia challenging the order passed by the Ld. Single Judge directing discloser of the subscriber details of Respondent Nos. 2-4 (alleged to be the administrators of Wikimedia). The appeal was disposed off in terms of a consent order whereby, inter alia Wikimedia was directed to ensure service of summons on Respondent Nos. 2-4, and to file an affidavit of service (along with proof) in sealed cover disclosing all basic subscriber details available with it.
DELHI HIGH COURT
In these connected petitions filed in relation to deepfake videos, the Ministry of Electronics & Information Technology (MEITY) filed a status report with respect to steps taken to address the growing menace of deepfakes – viz. inter alia a Deepfake speech detection system and a software for detecting fake videos and images is being developed, and a committee has been appointed for such on-going projects. The court directed MEITY to finalize nominees for a new committee which would consider inputs from stakeholders, and study international frameworks like the EU’s, before submitting its report to the Court.
Significant Judgments
DELHI HIGH COURT
Dr. Devi Prasad Shetty (Plaintiff No.1), a globally recognized cardiac surgeon and chairman of Narayana Hrudayalaya Ltd. (Plaintiff No.2), filed a suit to restrain inter alia violation of personality and publicity rights, as well as infringement of trademarks and misappropriation of goodwill.
The Court noted that Dr. Shetty has made significant contribution to the field of affordable healthcare and has gained prominent recognition, whereas his hospital, operating under the mark ‘Narayana Hrudayalaya’ and ‘Narayana Health’ since April 2001, has garnered immense goodwill and reputation by virtue of continuous and uninterrupted use.
It was contended that unidentified Defendants have created Facebook pages misusing Dr. Shetty’s name / photos / video, including content generated with artificial intelligence and deepfake technology, with a view to derive illicit commercial gains.
The court granted an ex-parte ad interim injunction against the defendants inter alia prohibiting misappropriation of Dr. Shetty’s name, likeness, image, photos, videos or any other aspects of his persona for commercial gains through use of Artificial intelligence, deepfake and any other technology. Meta and Google were directed to forthwith take down the impugned Facebook and YouTube pages / channels, and disclose the details of the perpetrators. Liberty was also granted to the Plaintiffs to approach Meta and Google, requesting them to take down any such material posted on their platforms in future.
P.L. THENAPPAN V. AMAZON SELLER SERVICES PVT. LTD.
MADRAS HIGH COURT
An application under Order VII Rule 11, CPC filed by Amazon Prime Video, India was allowed in a suit for copyright infringement filed in relation to the unauthorized streaming / making available for sale, of a Tamil film ‘Kaathala Kaathala’ on Amazon Prime Video in the USA, on the following grounds:
- Non-disclosure of a cause of action against the Defendant: From a reading of the plaint, it was evident that the Plaintiff was aggrieved by the alleged unauthorized streaming of his film on Prime Video in USA, which was owned and operated by an entity different from the Defendant.
- Non-joinder of a necessary party: The suit suffered from a fatal defect of not arraying as a Defendant, the correct entity which operates Prime Video in the USA.
- Lack of territorial jurisdiction with the Madras High Court: That the alleged acts of infringement, if any, took place only in USA, as the impugned film was not made available or accessible in India at all. While Section 62(2) of the Copyright Act grants long-arm jurisdiction to courts within the local limits of whose jurisdiction the Plaintiff resides or carries on business, the same does not extend to acts of infringement taking place outside the territory of India. For a claim of infringement to be brought under the Copyright Act, it is imperative that the infringing activity be shown to be occurring within the territory of India.
DELHI HIGH COURT
Comviva Technologies assailed the order of the Assistant Controller of Patents and Designs whereby its patent application for “Methods and Devices for Authentication of an Electronic Payment Card using Electronic Token” was refused as being a “business method” and “computer programme per se”, thus being nonpatentable under Section 3(k) of the Patents Act, 1970.
Comviva’s Key Submissions:
- Computer-related inventions demonstrating ‘technical effect’ or ‘technical contribution’ are patentable even if based on a computer program;
- The application relates to authentication of financial transactions, not the transactions themselves and is thus patentable;
- The invention represents a technical process for secure authentication which is patentable.
The Court relied on the guidelines for Examination of Computer Related Inventions, 2017 as well as various precedents, and observed:
- That to determine whether the claim was for a business method, it would have to be examined if the subject matter specifies an apparatus and/or technical process for carrying out the invention even partly. Thereafter, the claims shall be examined as a whole to determine if, in substance, it is a business method. Mere use of words such as “business, sales, payment” in the claims may not lead to such conclusion.
- While assessing patentability of “computer software per se”, the Court would have to examine whether the invention results in technical effect/advancement.
Applying the above principles, the Court held that the authentication process in the invention finishes before the financial transaction begins, making it a technical process rather than a business method and thus, patentable. Further, the invention produces technical effects and advancement, making it more than just a “computer program per se”.
The Court set aside the Controller’s order and directed the Patent Office to grant the patent, subject to other provisions of the Patents Act.
“18. The Controller appears to have refused the application as being a ‘business method’ only on the ground that the Specification as well as the Claims have used terms such as ‘payment’, ‘transactions’ and ‘financial transaction’…”
Meet the Picklers: Sneha Jain, Snehima Jauhari, Disha Sharma, Surabhi Pande, Aniruddh Bhatia, Srishti Dhoundiyal, Rimjhim Tiwari, Ishi Singh and Mehr Sidhu.
