Topical Updates: To IP & Beyond
DELHI HIGH COURT
ANIL KAPOOR V. SIMPLY LIFE INDIA & ORS.
Actor Anil Kapoor sought protection of inter alia his personality rights and the expression / dialogue ‘Jhakaas’, including the unique manner in which he delivers the same, against social media channels, e-commerce websites and people at large. The Court, upholding the actors’ copyright, personality and privacy rights, passed a broad order restricting any use of elements of his persona, i.e., his name, voice, image, likeness, etc. to create any merchandise, ringtones etc. using AI, deep fakes, GIFs or face morphing to create videos, photographs etc. for commercial purposes. With respect to the term ‘Jhakaas’, the Court noted that it is a Marathi slang, but its unique delivery and nature of expression is exclusively synonymous with the actor’s persona.
DELHI HIGH COURT
JAINEMO PRIVATE LIMITED V. RAHUL SHAH & ORS.
Plaintiff raised a claim of infringement of its literary works, i.e., educational / study material, by, inter alia circumvention of technological tools that prevent the download and circulation of the works. The infringing works were also circulated through Social Media Apps like Telegram, WhatsApp, YouTube etc.
The Court took note of the challenge on digital platforms on which copying and reproduction of copyrighted material is made easy. An injunction was granted restraining the Defendants from downloading, selling, disseminating, sharing etc., the copyrighted material. Further, the Court directed Telegram and Youtube to block the channels which circulated the infringing content and disclose details of entities operating the infringing channels.
MADRAS HIGH COURT
The Court, in partially setting aside the Controller’s decision, established that Section 3(d) of the Patents Act holds relevance across all fields, not limited to chemicals or drugs. It was also pointed out that under S.3(d), a patent can only be obtained if the invention enhances the known efficacy, irrespective of the ‘Explanation’ in the statute, thereby expanding the meaning of ‘efficacy’ under the provision. Moreover, Section 3(e) is not restricted to independent claims but extends to dependent claims, thereby upholding the Controller’s rejection of the composition claim.
A suit for trade mark infringement was filed in relation to a scam being run under the ‘AJIO’ brand name, whereby customers were duped out of money through the means of fake ‘scratch cards’ ostensibly issued to them by AJIO. The Court restrained the Defendants from using the mark ‘AJIO’ and directed the banks to freeze their respective accounts. Telecom service providers were directed to block Defendants’ mobile numbers and provide associated information. The Delhi Police’s cyber cell was also instructed to investigate the matter promptly and submit a status report.
TRIPURA HIGH COURT
A Writ Petition was filed by WhatsApp challenging a direction of the Trial Court to the Nodal Officer of WhatsApp, to provide details of the originator of a chat containing a fake resignation letter of the Chief Minister of Tripura. It was argued that Rule 4(2) of the IT Rules 2021 was not satisfied as a case for imminent threat to public order was not made out. The High Court agreed with WhatsApp’s submissions and held that the Trial Court failed to deal with the extent of the said threat under Rule 4(2). Accordingly, the order under challenge was stayed.
SUPREME COURT OF INDIA
The Appellant challenged the High Court’s interim order staying the execution of a decree passed by the Trial Court. The Appellant had a favourable order in a suit for copyright infringement and passing off, with respect to its label “Tango Punch”.
The Apex Court upheld the High Court’s order and held that the Appellant had failed to establish its goodwill as it had merely filed statement of sales and advertisements / promotion expenses. These statements had not been proven by examining the certifying Chartered Accountant. Held, such statements are sufficient to make out a prima facie case for a Plaintiff, however, need to be proved at the time of final hearing of a suit.
- For establishing goodwill of the product, it was necessary for the appellant to prove not only the figures of sale of the product but also the expenditure incurred on promotion and advertisement of the product.
DELHI HIGH COURT
A suit was filed by the Bhaktivedanta Book Trust against websites, mobile apps and Instagram handles which were illegally making available the works of His Divine Grace Bhaktivedanta Swami Prabhupada. The Court restrained the Defendants from disseminating the works. It clarified that while no copyright can be claimed in religious scriptures themselves, their various renditions being transformative works, are copyrightable –
DELHI HIGH COURT
A landmark judgment passed in a website blocking suit (filed in relation to the copyright/broadcasting rights in the ‘ICC Men’s Cricket World Cup 2023’) wherein the Court granted a dynamic injunction operable on a “real-time” basis. The Court acknowledged the fact that any delay in blocking the rogue websites would result in considerable loss to the Plaintiffs, given that the infringing broadcast is of one-day matches. Relying on Universal City Studios LLC v. Dotmovies.baby, the Court held –
36… The rights of IP holders cannot be rendered redundant in the virtual world and the enforcement of rights on the internet has to be real and effective. The natural sequitur of this would be to mould remedies in a manner that rights of IP holders are protected and the law is given effect to in an effective manner.
Accordingly, an ex-parte injunction was passed, granting liberty to the Plaintiffs to communicate the details of the websites (discovered to be illegally streaming the matches during the currency of the World Cup) to the ISPs, to ensure “real time” blocking of the infringing websites.
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