The law of copyright focuses on protecting a creator’s rights in original literary, dramatic, musical and artistic works, cinematograph films and sound recordings. It also confers rights on the copyright holder against unauthorised reproduction, communication to the public, adaptation and translation of his/her work. Such protection, however, is not absolute, but comes with certain confines keeping in mind the larger public interest. One such limitation to ownership in a copyrighted work is carved by the Doctrine of “Fair Dealing”. While the term “fair dealing” finds mention in the Copyright Act, 1957 (“Act”), which is the law governing copyright in India, it has not been defined by the legislature, often leading to disputes concerning the ambit of this term. While dealing with exceptions to copyright infringement, the Act refers to the term “fair dealing” to exempt certain acts from the ambit of copyright infringement. These include use of copyrighted works for the purposes of private or non-commercial personal use, research, criticism or review, reporting current events, current affairs or publicly delivered lectures in media, etc. Courts in India have, time and again, tried defining the concept of fair dealing. The interpretation of the Doctrine of Fair Dealing traces its roots to the year 1934 when two points constituting “unfair dealing” were laid down by the court in an attempt to negatively define fair dealing in the case of Kartar Singh Giani v. Ladha Singh. The court ruled that (1) in order to constitute unfairness, there must be an intention to compete and to derive profit from such competition, and (2) unless the motive of the infringer was unfair/ improper, the dealing would be fair. The Kerala High Court, in 1996, in the case of Civic Chandran v. C Ammini Amma, while deciding whether a parody would fall within the scope of fair dealing, held that, while criticism is an exception to copyright infringement, “intention” behind a parody must be considered. If the intent is to exploit the goodwill of an original work, that would amount to infringement. Over time, the definition of fair dealing has evolved through judicial interpretation. The Delhi High Court in the 2011 case of Super Cassettes Industries Ltd. v. Hamar Television Network Pvt. Ltd & Anr. provided thirteen broad guidelines on fair dealing. The court was of the view that, it is neither possible, nor advisable, to determine the exact meaning of the word “fair dealing” since it is not a question of law, but of fact. It opined that the circumstances surrounding each case need to be examined and that both quantitative and qualitative tests must be applied to determine a question of fair dealing. It also noted that mere commercial use does not make the use unfair, and that “intention” plays an important role in determining whether use is fair or not. Courts in India have adopted a liberal approach in identifying cases of ‘fair dealing’, often interchangeably using the term with the US concept of “fair use” that permits limited use of copyrighted works without having to first acquire permission from the copyright holder. It is also often argued that the Doctrine of Fair Dealing protects the fundamental right of freedom of expression under Article 19(1) of the Constitution of India. The question, however, that still remains is — Where does one draw the line between use that is fair or unfair? In the 2008 case of The Chancellor, Masters & Scholars of the University of Oxford v. Narendra Publishing House, the Delhi High Court stressed that fair use provisions must be interpreted so as to strike a balance between the exclusive rights granted to the copyright holder, and the valid competing interest of enriching the public domain. The court borrowed four factor tests from the United States to ascertain if a particular use of a work is fair and is entitled to protection under fair dealing. These four factors are: (i) The purpose and character of the use; (ii) The nature of the copyrighted work; (iii) The substantiality of the portion used in relation to the copyrighted work; and (iv) The effect on the potential market for, or value of, the copyrighted work. In light of the evolution of fair dealing, in the celebrated 2016 case of The Chancellor, Masters & Scholars of the University of Oxford & Ors. v. Rameshwari Photocopy Services & Ors., the Division Bench of the Delhi High Court adopted a liberal and socio-economic approach and held that the preparation of ‘course packs’, such as compilation of photocopies of the specific portions of different books, and their distribution to the students by educational institutions does not constitute copyright infringement so long as the inclusion of the works photocopied was justified by the purpose of educational instruction. Socio-economic development of the country is of paramount importance to the Indian judiciary. While the provision pertaining to “fair dealing” in the statute appears to be fairly narrow and limited in scope, courts in India appear to have adopted a flexible and broad view in interpreting this provision keeping the larger public good in mind. Surely, the Doctrine of Fair Dealing allows the public to use copyrighted works in a fair manner, without taking away the exclusivity in the work conferred on the copyright holder under statute. With the courts’ intervention as guardians of the law, this doctrine is surely a balancing beam between exclusivity and public interest.

Our associate, Anand Kumar discusses “Intellectual Property: Tagging Liability In Using Third Parties’ Marks As Keywords And Metatags:“ With the advent of the Internet era, the cyberspace has become a vital part of life, so much so, that our daily lives, whether personal, social or professional, are conducted through the Internet. In fact, to meet the consumer demands in the virtual world, businesses worldwide, have also made a parallel shift. For businesses to remain relevant in the minds of consumers, tools of advertisement and marketing through the Internet, have become extremely relevant. In the past decade or so, online advertising has become the most convenient method for businesses to advertise and market their products and services. Of course, the Internet’s ability to locate, engage and target customers is unmatchable. In this direction, Keyword advertising, such as, Google Ads[1] and Meta-Tags, Hyper- Linking, Deep- Linking, etc. are some of the significant virtual tools that a lot of companies have been using to expand their Internet presence and attract customers towards their websites. Search advertising is uniquely valuable to advertisers because it puts an advertisement in front of a consumer at the precise moment the consumer is signalling his/her interest or intent by telling the search engine what he/she is seeking: it is literally the right ad, for the right user, at the right time. Keywords are used in programs such as Google’s Ads program, where advertisers are allowed to buy certain search terms, giving them the right to a “sponsored link” – in other words, when someone searches that keyword, Google not only provides links to the relevant sites, but also provides direct links to the “sponsoring” advertisers.[2] Metatags, on the other hand, are an element of the HTML that describe the contents of a Web page, placed near the beginning of page’s source code, and used by search engines to index pages by subject.[3] In other words, metatags are non-visible text inserted into the “head” section of HTML [HTML coding is used to construct a website] or XHTML web pages, typically to describe the content of a page, and are used by certain search engines to determine if the page is relevant to a search term. These metatags control the behaviour of search engine crawling and indexing. Dispute Surrounding Use of Third Parties’ Marks As Keywords/Metatags: While it is not illegal for businesses to use generic terms to expand their online presence through the above-noted tools, it is illegal/objectionable to use third parties’ trademarks as keywords/ metatags in the pursuit of higher search engine ranking or a large online customer base. However, courts around the world, are divided on this aspect. While courts in some countries view such use as illegal, courts in other countries have held that use of a mark as keywords/metatags does not amount to “use” as a trade mark and/or falls in the category of “fair use”. In India, courts have been more inclined towards protection of rights of trademark owners against advertisers using the third parties’ marks as part of keywords and/or metatags. For instance, in M/s DRS Logistics(P) Ltd & Anr. v/s Google India Pvt. Ltd & Ors. CS(COMM) 1/2017, the Delhi High Court held that the Indian trademarks law make it clear that infringement of a trade mark can be by way of spoken use of mark, which is different from printed or visual representation of the mark. In fact, invisible use of a mark i.e., as a metatag, will also amount to use of the mark as a trademark. In so far as the position regarding use of a mark as a “Keyword” in the Google’s AdWord program/ similar programs is concerned, the court held that both keywords and metatags are used to show relevancy and appear on top of search engine results, causing diversion of traffic from one website to other. Thus, use of a mark as a keyword also amounts to “Use” under the Indian trade marks law. Moreover, a keyword is visible part of advertising. Further, in the landmark case of Kapil Wadhwa v. Samsung Electronics Co. Ltd. [194 (2012) DLT 23], a Division Bench of the Delhi High Court upheld the Single Judge Bench’s decision which held that use of third-party marks as a metatag is illegal as it enables the defendant to ride on the reputation of the plaintiff. Use of Third Parties’ Marks As Keywords and Metatags Amounts to Trademark Infringement/Passing-off: In People Interactive (I) Pvt. Ltd. v. Gaurav Jerry, the Bombay High Court equated copying of domain names as part of meta tags to online piracy, which not only diverts internet traffic away from the plaintiff but also hijacks plaintiffs’ reputation and valuable intellectual property and amounts to passing off. The defendants in this case had, inter-alia, used the plaintiffs’ SHAADI.COM mark and its domain name www.shaadi.com, as part of the metatag in its website, www.ShaadiHiShaadi.com. While highlighting the role of metatags, the Court observed, “Dishonesty is writ large on the actions of the 1st Defendant. He has used the Plaintiffs’ mark shaadi.com as a suffix to another expression. He has attempted to misappropriate the Plaintiffs’ mark…He has, plainly, hijacked Internet traffic from the Plaintiffs’ site by a thoroughly dishonest and mala fide use of the Plaintiffs’ mark and name in the meta tags of his own rival website. The distinctive character of the Plaintiffs’ mark is thus diluted and compromised by the actions of the Defendant. The 1st Defendant’s action is nothing but online piracy. It cannot be permitted to continue.” Recently, in the case of Upgrad Education Pvt. Ltd. Vs. Interviewbit Technologies Pvt. Ltd. & Anr.[4], the Delhi High Court granted an ad interim ex-parte injunction in favour of plaintiff restraining defendants from using the plaintiff’s mark UPGRAD, inter alia, as a keyword through the Google Ads Word Program. The plaintiff, a registered proprietor upGrad formative marks, had its grievance related to defendants’ subscription on the Google Ads Program (as discussed above, a program which enables interested parties in redirecting traffic to

Our Associate, Nikita Lakhani discusses SEPs and FRAND: A Break Down With the ever-increasing penetration of technology in our day-to-day lives, life without gadgets and electronic devices is hard to imagine. Right from the WiFi in our homes to the Bluetooth in our mobiles, technology surrounds us wherever we go. In such a thriving digital age, it becomes indispensable for inventions and technology to adhere to standards to enable electronic gadgets/ devices to communicate effectively and efficiently. Patents protect such inventions and incentivize their creators by conferring on them monopolistic rights over the patented invention. This blog discusses the need for striking a balance between Standard Essential Patents (?SEPs?) and their licensing on fair, reasonable and non-discriminatory (?FRAND?) terms to safeguard public interest. The usefulness and practicality of complex electronic products, such as smartphones and tablets often depends on the interoperability of components and products. To enhance the value of these complex products, competing manufacturers, customers and suppliers participate in standard-setting practices to set technological standards for use in designing products or services. Standards are technical requirements which provide a common design for a product or a process and enable the use of multiple devices at the same time. Standardisation is a voluntary process in which a number of market players reach a consensus for setting ?common technology standards? under the support of a Standard Setting Organisation (?SSO?). These SSOs focus on developing and implementing globally applicable technical standards for technologies. To satisfy the industry guidelines and ensure compatibility with one another in gadgets, SEPs are utilised. SEPs are, in essence, patents that protect technologies that are necessary or essential to standards. This implies that, to manufacture gadgets which are standard compliant, one will have to use technologies that are protected as SEPs. Once a patent is declared as an SEP, it faces no competition from other patents until that patent becomes obsolete due to new technology/inventions. In order for entities to utilize an SEP in the production process of standard compliant products, they need to obtain a license to utilize the SEP from the SEP holder in exchange for royalty. Since the SEP holders may charge an exorbitantly high price for granting such a license, in order to protect the interests of manufacturers, the licenses for SEPs are provided on FRAND terms. This ensures that manufacturers providing technology compliant products are able to utilize the SEP in their products on reasonable terms. In other words, FRAND terms are a method to ensure that SEP implementors are able to license and use standardized technology on fair grounds. FRAND licences are primarily intended to prevent Patent Hold-up and Royalty Stacking. Patent Hold-up is essentially a demand by the patent holder for higher royalties or more costly or burdensome licensing terms than could have been obtained before the standard was chosen. Ultimately, the high costs of such patents get transferred to the final consumers. Similarly, royalty stacking is when a single product uses many patents, of the same or different licensors, resulting in exorbitantly high royalties after adding each level of the standard technology, which makes the end product expensive. That being said, what is fair to one may not be fair to another. Due to the lack of standardised data, the determination of royalty rates for obtaining a license of an SEP is a challenge. The monopoly of rights enjoyed by an SEP holder and the subjectivity of royalty rates results in disputes on the question of fairness of these terms. SEP holders are often charged of demanding exorbitant royalty rates that are not in compliance with FRAND terms, being fully cognizant of the lack of an alternative technology available. Disagreements over royalty rates often give way to delayed negotiations, which is mainly left to the parties to such a license. Indian courts and the chief antitrust regulator in India often witness disputes arising from licensing of SEPs on non-FRAND terms. In the absence of any entity designated to enforce FRAND terms, it becomes all the more important for SEP holders to view SEP licenses as a means to make advancements in technology for the larger public interest, rather than viewing them as profit-making assets. SEP holders must not forget about their commitment/ declarations before SSOs to making their patented technology accessible under FRAND terms in exchange for an agreed royalty. The re-evaluation of the role of SSOs and a well-defined procedure in defining royalty rates will go a long way in harmonizing the interests of SEP holders and the larger public good.

Our Associate, Rishikaa discusses “Analyzing the concept of IPRs in creations of AI – Part 2: Granting Legal Personality to AI for purposed of IP law – A World View” This post is the second of the four-part series on Artificial Intelligence (“AI”) and its affair with Intellectual Property (“IP”) Law. The first part of the article series can be accessed here. Focusing on the recent developments on the world stage, this blog seeks to explore the stand taken by various jurisdictions that are contemplating the possibility of granting legal personality to AI for the purposes of intellectual property law. While AI appears to be a recent phenomenon, the world was introduced to the concept of AI robots in the early 1900s in the book and film, the Wizard of Oz. A few years later, Alan Turing, a British polymath, brought fiction to reality and mathematically explored the possibility of AI in his 1950 paper “Computing Machinery and Intelligence”.[1] With this background, it would be safe to say that although the concept of AI is quite old, modern day IP principles were conceived at a time when AI was only a figment of imagination and had not been envisaged from a technical, and consequently from a legal, standpoint. However, recent developments in the field of AI and its growing acceptance have compelled the legal systems of the world to reconsider the laws and the ownership of rights emanating from these laws. With the unprecedented rate of technical advancements, artificially intelligent machines are able to imitate human behavior like never before. This imitation is bringing the ‘tech’ and ‘legal’ at crossroads with each other. At this time, legal experts are still trying to decide which side they are on in the AI vs. Humans debate. However, one recent development that has caused a stir and has taken the global community by surprise is the patent issued by South African Patent Office designating an artificial intelligence tool, called DABUS, as an inventor.[2] DABUS is an AI system created by the CEO of Imagination Engines, Stephen Thaler, who had filed patent applications in 17 jurisdictions, naming DABUS as the sole inventor.[3] Two days after the South African grant, the Federal Court of Australia allowed DABUS to be listed as an inventor and held that the Australian Patents Act permits recognition of a non-human inventor, however such an inventor can neither be the applicant nor a grantee of a patent.[4] The court also opined that it would be a fallacy to state that only a human can be an inventor. Although there seems to be a consensus in the views of the Patent office of South Africa and the Australian court, what’s fascinating to note is that the Australian Patent Office had rejected Thaler’s application, which was later reversed by the Federal Court. On the other hand, South Africa is a non-examining country, meaning that it does not examine patent applications based on recognized principles of patent law. Thus, many are questioning the viability of the South African recognition. Moreover, IP offices in the UK, the EU, and the USA seem to be on the same page as the Australian Patent Office and have rejected Thaler’s application in the examination stage for the lack of identifying a human or natural inventor. Concurring with the UKIPO, the England and Wales High Court held that AI is not a natural person and does not have a legal personality, and hence cannot be granted any rights under the UK Patents Act 1977.[5] As far as the USA is concerned, the USPTO issued a notice requiring identification of an inventor in the DABUS application, after analyzing case law, the Manual of Patent Examining Procedure and current law, and held that the current laws and regulations do not provide inventorship to non-human entities.[6] Just like Australia, Thaler’s legal team challenged the decision of USPTO before the Virginia Federal Court and submitted that the statutes, on which the USPTO relied, were passed much before the AI era and that if the Congress had contemplated the issue then it would have included AI within the definition of inventors.[7] The judge sided with the USPTO and stated that the Congress defined an inventor in 2011 through the America Invents Act. She further opined that AI has not yet reached the level of sophistication needed to be recognized as an inventor and the Congress will take the decision regarding expanding the scope of patent law to include AI as an inventor when the technology evolves to the required level of sophistication. The Indian Copyright Office, also seems to have followed suit as it had rejected a copyright application which listed the AI application, RAGHAV, as the sole author of the work. However, it later recognized RAGHAV as the co-author along with the lawyer who owns RAGHAV.[8] While IP offices of US, UK and Australia, arguably the most sought-after IP offices for development and interpretation of IP laws and principles, require the human element for IP registrations, it appears that the legislators of these jurisdictions as well as some courts are yet to take a call. Recently, a Chinese court recognized a non-human entity as the author of an article, only upon being satisfied that the work was created by the overall intelligence and under the supervision of multiple teams. On the legislative front, China, in its 15-year plan on developing IP, recently announced its endeavor to accelerate legislation on artificial intelligence and improvements to be made to rules protecting IP of algorithms, business models and AI outputs.[9] As far as European Union is concerned, while the EU has introduced a comprehensive draft legislation namely, the Artificial Intelligence Act 2021, this legislation fails to address the question of IP and its relationship with AI. Interestingly, the EU Parliament had adopted a resolution regarding IP protection for development of AI in late 2020, much before proposal of the AI Act was finalized.[10] Only time will tell how, if at all, the legislators respond to

Our Associate, Alvin Antony discusses “The future is here, but are we ready! – Analyzing the concept of IPRs in creations of AI – Part 1: Qualification of AI” In recent times, the role of Artificial Intelligence (“AI”) in everyday life of people has increased substantially. Consequently, discussions regarding role of AI in various sectors has also witnessed a sudden rise. The Intellectual Property Rights (“IPR”) world is one such sphere that is flooded with questions on the developments in the field of AI and its intersection with IP law. The celebrated step by South Africa of granting a patent to creation of AI[1] as well as a leading step by India to consider AI as a co-author of an artwork[2] has further added to the chaos regarding complexities around the work created by an AI in autonomous[3] manner, i.e. without any human intervention. Questions, such as whether such autonomous creations of AI should be recognized as independent work, whether such creations are eligible to be protected under current statutory framework and whether AI is capable of owning/considering such creations in true legal sense, are yet to be answered. While there is no dearth of information on AI and its convergence with IP, we will analyze some of these questions and explore the possibilities around AI and IP through a four-part blog series. Each of the parts would focus on various aspects of this relationship. The first part will look into the question of granting a legal personality to AI to be considered for providing IPR, the second part will look at the afore-mentioned question from a global lens, the third part will highlight the issues that may arise when IPRs are granted for creations of AI and the fourth part will provide possible solutions to these problems/issues. Before delving into the question of legal personality of an AI, it is pertinent to understand what one means by the terms ‘AI’ and ‘IP’. For the purpose of this blog series, creations of AI would refer to works created by an autonomous AI. According to John McCarthy, AI is the “is the science and engineering of making intelligent machines, especially intelligent computer programs.”[4] AI is a method intended to mimic the human intelligence with the help of computers. In modern times, where concepts such as machine learning[5] and deep learning[6] are able to create AI that are autonomous with the results, the nature of the same may have to be analyzed parallel to IPs that are created by human intelligence. The Hon’ble Supreme Court of India has defined IP in the following words, “the term ‘intellectual property’ refers to a category of intangible rights protecting commercially valuable products of human intellect …”[7]. The World Intellectual Property Organization defines IP as creations of minds[8]. Courts have also considered the grant of ownership of an IP as a monopoly over intellectual creations of the owner[9] and a manner of excluding non-permitted users from reaping the benefits from the intellectual property of another[10]. As they say, intellect can be considered as the point of origin of IP. However, the evolution of AI has given rise to the question of whether this intellect is restricted to or should be restricted to humans. As per law, say for example, in the case of copyright law, the author of a copyright is considered to be the first owner of copyright[11]. Most of the statutes pertaining to copyright law around the world refer to the term ‘author’, without making any reference to human intellect[12]. However, these statutes are with the presumption that the author will be a human.[13] Similarly, in relation to patent law, the rights emanating from statutes are considered in association with a ‘person’ who is claimed to be the inventor[14]. Even though the question on the necessity of a human element is not really addressed by the law, the possibility of a non-human entity to be considered as an inventor is open under patent law[15]. Therefore, one can safely conclude that, unless specifically mentioned, the common principles of IP law do not prohibit providing IPR to AI. Given the above, it is important to understand the way jurisprudence on personality has developed in relation to these non-human entities. In M Siddiq (D) Thr Lrs v. Mahant Suresh Das & Ors[16], the Hon’ble Supreme Court of India has given an extensive analysis of the concept of juristic personality. In the view of the Hon’ble Court, “at a purely theoretical level, there is no restriction on what legal personality may be conferred. What is of significance is the purpose sought to be achieved by conferring legal personality. To the extent that this purpose is achieved, legal personality may even be conferred on an abstract idea”. The court observed that through juristic animation, inanimate objects may be given a status of a juristic person, if it is benefiting several natural persons. Considering this, one can argue that creations of AI are benefiting natural persons, leading to the inference of granting IPRs to the AI driven authors/inventors of these works. This is not something unique to India and there are many jurisdictions, which have relied on the object-benefit analysis and have considered inclusion of non-traditional juristic persons for granting legal personality.[17] Even though the statutory framework is not completely against qualifying AI for grating IPR, courts of numerous jurisdictions have expressed varied views, regarding the authorship of a non-human entity. The Delhi High Court is of the view that an author of an original work must be a human and not an artificial person. The Hon’ble Court in Rupendra Kashyap v. Jiwan Publishing House Pvt. Ltd., 1994 (28) DRJ 286, held that ownership of a copyrighted work may be granted only if there is involvement of a human in creating such work[18]. As per the court, juristic persons are incapable of being considered as authors of a work that may be the subject matter of copyright.[19] While these views of the court have created partial blocks when considering

Our Associate, Tiyasa Banerjee discusses “Personality Rights vis-a-vis Copyright Infringement“ Who will reap the benefit of a picture with millions of likes? The photographer who captured the image that reached millions of people, or the subject matter in it? A very neglected yet important question to dwell upon is whose rights will be protected in such a situation. John Locke’s theory of ‘Fruits of Labour’ states that, when a person has worked hard on something, the society must grant him an exclusive interest to enjoy that work. In case of paparazzi photographs, the question is, who owns the photograph, the one who posed in the photograph rendering it monetary value, or the photographer who clicked the picture and captured the art to make it sell. Photographs, as we know, are primarily protected under Copyright laws. These laws state that, as soon as a person captures something, the moment the shutter button is released in the camera, copyright protection is created over the captured picture and the photographer owns the copyright in it. On the other hand, every individual has right over his or her personality including the right to determine the personality’s commercial use. A personality is a property of that person. Recent cases outside India, have made Indian celebrities think twice before re-posting any picture clicked by paparazzi. The paparazzi, always being ready to sue and extort exorbitant amount of money from celebrities whose pictures they click, have become quite a talk in the industry and outside. Dua Lipa, the famous Hollywood singer was recently sued for sharing a picture of her “airport look”, without permission and for allegedly profiting from that picture. Justin Bieber, Jennifer Lopez and Gigi Hadid are among many others who have been sued for unauthorized sharing of their own picture clicked by paparazzi and monetizing over it. Most of these cases, however, have either been settled outside the court or dismissed voluntarily. Thus, the approach that the US courts would adopt in these cases, is yet to be seen. It would be interesting to see whether the courts would consider the rights of a photographer holding copyright over her/ his work more valuable than the rights of celebrities having personality and publicity rights over themselves. What remains as a question is, what is the situation in India. Although no such lawsuits had been reported till now, there have been many such instances where Indian courts have answered a similar situation putting personality rights above a photographer’s copyright. In the case of Titan Industries Ltd. vs M/S Ramkumar Jewellelrs 2012 (50) PTC 486 (Del), the court, favoring the personality rights, held that a celebrity will always have a right to control the extent of commercial use of her/ his picture or more specifically her/ his personality, including the right to determine when, how and where her/ his identity will be used. Although these cases do not answer the situation of a paparazzi photograph yet, they do shed light on some aspects of this situation. Indian courts have time and again tried to balance the fundamental rights of the adverse parties while adjudicating on this issue. In the case of DM. Entertainment Pvt. Ltd. v. Baby Gift House and Ors. CS (OS) 893 of 2002, the Delhi High Court, protecting the right to freedom of speech and expression, held that although the right to publicity determines the right to permit commercial exploitation or not, too much focus on famous person’s publicity right would disrupt someone else’ constitutional right. In the case of Indu Jain vs Forbes Incorporated (2007) ILR 8 Delhi 9, the Delhi High Court held that while celebrities have the right to re-post their picture, they cannot infringe the rights of the photographer. Whenever a case is filed over copyright issues in a photograph, Indian law upholding the copyright law, has granted protection to the owner of the photographs. The issue arises when the personality rights of celebrities intrude upon the right of publication by a photographer. While the fundamental right guarantees protection of one’s personality from being exploited, the same constitution also provides for the freedom of speech and expression, which allows a photographer to publish and monetize his work. Therefore, the rules of interpretation warrant a balancing exercise. The legal development around personality rights vis-a-vis copyright is in a nascent stage. With more and more cases and disputes involving this subject matter, the mist around this discussion would be clearer. All be it, there is a huge scope of negotiation and alternative dispute resolution in order to reach an amicable solution in such cases. It would be exciting to see whether the judicial interpretation turns out to be in favor of celebrities or paparazzi.

Our Associate, Abdul Hannan discusses “Associate and Series Trade Marks — Explained” Developing a successful brand takes considerable effort, both in terms of the time and money expended. Thus, when a brand becomes reputed or known to consumers in the relevant market, brand owners try to capitalize on such reputation, by creating sub-brands or a family of brands under the umbrella of the popular parent brand. This allows successful parent brands to build a stronger relationship with a segment of its existing customer base, attract new customers, and expand into new profitable revenue streams. Indian trademark law recognizes the importance of sub-branding/creating a family of brands, and to this extent incorporates specific provisions with respect to associated and series trademarks, for the benefit of owners of house/parent brands. Under Indian trademark law, associated trademarks refer to those trademarks which are owned by the same proprietor in respect of identical or similar goods and services, which would otherwise be likely to deceive or cause confusion if used by a person other than the proprietor. These marks are entered on the register as associated with the earlier registered trademarks in order to prevent the existence of multiple rights in the market. For two or more marks to be deemed to be associated, the marks, in addition to being identical/ substantially similar and in respect of the same goods/ services, must also be in the name of the same proprietor. Once two or more trademarks are associated together, Indian trademark law mandates that the marks must be assigned or transmitted together. Separate assignment of associated trademarks is not allowed. Such a mandate is in consonance with the reason behind the concept of associated trademarks, i.e., no separate right should be created for identical/ similar trademarks, in the name of different proprietors, for same or similar goods/ services. One major benefit of having associated trademarks is that under Indian trademark law, use of one of the associated trademarks would be sufficient to prove use of all the associated trademarks. Although it is mandatory to use the trademark after registration and non-use can lead to the removal of trademark from the Register of Trade Marks, in cases of associated trademark, use of one of the associated trademarks would be sufficient to prove use of all the associated trademarks. This is helpful in the event of a non-use cancellation proceeding being initiated against one of the associated trademarks. In such a scenario, a non-use cancellation proceeding can be successfully defended against, if use of an associated mark can be evidenced. Another benefit of associating a trademark with an earlier trade mark on the Register, is that the prosecution of the second trade mark will be easier owing to recognition of prior rights emanating from the first trade mark. Another species of trademarks governed under Indian trademark law are series trademarks. Series trademarks act as a variation to the general rule that separate applications must be mandatorily filed for each trademark. As per Indian law, variations of a trademark can be registered as a series trademark under one registration. In order to secure a registration of a series trademark, it is essential that all the marks in the series must resemble each other as to their material particulars. The only differences allowed between the proposed series trademarks can be in respect of non-distinctive features, such as statements as to number, size, price, quality, quantity, geographical origin, color etc. The test that will be employed would be that the dissimilar features when considered as separate trademarks would not be regarded as having distinctive character, and that these features do not substantially affect the identity of the trademark. Further, it is necessary that each of the trademarks in the series must be in respect of the same goods or description of goods or services. A series registration is not possible where all the goods/ services, although of the same description, are not in the same Nice Classification. On the other hand, where the goods, although falling in the same Nice Classification, are not of the same description, even then a series registration can not be granted. Accordingly, the expression ?of the same description of goods? refers only to those cases where each of the marks comprising the series is claimed in respect of goods which are of the same description, and which also fall in the same Nice Classification. Give the nature of series trademarks, Indian trademark law also imposes a condition that all marks registered as series in one registration are to be deemed to be associated trademarks. This is done to ensure that the marks can only be assigned together, and also help the proprietor in evidencing use of the series trademarks, since as discussed above, use of any one of the series marks would be accepted as use of all the marks. From a review of these provisions of Indian trademarks law, it is evident that the legislature has, by granting certain statutory benefits to owners of parent brands, recognized the commercial importance of sub-branding/creating a family of brands. The benefits result from the less onerous documentary and evidentiary requirements during the prosecution of associated and series trademark applications, the non-requirement of showing use for each trademark in a non-use cancellation action etc.

Our Associate, Surabhi discusses “Comparative Advertisements: The Confines of Law in India” It would not be an exaggeration to say that ?comparative advertisement? is one of the most efficacious forms of advertisement. While this term has not been defined in any statute of Indian law, the term is commonly used to describe advertisements where the goods or services of one trader are compared to those of another. Often used as a tool to glorify one?s product in a competitive marketplace, traders resorting to comparative advertisement should be cautious of the confines of law surrounding this form of advertising. Pertinently, the law governing trade marks in India references a situation where use of a registered trade mark in advertising by a person, other than the registered proprietor, is allowed. Specifically, it states that use of a registered trade mark by any person for the purposes of identifying goods/ services as those of the proprietor is not barred, so long as such use is in accordance with ?honest practices? in industrial or commercial matters. As a corollary, the trade mark law also states that a registered trade mark is infringed by any advertising of that mark, if such advertising takes unfair advantage of, and is contrary to, ?honest practices? in industrial or commercial matters. Surely, honest business practices form the foundation of comparative advertisements. While comparative advertisements are effective and allowed in India, their misuse by giving a false statement about the products of another trader in a demeaning manner, results in disparagement of the goods of the other, and is not allowed under Indian law. While the term ?disparagement? has also not been defined by any statute of Indian law, there have been various judicial pronouncements that have played an important role in determining the ambit of law relating to disparagement in India. The term has been recognized to mean, to slight/ undervalue, bring discredit or dishonour upon the owners of the competing brands and deprecating/ derogating the value of the brand through negative or de-meaning statements about the brand. While examining the scope of comparative advertisement and disparagement, the Calcutta High Court, in Reckitt & Colman of India Ltd. v. M.P. Ramachandran and Ors. 1999(19)PTC 74(Cal) laid down the following guiding principles that are often relied on by courts even today: ?(1) A tradesman is entitled to declare his goods to be best in the words, even though the declaration is untrue. (2) He can also say that my goods are better than his competitors’, even though such statement is untrue. (3) For the purpose of saying that his goods are the best in the world or his goods are better than his competitors’ he can even compare the advantages of his goods over the goods of others. (4) He, however, cannot while saying his goods are better than his competitors’, say that his competitors’ goods are bad. If he says so, he really slanders the goods of his competitors. In other words he defames his competitors and their goods, which is not permissible. (5) If there is no defamation to the goods or to the manufacturer of such goods no action lies, but if there is such defamation an action lies and if an action lies for recovery of damages for defamation, then the Court is also competent to grant an order of injunction restraining repetition of such defamation.? The above principles recognize that mere ?puffery? of one?s own goods is not actionable under law. Under the puffery rule, a tradesman can say that his goods are the best or better that those of others. However, he/she cannot, by comparison, slander or defame the goods of the competitor. Nor can he/she call them bad or inferior. Pertinently, the Delhi High Court in Dabur India Ltd. v. Colortek Meghalaya Pvt. Ltd. and Ors. 2010(44)PTC254(Del) ruled that an advertisement is a commercial speech and is protected under the Constitution of India. However, it must not be false, misleading, unfair or deceptive. It also ruled that, while glorifying its product, an advertiser must not denigrate or disparage a rival product. In another landmark case of Reckitt Benckiser (India) Ltd. v. Hindustan Unilever Ltd. 2013(55)PTC126(Del), the Delhi High Court noted that, ?in order to satisfy the test of comparative disparagement, the plaintiff has to establish the following key elements: The Madras High Court, however, took a significant departure from the above traditional approach on commercial puffery in the case of Colgate-Palmolive (India) Limited v. Anchor Health and Beauty Care Private Ltd. 2009(40)PTC653(Mad) where it took into consideration ?consumer interest? while deciding a dispute related to comparative advertising. The Court observed that recognition of the right of advertisers to puff their own products, even with untrue claims, de-recognises the rights of consumers guaranteed under the consumer laws of the country. It further ruled that ?to permit 2 rival traders to indulge in puffery, without denigrating each other?s product, would benefit both but would leave the consumer helpless?. It concluded that the consumer stands to benefit when the falsity of the claim of a trader about the quality and utility value of its product is exposed by a rival. All in all, the Indian judicial system recognizes that traders may exaggerate claims by highlighting the superiority of their products that would set them apart from their competitors, albeit without ridiculing or criticizing the products/ services of their competitors. While comparative advertisement is a fairly accepted practice in a highly competitive consumer-centric marketplace, traders should be mindful that its abuse is strictly forbidden through judicial precedence in India.

Our Senior Associate, Ajaya Kumar discusses “Virtual Hearings at the Trade Marks Registry” Much like many establishments in the legal field, the Trade Marks Registry has quickly adapted to a new working style?from offline to online! In a big announcement made late last year, the Registry commenced virtual hearings in October 2020! In late October 2020, the Registry first began oral hearings on objections raised with respect to trade mark applications. Since then, these hearings, also known as show-cause hearings, have been held regularly, leading to a reduction in backlog of pendency of applications. At this time, the Registry is scheduling virtual hearings for applications that are extensions of international registrations within four (4) to six (6) months from the date of filing responses to provisional refusal. Hearings on national applications are also being scheduled fairly regularly. In our view, the virtual hearing system has worked well so far. Links are sent timely and the number of hearings on a daily basis is high. One big change from the days of in-person hearings is that a hearing officer need not necessarily be situated in the Trade Marks Registry?s Office that has jurisdiction to hear a matter. An application might have been filed by a lawyer sitting in Delhi, and the hearing officer might be in Chennai! This is a significant change and one that has led to efficiency and better scrutiny of applications. Hearing Officers also expect attorneys to have uploaded necessary additional supporting documents on the Registry?s online portal in advance of a hearing. Orders are pronounced either at the conclusion of a hearing or sometime after. These oral hearings have worked well and the Registry continues the good pace in making decisions on applications. Typically, applications are published for opposition purposes within two (2) to three (3) weeks from the date of orders. Recently the Registry has also commenced virtual hearings in opposition/cancellation matters. As a result recently filed proceedings are moving quite quickly. A majority of such hearings are in respect of procedural issues, such as non-timely filing of the counter statement/evidence affidavit and or letter in lieu of evidence in support of opposition/application. The Registry is also instituting final hearings in respect of older opposition/ cancellation matters. For such substantive hearings, it is a good idea to prepare and file written submissions prior to the hearings, so that the hearing officers have time to go through the matter briefly before making any decision. Such written submissions will also assist while making arguments before the officers Clearly, the Trade Marks Registry has made immense progress insofar as hearings are concerned. These online hearings have, undoubtedly, also helped, in a small way, to prevent the spread of the COVID 19 virus while keeping business going.

Our Associate, Vishesh Kumar discusses “De Minimis in Copyright Law – Trivial or Proceed to Trial” In the digital era where almost everyone is a vlogger or an influencer, where does one draw the line between an actual case of copyright infringement or an ‘infringement’ too trivial to even act against? For further clarity, consider this situation. You are walking past the most stunning paintings known to mankind constantly vlogging the experience for your “followers”. All this while being blissfully unaware that you are communicating another person’s artistic work to the public at large which, when scrutinized through the lens of the relevant statute, constitutes copyright infringement. But would it make sense, in terms of business, public relations, costs, etc., for the copyright holder to go after you when the act is so trivial or insignificant to act against? This is where the concept of De Minimis comes in. The term De Minimis has been derived from the legal maxim ‘De Minimis Non-Curat Lex’ which means that ‘the law does not concern itself with trifles’. The concept, in very simple terms, stands for the principle that some matters of infringement are so insignificant that they are not worth judicial scrutiny. Accordingly, when the supposed ‘infringement’ or ‘copying’ is too trivial or inconsequential, a claim of De Minimis may prove to be useful in defeating such a claim of infringement. The common law concept of De Minimis, which has been regularly applied in countries such as the United States, is now finding mainstream acceptance in India as a valid defence to a claim of copyright infringement. This acceptance has primarily stemmed from recent judgments where De Minimis has been recognized as a valid defence to copyright infringement. However, it is pertinent to mention that while De Minimis has only been used as a defence in copyright infringement cases in India, countries such as the United States have started applying it in both trademark and copyright infringement cases. The Indian judiciary’s first tryst with De Minimis came in the case of Super Cassette Industries and Ors. v. Chintamani Rao and Ors. wherein a Single Judge of the Delhi High Court rejected the defence of De Minimis by stating that Indian copyright law lays down specific rights vested in each party while also specifying the exceptions to infringement. Accordingly, since the defence of De Minimis has not been incorporated in the statute, the Single Judge held it cannot constitute a valid defence to an infringement claim under law. However, one of the parties aggrieved by the order preferred an appeal which was taken up in India TV Independent News Service Pvt. Ltd. And Ors. v. Yashraj Films Pvt. Ltd. In this instance, the court held that as compared to other areas of the law, copyright invites the maximum trivial violations and that mundane activities such as clicking a picture of a sculpture or the waiters and the waitresses singing “Happy Birthday To You” at a child’s birthday party at a restaurant, are ready examples of the frequency with which minor violation of copyright takes place, day after day, place after place, all over the world. The court went on to state that if such actions are charged as infringement, then courts will end up becoming overburdened with litigation and the only way to avoid such a scenario is to apply the concept of De Minimis. The court laid down the following factors to be considered in order for an infringing use to qualify as De Minimis. However, similar to every other legal concept or principle, the above-noted factors cannot be used in a straitjacketed manner. Each and every case has to be scrutinized and assessed according to its own peculiar facts and circumstances. The concept of De Minimis in India, even though at a nascent stage right now, has surely helped reduce the burden of courts by discouraging frivolous litigations while also protecting bona fide and unsuspecting citizens who may have, without any knowledge or intent, committed an act of copyright infringement.