Latest News

Linkedin

Twitter

Search
News

Indian Court takes strict action against website selling fakes

In a landmark action towards preventing online sale of fake products, the Indian judiciary has taken the strictest action against online infringement activities that were being carried out by an e-retail website.

INDIAN WEBSITE FLAGGED- www.Chupchaplelo.com

Online Investigation found that an e-retail website Chupchaplelo.com was selling fake goods of globally well-known brands which included some of the biggest athletic footwear & apparel companies and a couple of premium lifestyle companies dealing in apparel, home, accessories and fragrances. Test-purchases confirmed that the goods on this website were infringing the trademark of these global brands. After this finding, a combined action was taken by the right-holders against the website.counterfeitORDER OF THE COURT

Counsel for the Plaintiff – Mr. S.K. Bansal in his arguments, stressed on the Trans-border reputation of the global brands. Taking serious cognizance of the increasing menace of Online-counterfeiting, the court, in order to prevent such infringing activities in future provided for every possible remedy against the Defendants which are currently available under the IPR legislations in India by way of various directions to the Registrar as well as Web-hosting providers of the website. The court appointed a Local Commissioner (LC) to oversee the search and seizure of the infringing products and also restrained the defendants by way of an injunction-order. A complete take-down (blocking) of the entire online presence including social media accounts of chupchaplelo.com was ordered and effected successfully.

DIRECTIONS TO DEPARTMENT OF TELECOMMUNICATIONS (DOT)

The court also directed the Department of Telecommunication (DOT), Government of India, to block the web pages/URLs /other listing of chupchaplelo.com. This direction acted as a breakthrough as it meant that each and every URL containing contents of the infringed trademark will be blocked by the Ministry of Communications and Information Technology through all the (Internet Service Providers) ISPs of the country, as and when notified by the Plaintiff through its regular detailed investigations.

Court’s decision under the circumstances of the case acted as a positive proof of the enforcement mechanism of Intellectual property laws in India and the willingness of the court to go to the extra mile for protection of the right holders.

Italian Fashion Brand GUCCI loses the Trademark Infringement battle against GUESS

In what appears to be the third phase of an on-going litigation between the well-known Italian Fashion Brand “Gucci” and American Fashion Brand “Guess”, Gucci faced a second time defeat, this time before the Court of France which ruled in favour of Guess stating that the American brand is not guilty of any infringement of the rights of Gucci in its registered trademarks. The Court dismissed Gucci’s claim for damages and in turn ordered it to pay an amount of USD 34,000 as compensation to Guess.

The first phase of the battle was in the year 2012, the Court of New York ruled in favour of Gucci holding that Guess was guilty of infringement of Gucci’s rights in 4 out of 5 well-known trademarks (the green and red strips pattern, the repetitive GG pattern, the diamond motif trade dress, the stylized G design mark and the script Gucci design mark). The Court ordered Guess to pay damages to the tune of USD 4.7 million to Gucci as compared to USD 124 million as claimed by Gucci in the law suit. The reason behind the massive reduction in the amount of damages was two-fold as deciphered by the Court, firstly, the case being filed only in the year 2009 was stricken with delay, latches and acquiescence as Gucci was aware of Guess’s designs which were introduced in the year 1995. Secondly, Guess was not guilty of counterfeiting Gucci’s logos but only diluting them as “courts have uniformly restricted trademark counterfeiting claims to those situations where entire products have been copied stitch-for-stitch.”, as quoted by the Judge.

The second phase of the litigation between the brands was in the Court of Italy where Guess filed a legal action for challenging the validity of 3 Gucci trademarks in Milan. The Court passed the decision in favour of Guess and cancelled the disputed trademarks which were the Diamond pattern, Flora pattern and the G logo. The appeal against the decision of the Court of Italy was filed by Gucci which was further ruled in its favour.

Having undergone grisly litigation for over 6 years, Gucci has faced a serious loss of revenue, time as well as rights in certain trademarks in the jurisdiction of Italy and France. There are grim chances of settlement between the two brands and this case ensures another chapter in the famous litigation battle.

Online Broadcasting now within the scope of Statutory Licensing under the Indian Copyright Law

In a recent development, the Department of Industrial Policy and Promotion (DIPP), Government of India issued a memorandum clarifying the ambiguity over the term ‘Broadcasting Organisation’ as mentioned in section 31D of the Indian Copyright Act.

Section 31D of the Copyright Act deals with Statutory Licensing and subjects any ‘Broadcasting Organisation’ to the provisions of the same.

Section 31D states “Any broadcasting organization desirous of communicating to the public by way of a broadcast or by way of performance of a literary or musical work and sound recording which has already been published may do so subject to the provisions of this section.”Further to which clause 3 of Section 31D states “The rates of royalty for radio broadcasting shall be different from television broadcasting and the Copyright Board shall fix separate rates for radio broadcasting and television broadcasting.”

Clause 3 of Section 31D only expressly refers to television and radio as the broadcasting organisations and mentions the royalties to be imposed for television and radio to be different. Taking into account only ‘radio’ and ‘television’ further caused the ambiguity with respect to the term ‘Any Broadcasting Organisation’. The question as to the scope of ‘Any Broadcasting Organisation’ was whether the same was limited to ‘Television’ and ‘Radio’ or ‘Internet Broadcasting’ could be included under the ambit of the same.

As per the memorandum issued by DIPP (which can be found http://dipp.nic.in/English/acts_rules/orders/OM_CopyrightAct_05September2016.pdf ), the term Internet Broadcasting is included in Communication to the publicas defined in section 2(ff) of the Copyright Act. DIPP finally quoted that, “any broadcasting organisation desirous of communicating to the public, may not be restrictively interpreted to be covering only radio and TV broadcasting as definition of “broadcast” read with “communication to the public”, appears to be including all kind of broadcast including internet broadcasting. Thus, the provisions of Section 31D are not restricted to radio and television broadcasting organisations only but also cover internet broadcasting organisations.”

Implications of the Memorandum

Earlier Internet Broadcasters could voluntarily enter into agreements with distributors. Now they will be covered under the ambit of statutory licensing as per section 31D of the Copyright Act. Subsequent to the memorandum, prior intimation of broadcasting would be a requirement to be complied with. The rates of royalties would now be fixed by the copyright board. The memorandum curbs the contractual freedom of music distributors and on the other hand entitles internet broadcasters for a statutory license where the broadcaster is not interested.

The notification takes into account the importance of internet as a medium of broadcasting but still has to withstand any possible challenges of the court.

Publishers lose copyright case against Delhi University’s Photocopy shop

In an important judgment certain to have a far reaching impact on Copyright Law in India, the Delhi High Court yesterday ruled in favor of photocopiers and students by holding that photocopying of textbooks for educational needs of students does not amount to copyright infringement.

This judgment means that the Rameshwari Photocopy Shop (a small photocopy shop situated in the North Campus of the Delhi University) has managed to successfully stand against the might of globally renowned publishers (including Oxford University Press, Cambridge University Press, Taylor & Francis) which sued it for copyright infringement alleging that bulk photocopying of textbooks by students was causing them financial losses students had stopped buying textbooks, preferring to simply purchase or copy relevant chapters at a meagre amount.

The stand of the photocopy shop and the Delhi University (which backed this shop throughout) was that photocopying enabled the students to have easy and affordable access to education material and was thus in the larger interest of the society.

This gave rise to the following important question of law which the Court had to settle –

Whether photocopy of books by students and academicians would qualify as a fair dealing under the Copyright Act, 1957 if the same was beyond affordability for the academia.

The High Court opined on the scope of “educational exception” under “fair dealing” as laid down under Section 52(1) of the Copyright Act, 1957.  Some of the lines of arguments taken by the Plaintiffs, amongst others, were to the effect that “publishers are not charity houses” and “why should they give out their work for free”.

The Hon’ble Judge held that the alleged infringement was covered under the exception of fair dealing as per section 52(1) of the Copyright Act, 1957 hence there was no infringement on part of the defendants. The Judge further quoted that “Copyright is not a divine right”, stating that Delhi University or any of its agents had the right to photocopy whether inside or outside the campus, if and when the same is for educational use and not commercial use.

This case attracted huge media attention and was greatly talked about in academic circles, colleges, publishing houses and the intellectual property law fraternity.

Irrespective of the fact that whether one agrees with this judgment or feels that the publishers have been hard done by, it is undeniable that this judgment settles an important debate under the Indian Copyright Law, at least for now, the same being liable to an appeal in the higher court.

Ed Sheeran sued over ‘Thinking Out Loud’

The British pop music sensation, Ed Sheeran, yet again faces charges of infringement as the successors of Marvin Gaye, sued him, claiming that his hit record “Thinking Out Loud” infringes the song “Let’s Get It On”, which was composed by Gaye. The law suit has been filed in the Southern District of New York. The successors of the singer have claimed that Ed Sheeran had copied key elements of the aforementioned music track in his own song.

This would mark the second complaint of copyright infringement against Ed Sheeran in the last few months, before this he was sued for his song “Photograph”. The present lawsuit against him is for damages. The grounds of infringement are on the harmonic progression and melodic elements of Gaye’s “Let’s Get It On” formed the basic structure of the song “Thinking Out Loud”.

Trade Mark Infringement – Delhi’s Khan Market threatens to sue Salman Khan

Salman Khan’s venture in to the online shopping space finds itself in a legal soup! The Bollywood star had launched his website khanmarketonline.com on his birthday last year. The website was well received by the actor’s fans and found mention at most social media platforms as well.

However, the website has irked the market association of Central Delhi’s most famous market – Khan Market, due to its name being markedly similar to the 65 year old market’s name. The Khan Market Trader’s Association has decided to pursue legal action against Salman Khan, in case the actor denies changing the name of his website. The Market Association contends that the website gives a deceptive resemblance that it is the online portal for the famous Delhi based market. This in the view of the market association is unjust utilization of their public image by Salman Khan!

Reportedly, the market association has served a Legal Notice on Salman Khan and has given him 7 days to reply.

Salman Khan is yet to comment on this development. It is not going to be an easy decision for him, as many people have already registered on the website and it has received considerable popularity.