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Thursday, 6 November 2014

India: Government sets up IPR think-tank

By Santosh Vikram Singh, Partner, Fox Mandal, Bangalore 

The Department of Industrial Policy and Promotion (DIPP), Ministry of Commerce & Industry, Government of India, through a press release dated 22 October 2014 announced setting up an IPR Think Tank to draft a National Intellectual Property Rights Policy and to advise it on IPR issues. The committee will also give its views/opinions on possible implications of demands placed by negotiating partner countries. This becomes essential especially when India and the US are trying to find a common ground on the prickly IPR issues in the working group to be set up under the bilateral trade policy forum.
IPR Think Tank is a six member committee chaired by Justice (Retd.) PrabhaSridevan, who had in 2012 figured among the 50 most influential persons in the world in the IPR field, Ms. Pratibha Singh (Senior Advocate)-Member, Ms. Punita Bhargava (Advocate)-Member, Dr. Unnat Pandit of Cadila Pharmaceuticals-Member, Sh. Rajeev Srinivasan (Director Asian School of Business, Thiruvananthapuram)-Member and Sh. Narendra K. Sabarwal (Retired DDG, WIPO)-Member and Convener.

This move comes at a time when the Government of India has launched a ‘Make In India’ campaign in order to raise the capabilities of the country’s manufacturing sector while also generating employment. A strong and favorable IPR regime will doubtlessly augment this programme by attracting foreign investment. Most large western pharma majors already have a manufacturing base in India; they are ready to set up additional units and invest in R&D facilities provided India amends its IPR regime suitably.

India’s move to constitute this think tank must also be seen in the backdrop of recent Patent Judgments in the pharmaceuticals sector, where Indian Courts prevented frivolous patenting as well as the extension of patents held by pharma companies just by tweaking existing drugs and passing them off as innovations. The US pharma industry has not taken kindly to these judgments and many companies have again attacked India’s IPR regime.

DIPP’s move is thus welcome, as it is in this context of growing concerns voiced by developed countries over India's level of protection to intellectual property rights over drug and agricultural products, and Prime Minister Modi’s promise (during his recent visit to the USA) to create a more investment and business friendly environment in India.

The think tank is expected to highlight instances where India has respected innovation in patent cases, while deciding to fast-track and finalize the policy road map by early next year. In its first meeting held on October 29, the committee decided to finalize the draft IPR policy by March 2015. The committee will advise the government on best practices to be followed in trademark offices, patent offices and other government offices dealing with IPRs to create an efficient and transparent system of functioning. The committee will also keep the government regularly informed of developments taking place in IPR cases that are likely to have an impact on India’s IPR policy. It will examine the current issues raised by industry associations and those that may have appeared in media and advice the government on addressing issues.

Tuesday, 4 November 2014

Copyright: new permitted acts

Two new statutory instruments came into operation on 1 October 2014, creating new permitted acts under the Copyright, Designs and Patents Act 1988, which is now so heavily amended that demands for a complete new codification and root-and-branch reform of copyright law are getting louder and louder (recently being added to in Mr Justice Arnold’s Herchel Smith lecture). They have exciting (that’s irony, incidentally), but admirably descriptive, titles: the first is the Copyright and Rights in Performances (Quotation and Parody) Regulations 2014 (SI no 2356). The words in brackets in the title of the second (SI no 2361) are ‘(Personal Copies for Private Use)’. Although they do similar jobs, they work in subtly different ways, and it is yet to be seen whether the private copying regulations comply with the relevant EU directive (the so-called information society directive) and therefore whether they are legal: interested parties are considering their position and a legal challenge may follow.
There are already many permitted acts, often inaccurately referred to as ‘exceptions’, in UK copyright law. Several of them fall under the general heading ‘fair dealing’, creating the impression that perhaps they are similar to the ‘fair use’ exception in US copyright law. Far from it: whereas ‘fair use’ is a powerful and widely-usable ‘get out of jail free’ card, the UK law’s notion of ‘fair dealing’ is inherently more limited and restricted to certain specific activities. Fair dealing must be for private study, non-commercial research, ‘criticism and review’ (must it be simultaneously for both?) or reporting current events. Recent grafts onto this limb of the Act (Chapter III of Part 1) deal with making versions of certain works adapted to the requirements of visually-impaired people. Now they are joined by provisions allowing parodies and quotations, provided they amount to r dealing.
How do you know what amounts to fair dealing? First, it is important to note that it is not the same as fair use. When the law uses a different word, it is safe to assume that it intends to say something different. One might argue that it is fair use, for example, to show a film to a small invited audience who do not pay for the privilege, but perhaps make a donation to charity. The charitable aspect immediately reveals possible arguments that the use of the film is fair: the promoter is not making a profit from the activity. But that is not the question we have to answer under our law: we have to ask whether it amounts to fair dealing. Has it interfered with the normal exploitation of the copyright by its owner? Has it deprived the owner of the opportunity to earn remuneration from the activity? It is perfectly possible that the owner would, had they been asked, have given permission to show the film in exchange for a payment which they would themselves donate to charity – paying the money straight to charity effectively makes the decision for the copyright owner that a particular charity will benefit from a showing of the film, and whether it might be classified as ‘fair use’ it is not ‘fair dealing’. The English courts have developed tests for fair dealing, asking whether the act complained of adversely affects the market for the work, and in appropriate cases whether the amount of the work used is reasonable and appropriate. The law tries to strike a balance between the interests of the copyright owner and users of the copyright work.
The first of the new fair dealing provisions permits acts done for purposes of parody, caricature or pastiche. The three expressions were not previously known to UK copyright law, but a recent Court of Justice decision, in Case C-??/???, Deckmyn, tells us (making unfortunate use of the word ‘original’, in a different sense from its normal copyright sense) that a parody must ‘fulfil a critical purpose; … display humorous traits; seek to ridicule the original work; and not borrow a greater number of formal elements from the original work than is strictly necessary in order to produce the parody’. So parody is concerned with poking fun at (or what in my childhood we would have called ‘macking gam’ of) a work rather than its creator.
The UK Intellectual Property Office has published guidance on the new regulations in which it states:
In broad terms: parody imitates a work for humorous or satirical effect. It evokes an existing work while being noticeably different from it. Pastiche is musical or other composition made up of selections from various sources or one that imitates the style of another artist or period. A caricature portrays its subject in a simplified or exaggerated way, which may be insulting or complimentary and may serve a political purpose or be solely for entertainment.
The Hargreaves Review concluded that the uncertainty about whether parody, caricature or pastiche required the copyright owner’s permission was restricting the activity of creative people and businesses. But there was little uncertainty: under the law as it stood then, these activities required the copyright owner’s consent if the whole or a substantial part of a work were taken. If the parody did not take enough of a work to amount to infringement, there would be no infringement. Why should a parody ever take a substantial part of a copyright work? If the parodist is doing their job properly, the parody will put the reader, listener or viewer in mind of the work being parodied but without taking anything from it in a way that might constitute and infringement.
The scope of the exception will depend to a great extent on the interpretation placed on certain expressions by the courts – the Regulations have done little to create legal certainty. In particular, the judges’ view of what amounts to ‘fair dealing’ and how they balance the interests of the copyright owner and the user. The wording of the provision does not expressly exclude commercial use, so one interesting matter will be the extent to which the courts permit commercial activities under this head: if the use deprives the copyright owner of income, it is unlikely to be treated as fair dealing.
Quoting from a copyright work is permitted provided a number of conditions are met. First, the work must have been made available to the public. The use of the quotation must amount to fair dealing with the work, the extent of the quotation must be no more than is necessary for the specific purpose for which it is used, and the quotation must be accompanied by a sufficient acknowledgement. The last requirement, which reflects conditions attached to other fair dealing uses and for which the courts have developed detailed rules, will not apply if ‘impossible for reasons of impracticality or otherwise’. To treat something which is merely impracticable as an impossibility stretches the point: this is a new meaning of the word ‘impossible’, perhaps. At least the ‘otherwise’ bit is vague enough that it is qualified by the ‘impossible’.
The rule about quotations from a performance or sound recording (in the modern world, one of the most important areas for quotation) is much the same, but there is no ‘sufficient acknowledgement’ requirement.
Private copying by an individual is now permitted provided that they have lawfully and permanently acquired the copy from which the copy is made. The new copy must not be made for commercial ends – which surely hardly needs to be stated expressly, as it would not be a private copy if it were. Private copies of computer programs will not be permitted under this provision.
The new private copying provisions have been controversial. The relevant EU directive stipulates that there must be a mechanism for compensating the copyright owner in any system for private copying introduced by a Member State. A parliamentary committee warned earlier this year that the UK might be in breach of its treaty obligations if it did not include such a mechanism, but the government after further reflection went ahead without one, claiming it is unnecessary. It relies on the fact that the directive says no mechanism is needed if the harm done to rights owners would be ‘minimal’. The government seems to be taking an optimistic view of how the new permitted act might work – and UK Music, claiming that musicians will lose £58 million in revenue, is considering whether to launch a legal challenge to the new legislation.

Tuesday, 14 October 2014

Arnold J on copyright law reform: the Herchel Smith lecture

I first attended the Herchel Smith lecture on intellectual property law in about 1980 – probably one of the first things I went to after I qualified. I have no idea how many I have attended since, but this evening I had the pleasure of hearing Sir Richard Arnold talking about copyright reform, and in terms that I could relate to. That means that he went right back to the Whitford Report, and indeed a great deal further than that.
His thesis was that copyright reform, which is long overdue (I thought there was a 30-year rule, with a bit of latitude to accommodate parliamentary timetables: 1911, 1956, 1988 …, but on that basis we have a few years to wait), ought to be holistic rather than incremental. Would 'iterative' be the right word for the way copyright law is developing? I favour 'gestalt' instead of 'holistic', but I might be missing something, or just trying to be pretentious. Anyway, root and branch reform is called for.
Whitford was a root and branch review of copyright law, and the 1988 Act a (or 'an'?) holistic reform. So was Gregory, and the 1956 Act. I didn't know about what had gone before, so I found Sir Richard's speech very educational, but Whitford remains for me the essential starting point of modern copyright law, simply because it was current when I first came to the subject – followed by Nicholson and then green and white papers. Copyright neophytes now presumably have the same relationship with Hargreaves, or perhaps Gowers, or Gowreaves as it suddenly occurred to me we should refer to the process of copyright reform between 2005 and 2012.
Since Whitford and the 1988 Act which eventually put into law many of that committee's suggestions (but not all of them, especially on designs, a subject on which the Whitford Committee was split but the government hatched its own ideas) reform has been piecemeal at best. Sir Richard suggested that comparisons with a patchwork quilt were an insult to the art of quilting, which I thought a nice turn of phrase, or an 'obsessively reused palimpsest' which is something I need to think about (with a big dictionary to help me appreciate the nuances). If palimpsest it be, the over-writing must have been getting progressively smaller and would now be barely legible.
Whitford, I remember, compared the 1956 Act to an elegant Queen Anne house to which there had been Georgian, Victorian, Edwardian and finally Elizabethan (the second, that is) additions: an architectural hotchpotch, and a legal one too. The 1988 Act, as it now stands, much amended, probably has new wings which dominate the original building, including modernist, brutalist, neo-classical and goodness knows what else: shards, cheesegraters and gherkins grafted on to the modest 18th century original. Sir Richard listed seven problems with the 1988 Act, which I neglected to note down, but if I were to say that one of them was complexity that would not be far out. (Obsolescence, or actually being obsolete, in the face of technological progress was another,and a failure to conform to the structure of EU copyright law, or what I was horrified to hear him call 'European legislation', was another, and I guess we can work out what the others might be.) Anyway, he made the important point that the seven problems had not been addressed by Gowreaves, which is not surprising given their terms of reference (and the fact that if you want IP law thoroughly reviewed it would be a good idea to get an IP lawyer to do it, rather than ex-editors of the FT, knowledgeable though such men no doubt are). Hard to argue with that, I thought, though on the way to drinks after the lecture (there being no question-and-answer session, to my disappointment) I had precisely that argument with an acquaintance: he was of the view that it will always require highly-trained specialists to understand copyright, whereas I believe that unless you can make the law comprehensible to non-specialists the urban myths which already abound will just carry on growing. I don’t know which of us is right, but root-and-branch reform could easily take the rest of my lifetime, and that is perhaps sufficient argument against the ‘holistic’ or ‘gestalt’ approach.

Monday, 1 September 2014

Copyright in actor?

The Evening Standard, organ of the Russian opposition, reports that theatre goers have been ordered (by whom it doesn't say) to delete photos of actor Martin Freeman playing Richard III. They are being told that doing so breaches theatre etiquette (quite right) and copyright. Presumably the allegation is of an infringement of copyright - but in what? Idiots who fore off accusations like deserve to be required to cite the law on which they rely rather than trust to urban myth. It brings copyright, and the law in general, into disrepute. 

Wednesday, 27 August 2014

Protecting trade secrets: Max Planck Institute on Commission's proposals

I still haven't got my head round the proposed directive on the protection of trade secrets. I thought there wouldn't be much exciting in it - but whether that turns out to be a fair assessment or not, there is a lot in Max Planck's comments on it to excite me. (Yes, I know they are not actually Max Planck's comments - see the entry in my Dictionary about the institute, or more accurately institutes as there are as many as 80 of them under the auspices of the Max Panck Gesselschaft) named after the man, and indeed the entry in it for the man himself.) What excites me is the suggestion that the directive should extend protection to prevent reverse engineering.
What? This is the most outrageously protectionist idea I can recall ever hearing of. The MPI has often struck me as viewing intellectual property as a Good Thing without considering whether a lack of protection might be a better thing. So the Institute says:
The use without restrictions of trade secrets obtained through reverse engineering appears problematic, in particular in sectors where – other than in the case of software – no intellectual property protection is available, although considerable investments are made in the development of new products. Notable examples include the cosmetic industry, which regularly invests quite heavily in the development of perfumes, but where the know-how generated thereby can be decoded with relative ease through reverse engineering.
The unrestricted use of such know-how raises concerns that it could pose a substantial threat to the companies concerned, eventually leading to market failure whereby such goods would no longer be produced. Accordingly, it must be assessed whether the existing (quite problematic) prohibition on advertising such products as imitations or replicas should be replaced by other measures that are directly aimed at protecting the relevant interests.
Perfumes? What a lousy example to use. As Ian Connor of Pinsent Mason says in Out-Law's commentary on the MPI paper, the evidence in the smell-alike cases showed that it was impossible to achieve an identical fragrance by reverse-engineering (and the fact that a cheap imitation couldn't use the expensive ingredients no doubt contributes to that). If there is an element of unfair competition in imitating fragrances, then it has to be dealt with as unfair competition: for goodness sake, don't try to bring trade secrets law to bear on it. In so far as trade mark law is part of the law of unfair competition, that approach has been tried, but just because it has failed doesn't mean that we need to try something else. And just because something isn't protected doesn't mean that there is a hole in the system that needs to be repaired.

I first encountered the idea of reverse-engineering in the context of the good old Morris Marina exhaust pipe - in other words, in the dispute that eventually gave us BL v Armstrong. Copyright was used to try to stop reverse engineering, because (unlike a smell-alike) you could  make a perfectly serviceable and accurate copy of an exhaust pipe by measuring the relevant dimensions. Did the House of Lords say "oh, here's something that isn't protected, let's see if we can find a way to make the law apply?" Not at all. In fact the starting point was the opposite: here was something that copyright did protect, even against reverse engineering, and their Lordships were pretty clear that they thought this was wrong. (Lord Templemann and Lord Bridge, as I recall, to the fore: two judges who for several years resisted every attempt to expand the scope of intellectual property protection, whether in exhaust pipes, bottle shapes (as trade marks: Re Coca-Cola), sound recordings (CBS Songs v Amstrad), plastic toy bricks (Lego v Tyco), or television show formats (Green v Broadcasting Corporation of New Zealand). The majority in the House of Lords (Lord Griffith going about it in a different way, if I remember correctly) resolved the problem in the consumer's favour by reference to the "non-derogation from grant" principle known to landlord and tenant law - an even more egregious example, it has to be said, of using one law to solve a deficiency in another than the MPI's wish to use trade secrets law to solve an unfair competition problem.

The law should only give protection where there is a good reason for it. That, I think, is the "evidence-based policy-making" that Hargreaves was so keen on, and which the government seems to have forgotten about even before the ink was dry on the Professor's work (hence the increase in copyright term for sound recordings, and perhaps likewise the latest bunch of copyright "exceptions", or permitted acts as they ought properly to be called). There are limits to intellectual property protection for good reason. Some matter remains unprotected deliberately - for the simple reason that there is no justification for protecting it. There would be no incentive for anyone to do anything that they were not already doing, just a supernormal profit to be taken at the expense of the consumer. Consumer welfare in the strict economic sense is not the be-all and end-all of the matter: when you analyse this stuff as property, human rights become engaged, and a property owner should not lightly be deprived of it. But in the case of reverse engineering we are talking about matter which is not protected by property rights, and which is in the public domain where anyone can use it. It is not confidential, and to impose a confidentiality-style obligation on would-be users would be a huge retrograde step and one that takes absolutism in intellectual property to new heights.

Tuesday, 26 August 2014

FILING A TRADEMARK APPLICATION GETS COSTLIER IN INDIA

Guest post from our man in Bangalore, Santosh Vikram Singh of FoxMandal ...


The Government of India, vide its notification dated 1st August 2014 has amended the existing Trademark Rules, 2002, and the amended Rules are now referred to as the ‘Trade marks (Amendment) Rules, 2014’. The proposed amendments were initially notified and made available to public on 26th August 2013 inviting objection and suggestions from the public likely to be affected. Since, no objections or suggestions were received by the Govt. of India the proposed amendment were accepted and subsequently notified.


The salient features of the ‘Trade marks (Amendment) Rules 2014’ are:
  1. The official filing fees for filing a trademark application in one class has been increased from INR ‘3,500.00’ to INR ‘4,000.00; and;
     
  2. The official fees to expedite the examination of an application for the registration of a trademark, has been increased from INR ‘12,500.00’ to INR ‘20,000.00’.
It may be pertinent to note that during the Trademarks (Second Amendment) Rules, 2010, the application fee was increased from INR 2,500.00 to INR 3,500.00, however the fee for filing an application for expediting the examination which should have been proportionately increased five times of the application fee (INR 17,500.00), was inadvertently missed out which lead to a great confusion and until the latest notification it was not clear whether the fee was five times of filing fee i.e. INR 17,500.or INR 12,500.00 as mentioned in first schedule of the Trademark Rules.
Therefore, it may be seen that the current amendment is also to rectify the earlier mistake.


Since the notification came to effect since August 1st 2014, the Controller General of Patents, Designs & Trademarks, India issued a public notice dated 7th August 2014 stating that any applicant/agent who has filed the application on or after 1st August 2014 and not paid the revised fee, shall have time until 30th September 2014 to pay the balance fee failing which the application shall not be processed.


It may further be noted that if the balance fee is not paid within the afore-mentioned date, the filing date shall shift to the date of actual payment of the balance fees. Needless to mention that the date of filing an application is crucial, however, it is further important that if the application has priority of a convention application, paying the balance fee on or before due date becomes more crucial.


It may be noted that only as recent as 2010, the Government amended the official filing fees from 2,500.00 to 3,500.00, therefore, this increase by the Government can only be seen as a measure for the Trademark Office to increase their resources to ensure the long pending backlogs of applications are expedited, and on the other hand to ensure that the applicants choose their trademarks more wisely, before filing the same and to further lessen frivolous applications. 

 

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