Recent Important IPR Judgments

(Also see the article on The Importance of IPR in the Business World)

·         Yahoo Inc. v. The Assistant Controller of Patents & Designs, & rediff.com india ltd.

Original Appeal No.: OA/22/2010/PT/CH/9507

Yahoo! logo

An invention 'Buck' which an be used to refine searches on the internet was denied patent because of section 3 (k) of Patent Act which states that business methods are not patentable. The specifications given in the application described its economic significance in e-commerce and therefore it was considered as a business method. Secondly, Rediff had used abovesaid method but Controller held that use of invention on internet amounts to public knowledge & prior use. The case was dismissed.

·         UMG Recordings In. MGB NA LLC LLC MBG UK v. Shelter Capital Partners LLC LP LLC

U.S. 9^th Circuit

Veoh had a network on which videos can be shared. They had taken precautions against copyright infringement. To upload one had to register and accept to abide with terms of PTC agreement and agree not to upload videos that infringe copyright. Over 60,000 videos including some of UMG's had been removed. On receiving notices the videos were removed immediately. However, in 2007 UMG filed a case against Veoh for facilitating infringement. (Also see the Napster case)

 Held: Merely hosting a category of copyrightable content, such as music videos, with the general knowledge that it can be used for infringement is insufficient to meet requirements of 'abetting infringement'

·         L'oreal v. Dushyant Shah

L'oreal paris trademark with
Scarlett Johansson in background

CS (OS) 600 OF 2007,  Delhi High Court

Section 134 (2) was given wider scope so that 'carries on business' refers to even a subsidiary office of the plaintiff that carries on business unlike the construction of 'carries on business' in Section 20 of CPC. Plaintiff's 'L'OREAL' trademark was held to be structurally and phonetically similar to 'TORREAL'/'INSTITUTE TORREAL' which is proposed to be used on similar products. Therefore, Defendant restrained from using similar marks with no order as to costs

·         St.Stephen's College v. St. Stephen's College Alumni Association & Ors.

CS(OS) 2364/2011, Delhi High Court

Former students of St. Stephen's college exercised fundamental right Art. 19(1)(c)i.e. freedom to form association and started 'St. Stephen's College Alumni Association'. Plaintiff claims it to e passing off since it is not an official or college approved association. The Defendants were restrained from using the official crest on their website, using the domain name 'http://ststephensalumni.Companyin.' and using the name 'St. Stephen's College Alumni Association'. They are entitled to use the name 'association of old Stephens' provided they display a disclaimer that it is not official/approved/recognized association of the college.



Labels: infringement, IPR, Jan 2012, l'oreal torreal trademark, latest Indian Intellectual Property Cases, rediff, st. stephen's college alumni website case, UMG Recordings, yahoo patent buck patentable, 

Why SOPA and PIPA got shelved - and why Megaupload shut down

The Stop Online Piracy Act (SOPA) is a United States bill introduced by U.S. Representative Lamar S. Smith (R-TX) to expand the ability of U.S. law enforcement to fight online trafficking in copyrighted intellectual property and counterfeit goods. The PROTECT IP Act (Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act, or PIPA) is a proposed law with the stated goal of giving the US government and copyright holders additional tools to curb access to "rogue websites dedicated to infringing or counterfeit goods", especially those registered outside the US.

These bills have been criticized on several grounds:

Unconstitutional: Both bills contain provisions for ex parte proceedings—proceedings at which only one side (the prosecutor or even a private plaintiff) need to present evidence and the operator of the allegedly infringing site need not be present nor even made aware that the action was pending against his or her 'property.' The bill, if passed would allow individuals to create a blacklist to censor sites when no court has found that they have infringed copyright or any other law. All that one has to do is send a notice This not only violates basic principles of due process of law by depriving persons of property without a fair hearing and a reasonable opportunity to be heard, it also constitutes an unconstitutional abridgement of the freedom of speech.

Vague drafting: Furthermore, both bills are vague as to what constitutes an infringing site. The bills targeted even domestic websites that merely ‘facilitate’ or ‘enable’ infringement. Thus, the bills would also target considerable protected speech on legitimate sites such as YouTube, Twitter, and Facebook. Due to poor drafting such innocent websites will also fall be victimized.

Technical: All domain name servers world-wide should contain identical lists; with the changes proposed, servers inside the United States would have records different from their global counterparts, making URLs less universal.

On January 19, 2012, Megaupload, a website providing file sharing services, was shut down by the US Department of Justice and the Federal Bureau of Investigation which proves that SOPA and PIPA are unnecessary. Following the shutdown of Megaupload, there was a huge attack on the internet, the Department of Justice website was shut down only 70 minutes after the start of the attack. The attack disabled a number of websites, including those belonging to the Justice Department, the FBI, Universal Music Group, the Recording Industry Association of America (RIAA), the Motion Picture Association of America (MPAA), and Broadcast Music, Inc. Some commentators argued that the denial of service attack risked damaging the anti-SOPA case. However, the shut down of Megaupload proved that current laws are sufficient and that SOPA and PIPA are unnecessary. Looks like Napster re-visited, doesn't it?.

After several online protests such as the English Wikipedia blackout and after several senators who sponsored PIPA, including Roy Blunt, John Boozman, Chuck Grassley, Orrin Hatch, and Marco Rubio, announced that they would withdraw their support for the bill; on January 20 Senate Majority Leader Reid announced that a vote on PIPA would be postponed.


(Also see the Napster Case on Copyright infringement)