Blogging & Law - How to Manage & Protect your Blog/Website

Pavan Duggal,
Indian Cyber Law Expert

Is posting someone else’s copyrighted images on your blog ‘fair use’? Which court has jurisdiction in respect of Indian Blogs, where servers are located outside India?

These questions are answered by Indian Cyber Law Expert, Mr. Pavan Duggal, as he advises bloggers as to how to manage and protect their blogs.

Mr. Duggal stresses on the necessity of having well drafted Privacy Policy, Terms and Conditions and Disclaimers, in order to avoid liability for any defamatory or plagiarized content posted on a blogger’s blog by a third party user (visitor) on the blog, under the Information Technology Act, or any other law. Especially Section 66A of the Information Technology Act, under which a blogger can be held criminally liable for comments of the blog visitor.

Judgement on ‘Honest Concurrent Use’ (Bombay High Court: [ITM Trust & Ors. vs Educate India Society])

Full text of the Bombay High Court Judgement can be found here.

For Plaintiffs: Mr. Aspi Chinoy, Senior Advocate a/w Ms.  Chandana Salgaoncar, Aditya Thakkar i/b Vigil Juris.

For Defendant: Mr. Arvind Chaudhary, i/b Amol Deshpande.

Coram                                                 : G.S.Patel, J.

Judgment Reserved on                       : 16th July 2014

Judgment Pronounced on                   : 15th September 2014

Brief Facts:

The Plaintiffs consisted of a public charitable and educational trust registered under the Bombay Public Trusts Act, 1950 and its trustees. Till 1991, the Plaintiffs trade mark was "INSTITUTE FOR TECHNOLOGY & MANAGEMENT" in a certain curved/spherical form around a circular device along with another device of a shield at the middle. The Plaintiffs claimed that the trademark was in use since 1993. In June 2010, the Plaintiffs filed an application for registration of the mark "ITM-University" in Class 41, on the pretext that it was in continuous and uninterrupted use since 2002.

Trade Mark Dilution

Traditionally to prevent someone from using a trademark, one had to claim that it was causing confusion with an already existing mark. i.e. the ‘misrepresentation’ claim. However, now days even the Trademark dilution view is given merit. Trademark dilution is a claim which the owner of a famous trademark can make to forbid others from using a mark that reduces the value or distinctiveness of the famous mark.

Imagine if there was a watch being sold with the trademark ‘PEPSI’ or mineral water with the mark ‘ROLEX’. Now, there would obviously be no confusion that the mineral water was  not associated with the ‘ROLEX’ brand of watches. But if people start ROLEX mineral water, ROLEX restaurants, ROLEX publishers then the distinctive value of ROLEX brand will diminish. The exclusiveness and excellence of the brand will be associated with all the other good or services using the trademark ‘ROLEX’.

It is believed that it was the case V Secret Catalogue Inc v. Moseley, 54 U.S.P.Q.2d 1092 (The Victoria’s Secret Case) which made the U.S. Government feel the need for a Trademark Dilution legislation, which gave rise to Trademark Dilution Revision Act (TDRA) of 2006, several provisions of the EU Trademark Harmonization Directive of 2008 and

Liability of Intermediaries in Infringement

J. K. Rowling

Under the Information Technology Act, the appropriate authority for blocking websites is the Department of Information & Technology (DIT). The IT Rules, 2009(relating to ‘Procedure and Safeguards for Blocking for Access of Information by Public’) authorize the DIT to block websites and confers investigation powers for reasons connected with national security or public order or incitement of any unlawful activity as laid down in Section 69A of the IT Act. The format of the form that should e filled Rules under section 69A of the Information Technology  (Amendment) Act, 2008, schedule-I.

Rule 16 of  Rules under section 69A of the Information Technology  (Amendment) Act, 2008 states that "In the event of approval of the Request by the Secretary, Department of Information Technology, Ministry of  Communications & Information Technology, Government of India, under Rule (14) and Rule (15), the Designated Officer will direct the Intermediaries to block the offending information generated, transmitted, received, stored or hosted in their computer resource for public access within the time limit specified in the direction."

Exemptions from liability of intermediary is given u/s 79 of the IT Act: The intermediary is exempted if the intermediary does not:- initiate the transmission, select receiver of transmission, modify the information in it. If the intermediary does not remove the content immediately after notification or if it is found that the intermediary had a malafide intent and has not performed reasonable due diligence, the intermediary is liable to be held as an abettor of the infringement.

Under the Act “intermediary”, with respect to any particular electronic records, means any person who on behalf of another person receives, stores or transmits that record or provides any service with respect to that record and includes telecom service providers, network service providers, internet service providers, webhosting service providers, search engines, online payment sites, online-auction sites, online-market places and cyber cafes;’

John Doe:-

The term 'John Doe Injunction' (or John Doe Order) is to describe an injunction sought against someone whose identity is not known at the time it is issued:

The first time this form of injunction was successfully obtained since 1852 in the United Kingdom was in 2005 when attorneys acting on behalf of JK Rowling and her publishers obtained an injunction against an unidentified person who was trying to sell chapters of a stolen copy of an unpublished Harry Potter novel to the media

Speedy SInghs

India: John Doe order had been passed by the Delhi High Court for the movie Speedy Singhs, starring Russell Peters. The Delhi High Court also passed two other John Doe orders in  2011 for the movies Singham  and Bodyguard. Thus, John Doe orders are becoming increasingly common in the Indian film industry and seems to be working to at least some extent in reducing piracy. 




(Also read about the SOPA and PIPA issue)



Labels: government law college, Harry Potter, indian legal blogs, infringement, intermediaries, IT Act, John Doe, John Doe injunction, John Doe order, mowing the law, mowingthelaw, vikrant shetty, 

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)