Wednesday, February 27, 2013

Breaking News: Interim Injunction Against Barfi Denied

Readers would recall that the movie BARFI had landed in legal trouble for use of the Murphy trademark in the film. The owner of the mark, Murphy Enterprises, had instituted a suit for trademark infringement after the release of the movie before the Principal District Judge of North Goa at Panaji last year, seeking interim injunction against the movie.

Arguments on interim injunction concluded in December 2012.  We have now reliably learnt that the Principal District Judge of North Goa has dismissed Murphy’s application for interim injunction. Details of the order are awaited. We will keep readers informed of further developments. 

Not a Holy War...

An Italian Jeans company based in the US, which owns a trademark on the name “Jesus”, is currently cracking down on as many as a dozen apparel companies in the US for trademark infringement. The company, owned by Basic Net, which also owns the Kappa sportswear brand says that they are only trying to protect the value of their brand.

The first question that come to one’s mind is whether the name JESUS itself can be registered as a trademark and ‘debased’ by its use as a trademark for the said goods.

In 2007, the USPTO registered the word JESUS as a trademark giving the company exclusive rights to sell Jesus-themed clothing in the US. While France, Austria, The Netherlands, Italy, Spain and Belgium have registered the trademark, the application for registration of the word in countries such as Australia, Cuba, Tajikistan, Norway and Switzerland, among others, has been rejected.

In particular, it was rejected in the UK for being ‘morally offensive to public’ under Section 3(3)(a) of their Trademark Act. The court also held that mark’s primary significance in the UK was that of the name of a religious figure, and not as an ordinary surname or a forename, unlike in several other countries.

The USPTO perhaps failed to consider that when people hear the name JESUS, it is evident that they associate it with something other than blue jeans. In a country with a majority Christian population, JESUS is more likely to be associated with JESUS CHRIST than with an apparel brand. To my mind, the trademark ought not to have been registered on two considerations. The first being the rationale adopted by the UK court that it would morally be offensive given it is the ultimate symbol of Christianity in addition to being a word of common origin in countries where it is an ordinary surname or forename.

This brings us to Section 9(2)(b) of the Trademarks Act, 1999 which states that anything that contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India shall not be registered as a trademark.

In my opinion, the word JESUS would fall squarely within the ambit of this section. However, the question to be asked is whether the mere use of the name of a deity would attract the provisions of the section or if it is applicable in relation to classes of goods and services, associated with which the use would be offensive.

A similar case came before the Allahabad High Court in the case of Mangalore Ganesh Biri Works v. Dist. Judge Meerut and Ors., where the Plaintiff argued that the use of the image and name of Lord Ganesh for beedis was not registrable as it had hurt his religious sentiments. The court rejected this argument and held that the use of the symbol of “Lord Ganesh” in the beedis manufactured by the petitioner does not hurt the feelings of any Hindu.

The case of Jesus Jeans is different from the above case in 2 ways. Firstly, Jesus Jeans has no trademark in the image of Jesus. Secondly, use of the name of a deity by an apparel brand is to be differentiated from the use of a deity’s name for a brand that manufactures and sells beedis. To cite another instance, the use of names of deities such as Lord Ganesh and Lord Krishna on firecrackers was opposed before the Bombay High Court in Bhau and Anr. V. State of Maharashtra and Ors. on the ground that when such firecrackers are burst and the photographs thereon destroyed, it hurt religious sentiments of people practicing the Hindu religion. The court pointed out that this has been a matter of practice for a long period of time and since nobody had taken objections to the same before, the contention of the petitioner does not stand and he is not representative of society at large.

A relook at Section 9(2)(b) makes it clear that if religious sentiments of any ‘class’ or ‘section’ of the citizens of India are hurt, then such trademark shall not be registered. Though there has been no qualification as to who comprises a class or a section, it is reasonably understood to mean more than a single individual. If it is extended to mean that even the opposition by a single individual is to be considered, it would override the ordinary rights of property vested in a person and would be subjective and illogical.

Names of deities may not be registered as trademarks not only on religious considerations but also by virtue of being words of common origin. The word JESUS is neither a distinctive mark nor has it become associated in the minds of the public with the goods manufactured by the proprietor, which are jeans in this case.

For instance, in Bhole Baba Milk Food Industries Ltd. v. Parul Food Specialties Pvt. Ltd. the Division Bench of the Delhi high court differed from the Ganesh Beedis case on the point and held that “KRISHNA”, the name of a deity cannot be used as a trademark as it is of common origin and an exclusive statutory right in respect of such words cannot be granted through registration.

Additionally, the court also considered the fact that the goods being dairy products were closely associated with the deity. The real question is whether there is a blanket bar on use of the trademark or the bar applies to specific goods and services from using the trademark.

Use of the name JESUS as a trademark, irrespective of this additional consideration, squarely falls under Section 9(2)(a) of the Act in addition to being a non-distinctive mark that has not acquired secondary meaning and should thus not be registered in India.

Though there seems to be nothing offensive arising from the use of the name for jeans in particular, the opposition ought to stem from the use of the word by itself irrespective of goods and services in relation to which the mark is registered. To my mind, it is fairly evident that the word JESUS would first be associated with JESUS CHRIST rather than placing significance on association with forenames and surnames, especially in a country like India and should thus not be entitled to trademark protection.

Monday, February 18, 2013

Guest Post: Issues with the Proposed Privacy Legislation

Our guest blogger, Ms.Apurba Kundu, who had earlier blogged on exhaustion under the Plant Variety Protection Act, now shares her views on the proposed Privacy Act.
Issues with the Proposed Privacy Legislation
Increased policing on the internet and the ability to trace people has resulted in generating a chorus on the need for privacy legislation. A report on such a proposed legislation, called the Privacy Act, was submitted by Justice A.P. Shah on October 16, 2012. The expert group led by Justice Shah has identified a set of recommendations which the government may consider while formulating the framework for the proposed Privacy Act.
Personal Identifiers or Personally Identifiable Information (PII) have been discussed at length in the report. Personal identifiers are essentially a type of personal information, but unlike intimate information such as ‘sexual orientation’ or annual income, personal identifiers are intended to uniquely identify an individual and to reveal any additional information that is attached to the identifier or generated by the use of the identifier.
Examples of Personal Identifiers in India may be the UID number, Personal Account Number, Passport Number etc. Vast amounts of information can be marshaled through the use of these personal identifiers making it possible for complete profiles to be created of individuals and to track them across databases.
Legislations such as the UID Bill, Passport Act, and Income Tax Act do not specifically relate to personal identifiers, although they make use of such identifiers. Consequently, although a large number of personal identifiers are being collected, it is not clear as to how the information so collected is preserved.
It would not be far-fetched to assume that both governmental and private sector organizations could access and use information directly or indirectly generated by personal identifiers for multiple purposes without explicit authorization from individuals. As more and more databases are unified with the UID number, the question of personal identifiers becomes even more relevant.  
In the context of preserving the integrity of such information, it is relevant to note that Sections 43A and 72A of the Information Technology Act, 2000 clearly require protection of personal information which is collected. Thankfully, Section 11 of the RTI Act too forbids disclosure of information relating to or supplied by a third party which has been treated as confidential by the third party.
However, the report does not discuss non-PII. Besides the Shah Committee report on Privacy Act, even the Approach Paper for legislation on privacy prepared by Mr. Rahul Matthan which identifies current challenges posed by Personal Identifiers or Personally Identifiable Information (PII), does not mention non-PII.
Protection of non-PII is equally important since such information can also be used to identify individuals. We already know that IP addresses can be readily linked to individuals. It is also possible that information deemed as non-PII at one point in time may assume the status of PII at a later point in time. An interesting paper titled “The PII Problem: Privacy and a new concept of personally identifiable information” discusses the issue of non-PIIs in detail.
As technology develops, the treatment of information as PII or non-PII may turn on the context of use, and this complicates the issues associated with distinguishing between PII and non PII. In the age of behavioral marketing strategies, the implications of non-PII that can be used to identify potent customer base without the knowledge and consent an individual are huge. Therefore, it would help to provide for appropriate safeguards in the proposed Privacy Act for protection and use of non-PIIs as well.  

An interesting study was done by two computer scientists, Arvind Narayanan and Vitaly Shmatikov of Netflix movie rentals. Netflix supposedly de-identified database of ratings publicly available as part of a contest to improve the predictive capabilities of its movie recommending software. They found a way to link this data with the movie ratings that participating individuals gave to films in the Internet Movie Database (IMDB) and concluded thus:

 “Given a user’s public IMDB ratings, which the user posted voluntarily to selectively reveal some of his . . . movie likes and dislikes, we discover all the ratings that he entered privately into the Netflix system, presumably expecting that they will remain private.”

Clearly, non-PIIs too need protection. Information obtained through cookies and secondary sources can easily be matched with registration data, IP addresses etc. Whenever a marketing technique makes an individual identifiable by others and relies on his/her identity, the law should provide him/her with relief.

There are stereotypes that Facebook generation is not too concerned about privacy, but individuals should have legal rights to know what is done with their PII and non- PII. Addressing non-PII related issues in the Privacy Act will increase obligations concerning data security, transparency, and data quality, and rightly so. 

Is There Copyright in a Tweet?

Twitter needs no introduction. Each day, millions around the world post on the microblogging website, a wide array of thoughts, facts, jokes, witticisms or plain opinions which are called “Tweets” that appear on the main page of the user. 

Twitter also provides users with a “retweet” option that allows you to re-post another user’s tweets while attributing the tweet to its original author.

With this background, it may be pertinent to examine whether any IP vests in tweets, in particular copyright. While there is no dispute that pictures and content that are linked through a tweet are protected by copyright, this post is about the copyrightable nature of the 140-character tweet itself. The Terms of Service on Twitter state “What’s yours is yours- you own your content”. This does not by itself lead to vestation of copyright in one’s tweets merely because Twitter states so. The copyrightability of a tweet is still subject to the requirements of copyright law.

The first of many questions to be answered is whether tweets are ‘substantial’ or ‘long’ enough to be worthy of copyright protection. Brevity might be the soul of wit but for the purposes of copyright protection, slogans, titles and short phrases are generally denied copyright protection. The rationale behind this is that something as short is generally insubstantial and thus would lack the requisite originality and creativity, also known as the de minimis rule.

In addition, the likelihood of another person coming up with the same short phrase original tweet is fairly high. However, it is pertinent to note that some phrases have been protected under copyright law for passing the test of sufficient originality. (Les hauts de Hurlevent as a translated title of Wuthering Heights was granted protection by a French Court for being sufficiently original). Applying this logic to tweets, it is evident that all tweets will not pass muster. However, exceptions perhaps could to be carved out through case-law in instances where sufficient creativity and originality are found, as in the case of haikus, which are short forms of poetry that could be written in 140 characters or less.

Yet another strong argument as to why tweets would not be copyrightable is the problem of Scenes a faire. If there are limited ways of expressing an idea, copyright law does not serve to protect such expressions. If several users are tweeting about a particular event, it is highly likely that there would be substantial similarity between the tweets, given their brevity. Thus, it is clear that yet another category of tweets might be precluded from copyright protection.

An interesting question that crops up is whether a compilation of one’s tweets can be copyrighted as a whole. Copyright is usually given to compilations such as phonebooks and catalogues. However, in this case, protection would be given to the format of the compilation as a whole and not to individual tweets contained therein and this in no way indicates their copyrightable nature.

Flowing from the above discussion, even if you copy a tweet, it will, in all probability fall within the fair use exception. While the tweets of a celebrity may possess commercial value of some sort, the same is not true of most other tweets. A tweet being a statement made on a public forum, in addition to the very nature of the medium in which it is posted might not make the attraction of the fair use defense very difficult.

To sum up, the right question that must be posed is not whether tweets are copyrightable but whether a particular tweet is copyrightable, by virtue of meeting the requirements set forth in the law. A lot would depend on how courts might read it, if such a question were to come up. Ultimately, the determination rests on a careful examination of the facts in each case. Perhaps questions of Intellectual Property in tweets are best answered by looking into the law of trademark rather than the law of copyright.