‘NEW BALANCE’ and ‘NB’ Get Recognised as Well-Known Trademarks

In an order dated November 2, 2023, the Delhi High Court declared the Plaintiff, New Balance Athletics Inc’s marks, ‘NEW BALANCE’ and ‘NB’ as well-known marks.[1]

In May 2022, the Plaintiff came to know that the Defendant, New Balance Immigration Private Limited, a Noida-based company incorporated on March 30, 2022, was using marks “deceptively similar” to its ‘NEW BALANCE’ marks and ‘NB’ device marks. When the Defendant failed to revert to the cease-and-desist notices sent to it, the Plaintiff proceeded to file the present suit before the Delhi High Court seeking a permanent injunction. It was contended that the adoption of the impugned marks by the Defendant was “with a view to encash upon the immense goodwill and reputation” of the Plaintiff.

After noting that the Plaintiff was the registered proprietor of the said marks and making a comparison between the marks of the parties, the Court concluded that the mark and the domain name of the Defendant were “deceptively similar” to those of the Plaintiff. Further, it was held that the acts of the Defendant amounted to trademark infringement as per provisions of the Trade Marks Act, 1999, and passing off the services of the Defendant as that of the Plaintiff. Hence, the Court ruled in favour of the Plaintiff vide judgment dated June 1, 2023. Considering the continued use of the infringing marks by the Defendant despite the service of cease-and-desist notices in May 2022 and the issue of interim injunction in October 2022, and that the resolution to voluntarily wind up the Defendant company was passed only on May 30, 2023, the Court awarded costs to the tune of Rs. 4 lakhs.

The matter regarding the declaration of Plaintiff’s marks as well-known marks was pending to be decided on the day the said judgment was passed; the Plaintiff was directed to furnish evidence in support of the same. Accordingly, the Plaintiff made submissions regarding the registrations obtained in India under various classes since 1987, registrations obtained in other countries, the amount invested in advertising and promotions, etc. to depict compliance under Section 11(6) of the 1999 Act. The said Section provides the list of factors to be taken into account by the Registrar in determining whether a trademark is a well-known trademark.

Upon perusal of relevant case laws, and the evidence furnished, the Court declared the Plaintiff’s marks, ‘NEW BALANCE’ and ‘NB’ as well-known marks. However, it was clarified that this declaration would not operate as a bar on the use of the words ‘New’ or ‘Balance’ separately in respect of any other goods or services.

Remarks

Now that the Delhi High Court has declared the Plaintiff’s marks as well-known marks, the Plaintiff can approach the Trademarks Registry for the publication and inclusion of trademarks in the list of well-known trademarks. As per Rule 124 of the Trade Marks Rules, 2017, for such inclusion, an application has to be made electronically in Form TM-M and the applicable fee (i.e., Rs. 1 lakh for each mark) has to be paid. Section 11(8) of the 1999 Act specifies that if a trademark is “determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act”. The same has been interpreted by the Delhi High Court in the case of Tata SIA Airlines Limited vs. Union of India [WP(C)-IPD 64/2021], to mean that the Registrar is not entitled to re-determine the status of the trademark declared by the Court as a well-known trademark. 

References:

[1] New Balance Athletics Inc. v. New Balance Immigration Private Limited [CS(COMM) 444/2022 and IA 11940/2023]

Image Credits:

Photo by felipepelaquim on Unsplash

Section 11(8) of the 1999 Act specifies that if a trademark is “determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act”. The same has been interpreted by the Delhi High Court in the case of Tata SIA Airlines Limited vs. Union of India [WP(C)-IPD 64/2021], to mean that the Registrar is not entitled to re-determine the status of the trademark declared by the Court as a well-known trademark. 

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Data Scraping: Through the Lens of IP Law

Data scraping, i.e., the extraction of data from websites through automated processes, is used across industries for market research, consumer analytics, preparing business strategies, etc. However, its misuse leads to violation of Intellectual Property Rights (IPR), privacy laws, breach of the website’s terms of use, etc. This post seeks to give an overview of the legal intricacies involved in data scraping and explore the interplay between data scraping and IP Rights.

Towards the end of June 2023, a class action lawsuit was filed against Open AI for data scraping. It was claimed that the company’s Artificial Intelligence (AI) tools, ChatGPT and DALL-E, use “stolen private information”, thereby violating terms of service agreements along with state and federal privacy laws. Days after this suit came to be voluntarily dismissed, another class action lawsuit was instituted by the Authors Guild and renowned writers, including John Grisham, George R. R. Martin, and others, seeking an injunction restraining Open AI from infringing their copyrights. In the complaint filed before the US District Court for the Southern District of New York, it is alleged that Open AI copied the Plaintiffs’ works, which were then used to train its AI language models.

Further, concerns over AI data scraping led X (formerly Twitter) to temporarily disallow users from accessing tweets or browsing through the platform without logging in and to limit the number of posts which the users could read.

These instances reflect the upsurge in the use of data scraping in the technology-driven world and demonstrate the need to have a comprehensive legal framework to address the issues that arise from such use.

LinkedIn Data Scraping Case and User Agreement

Referring to the landmark ruling in the data scraping dispute between LinkedIn and hiQ Labs is necessary to better understand the legal intricacies involved in this domain. The key aspects of the case are discussed herein.

For the scraping of data from LinkedIn public profiles for its business, a cease-and-desist letter was sent by LinkedIn to hiQ, a data analytics company. This letter specified that future access would violate provisions of the Digital Millennium Copyright Act of 1998, the Computer Fraud and Abuse Act of 1986, the California Penal Code and the California common law of trespass, and measures were taken to block its access to LinkedIn profiles. Following this, hiQ approached the US District Court, seeking an injunction against LinkedIn in this regard. Accordingly, a preliminary injunction was issued in the year 2017, and the Ninth Circuit upheld this decision.

Thereafter, LinkedIn filed a petition before the Supreme Court seeking a writ of certiorari, challenging the said order of the Ninth Circuit. Accepting the reliance placed upon the Van Buren decision[1] with respect to the interpretation of the phrase “exceeds authorized access” under the Computer Fraud and Abuse Act of 1986, the Court remanded the matter to the Ninth Circuit for reconsideration. The said Act imposes criminal liability on anyone who “intentionally accesses a computer without authorization or exceeds authorized access”.

Reaffirming its earlier stand, in a ruling dated April 18, 2022, the Ninth Circuit observed that the “gates-up-or-down inquiry” (from the Van Buren case) envisages two situations: one when authorization is necessary and has been given (the gates are up) and the other situation when authorization is required but is not granted (the gates are down)[2]. It was held that in the case of public websites, there are “no gates to lift or lower in the first place”, and there was no violation of the provisions of the said Act. However, the Ninth Circuit clarified that even if the CFAA does not apply, causes of action such as copyright infringement, breach of contract, violation of privacy law, etc., can be pursued.

Since it could not be demonstrated that the provisions of CFAA were violated, LinkedIn based its argument on the violation of its user agreement (which expressly prohibited scraping of profiles, information, technology, etc.) and, accordingly, sought a summary judgment. In a decision dated November 4, 2022, the United States District Court for the Northern District of California held that hiQ Labs breached LinkedIn’s user agreement through the scraping of data from public profiles on LinkedIn. In the following month, the parties entered into a settlement vide a consent judgment and permanent injunction.

Data Scraping under the Indian Copyright Law

If data scraping violates the express copyrights of the website owner, the same may result in legal action. As per provisions of the Copyright Act, 1957 (“Act”), copyright subsists in original literary, dramatic, musical, and artistic works, cinematograph films and sound recordings. Here, the type of work applicable would depend on the data that is scraped. If the data is in the form of text, it could constitute literary work subject to provisions of the Act. When it comes to original literary works, the owner is conferred with the exclusive right to reproduce the work, make copies, translations, adaptations of the work, etc. Likewise, if the data that is scraped is an artwork, it could qualify as artistic work, and so on.

The exercise of such rights without a license from the owner of the copyright will lead to copyright infringement. However, there are specific scenarios where the act would not be treated as an infringement of copyright, and these scenarios are listed in Section 52 of the Act. For instance, fair use of work (for private use, criticism, review, or reporting of current events) is excluded from the purview of infringement. So, it follows that data scraping would be compliant with copyright law if done in the manner and for any of the purposes enumerated under said provision.

In the case of Eastern Book Company & Ors. v. DB Modak & Anr.[3], the Appellants approached the Supreme Court alleging that the copying of the case reports included in their journal, Supreme Court Cases (SCC), onto the Respondents’ CD-ROMs amounted to copyright infringement under Section 51 of the Act. It was contended that the said case reports were the Appellants’ original literary works, and they had the exclusive right to make copies of the said works under Section 14. 

The Court noted that a joint reading of Section 2(k), proviso (d) to Section 17 and Section 52(1)(q)(iv) makes it clear the reproduction or publication of any judgment or order of a Court, Tribunal or other judicial authority would not constitute an infringement of the government’s copyright unless the Court, Tribunal, or judicial authority prohibits the same.

After perusal of the inputs made by the Appellants, including the addition of the Section or rule numbers, completing or correcting case names and citations, etc., the Court held that the required standard of creativity is not fulfilled. It was observed that, in order to establish a copyright, the applicable creativity standard is “not that something must be novel or non-obvious, but some amount of creativity in the work to claim a copyright is required”. However, the Court acceded that the Appellants had copyright with respect to inputs pertaining to the depiction of judges’ opinions as dissenting/ partly dissenting, etc.

Theft of Trade Secrets

Utilising data scraping to gather confidential information about competitors to gain a competitive advantage would amount to the misappropriation of trade secrets by way of industrial espionage. In 2017, Uber’s former employee, by way of a letter, accused Uber of stealing trade secrets and using data scraping techniques to obtain information through its competitors’ platforms.[4] This is an instance from the United States. However, there is no specific legislation governing trade secrets in India, where such rights can be enforced with the help of principles of equity or common law action for breach of confidence. If offences under criminal law are involved, one can seek relief under the Indian Penal Code, 1860 and the Information Technology Act, 2000.

The Way Forward

The future of data scraping as a legal practice in India is still up in the air because neither the enacted laws nor the proposed measures directly make any reference to it. Hence, the stakeholders must ensure that they carefully assess the terms of use, IP implications, etc. Though one can always follow best practices to avoid legal pitfalls, the same doesn’t negate the need for clear rules governing the protection of intellectual property and the avoidance of dishonest or harmful behaviour in data scraping. It will be interesting to see what the future holds, considering the evolving discussion around these topics.

References:

[1] Van Buren v. United States, 141 S. Ct. 1648, 1649 (2021)

[2] https://casetext.com/case/hiq-labs-inc-v-linkedin-corp-5

[3] (CA No.6472 of 2004)

[4] https://www.nytimes.com/2017/12/15/technology/uber-letter-illegal-spying.html

Image Credits:

Photo by Lewis Kang’ethe Ngugi on Pexels

If data scraping violates the express copyrights of the website owner, the same may result in legal action. As per provisions of the Copyright Act, 1957 (“Act”), copyright subsists in original literary, dramatic, musical, and artistic works, cinematograph films and sound recordings. Here, the type of work applicable would depend on the data that is scraped. If the data is in the form of text, it could constitute literary work subject to provisions of the Act. When it comes to original literary works, the owner is conferred with the exclusive right to reproduce the work, make copies, translations, adaptations of the work, etc. Likewise, if the data that is scraped is an artwork, it could qualify as artistic work, and so on.

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IP Strategies for the Billion-Dollar Video Gaming Industry

The global gaming market was estimated at over $165 billion in 2020, and the revenue generated by the industry propelled to more than $173.8 billion in 2021. As the industry now seeks to rival well-established forms of entertainment such as films, television, and TV shows, it becomes all the more important for developers to better protect their creations in light of the increased competition.

When it comes to monetisation of video games, it’s the developers, publishers or the first parties/ distributors who take home the majority of the profits. However, the development of online streaming services has changed the narrative. For instance, YouTube and Twitch, along with ancillary platforms such as Floatplane, OnlyFans, etc., have taken content creation to new levels by enabling end users to monetise their gameplay through ad revenue, donations, and recurring subscriptions, transforming their passion into a profitable endeavour.

However, beneath the captivating gameplay and the fancy lustre lies a complex web of legal considerations pertaining to Intellectual Property Rights (IPR), labour laws, antitrust laws, etc. In this article, we will be focussing on how developers can protect and enforce their IP rights.

What does Video Game Development Encompass?

One can hardly appreciate a video game that has a great concept but whose production stalled during development and never saw the light of day. Developing a video game is a complex and fascinating process involving several stages, each crucial to creating a successful game.

After conceptualisation, the steps involved in video game development include hiring a skilled team, concept development, creating a Game Design Document (GDD), and zeroing in on the model of monetisation, production, and testing.

Patentable Inventions at a Glance

When game developers realize that they have something unique in their hands, they immediately think of filing a patent application before finalizing a novel, useful and non-obvious (the patentability criteria) product. The first rush to register a video game as a patent was done back in 1969 when a man by the name of William Rusch filed a patent application for a “Television Gaming Apparatus” that used a paddle-type control to move onscreen objects that collided with other onscreen objects. [1]

Patents are a meaningful way of securing technological innovation in the industry. Take Electronic Arts Inc. (EA), for example; in April 2023, the company applied for a new patent in the United States titled “Three-dimensional reconstruction of objects based on geolocation and image data.”[2] This patent has introduced a new method of generating realistic three-dimensional (3D) representations of real-world objects using artificial intelligence (AI) and machine learning technologies. It uses geolocation and image data to create detailed 3D reconstructions, significantly streamlining the process and overcoming the limitations of traditional 3D scanning techniques. So, the next time you see the dense, highly detailed streets of New York in an EA game, you know who to thank.

Nintendo, on the other hand, owns a patent for a program that detects the time of the gaming system, analyses it, and makes a probability chart that spawns particular creatures on the map at a specific time, which allows for various entities to simultaneously appear as characters on the map depending on the time allowing for more depth and definition to the gameplay.

Activision has a patent for their Call of Duty lineup of video games, which is described as a system and method that encourages players to make in-game purchases for various types of content. For instance, the system may match a more expert/marquee player with a junior player to encourage the junior player to make game-related purchases of items possessed/used by the marquee player. A junior player may wish to emulate the marquee player by obtaining weapons or other items used by the marquee player.

Video Games as Cinematograph Films

The protection accorded under copyright laws extends to computer code (including primary game software code and database structures), artwork (such as animations, script, plot, architectural works, etc.), audio elements (for instance, voice lines of video game characters), and internal and external sound effects.[3] Video games have evolved significantly over the years, becoming increasingly cinematic in their visuals, storytelling, and overall experience. This has led to a growing debate about whether video games should be considered cinematograph films.

Section 2(f) of the Copyright Act, 1957 defines a cinematograph film as “any work of visual recording and includes a sound recording accompanying such visual recording and ‘cinematograph’ shall be construed as including any work produced by any process analogous to cinematography including video films.” The said definition is broad enough to encompass video games, as they involve the creation of a sequence of images displayed on a screen. [4]

India has no elaborate system in place to censor or control upcoming video games. However, there are certain provisions that one has to be mindful of before finalising the storylines. For instance, Section 292 of the Indian Penal Code, 1860, criminalizes the sale, distribution, or publication of obscene material through any objects. Subsequently, the Information Technology Act, 2000, came to be enacted. Section 67 of the Act imposes a punishment for publishing or transmitting obscene material in electronic form.

Other Aspects to be Considered

With advanced motion capture, graphics design, and game engines available to a developer, it is essential that when detailed video game assets are created, the developer is not under a constant threat of his hard work and his well-earned recognition being stolen from him.

A developer can get a trademark for the following aspects of the video game: –

  • Name of the game
  • Any in-game character
  • A logo or slogan that was used to advertise the game
  • The computer icon that represents the video game during marketing or sales

Previously, copyright was the only way to protect a Graphical User Interface (‘GUI’). Now, one can also seek protection for GUI via the Designs Act, 2000, as well; Class 32 of the Locarno Classification of Designs grants protection to the GUI via a design.

The case of Kyle Hanagami v. Epic Games Inc. et al – 24/08/2012 (CDCA) is an interesting one that concerns the copyrightability of game animations. Herein, the choreographer, Mr. Hanagami, posted his dance sequence to Charlie Puth’s song, ‘How Long’ on YouTube in the year 2017, and this sequence was registered as a copyright in the US. Later, Epic Games, creator of Fortnite, released a purchasable in-game emote called ‘It’s Complicated’. The Plaintiff filed a lawsuit against Epic Games, alleging that the said emote contained the ‘most recognizable’ part of his choreography and was unfair competition to his work. This suit came to be dismissed, with the Court holding that the works of both parties did not share any creative elements.

A key aspect of the extent of protection accorded is whether the nation supports individual protection of IP Rights or only supports it when it is connected to an original work of authorship fixed within a tangible medium of expression. China, Canada, Italy, Russia, Argentina, Singapore, Uruguay & Spain recognize video games as a graphical interface within functional software. Viewing a video game merely as a computer program is incorrect in today’s world, wherein middleware is used as a baseline to create video games. This is when the software is not the same throughout, as artistic and functional modifications are done to the game engine all the time to ensure that the engine is tailored to the needs of the developer and the video game.

On the other hand, countries like India, Japan, Sweden, the US, etc., seeing the complexity involved in making video games has given them a ‘distributive classification’, meaning each creative segment of the video game is given protection per its specific nature. [5]

Conclusion

In this dynamic industry, where video games rival movies in complexity and reach, understanding IP’s nuances is paramount. Well-known game publishers like EA, Activision and Nintendo obtain the necessary patents as and when they release new games, which help them tackle the unique challenges presented in the field of video game development and monetization. Fostering an environment that rewards creativity, innovation, and responsible commercialization, the IPR laws of today stand as a linchpin shaping the industry’s vibrant future.

References:

[1] Dannenberg, R. (2007, January 19). The ten most important video game patents. Game Developer. https://www.gamedeveloper.com/business/the-ten-most-important-video-game-patents

[2] Legal, F. (2023, April 4). Interesting patents: Electronic Arts – revolutionizing the gaming industry with AI-driven 3D reconstruction of real-world objects: April 4, 2023: Founders legal®: Bekiares Eliezer LLP. Founders Legal® | Bekiares Eliezer LLP. https://founderslegal.com/interesting-patents-electronic-arts-revolutionizing-the-gaming-industry-with-ai-driven-3d-reconstruction-of-real-world-objects/

[3] Computer and Video Game Law – Cases, Statutes, Forms, Problems & Materials, by Ashley Saunders Lipson and Robert D. Brain, Carolina Academic Press, 2009, p. 54.

[4] Mandhana, M. (2020, May). The emerging need to protect video games: The rights of developers and Key Stakeholders. “The Emerging Need to Protect Video Games: The Rights of Developers and Key Stakeholders. http://www.penacclaims.com/wp-content/uploads/2020/06/Madhav-Mandhana.pdf

[5] Ramos Gil de la Haza, A., & Bardají & Honrado, Abogados. (2014, August). Video games: computer programs or creative works? WIPO Magazine, 4/2014.

Image Credits:

Photo by thiago japyassu on Pexels

India has no elaborate system in place to censor or control upcoming video games. However, there are certain provisions that one has to be mindful of before finalising the storylines. For instance, Section 292 of the Indian Penal Code, 1860, criminalizes the sale, distribution, or publication of obscene material through any objects. Subsequently, the Information Technology Act, 2000, came to be enacted. Section 67 of the Act imposes a punishment for publishing or transmitting obscene material in electronic form.

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Humans of Bombay Case: No Monopoly Over Storytelling Idea

In its order dated October 11, 2023, the Delhi High Court dispelled all speculations, emphasising that in the current case, the primary focus was on a storytelling platform (the idea), and no monopoly could be claimed over the idea.[1] Therefore, there can be no restraint on such a platform being run. Nevertheless, the Court clarified that the expression of ideas and the content forming that expression fall under the purview of copyright.

Last month, the plaintiff, Humans of Bombay Stories Pvt. Ltd., filed a suit before the Delhi High Court alleging that the defendants replicated its stories, thereby infringing upon the plaintiff’s copyright over its content, including photographs, literary works, films, and creative expressions published on its website and social media platforms. In its interim order dated September 18, 2023, the Court observed that prima facie, there was “substantial imitation”, and in some instances, the images were “identical or imitative” (click here to read our detailed analysis on the subject).

When the matter came up for hearing on October 11, 2023, the defendants contended that the plaintiff’s platform was not unique and listed down a number of platforms (including Humans of New Amsterdam, Humans of Delhi, etc.), all of which were based on that of Humans of New York. With respect to the replication of images, it was maintained that the images were received from the subjects themselves. Additionally, the defendants presented a series of screenshots depicting that the plaintiff had copied certain images posted by the defendants on their website.

The Court extracted relevant paragraphs from the judgments of the Supreme Court in Eastern Book Company and Ors.  v. D.B Modak and Anr.[2] and R.G. Anand v. M/s. Delux Films and Ors.[3] to clarify that copyright law protected not the original idea but the expression of thought, the imitation of which would constitute copyright infringement under Section 51 of the Copyright Act, 1957. Hence, the Single Judge Bench of Justice Prathiba M Singh stated that there could be “no monopoly” over the running of the storytelling platforms. At the same time, the creative ways utilised by the platforms to communicate and disseminate the stories of the individuals would constitute the “expression” that is protected under copyright law.

It was observed that there could be various justifications for the parties to replicate each other’s images, such as “common source, common subject, common settings where the image is clicked etc.” Further, the Court cleared the air by specifying that copyright in the photographs and videos would “vest” in the platform which commissioned such work. However, when it came to photographs of individuals from their “own private collection”, the Court held that neither platform could claim copyright. With this, both the platforms were restrained from using each other’s copyrighted works, including “(1) commissioned photographs; (2) literary works such as interviews scripts and original pieces written by authors on the respective platforms; (3) videos that may have been commissioned by the platforms themselves; (4) the manner of presentation of the stories published by the platforms in respect of a particular subject”.

While this may not be considered a landmark judgment, given the exceptional nature of the case involving influential social media personalities, it does provide much-needed clarity and paves the way for the exploration of numerous concepts that people may have been hesitant to pursue. Although the principles of copyright law are well-established in terms of defining copyright subject matter, this case was more a result of misunderstandings caused by public discussions and opinions without a complete understanding of the facts involved.

References:

[1] Humans of Bombay Stories Pvt. Ltd. v. POI Social Media Pvt. Ltd. & Anr. [CS(COMM) 646/2023]

[2] (2008) 1 SCC 1

[3] (1978) 4 SCC 118

Image Credits:

Photo by Bulat Silvia on Canva

The Court extracted relevant paragraphs from the judgments of the Supreme Court in Eastern Book Company and Ors.  v. D.B Modak and Anr.[2] and R.G. Anand v. M/s. Delux Films and Ors.[3] to clarify that copyright law protected not the original idea but the expression of thought, the imitation of which would constitute copyright infringement under Section 51 of the Copyright Act, 1957. Hence, the Single Judge Bench of Justice Prathiba M Singh stated that there could be “no monopoly” over the running of the storytelling platforms. At the same time, the creative ways utilised by the platforms to communicate and disseminate the stories of the individuals would constitute the “expression” that is protected under copyright law.

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Decoding the Case: Humans of Bombay Vs People of India

In a social media post that now has over 4 million views, Brandon Stanton, creator of Humans of New York, called out Humans of Bombay for filing a lawsuit for what he has “forgiven” them for, indicating his storytelling model being adopted by the latter. Responding to Stanton’s post, the Indian photoblog issued a statement to clarify the matter and point out that its lawsuit did not concern the concept of storytelling but was instituted to protect its intellectual property rights, specifically copyright.

The Controversy

Stanton’s statements have been widely quoted by several media houses and influencers leading the public to form strong opinions on the matter. Overlooking the issues involved in the case before the Delhi High Court, the media has focused on the ownership of the “Humans of .…” photoblog concept, with many hailing it as Stanton’s work and accusing Humans of Bombay of copying the concept and taking legal action against People of India for doing the same.

This article aims to demystify the core issues surrounding the controversy and shed light on the associated IP rights.

Battle of Titles: Humans of New York Vs. Humans of Bombay

A quick search conducted in both the United States Patent and Trademark Office (USPTO) registry and the Indian Trademark Registry reveals that a trademark has indeed been registered under Stanton’s name for “Humans of New York” in the United States. However, this does not hold for India.

Given that trademark rights are inherently territorial, it becomes evident that “Humans of New York” will not have grounds to file a trademark infringement case against “Humans of Bombay” in India; however, a passing-off and misrepresentation case can be made out, if required.

Considering that the term “Humans of….” may be considered a descriptive term, it will be interesting to see how the courts interpret such a case if contested.  

Storytelling Concept / Business Idea

Since 2010, Humans of New York has been a storytelling platform which showcases the stories of individuals who share brief interviews that delve into their life experiences, the challenges they’ve confronted, and the steps they’ve taken to surmount these challenges.

It is important to mention here that copyright law doesn’t protect an idea; instead, it is the expression of an idea that is protected. Further, copyright does not protect a business idea because, if done, it will create a monopoly in the market and stop any third person from creating/operating a business.

Therefore, even though the concept may have been introduced through “Humans of New York”, no copyright over such a concept can be claimed. 

The Actual Issue: Humans of Bombay Vs. People of India

The plaintiff, Humans of Bombay Stories Pvt. Ltd., owns a platform through which it shares the life stories of various individuals. These stories are published as posts, write-ups, interviews, etc.

It came to the plaintiff’s notice that an Instagram handle (@officialpeopleofindia) operated by the defendant was hosting content identical to that of the plaintiff, including images and videos. Further, they’ve been interviewing the same subjects whose stories were published by the plaintiff.

Hence, the plaintiff filed a suit before the Delhi High Court on September 14, 2023, seeking an injunction against the defendants on account of copyright infringement of its content, including photographs, literary works, films, and creative expressions published on its website and social media platforms. In support of its contentions, the plaintiff attached a series of screenshots of social media posts and photographs as annexures to its plaint, to indicate the imitation.

The plaintiff seems to have endeavoured to address the issue amicably before taking recourse under the law.

Replication of Stories  

The plaintiff submitted that the defendants replicated its stories, which amounted to copyright infringement. Additionally, in its plaint, the plaintiff averred that the similarities in the content constituted passing off and unfair competition, considering that the defendants have been banking on the goodwill that has been “painstakingly built by the plaintiff”.

Referring to the efforts that go into storytelling, the plaintiff asserted that its team is engaged in conducting substantial research, approaching several subjects, converting stories into audio-video works and uploading them on the website and social media platforms.

Prima Facie Case of Imitation and Court’s Order

With respect to the lawsuit, the Court directed that a summons be issued to the defendants, also requiring submission of the written statement within 30 days.[1]

Upon perusal of the annexures attached to the plaint, the Court observed that prima facie, there was “substantial imitation”, and in some instances, the images were “identical or imitative”. With this, the Court directed that notice be issued to the defendants that the application for interim relief would be considered on the next date of hearing.

The matter will be heard next on October 11, 2023.

Takeaways

A mere glance at the posts published on the Instagram handle of People of India readily reveals the striking similarities and, in certain instances, outright replication of House of Bombay’s content. As mentioned above, the Delhi High Court, in its admission dated September 18, 2023, acknowledged the existence of a prima facie case for imitation.

While it appears to be a straightforward case of potential copyright infringement, if proven, a more substantial issue looms regarding the ownership of the business concept over “Humans of ….”. This raises questions about ethical considerations, originality, and misrepresentation within the broader context.

References:

[1] Humans of Bombay Stories Pvt. Ltd. v. POI Social Media Pvt. Ltd. & Anr. [CS(COMM) 646/2023 and IA 18038-18042/2023]

Image Credits:

Photo by Georgescu Adrian’s Images: https://www.canva.com/photos/MAFB3Sc1CqU-man-doing-live-video-with-phone-with-stabilizer-in-ny/

A mere glance at the posts published on the Instagram handle of People of India readily reveals the striking similarities and, in certain instances, outright replication of House of Bombay’s content. As mentioned above, the Delhi High Court, in its admission dated September 18, 2023, acknowledged the existence of a prima facie case for imitation. While it appears to be a straightforward case of potential copyright infringement, if proven, a more substantial issue looms regarding the ownership of the business concept over “Humans of ….”. This raises questions about ethical considerations, originality, and misrepresentation within the broader context.

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Notice of Trademark Opposition by Email: Service When Complete?

The Indian legal landscape is replete with cases that hinge upon principles of natural justice, fair play, and procedural propriety. One such case is Ramya S Moorthy v. Registrar of Trade Marks & Anr.[1], a recent Madras High Court decision that addressed the issue of deemed receipt of notice when sent via email and upheld an applicant’s substantive right to be heard.

It is pertinent to note that before the introduction of the new Trade Marks Rules of 2017, the Trade Marks Registry used postal mail to serve notice of opposition to the applicants. Through the rules, e-mail was introduced to serve the opposition notice under Section 21(2) of the Trade Marks Act, 1999. While the new service delivery system was a breath of fresh air, it was not devoid of problems.

Service of Notice Via E-mail: TM Registry’s Stand

Since the implementation of the rules in 2017, the Trademark Registry has established a standard practice that if the sent notice reached their e-mail inbox as an internal copy, they deemed the notice as successfully delivered to the Applicant. However, the same posed a problem when there were technical glitches, and e-mails remained undelivered, adversely impacting the Applicant’s rights.

Facts of the Case

The Ld. Registrar, via orders dated April 28, 2023, deemed the applications for registration of two of the Petitioner’s marks as abandoned. The timeline for the early stages of the application filing was as follows:

  • Filing of trademark applications: February 4, 2022.
  • Receipt of examination report: March 8, 2022.
  • Publication of marks in the journal: September 12, 2022.
  • Opposition filed by the opposite party (Respondent no. 2 herein): January 12, 2023.

The problem began when the Trade Marks Registry deemed the delivery of service to be done on January 19, 2023, while the Petitioner kept denying the receipt of the service of notice. Section 21(2) of the Act requires that a counter statement be filed within two months of receiving a copy of the notice of opposition. As one may expect, the Petitioner, without being served with the notice, failed to file the counter statement. The Registry issued abandonment orders on April 28, 2023, on the expiration of the period prescribed under the said Section.

Aggrieved, the Petitioner approached the Madras High Court, challenging the abandonment orders passed by the Trade Marks Registry.

Transmission of Opposition Notice

While sending opposition notices, the Registry marked one of their internal e-mail addresses in carbon copy (CC), and if the internal servers received the e-mail without any glitches, they considered the e-mail to be successfully delivered to the Applicant. Now, this is a relevant issue because often times, the external servers of the Applicant’s e-mail ID either do not receive the e-mail or the e-mail gets marked as spam due to the huge number of e-mails sent by the Registrar’s handles on a daily basis.

Legal Fiction under the 2017 Rules

It was observed that Rule 18(2) of the 2017 Rules presented a clear conflict with Section 21(2) of the Act because the said Rule states that “Any communication or document so sent shall be deemed to have been served at the time when the letter containing the same would be delivered in the ordinary course of post or at the time of sending the e-mail.”

The Court opined that Rule 18(2) created a conundrum by providing that the notice would be deemed to be served ‘at the time of sending the e-mail.’ The literal interpretation of the said Rule would entail that mere proof of transmission of the e-mail would suffice. If such an interpretation were to be adopted, it would have resulted in an inherent contradiction between the rules and the statute, potentially causing injustice to Applicants who are unable to file timely counter statements due to the non-receipt of the opposition notice.

Absence of Provision regarding Deemed Receipt of Notice

Since there was no provision in the statute regarding deemed receipt of notice, the Court noted that Rule 18(2) would not be in consonance with Section 21(2) of the Act. This is because the said Section contemplates that the time limit of two months for filing the counter statement would activate from the date of receipt of the notice of opposition by the Applicant.

It was acknowledged that the stakes were high since an Applicant’s substantive right to trademark registration was on the line. With this, the Court concluded by holding that the time limit under Section 21(2) would apply from the date of the e-mail’s receipt by the Applicant, and the document that the Registrar relied on was insufficient and could not qualify as valid evidence of receipt.

Thus, the Court harmonised the provisions by asserting that the prescribed time limit would run from the date of receipt of the e-mail containing the notice of opposition. This interpretation aligns with procedural fairness and natural justice principles, ensuring that an Applicant has a reasonable opportunity to respond to a trademark opposition notice before being deemed to have abandoned the trademark application.

Implications of the Court’s Order

The Madras High Court’s decision effectively addresses the concerns of trademark applicants when it comes to technological glitches and other issues involved in the electronic service of opposition notices, such as e-mails not reaching the Applicants, ending up in spam folders, not being delivered, etc.

The Registrar’s office needs to proactively monitor the impact of the judgment and develop potential solutions to track service delivery. One such method could be adding a verification link in the e-mail that redirects the Applicant to the Registry’s website, and without this, no counter statement should be allowed to be filed. Further, the judgement will certainly bring about a positive change in the opposition process and ultimately serve the parties on both sides of the table, whether it be the opposition party or the Applicant whose rights might otherwise be threatened by the flawed delivery system.

References:

[1] [WP(IPD) Nos.3 & 4 of 2023], https://www.foxmandal.in/wp-content/uploads/2023/09/ramya-s-moorthy-v-registrar-of-trademarks-1533986.pdf

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Photo by GettyImages: https://www.canva.com/photos/MADerI61I68/

The Court opined that Rule 18(2) created a conundrum by providing that the notice would be deemed to be served ‘at the time of sending the e-mail.’ The literal interpretation of the said rule would entail that mere proof of transmission of the email would suffice. If such an interpretation were to be adopted, it would have resulted in an inherent contradiction between the rules and the statute, potentially causing injustice to Applicants who are unable to file timely counter statements due to the non-receipt of the opposition notice.

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