Monday, October 05, 2009

Portraits, the Father of the Nation and Intellectual Property [India]

A Division Bench of the Kerala High Court on 1 st October 2009 issued notice to the Union government, MontBlanc International GmbH, Germany, and other respondents on a writ petition that sought a ban on the marketing and sale of “Mahatma Gandhi Limited Edition 241” and “Mahatma Gandhi Limited Edition 3000” luxury pens in the country.

The Bench, comprising Chief Justice S.R. Bannurmath and Justice A.K. Basheer, issued the notice on the petition filed by Dijo Kappen, managing trustee of the Centre for Consumer Education at Pala in Kottayam.

Montblanc International, on September 29, launched a set of high-end pens priced at Rs.14 lakh each under its limited-edition series called the “Mahatma Gandhi Limited Edition-241.” The 241 pens in the series were made to signify the “241 miles” travelled by Gandhiji during the Dandi March.

The petitioner said the attempt by the pen company to market luxury pens in the name of the Mahatma Gandhi was in derogation of national honour. The Father of the Nation was considered the epitome of simplicity and making him the symbol of a pen that cost Rs.14 lakh was nothing but an attempt to degrade everything he stood for, and to mock a nation of middle-class and below-the-poverty-line persons who look up to him and whom he tried to liberate.

Mahatma Gandhi wrote "I have no copyright in my portraits but I am unable to give the consent you require." in May 1931, in response to a manufacturer who wanted to use his portrait in roofing tiles. Nearly four score years on, an international luxury brand wants to do precisely what Gandhi expressly bid against - use his portrait in the manufacture of prohibitively expensive, limited edition pens.
As it has turned out, within days of announcing the launch of Montblanc's limited edition pens commemorating the 140th birth anniversary of MK Gandhi, the German premium pen maker has been issued a notice by the Kerala High Court on a writ petition seeking a ban on the marketing and sale of these pens.

Specifically, the petition draws attention to Section 3 of the Emblems and Names (Prevention of Improper Use) Act, 1950 (download link), under which "no person shall, except in such cases and under such conditions as may be prescribed by the Central Government, use , or continue to use, for the purpose of any trade, business or calling or profession, or in the title of any patent, or in any trademark or design, any name or emblem specified in the Schedule or any colourable imitation thereof without the previous permission of the Central government".

Further, Entry 9A of the Schedule to the Act lists “the name or pictorial representation of Mahatma Gandhi” as an item that categorically cannot be used for the purpose of any trade, business or profession under the provisions of the Act. The petition argues that "Mahatma Gandhi is considered as the epitome of simplicity"... and "Making him the symbol of a 14 lakh pen is nothing but an attempt to degrade everything that Gandhiji symbolised, and to mock a nation of middle class and individuals below the poverty line who look up to him and who he tried to liberate."
"Gandhi's great-grandson Tushar Gandhi has endorsed the idea. His charitable foundation has already received a donation of $145,000 from Montblanc and will receive between $200 and $1,000 for each pen sold." Tushar Gandhi is reported to have announced at the pen launch that “It’s a pen which Gandhiji always associated with, it was his greatest tool. Also the donation is for an Indian Trust,which is for the good of the Society.”
The petition counters that the Rs 70-lakh donation received by the Kolhapur-based charitable trust, and Tushar Gandhi's subsequent comment is nothing but a "mischievous statement intended to give an impression that the Mahatma used Mont Blanc pens."
Tushar Gandhi seems to the only man standing in the Gandhi family in his endorsement of the brand. In an overnight response to the launch, the Mahatma's governor-grandson, Gopalkrishna Gandhi, has written a moving piece of his grandfather's relationship with the pen and the act of writing. Here, he recalls the story of the tile manufacturer quoted at the top of this note, as also other anecdotes which clearly suggest that Gandhi himself would have objected to the use of his portrait in this manner, were he alive today.
Meanwhile, Montblanc executives appear to be flummoxed: In an interview with the BBC,the company's chief executive Lutz Bethge stated that the pen was intended to honour Gandhi, and he "wouldn't have thought that people would have reacted negatively"

Tuesday, September 22, 2009

Ta Ta, WIPO. New Candidate for Worst UDRP Decision Ever [WIPO]

An Indian company is taking a domain battle to court after a WIPO domain panelist handed its domain owner to conglomerate Tata Sons. The domain at issue is, a travel web site based on the colloquial saying “Ta Ta”, as in bye-bye or see you later. is run by a large online travel company that operates

TaTa Sons stated in its complaint that “the Respondent has not shown any demonstrable preparation to use the domain name in connection with a bona fide offering of goods and services.”

OKTaTaByeBye refuted that in its response, stating that the site is a travel journal and community site. A look at historical DomainTools thumbnails shows that the site has been operating since at least 2006 with active traveler discussion boards.

But the response by WIPO panelist Pavan Duggal is almost humorous in nature. Despite the overwhelming evidence presented by that it is a legitimate, online travel community, Duggal focuses on on how the site links back to the company’s site, where people can book trips online. This, according to Duggal, shows that is actually trying to use TaTa’s trademark to “fish” for new customers to its site. Apparently operating an online travel community that supports a related web site is not OK.

The company is discussing the fight on its blog in a post that has received 1,256 comments.
Courtesy: Domain Name Wire

Reliance withdraws GI tag applications for Jamnagar and KG Gas [India]

Reliance Industries Ltd, the nation's most valued company, has withdrawn applications to register the terms, 'Jamnagar' and 'Krishna Godavari', as geographical indication (GI) tags for its petro products. The Mukesh Ambani-led RIL had sought the GI tag for five products, four with a prefix of 'Jamnagar' and one for Krishna Godavari Gas.
The company has now 'withdrawn' its applications for four products, including Jamnagar Petrol, Jamnagar Fuel, Jamnagar LPG and Jamnagar Diesel, while request for the registration ofKrishra Godavari Gas has been 'abandoned', a senior official from Chennai-based Geographical Indication Registry told PTI. RIL, however, declined to comment on the issue. The GI is a sign used on goods that have a specific geographical origin and possess qualities, reputation or characteristics that are essentially attributable to that region.
A GI status provides legal protection and facilitates for action in case of infringement. Further, it promotes economic prosperity of producers in a particular area. GIs are covered as an element of Intellectual Property Rights. GL Verma, Assistant Registrar of Trade Marks & GI, said the applications of RIL for the term Jamnagar was facing opposition and now the company had withdrawn its applications. RIL has withdrawn its GI applications exactly after four years of filing. The company had filed its applications for these products on September 15, 2005, as per the details with the office of Geographical Indications. Controller General of Patents, Designs & Trade Marks also confirmed the withdrawal and abandonment of applications.
Under the Geographical Indications of Goods (Registration and Protection) Act, 1999, the GI office functions under the Controller General of Patents, Designs, and Trade Marks. RIL had filed applications under class 4 of Geographical Indications of Goods (Registration and Protection) Act, 1999. Class 4 of the Act deals with products for industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels (including motor spirit) and illuminants,candles and wicks. The GI status for the products with Jamnagar prefix was sought for the geographical areas of Gujarat, whereas the tag for Krishna Godavari Gas was for Andhra Pradesh. "The decision in this case is a standard practice," Rodney D Ryder, an intellectual property law expert at Delhi-based legal firm Kochhar & Co, said. In past, the GI tag has been awarded to a number of products or goods such as the famous Darjeeling Tea, Madhubani Paintings, Kashmiri Sozani Craft and Thanjavur Painting.

Japan topples US in number of patents issued: UN agency

Japan granted the maximum number of patents in 2007 and has replaced the United States from number one position, a status it was enjoying for nearly adecade, a UN agency report says. "The USPTO (United States Patent and Trademark Office), which has issued the highest number of patents since 1998, was overtaken in 2007 by the patent office of Japan," the World Intellectual Property Organisation (WIPO) said in a statement today.
Geneva-based WIPO is a specialised agency of the United Nations for developing a balanced and accessible international system in the field of intellectual property rights. Further, the patent office of China has replaced the EPO (European Patent Office) as the fourth largest office in terms of issuing grants, WIPO said in its report titled the "World Intellectual Property Indicators 2009." The report is based on 2007 figures, the last year for which complete worldwide statistics are available, WIPO said. In 2007, Japan granted 1.64 lakh patents, whereas in USA the number was 1.57 lakh. The total number of granted patent in that year stands at 18.5 lakh. In terms of patent filing, the report said Patent offices of India, Brazil and Mexico, received a significant number of filings, report stated. Trends in intellectual property activity shows that demand for IP rights continued to increase prior to the onset of the global economic crisis, it said.

Banarasi Silk receives GI rights [India]

Banarasi silk products have been registered under Geographical Indication (GI) rights with the name ‘Banaras Brocades and Sarees’. This is the first ever GI status that any product in Eastern UP has received. Malihabadi Dussehri mango is another product that is enjoying GI status in the state of Uttar Pradesh. The GI rights curb others from processing or marketing any product under the same name and are as good as intellectual property rights. The GI certificate for Banarasi silk products have been received by the office of Assistant Director (Handloom) and other applicants.
The certificate will prove to be advantageous for the exporters and consumers, along with the handloom weavers, said Mr. Rajni Kant, President, Human Welfare Association (HWA) who is also one of the applicants.As GI status is the measure to restrict the misuse of Banarasi sari brand, it would benefit around 12 lakh people who are directly or indirectly associated with handloom silk industry of the region. According to the certificate issued by the registrar of GI, Banaras Brocades and Sarees come under four classes (13-26) that include silk brocades, textile goods, silk saree, dress material and silk embroidery. This registration is for 10 years, which can be renewed further. Organizations such as UK based Find Your Feet, Department for International Development and United Nations Conference on Trade and Development (UNCTAD) India offered support to secure the GI status, said Mr. Kant. Nine organizations had applied for the GI registration of world famous Banarasi saree and brocade, to the Chennai-based Geographical Indication Registry in July 2007 and they received the GI status on September 4 this year, nearly after two years.
The nine organizations were, Banaras Bunkar Samiti , Human Welfare Association (HWA), joint director industries (eastern zone), director of handlooms and textiles Uttar Pradesh Handloom Fabrics Marketing Cooperative Federation, Eastern UP Exporters Association (EUPEA), Banarasi Vastra Udyog Sangh, Banaras Hath Kargha Vikas Samiti and Adarsh Silk Bunkar Sahkari Samiti. Banaras, which is among the premier weaving centres in the country, is very popular for its glamorous, colourful and exclusive varieties of saris such as Jangla, Tanchoi, Vaskat, Cutwork, Tissu and Butidar, and also for brocade and dress materials.

Record companies sue 'Ellen' show over copyrights [United States]

Some of the world's largest recording companies are suing "The Ellen DeGeneres Show," claiming producers violated their copyrights by playing more than 1,000 songs without permission.

Many of the songs were played during the "dance over" segment of the show, when DeGeneres dances from the stage to the interview area, often through the audience.
According to the suit filed Wednesday in U.S. District Court in Nashville, when representatives of the recording companies asked defendants why they hadn't obtained licenses to use the songs, defendants said they didn't "roll that way."

"As sophisticated consumers of music, Defendants knew full well that, regardless of the way they rolled, under the Copyright Act, and under state law for the pre-1972 recordings, they needed a license to use the sound recordings lawfully," the suit states.

Scott Rowe, spokesman for the show's Telepictures Productions, wrote in an e-mailed statement that the company has been working with the record labels for months to resolve the issue and remains willing to resolve it on "amicable and reasonable terms."

Rowe said the issue does not involve DeGeneres, who on Wednesday was named as the fourth judge on TV's "American Idol," and whom Rowe calls "a tremendous music enthusiast and advocate."

The suit claims the daytime talk show has used copyrighted music without permission since its inception, including "recordings by virtually every major current artist of popular music." It claims the show routinely used some of the most popular songs of the day, which the record labels don't license for daytime television at any price.

Other songs cited in the lawsuit include Michael Jackson's "Thriller"; The Beach Boys' "Good Vibrations" and Will Smith's "Gettin' Jiggy Wit It."
The suit calls the segment and the music played by the show's own disc jockey "signature elements of the show."

Plaintiffs include Arista Music, Atlantic Recording Corp., Capitol Records, Motown Record Company, Sony Music Entertainment, Virgin Records America and Warner Bros. Records.
The suit does not specify the dollar amount it seeks in damages.

Monday, September 14, 2009

Nilekani acknowledges security and privacy concerns over the UID [India - Data Protection/Privacy]

Nandan Nilekani conceded that there are “legitimate” apprehensions over the proposed Unique Identification Number database’s being vulnerable to hacking and misuse. He said that given the inclusivity, enormous opportunity and developmental benefits it will provide, Unique Identification Database (UID) project is worth the risks.
Mr. Nilekani, the chairman of Unique Identification Authority of India told Karan Thapar on CNN-IBN’s Devil’s Advocate program that the project had so many significant benefits for the poor in making it inclusive and in giving them a chance to participate in the country’s progress.To question on the possibility of the database being hacked, he said that they would have to design it as foolproof as possible by incorporating checks and balances. After saying “in every system, there will be people who will try to hack on it,” he asked if the security risks it involves are enough to do away with the project.
Responding to a question about the worthiness of spending an amount as huge as Rs 1.5 lakh crore in a country where 80 per cent of the population live under Rs 20 a day, Mr Nilkani rejected the estimation although he couldn’t spell out the exact amount. “Whatever the cost be, the social, economic and efficiency benefits of it would make it well worth it,” he said. The investment in this project would actually make all those other money be spent on education, health for women and children and sanitation programmes more efficiently. When asked whether the project will be helpful in solving the irregularities relating to the allotment of BPL cards as it can’t identify those who should have BPL cards and do not, replied that UID is not a panacea for all the problems but an enabler of more effective public delivery.

Thursday, September 03, 2009

WIPO and Singapore Partner in the Field of Alternative Dispute Resolution [International]

An agreement signed by Mr. Francis Gurry, Director General of the World Intellectual Property Organization (WIPO), and Mr. K Shanmugam, Minister for Law and Second Minister for Home Affairs, has paved the way for the establishment of the Singapore Office of the WIPO Arbitration and Mediation Center (WIPO Center), which will officially open in January 2010.

Delhi HC rejects Syngenta plea on molecule registration

The Delhi High Court has dismissed a petition by multinational chemicals giant Syngenta challenging the government's decision to allow rival firm Crystal Phosphates to import a key insecticide and sell in India, currently exclusively sold here by the MNC.

A single-member Bench of Justice S Ravindra Bhatt dismissed Syngenta's petition, observing that the plea filed by the Swiss MNC was "speculative" in nature and the court could not intervene in the government's policy decision.

"The court is of the opinion that the litigation was speculative as the attempt was clearly to invite the court to make a policy declaration, which could not have been made under any circumstances," said Justice Bhatt, dismissing the Swiss MNC's petition.

The court also imposed a cost of Rs 3.75 lakh and directed it to pay to Crystal within four weeks.
In its petition, the Swiss firm had challenged the decision of a committee of the Ministry of Agriculture to grant the registration of insecticide molecule Emammectin Benzoate (five per cent) SG to Chrystal on a host of issues including an abridgement of its intellectual property rights.

Emammectin Benzoate is used in a number of crops, including sugarcane, cotton and wheat. Currently, only Syngenta is selling this insecticide in India.

A Syngenta spokesperson said the company may move the Supreme Court against this verdict.

Indian MDH loses to Pakistani MDH in website dispute case [WIPO]

Leading masala-maker Mahashian Di Hatti Ltd, popularly known by its brand name MDH, has lost a website address dispute case against a Pakistani firm engaged in a similar business at the World Intellectual Property Organisation.Mahashian Di Hatti had approached the Geneva-based WIPO Arbitration and Mediation Center objecting the ownership of an Internet site '' by Pakistan's MDH Food Company.
The Indian firm contended before the Center that disputed domain name is identical and confusingly similar to its MDH mark, since it incorporates the mark in its entirety and the addition of "foods" does not detract from its distinctiveness.

Bose gets its 'Wave' [United States]

The U.S. Court of Appeals for the Federal Circuit ruled that the PTO’s Trademark Trial and Appeal Board used the incorrect fraud standard in a recent ruling involving the Bose Corp.’s WAVE trademark. As a result of this ruling, the standard for fraud is now the same for both trademark and patent applications.
To prove fraud now you must show intent to deceive by clear and convincing evidence rather than merely a false representation due to an honest misunderstanding without any willful intent to deceive.
A copy of the opinion can be found at:

Monday, August 31, 2009

Legal Issues for Entrepreneurs

It is important for the manager, particularly the manager of a new venture, to understand and use the law as a tool in corporate strategy. Law is too vital and strategic to be left to the legal department or external counsel alone. A company should cultivate compliance strength.

It is vital to appreciate and understand the role of the law in the value creation chain. Expertise in the rules [of any game] provides a competitive advantage. In business, legal knowledge helps organisations gain profits in three ways:
· Property – Law which usually penalises monopolies is quite generous in granting ‘legal monopolies to encourage innovation and development. Copyright – the form of intellectual property at the heart of the Napster case – provides a great example of the evolution of modern property rules and their growing importance to business.
· Rules defining Markets – The law creates competitive advantage by defining the boundaries of markets.
· Legal capabilities – The development of specialised legal capabilities – resources and skills allows a company to spot opportunities, take initiatives and fend off attacks especially well, relative that is, to rivals.

Five Factors [as developed by Michael E Porter] for enterprise success continue to be the legal touchstone –
· The Merits;
· Public Legitimacy;
· Strategic Position;
· Resources;
· Access.

Here is my list of ten points [relating to the law] that entrepreneurs should keep in mind -
· Understand the Law – contemplate legal risk in any action;
· Know the Rules [and play by them];
· Cultivate Compliance for Strategic Strength [Comply with all laws, commercial or general, including and especially environmental ad waste management related laws];
· Use Contracts to Define and Strengthen Relationships;
· Use the Intangible Edge [Capture the Value of Intellectual Capital];
· Protect the Brand [Corporate Reputation, Brands, Trademarks and Domain Names];
· Harness Human Capital – Be mindful of employment law and especially of problem areas like sexual harassment. Design fair and effective human resource policies;
· Manage Disputes – Do not always litigate or rush to arbitration, deploy mediation and other conciliatory measures;
· Be Open to good legal advice – cultivate an attorney-client privileged relationship;
· Develop a legal sense – Spot legal issues before they become legal problems.

Friday, August 28, 2009

Tata Sons wins case against travel portal

Tata Sons, the holding company of the Tata Group firms, has won a case at the World Intellectual Property Organisation against the travel portal, MakeMyTrip, which has been using the term 'tata' in one of its website, ''. Gurgaon-based mmt admin (commonly known as MakeMyTrip) has been using the domain name ''.
Tata Sons has contended that it is confusingly similar to its 'Tata' brand and the travel portal runner has no rights or legitimate interests to use it. In May, Tata Sons had moved the Geneva-based WIPO Arbitration and Mediation Center demanding transfer of disputed domain name. The company had argued that the site infringed the right of its registered trademark/service mark 'Tata'. The WIPO has now ordered the transfer of domain name to Tata Sons. "The impugned website incorporates the Tata's orporate name and registered trademark in full and it proves that it is identical in part and confusingly similar to its well-known brand in which the company has a statutory right," Tata Sons had said in its complaint. Replying to the charges, MakeMyTrip had said the usage of the word 'tata' as a gesture finds its mention in the origin of a place called Ta Ta Creek as far back as in the year 1860 and denied that the domain in question is confusingly similar to the trade mark 'Tata' of the complainant. The Gurgaon-based firm stated that "the impugned domain name is derived from the common parlance 'OK Ta Ta Bye Bye' since it signifies travel, journey and related activities. But in its argument at the WIPO, Tata Sons said, 'it is apparent that the sole purpose of registering the disputed domain name is to misappropriate the reputation associated with the complainant's well-known and famous trademark Tata.'
The Internet site owner has registered a separate domain name ( According to Tata Sons, both the sites offer similar services. However, MakeMyTrip says both cater to separate class of persons. While offers discounts and easy access to travel plans, lets these travelers make an online records about their journey. The WIPO is a specialised agency of the United Nations for developing a balanced and accessible international system in the field of intellectual property rights. As per details available with the WIPO, Tata Sons during the case had made an effort to settle the issue with the MakeMyTrip, which refused to accept the just demands on the grounds on 'vague reasons.'
This story was sent to us by Shri Siddharth Kumar, Press Trust of India.

Thursday, August 27, 2009

Foley & Lardner Sued for Allegedly Revealing Trade Secrets [United States]

A patent holding firm has sued Foley & Lardner for allegedly revealing confidential information and for undermining the company's settlement negotiations during a separate lawsuit.
Virginia-based SPH America, a company formed in 2008 by former Fish & Richardson associate Choongoo Park, filed suit against Foley Friday at the U.S. District Court for the Eastern District of Virginia, alleging breach of contract, misappropriation of trade secrets and contract interference, among other claims.

Foley represented Japanese electronics manufacturer Kyocera in 2008 after SPH brought a patent infringement case against the company over technology used in its cell phones. According to last week's complaint, Foley allegedly publicized confidential information it gained during the course of that case by incorporating it in another lawsuit.
The new suit, filed for SPH by Kevin Mun of Virginia's Echelon Law Group, states that during settlement negotiations in the 2008 case, SPH revealed that it had patent rights to 3G wireless technology that allows cell phones to carry high speed internet applications. SPH said it kept those patent rights "confidential," and shared information about them under a non-disclosure agreement. Moreover, SPH claims it informed Kyocera -- represented by Foley partners David Kleinfeld and Kurt Kjelland and senior counsel Steven Foley -- that it did not plan to sue the company over those patents.
In February 2009, Foley filed a complaint in the Southern District of California on behalf of Kyocera, asking for a declaratory judgment that it had not violated any of the 3G patents. The suit, signed by Kjelland and Foley, identified the patents by name and quoted pieces of SPH's settlement talks with Kyocera.
"Neither Foley nor Kyocera notified SPH America, let alone obtained SPH America's consent, prior to filing the complaint, nor did they even attempt to file the complaint under seal or with redaction," SPH claims in its complaint.
The new suit also claims that Foley lawyers published SPH's patent infringement charts, which they acquired during discovery. The charts were made public when the firm asked the U.S. Patent & Trademark Office to re-examine two of SPH's patents. According to the SPH, the infringement charts were "attorney eyes only" under the terms of a court order.
SPH also claims that Foley lawyers violated a protective order issued by the U.S. International Trade Commission, where the patent firm had also sued Kyocera.
Aside from revealing confidential information, SPH also claims that Foley partners distorted SPH's infringement position towards Kyocera, which "undermined" the patent firm's position during settlement negotiations.

Expansion of Top-Level Domain Names opposed by INTA

The International Trademark Association (INTA) announced in its August 1, 2009 Bulletin that INTA passed a resolution to oppose the current proposal by the Internet Corporation for Assigned Domain Names and Numbers (ICANN) for an unlimited expansion of new generic Top-Level Domain Names (gTLDs).

ICANN sets and manages global policies for Internet gTLDs and has proposed expanding from the 21 existing gTLDs, e.g., .com, .org, and .net, to an unlimited number of gTLDs. A number of organizations in addition to INTA have expressed opposition to ICANN’s proposed expansion of gTLDs. Some view the new policy as a money grab. Others focus on the concerns regarding increased potential for trademark infringement and dilution and complaints that ICANN’s existing system has not been effective at protecting trademarks against cybersquatters already trading among the current gTLDs.
According to the INTA Bulletin, INTA will be issuing a revised Draft Applicant Guidebook for new gTLDs in September 2009. Text of INTA’s resolution opposing the proposed unlimited expansion of gTLDs can be found at
Expansion of new gTLDs has been a hot topic among domain name and trademark professionals, including business and legal professionals and cyber entrepreneurs. If this topic interests you, consider attending Cyber Symposium 2009 in Lehi, Utah on September 25, 2009. Cyber Symposium 2009 is a full day seminar for business and legal professionals interested in strengthening their presence in the high tech industry. David Kelly, partner and chair of the trademark and copyright practice group at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, will be lecturing at the Cyber Symposium on the new gTLDs and on monetizing domain names. For more info see:

Wednesday, August 26, 2009

French Data Protection Authority Issues Guidelines on Personal Data Transfers Pursuant to U.S. Discovery Obligations [France]

On August 19, 2009, the Official Journal published guidelines issued by the French Data Protection Authority (Commission nationale de l’informatique et des libertés (the “CNIL”)) regarding transfers of personal data carried out in the context of U.S. discovery proceedings (the “Guidelines”). The CNIL’s publication comes in the wake of a recent increase in the volume of requests made to French-based companies involved in U.S. litigation to disclose information or documents for the purposes of civil pre-trial discovery.

According to the Guidelines, disclosure of personal data pursuant to foreign court proceedings must comply with applicable laws and treaties ratified by France, including the Hague Convention of March 19, 1970, which enables a contracting State to declare that it will not execute letters of request issued for the purpose of obtaining pre-trial discovery. In France, any judge receiving a letter of request from a foreign authority must verify that such a request is admissible under French law and, in particular, must refuse the request if it poses a threat to State sovereignty or security. In this respect, a French blocking statute (the July 27, 1968 Act) prohibits disclosure of any information of economic, commercial, industrial, financial or technical nature as part of foreign legal proceedings unless the disclosure complies with applicable treaties and laws. Any breach of this statute is punishable by imprisonment of six months and a fine of €18,000.
In addition, companies based in France that disclose documents containing personal data must also comply with the requirements of the French Data Protection Act of January 6, 1978, or risk heavy criminal sanctions for failing to do so. Data controllers are not required to file a specific “discovery” notification as long as their data processing activities have been regularly filed with the CNIL. Nevertheless, there must be a legal basis for any transfer of personal data to the U.S., and companies must notify the CNIL of such transfers. In some cases, the data controller may rely on the “establishment, exercise or defense of a legal claim” exception contained in Article 69.3 of the French Data Protection Act as a legal basis for a single and limited transfer of all relevant information relating to a particular litigation. Otherwise, the CNIL’s authorization is required for sizeable and frequent transfers of personal data that are based on an adequate safeguard (i.e., Safe Harbor, model clauses or binding corporate rules). Further, adequate safeguards must be put in place to cover onward transfers, such as when transferred data being stored in the U.S. are further disclosed to a judicial authority (i.e., court order) or to other third parties (e.g., model clauses or a letter of engagement to abide by the Safe Harbor principles).
More information on these Guidelines can be found (in French) at

Tuesday, August 25, 2009

Cyber Regulation Appellate Tribunal Court inaugurated [India]

The new Office and the Court Room of the Cyber Regulation Appellate Tribunal was inaugurated on July 27 [2009]. Speaking on the occasion, Mr. Justice K.G. Balakrishnan, Chief Justice of India said while administrating the regulations Tribunal will face a challenge to strike a balance between the interests of the Government and end users of internet. Highlighting the need for Tribunal, Shri A. Raja said that it will help prevent all possible cyber contraventions. Congratulating Tribunal for getting prime place to house it, Shri Sachin Pilot, Minister of State for C&IT said Tribunal is destined to a path breaking work to check cyber fraud, cyber crime and even cyber terrorism.
Speaking on the role of Department of Information Technology (DIT),Secretary, DIT said that it will facilitate and support the functioning of the Tribunal. He said in view of intermixing of legal and technical issues a multimember Tribunal has been constituted to look into the cyber contraventions. The tribunal has been established under Section 48 of the Information Technology Act. The Information Technology Act 2000 came into force on 17th October, 2000. The definition of the Information Technology Act provides as under: “Computer” means any electronic, magnetic, optical or other high speed data processing device or system which performs logical, arithmetic, and memory functions by manipulations of electronic, magnetic or optical impulses, and includes all input, output, processing, storage, computer software, or communication facilities which are connected or related to the computer in a computer system or computer network; Section 3 of the Act provides with regard to Digital signature and the Authentication of electronic records. Section 4 provides the legal recognition of electronic governance in short known as E. governance.
For adjudicating of the dispute under the Information Technology Act, Section 46 was enacted which has given the power for adjudication of the crimes. The power has been give to the Secretary, Information Technology and he has power to adjudge the quantum of compensation under Sections 46 and 47 of the Act. Section 46 provides for appointment of an adjudicating officer not below the rank of a Director to the Government of India. Every adjudicating officer shall have the powers of a civil court, which are conferred on the Cyber Appellate Tribunal under Section 48. The Act provides for penalty for damage to computer, computer system etc: penalty for failure to furnish information return; residuary penalty and publishing information which is obscene in electronic form etc.

Saturday, August 22, 2009

'Tweet' isn'tTwitter Trademark [United States]

As it turns out, Twitter had applied for a trademark claim for "Tweet", the popular term for the 140 character updates that Twitter is famous for. And to everyone's surprise, the claim was preliminarily rejected by the U.S. Patent and Trademark Office. As for the reasons for the rejection, the Patent Office felt that several existing applications already use the phrase "Tweet" as a prefix for their various Twitter offerings - TweetDeck, TweetPhoto and the likes. If that was not all, some of these companies had already applied for such a trademark claim before Twitter itself did. Acting too late, Twitter?

Monday, July 13, 2009

Software Company [Rosetta Stone] Sues Google for Trademark Infringement [United States]

Rosetta Stone, maker of the popular foreign language software, filed a federal trademark suit against Google in Virginia Friday, alleging that one of the Web giant's major advertising programs allows companies to confuse consumers.

The suit, filed by Gibson, Dunn & Crutcher partner Terence Ross at the U.S. District Court for the Eastern District of Virginia, is just the latest to target Google for its AdWords program, which lets companies buy advertisements that run alongside its search engine results. The ads are triggered by certain keywords, and show up as "sponsored links."
According to the complaint, since 2004, Google has let companies attach their ads to trademarked keywords they do not own. So a search for Rosetta Stone might bring up the company's official Web site, as well several paid advertisements for its competitors. Google also allows companies to use those trademarked terms in the headlines of their ads.
Rosetta Stone's suit accuses Google of allowing companies to "free ride" on its brand and of "hijacking" consumers by confusing them into clicking on the wrong sites.
"Google either is misleading or will mislead consumers in innumerable different ways," the complaint states. "Accordingly, it is impossible for Rosetta Stone to cure this problem merely by pursuing remedies against Google's advertisers alone."
Google has been hit with a string of similar lawsuits over its AdWords program. In April, the 2nd U.S. Circuit Court of Appeals ruled that one of those suits could go forward after a lower court had dismissed it. The appeals court found that Google was using the trademarks in an act of commerce, giving the trademark owners the right to file a claim.
With that legal issue resolved, Gibson's Ross said that juries will have to decide whether Google's practice is likely to confuse consumers.
"There's not going to be any quick resolution of any of these" suits, he said. "You could get different outcomes from different juries over time."
Google itself appears to have expected the legal trouble. In its complaint, Rosetta Stone quotes from one the company's Securities and Exchange Commission filings from 2004, shortly after it adopted its current trademark policy.
"As a result of this change in policy, we may be subject to more trademark infringement lawsuits," the company stated. "Adverse results in these lawsuits may result in, or even compel, a change in this practice which could result in a loss of revenue for us, which could harm our business."
According to Ross, however, there seems to be no sign of Google backing down from the practice. He noted that the company started letting trademarked words into headlines, for instance, after the 2nd Circuit's ruling.

This article first appeared on The BLT: The Blog of Legal Times.

Friday, July 03, 2009

FT Facsimile Edition Crosses The Title Hurdle; May Launch Sooner Than Expected [India]

The Registrar of Newspapers in India (RNI), in its latest list approved yesterday, has granted the title ‘Financial Times Facsimile’ to Financial Times India Pvt. Ltd, the Indian unit of Pearson (NYSE: PSO) Plc., the publisher of the respected British pink paper. A facsimile edition is an exact replica of a newspaper published abroad and is not allowed to carry local news or advertising that is not part of the original edition.

The title ‘Financial Times’ is owned in India by The Times of India publisher Bennett, Coleman & Co. Ltd. Early last year, shortly after it emerged that Financial Times was in talks with the Network18 Group to launch a daily in India, a BCCL subsidiary, Times Publishing House Ltd, registered several titles, such as Asian Financial Times, Financial Times Asia, Daily Financial Times, Emerging Financial Times, Financial Times of Asia. FT, FT Asia, FT Network, FT South Asia, FT World, FT Worlwide, WFT, World Financial Times and Worldwide Financial Times, according to the information on the RNI website. Financial Times India has approached the Intellectual Property Appellate Board, a government body that settles disputes over trade marks, to obtain rights to its globally recognized title. The case is next scheduled for a July hearing.

FT has also received clearances from the Foreign Investment Promotion Board to make the necessary investments. Final clearances from the Ministry of Information and Broadcasting may be the only remaining procedure required before the paper can hit the stands.
FT’s global competitor, The Wall Street Journal, launched a facsimile version of its Asian edition last month.

Monday, April 06, 2009

New York District Court Rules That State Common Law Copyright Claims Are Not Barred by the Communications Decency Act [United States]

The Southern District of New York issued a ruling in Atlantic Recording Corp. v. Project Playlist, No. 1:08-cv-03922-DC, denying Defendant Playlist’s motion to dismiss Plaintiffs’ state law copyright infringement and unfair competition claims. In its ruling, the Court found that the Communications Decency Act ("CDA") does not apply to state or common law copyright claims (such as those that protect sound recordings fixed prior to 1972). The recent decision diverges from the Ninth Circuit’s 2007 ruling in Perfect 10, Inc. v. CCBill, LLC., 488 F.3d 1102 (9th Cir. 2007), which suggested that the exception to the statutory immunities of the Communications Decency Act for claims "pertaining to intellectual property" might not reach (and thus the CDA would bar) state or common law claims that involve or relate to intellectual property or related rights.

Project Playlist involved claims brought by six record labels (affiliated with the Warner Music Group and the Universal Music Group), against the owner and operator of a website that enables and allows users to search, play, share, and download music available on the Internet. In addition to claims for direct and secondary liability under federal copyright law, Plaintiffs asserted claims for common law copyright infringement and unfair competition under New York state law with respect to Defendant’s infringement of Plaintiffs’ pre-1972 sound recordings. (There is no federal copyright protection for sound recordings produced before February 15, 1972. 17 U.S. C. 301(c).) In response to the Complaint, Defendant moved to transfer venue to the Northern District of California. In the alternative, Defendant moved to dismiss Plaintiffs’ state law claims for common law copyright infringement and unfair competition as barred by the CDA, 47 U.S.C. § 230.

Congress passed the CDA in 1996 with the goal of protecting minors from obscene online content. In order to avoid stunting the Internet’s growth, the Court also immunized Internet service providers from liability based on certain communications by users of the services. That immunity was codified in Section 230(c)(1), which provides that "[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider." The CDA defines "information content providers" as companies that play a role in the creation or development of content. In other words, persons or entities that create or develop content to be disseminated on the Internet may be subject to liability for that content, while those who merely transmit or publish that content ("interactive computer services") cannot be held liable.

The relationship between the immunities of the CDA and claims for infringement or violation of state or common law intellectual property rights has been a matter of some controversy.

Under Section 230(e)(2), the CDA shall have "[n]o effect on intellectual property law. Nothing in this section shall be construed to limit or expand any law pertaining to intellectual property." In CCBill, the Ninth Circuit held that the Section 230(e)(2) carve-out was limited to federal intellectual property law, and thus would not apply to state law right of publicity claims, even though such claims arguably involved "intellectual property" rights. By contrast, in Universal Communication Systems, Inc. v. Lycos, Inc., the First Circuit, considering a state law trademark dilution claim, reasoned that "[c]laims based on intellectual property laws are not subject to Section 230 immunity." 478 F.3d 413 (1st Cir. 2007). In an effort to avoid liability for its role in copying and disseminating pre-1972 sound recordings, Project Playlist argued that it was an "interactive computer service" and thus immune from liability under the CDA. Noting that this was an issue of first impression in the Second Circuit, the Court relied on First and Third Circuit precedent to find that "an interactive computer service is not liable where it posts or links to a third-party’s content." The Court concluded that Playlist is an "interactive computer service" and thus (as a threshold matter) fell within the broad scope of the CDA because it "merely creates an interface for users of Playlist’s Website to listen to third-party content, and also provides links to download third-party content."

The Court then turned to the second issue: Whether the CDA’s exception or carve-out for "any law pertaining to intellectual property" would apply to state law or common law copyright claims. Citing CCBill, Playlist argued that the carve-out only applies to federal intellectual property law, and thus the CDA necessarily would bar the Plaintiffs’ state law claims for the pre-1972 sound recordings. The Court disagreed, finding that to limit the Section 230(e)(2) carve-out solely to federal claims was contrary to the plain language of the statute, as well as the intent of Congress:

The problem with Playlist’s argument is that it lacks any support in the plain language of the CDA. In four different points in Section 230(e), Congress specified whether it intended a subsection to apply to local, state, and federal law.... It is therefore clear from the statute that if Congress wanted the phrase "any law pertaining to intellectual property" to actually mean "any federal law pertaining to intellectual property," it knew how to make that clear, but chose not to.
As a result, the Court concluded, unambiguously, that "as a matter of law... Section 230(c)(1) [of the CDA] does not provide immunity for either federal or state intellectual property claims." This conclusion, if adopted by other courts, could give a boost to the viability of a range of state law claims related to intellectual property - such as common law misappropriation, right of publicity, and state or common-law trademark law claims - brought against the operators of various online services.

Google Must Face Trademark Suit Involving Keyword Ads [2nd Circuit; United States]

In a long-awaited opinion, the 2nd U.S. Circuit Court of Appeals ruled that Google must face a trademark infringement lawsuit for selling keywords that trigger ads.

The three-judge panel reversed a lower court's dismissal of Rescuecom v. Google, 06-4881, in which computer-repair company Rescuecom had claimed that users could be confused by links to competitors' ads that appear alongside Google search results for the company's trademarked name.

Google had persuaded the lower court to toss the case, arguing that its use of Rescuecom's trademark was internal and not a "use in commerce," which constitutes trademark infringement. The dismissal was hailed as a big victory for Google and other search engines, for which keyword advertising is a lucrative business.

The appeals court ruled Friday that "Google's recommendation and sale of Rescuecom's mark to its advertising customers are not internal uses," sending the case back to the trial court. IP lawyers had been anticipating the decision because of mixed rulings on keyword cases.

In dismissing the case, the lower court had relied on 2nd Circuit precedent in the watershed case of 1-800 Contacts v., which found that 1-800-Contacts didn't have its trademark infringed by keyword advertising sales. In Friday's ruling, the 2nd Circuit expended considerable effort explaining how the Rescuecom case is different. The 2nd Circuit decision doesn't offer that many answers about the legality of keyword advertising. Rescuecom and others will still have to prove their trademarks were infringed in the end.

Wednesday, April 01, 2009

India ranks fifth in reporting cyber crime cases

India ranks fifth among countries reporting the maximum number of cyber crimes, the latest report released by Internet Crime Complaint Centre of the United States has said.

The US report analysing internet crime in 2008 compiled by experts from FBI, Internet Crime Complaint Centre (IC3) and other agencies shows the number of complaints from victims shot up by almost a third since 2007 with the total touching 275,284 cases in which about USD 265 million were lost globally.

The United States led the tally of victims' complaints, while India remained at fifth by reporting 0.36 per cent of the global complaints received at IC3 which was about 1,000 complaints, the data said.

Majority of the fraudsters on the information highway, this year, resorted to the trick of selling products online but not delivering it to buyers who had already made payments.
It remained the most adopted method to cheat during the year with 33 per cent of internet crimes of this nature being reported, according to the report.

Cyber crimes record 50 percent rise in India

With India being home to the fourth highest number of internet users in the world, cyber crimes under the the Information Technology (IT) Act recorded a whopping 50 percent jump in 2007 over the previous year. What's more, the majority of offenders were under 30 years of age.

Cyber crimes have emerged as a new class of crimes, rapidly increasing due to extensive use of the internet and IT enabled services. The maximum cyber crime cases, about 46 percent, were related to incidents of cyber pornography, followed by hacking. In over 60 percent of these cases, offenders were between 18 and 30, according to the "Crime in 2007" report of the National Crime Record Bureau (NCRB).

Cyber crimes are punishable under two categories - the IT Act 2000 and the Indian Penal Code (IPC). The report says that 217 cases of cyber crime were registered under the IT Act in 2007 compared to 142 in 2006 - an increase of 50 percent. Under the IPC too, 339 cases were recorded in 2007 compared to 311 cases in 2006.

"Seventeen out of 35 mega cities have reported nearly 300 cases of cyber crimes under both categories, thereby recording an increase of 32.6 percent in a year," the report says. The report indicates that cyber crimes are no longer limited to metro cities. "Bhopal in Madhya Pradesh has reported the highest incidence of cyber crimes under IPC sections, thus accounting for 87.8 percent of the total crimes in the country," the report says.

Friday, March 27, 2009

Advocacy group: UK databases illegal

An advocacy group says almost a quarter of British government databases are illegal under human rights or data privacy laws. The Joseph Rowntree Reform Trust said on Monday that 11 out of 46 major government databases breach laws intended to protect personal details of British citizens.

Britain uses databases to store information including DNA profiles, biographical details of all children, hospital records and details of welfare payments. The country's justice ministry says the trust's report offers no evidence that laws have been breached, or that the government's policy is flawed.
The trust says it has identified problems with a further 29 British databases. It says only 6 databases are both necessary and legal.

Facebook Aims for Privacy Compliance with New Public Policy Hire [International]

Facebook has hired former American Civil Liberties Union lawyer Timothy Sparapani as its new director of public policy. The move could score points for the social networking site in the eyes of online privacy advocates that have expressed concern over its data privacy policies. It also will help Facebook fill a gap if its Chief Privacy Officer Chris Kelly runs for California Attorney General, as is anticipated.

Sparapani will start work with Facebook in late April, and will be based in Washington, D.C., reporting to Kelly. The company would not provide additional details about Sparapani or his role.
As a senior legislative counsel with the ACLU, Sparapani testified before U.S. Congress regarding issues such as The Real ID Act, arguing the proposed federal identification program represented a threat to privacy and constitutional rights. In a 2007 ACLU press release, he contended that government data mining "will turn us all into suspects."
Though it is unclear how Sparapani stands when it comes to data mining for advertising purposes, there are indications he could be sympathetic toward privacy advocates and other detractors of unregulated online data gathering and storage for ad purposes.
Center for Digital Democracy Executive Director Jeff Chester said his organization, which has argued that Facebook's privacy policies are not stringent enough, has been working with Sparapani recently on privacy and online advertising issues. However, Chester expressed only cautious optimism regarding Sparapani's new role. "Does the announcement of the principles and the hiring of Tim indicate a kind of next generation Facebook?" asked Chester rhetorically. "I think it's too early."
He continued, "If Facebook thinks it can trade on [Sparapani's] relationship with [privacy groups]...then they're incredibly naive... Tim knows this community is willing to bite the hand that it just shook ten minutes ago."
The company came under fire last month after altering its terms of service, spurring an uproar among users and privacy protectionists regarding the amount of time Facebook could store user data. The firm quickly did an about-face, reverting to its original policy and presenting a new set of Facebook Principles and a Statement of Rights and Responsibilities for public comment. The firm has received thousands of comments and will close the commenting period March 29.
Chester's organization sent a letter to Facebook this week suggesting that the company needs to rewrite its proposed principles. For instance, the group stated the principles do not "discuss the gathering, mining, and sharing of user data. Users need to know how third-party developers use the data accessed or collected, including how the data is used for advertising and marketing."

Thursday, March 19, 2009

ITC evicts squatter from Indian Domain Name

ITC Ltd has won the case against a cybersquatter who had registered the domain name of its flagship brand Wills. Under the provisions of the .IN Domain Name Dispute Resolution Policy (INDRP), ITC alleged and proved that the domain name registered by UK-based cybersquatter Mark Segal of, was identical to its trademark and misleading as to its origin.

Says Rodney D Ryder, Partner and Head of the Technology Practice at Law Firm Kochhar & Co, which represented the Kolkata-headquartered company, “The domain name is the virtual address of a company, a web mark so to speak. Allowing this domain name registration would be harmful to the ITC/Wills brand as this could also have serious consequences for the company under the Amended Information Technology Act of 2000.” Under the provisions of this act, if a corporate body does not take reasonable security measures to safeguard its data, it could be held liable for any lapse in its data security. The company will be liable to pay compensation up to Rs 5 crore to the parties who has been caused wrongful loss due to deficiency in the security measures adopted by the company.

Registrations under the .in domain have been open since February 2005. Till now, 5 lakh Indian top level domain name extensions have been registered. It is expected in 2 years to cross to 10 lakh registrations. There have been 79 domain name disputes been resolved so far by through The National Internet Exchange of India (NIXI) under the INDRP. Under the Trademarks Act and the Indian Arbitration & Conciliation Act of 1996 cybersquatting disputes are required to be resolved within 45 days up to two months.

Cybersquatting does not only lead to the dilution and/or tarnishment of the brand; if brand owners continue to ignore these sites, such acquiesce could act as a limitation to infringement/cybersquatting actions in the future. Also, this could morph into a phishing or vishing scam or some other dangerous instance of cyber fraud. The domain names should rightfully belong to the brand owner.

In addition, with the enactment of the Information Technology Amendment Act, 2008, the organisation under various provisions has the responsibility to ensure that ‘...reasonable security measures’ are put in place. The organisation could be liable in the event that it ‘acquiesces’ or ‘allows’ its intellectual property or corporate identity to be misused.

Tuesday, March 17, 2009

Facebook sues Cayman Islands firm, alleges intellectual property infringements [International]

US-based social networking company Facebook has sued a Cayman Islands corporation and related parties for allegedly violating its intellectual property rights. According to Miami-based financial newsletter OffshoreAlert, details are contained in a civil complaint filed by Facebook, Inc., a Delaware corporation, at the United States District Court for the Northern District of California.
Defendants in the complaint are Power Ventures, Inc., a Cayman Islands corporation; Power Ventures, Inc., d.b.a., a California corporation; Steven Vachani, who "purports to be the CEO of"; and John Does, OffshoreAlert reported. "This action arises from Defendants' infringement of Facebook's trademarks and copyrights, their unauthorized solicitation, storage and use of Facebook users' login information to gain unauthorized access to Facebook's protected computer network and the unauthorized use of Facebook user accounts to send unsolicited commercial messages to other Facebook users,” the complaint stated Facebook is one of the most popular social networking sites on the Internet and now has more than 132 million active users worldwide.
Facebook tightly controls access to its network, and implements a variety of features in order to protect the privacy and security of its users' personal information. One such security measure is the prohibition of soliciting or sharing user login information (i.e. username and password). OffshoreAlert reported that the defendants operate a website that offers to integrate multiple social networking accounts. “They have knowingly and willfully disregarded Facebook's protocols and procedures for accessing information stored on Facebook computers, and are offering a product that solicits, stores, and uses Facebook login information to access information stored on Facebook computers without authorization, and to display Facebook copyrighted material without permission.
The defendants are also inducing Facebook users to provide them with email addresses of their Facebook contacts ("Friends") for the purpose of sending unsolicited commercial messages that purposefully and falsely state that they come from "The Facebook Team" the complaint stated. The defendants have reportedly ignored repeated requests from Facebook to respect its intellectual property rights. They have also refused to cease their unauthorized access of Facebook's computer system, and to stop interfering with its relationships with its users. They have essentially admitted that their business violates Facebook's rights, but they informed Facebook that they made a "business decision" to continue on with the activities.

Microsoft, Lexmark in cross-licensing deal [International]

Microsoft Corp. and Lexmark International Inc., which makes printers and imagining equipment, have struck a cross-licensing deal, the companies said on March 17 [2009]. The agreement covers a range of Lexmark printers and Microsoft software, but the companies did not disclose specific products or financial details.

"Because both Microsoft and Lexmark have access to an extensive range of technologies, this agreement will allow each company to shorten its development cycle and increase its focus on customer-related innovation," said David Kaefer, Microsoft's general manager of intellectual property licensing, in a statement.

Microsoft shares rose 45 cents, or 3 percent, to $16.73 in afternoon trading, while Lexmark, based in Lexington, Ky., saw its stock jump 55 cents, or 3.4 percent, to $16.90.

37 patents filed for Nano by Tata Motors [India]

In its bid to protect from imitations world-over, Tata Motors has apparently applied for 37 patents for its Nano, as per a report carried in The Economic Times. Furthermore, it is in the process of filing Intellectual Property Rights (IPRs) claims for Nano in overseas markets, as quoted by a company official, adding that most of the patent applications filed before 2007 have already been granted.

It may be recalled that Nano has been developed to cater to the demands from developing as well as developed markets equivocally and there have been numerous innovations and inventions incorporated in the car that make the car unique.According to The Economic Times, the company has used a number of new concepts and ideas to develop this vehicle and patents will help in protecting some of its innovative ideas, as claimed by well-informed sources.. The move is also expected to help Tata Motors to sell the car in markets such as Africa, Southeast Asia, Eastern Europe and Latin America.

Amazon sued by cable TV giant over Kindle ebooks [United States - Patent Infringement]

Life-science-obsessed cable TV giant Discovery Communications has sued over its Kindle ebook devices, claiming patent infringement.

Discovery filed suit today in the US District Court for the District of Delaware, alleging infringement of a patent filed by the company in September of 1999. Describing an "Electronic Book Security and Copyright Protection System," the patent was awarded in 2007, with Discovery founder John S. Hendricks listed among the inventors.

"The Kindle and Kindle 2 are important and popular content delivery systems," reads a canned statement from Discovery general counsel Joseph A. LaSala Jr. "We believe they infringe our intellectual property rights, and that we are entitled to fair compensation. "Legal action is not something Discovery takes lightly. Our tradition as an inventive company has produced considerable intellectual property assets for our shareholders, and today’s infringement litigation is part of our effort to protect and defend those assets."

Discovery and the law firm representing the company did not immediately respond to a request for comment. Amazon declined to comment.

Discovery - known for the Discovery Channel, TLC, Animal Planet, and other cable networks - is objecting not only to the Kindle and its recently-announced sequel, the Kindle 2, but also to Amazon's online delivery system. Amazon delivers ebooks over something it calls WhisperNet, which runs over Sprint's EVDO wireless network.
"Amazon's infringing activities...include the operation of the website and the provision of services related to the Kindle and Kindle 2 through and by the website, including but not limited to the sale of electronic books," the suit reads.
The suit demands a jury trial and damages for direct, induced, and/or contributory infringement of Discovery's patent.
The patent describes a system that "provides for secure distribution of electronic text and graphics to subscribers and secure storage." This covers distribution to bookstores, public libraries, and schools as well as consumers equipped with a "home subsystem." As described, delivery may involve everything from television, telephone, and radio networks to the internet.
"The home subsystem connects to a secure video distribution system or variety of alternative secure distribution systems, generates menus and stores text, and transacts through communicating mechanisms," the patent abstract reads. "A portable book-shaped viewer is used for secure viewing of the text. A billing system performs the transaction, management, authorization, collection and payments utilizing the telephone system or a variety of alternative communication systems using secure techniques."
In February, the US Author's Guild complained that the Kindle 2's new text-to-speech feature violated copyright law because it "reads" books aloud without paying author's extra royalties. "They don't have the right to read a book out loud," Paul Aiken, executive director of the Authors Guild, told the Wall Street Journal. "That's an audio right, which is derivative under copyright law."
But the publishing industry has yet to actually file suit. Amazon has now said that it will allow publishers to opt-out of the new text-to-speech feature.

Cybersquatting up by 8 per cent in 2008: WIPO

Cybersquatting -- holding web domain names hostage for profit -- rose to record levels in 2008, the UN agency for intellectual property rights said.

According to the World Intellectual Property Organisation (WIPO), a record of 2,329 complaints of cybersquatting an 8 per cent increase over 2007 were filed last year, mostly by trademark holders whose names were reserved on the web by other parties.

The increasing number of cases filed with its Arbitration and Mediation Center is occurring at a time when many more domain slots are about to be launched by the Internet Corporation for Assigned Names and Numbers (ICANN), it said adding it expects an in crease in number of such cases.

Global trademark activities grew 5.3% in 2008 [International]

Activities related to filing international trademarks have recorded a growth of 5.3% in 2008, with 42,075 applications filed during the year, UN agency World Intellectual Property Organisation (WIPO) said on Tuesday.
However, trademark filing activity has been affected by the economic slowdown and grew a mere 3.9% in the second half of 2008, compared with 6.9% in the first half of 2008, the Geneva-based WIPO said in a statement. “The continued growth in the use of the international trademark system underlines the pivotal importance of trademarks to business, particularly within challenging economic times,” WIPO director general Francis Gurry said. The member countries, under WIPO’s Madrid system for the international registration of trademarks, had filed a total of 39,945 trademark applications in 2007. “Even in economically difficult times, businesses continue to recognise that a trademark is a smart investment in a company’s reputation and long-term sustainability,” Gurry added. “Trademarks play a key role in engendering consumer confidence, an important factor for businesses facing the challenges of the current economic slowdown,” he added. Applicants from Germany topped the list of filers in 2008 for the 16th consecutive year, followed by users in France and the US, WIPO said.
India is not a member of the Madrid system, which offers a trademark owner the possibility to have his trademark protected in several countries by simply filing one application directly with his own national or regional trademark office. Lidl, a discount supermarket chain from Germany, was the largest filer in 2008, WIPO said. Nestle (Switzerland), Henkel (Germany), Boehringer Ingelheim (Germany), Novartis (Switzerland), Janssen Pharmaceutica (Belgium) and BSH Bosch und Siemens (Germany), were other top applicants.

Tuesday, March 10, 2009

Pre-1923 Publication not in Copyright Public Domain [United States]

In Societe Civile Succession Richard Guino v. Renoir, (9th Cir., December 2008), the court held that works first published in France no later than 1917 without a U.S.-style copyright notice were never subject to U.S. copyright under the 1909 Copyright Act, and therefore could not have fallen into the public domain in the U.S.

This holding is particularly interesting because, as the Ninth Circuit noted, "[t]he year 1923 is significant because the 1976 Act . . . and the 1998 Copyright Extension Act operate together to create a bright line rule for which works are now in the public domain: works published before January 1, 1923 are generally in the public domain." This rule is even noted in Copyright Office Circular 22 which states

. . . the U.S. copyright in any work published or copyrighted prior to January 1, 1923, has expired by operation of law, and the work has permanently fallen into the public domain in the United States. For example, on January 1, 1997, copyrights in works first published or copyrighted before January 1, 1922, have expired; on January 1, 1998, copyrights in works first published or copyrighted before January 1, 1923, have expired. Unless the copyright law is changed again, no works under protection on January 1, 1999, will fall into the public domain in the United States until January 1, 2019.

The works at issue were sculptures by the famed artist Renior and one of his assistants Richard Guino.

Trade Secrets: WIPO Handbook [International]

From the WIPO SMEs NEWSLETTER for October 2008:

"Protecting your Trade Secrets: A Brief Guide to Preserving Intellectual Capital"

This basic guide by FISH & RICHARDSON P.C. provides useful information on building up a trade secret protection program and in preventing unauthorized use of the trade secrets of others. More

Monday, March 09, 2009

Bills Creating Performance Right for Recording Artists Are Reintroduced in Congress [United States]

Senators Patrick Leahy (D-VT) and Orin Hatch (R-UT) and Representatives John Conyers (D-MI) and Darrell Issa (R-CA) introduced bills -- S. 379 and H.R. 848, each referred to as the "Performance Rights Act" - that, for the first time, would require United States broadcast radio stations to pay licensing fees to performers of music. If passed, the bills would constitute a long-awaited change to the current broadcast licensing regime, in which broadcasters make payments to the owners of copyrights in musical compositions, but not to the performers (and record labels) that own copyrights in and/or contribute to sound recordings. The current bills are an attempt to bring the United States into conformity with the rest of the world. Nearly every industrialized nation other than the United States already requires radio broadcasters to compensate performers. However, because the United States does not provide compensation for foreign performers, many foreign broadcasters do not pay for publicly performing songs recorded by U.S. performers.
Upon introducing H.R. 848, Representative Issa remarked that "we have a opportunity to show the rest of the world that the United States practices what it preaches in protecting intellectual property.... Our ignorance of intellectual property rights on this issue is a worldwide embarrassment and it must end now." The absence of a public performance right in sound recordings has inspired a long string of failed attempts to create parity among songwriters and performers. Ironically, in 1995, these attempts to obtain parity resulted in a more fragmented legal regime. At that time, Congress passed the Digital Performance Right in Sound Recordings Act, which requires digital "webcasters," but not radio broadcasters, to compensate performers. As a result, performers currently are compensated when their songs are played online but not over the radio, while songwriters are compensated in both instances. In their current form, S. 379 and H.R. 848 would amend sections 106(6) and 114 of the Copyright Act, which grant limited public performance rights to sound recordings and establish statutory licensing schemes to determine rates applicable to public performance of sound recordings, respectively. In order to curb criticism and opposition, the House and Senate versions of the Performance Rights Act contain provisions limiting the scope of the new right provided to performers.
These limitations include:
Available statutory (i.e., "compulsory") licensing with rates set by the Copyright Royalty Judges, who also currently set rates for online digital public performances of sound recordings, among other things.
Exemptions for nonsubscription transmissions of services at places of worship or other religious assembly, as well as "incidental" use of sound recordings.
An annual $1,000 blanket statutory license for noncommercial (i.e., public, educational, or religious) radio stations.
An annual $5,000 blanket statutory license for commercial radio stations that generate less than $1.25 million in annual revenue (which the bills' sponsors believe will cover over 75% of the commercial radio stations in the U.S.).
Available "per program" statutory license rates for broadcast radio stations that make "limited feature uses" of sound recordings.
Provisions to ensure that songwriters and composers continue to receive fair compensation for public performances of their works despite the increased costs to broadcasters associated with paying performers.
Retention of a distinction between musical works and sound recordings such that venues that play recorded music (such as clubs and bars) would continue to pay songwriters but not performers.
Provisions requiring 50% of the royalties paid through statutory licensing of sound recordings to go to "featured" performers and "non-featured" musicians and vocalists rather than solely to copyright owners of the sound recordings. (The House bill would also require 50% of royalties earned through voluntary licensing of sound recordings for public performances on broadcast radio to be paid to "featured" performers and "non-featured" musicians and vocalists, whereas the Senate bill would not.)The bills face some opposition, especially from radio broadcasters. The National Association of Broadcasters ("NAB"), an opponent of the bills, maintains that requiring radio stations to compensate performers "will harm your local radio stations [and] threaten new artists trying to break into the business." NAB also claims that the bills will undo the promotional "symbiotic relationship" that currently exists between radio stations, record labels, and performers. In the last Congress, such arguments inspired 227 members of the House of Representatives and 14 Senators to support Congressional resolutions (H. Con. Res. 244 and S. Con. Res. 82) opposing radio royalties for performers. However, organizations that speak for musicians contend that the promotional value of free radio play does not justify the absence of protection for sound recordings. For example, Ann Chaitovitz, the Executive Director of Future of Music Coalition, has argued that "the promotional claim is irrelevant. Authors often see sales spikes when their books are made into movies, but no one would suggest that the writer shouldn't be paid when their work is translated to the screen because the film is 'promotional'."
The bills' sponsors have publicly stated that they are willing to work with all interested parties to see these bills through to law even if that requires amendments. So the final form of the bills may differ significantly from their current form. In the meantime, the bills have a strong base of support, and many believe that the bills have a strong chance of becoming law.

Sunday, March 08, 2009

Design Day 2009 to Be Held at the USPTO Conference [United States/International]

The United States Patent and Trademark Office (USPTO) announced in a press release that it will host its third annual Design Day at the agency’s headquarters in Alexandria, Virginia next month.

The event will be co-sponsored by the American Intellectual Property Law Association, the Intellectual Property Owners Association and the American Bar Association Section of Intellectual Property Law.

The Design Day is being organized by Technology Center 2900 and is open to design patent practitioners and USPTO examiners.

This program will provide an opportunity for design managers, examiners, independent inventors and the design patent bar to exchange ideas and to educate each other on important topics affecting design patent practice.
Program topics will include:
- Adequately Disclosing Multiple Embodiments - Application Processing: Allowance to Issue- A presentation and discussion of the recent CAFC en banc decision in Egyptian Goddess v. Swisa Inc.- A keynote address by Randall Rader, United States Court of Appeals for the Federal Circuit on the future of design patent law.

Trademark fee cut in the United Kingdom: Could price wars loom? [United Kingdom]

A price war looked set to break out on Monday over trademark fees, as the UK’s Intellectual Property Office proposes its first cuts in charges for more than a decade. The move comes just days after European Union countries agreed to let the European trademark office – formally known as the Office of Harmonisation for the Internal Market – cut its fees by 40 per cent.

The cuts by the IPO are expected in particular to benefit small and medium-sized companies that often find the costs of protecting their intellectual property onerous. The IPO will unveil on Monday proposals to reduce its fees for trademark applications made electronically by 15 per cent, and offer additional price reductions for companies that want to oppose applications.

It will also give companies more ability to pay only part of the application fee up-front, meaning that less money should lost when applications are abandoned. The proposed reductions will be subject to consultation before coming into force in October.

The Alicante-based OHIM issues the “community trademark”, an intellectual property right that applies across the 27-country EU bloc, while the IPO – like other national offices in Europe – administers lower-cost trademarks that give domestic protection only. Some EU countries were concerned that the OHIM’s move, which was prompted by unexpected popularity of the community trademark and subsequent financial surpluses at the office, might undercut business at their national offices. The UK move comes after a decline in domestic applications for patent and trademark applications, which fell 12 per cent last year.

Friday, February 27, 2009

International Intellectual Property Alliance (IIPA) asks the US Administration to place India under watch for piracy [India]

A group of American copyright trade associations has asked the US to put India, along with a dozen other nations including Pakistan and China, on its 'Priority Watch List' for intellectual property violations.
The recommendation has been made by the International Intellectual Property Alliance (IIPA) -- a coalition of seven trade associations representing American copyright-based industries -- to the office of US Trade Representative.
The 13 countries, which have been recommended by the IIPA to be placed in 'Priority Watch List' in 2009, include Argentina, Brunei, Canada, Chile, Egypt, Indonesia, Mexico, Pakistan, the Philippines, Russia and Thailand.
In its report on India to the USTR, the IIPA has said that "piracy, physical, Internet and over mobile devices worsened in 2008".
"With the US economy shedding jobs at an alarming rate, our government needs to redouble it efforts to stem massive global theft of US-copyrighted works in physical form and on the Internet," IIPA said in a statement.
"Piracy causes significant economic losses to our country, undermining industries and companies that historically have generated new jobs at a rate two to three times greater than that of our economy as a whole," it noted.
According to IIPA, India suffered an estimated trade loss of 1.09 billion dollars in 2008 due to copyright piracy. The same stood at 1.19 billion dollars in the year-ago period.
It also pointed out that in India, "while pockets of some progress can be in the enforcement system, it remains ineffective to deter piracy".
Placing a trading partner country of the US under the 'watch list' indicates that there are particular problems with respect to intellectual property rights protection, enforcement or market access for people relying on IP.
Further, nations coming under the 'Priority Watch List' would be the main focus of bilateral attention related to the problematic areas.
The member associations of the Washington-based IIPA represent more than 1,900 US companies producing and distributing materials protected by copyright laws worldwide including computer and entertainment software, theatrical films, television programmes and music.
The seven associations that are part of IIPA are Association of American Publishers, Business Software Alliance, Entertainment Software Association, Independent Film & Television Alliance, Motion Picture of America, National Music Publishers' Association and Recording Industry Association of America.
The IIPA's submission discusses copyright piracy, the legal and enforcement reforms needed to fight it and other market access barriers in 48 countries.
The IIPA's review of the 'Special 301' report for 2009 on Copyright Protection and Enforcement has asked the American government to place 39 out of the total 48 to be named to an "appropriate USTR watch list".
The US government's 'Special 301' report pertains to intellectual property protection and market access issues in foreign countries.
"The US creative industries -- business and entertainment software, film, television and home video entertainment, music and recording, and book and journal publishing -- are important drivers of the US economy, contributing substantially to domestic growth and employment, including over 110 billion dollars annually in revenue from foreign trade," it said.
IIPA has also called for greater global law enforcement cooperation to tackle piracy.

Monday, February 16, 2009

Recession hits Intellectual Property

Global Security company McAfee has recently concluded in its findings that businesses loose more than a trillion dollars in Intellectual Property due to data thefts and cyber crimes. According to the findings of Mc Afee companies lost more than US$ 4 billion  of Intellectual Property and spent more than US $ 600 million for repairing the damage caused by data thefts last year.

In the present circumstances there is a high risk of Intellectual Property being lost or stolen for example confidential data of firms might be stolen, as many financially challenged employees who have access to such information, would steal such information and sell it in the open market

Countries like India and China are spending more amounts of money in order to control this threat than the western countries.

Friday, January 30, 2009

Intellectual Property is the Future Strength for the US Economy

Intellectual Property Experts Mark Blaxill and Ralph Echardt in the their forthcoming Book, The Invisible Edge: Taking Your Strategy to the Next Level Using Intellectual Property are of the opinion that the strength of any country's economy is its innovation and Intellectual Property Reserves. 

They argue that the strength of US is its IP reserves and Innocation. According to them the US is the Saudi Arabia of IP reserves as it hold 33 percent of the world's patent reserves. 

The Intellectual Property Sector is providing a huge trade surplus to the trade accounts of the Beleaguered US Economy. The IP sector alone contributed more than US$ 60 billion in the year 2007. 

The Obama Administration should take steps to protect the plethora of IP which it possesses and not make the mistakes which it made in the past by forcing companies to open their patent portfolios. This move was taken in order to promote 'Competition'. Nearly 50,000 patents were given off, plunging many huge american businesses into a 'competitive crisis'. 

The reforms in the Patent sector these days risk another massive give away of American knowledge and innovation for free, when the country needs it badly for its economic survival.

Only time will tell how the new Obama Administration would deal with this issue and help protect the Knowledge which America has created over a long period of time.

Saturday, January 17, 2009

India to fight it out in WTO against EU over Patent Issues

India is considering to drag the European Union to WTO over the long standing dispute regarding Patents. India's 12 billion dollar pharmaceutical industry exports a major chunk of its produce to various western countries. But it always faces FLAK from the large MNCs which accuse the Indian pharma industry of patent infringement.

It is matter of great concern for the Commerce ministry as well as for the pharma industry which faces huge challenges of providing cheap drugs to its domestic as well as International markets.

US removes TAIWAN from the Special 301 list

The United States very recently removed Taiwan from the list of countries failing to protect Intellectual Property Rights. This move by the US proves that Taiwan has done alot to stamp out violation of IPRs. The decision to remove Taiwan from the list came on Friday the 16th of January 2009, when the US Trade Representative's office (USTR) announced that it was removing Taiwan from its watch list, which warns countries of sanctions if they fail to protect IPRs.

The measures taken by the Taiwanese government to protect IPRs include:
  • establishment of a special intellectual property court,
  • further efforts to improve implementation of the action plan for protection on school campuses,
  • progress toward passage of amendments to the copyright law

The US is keeping a close watch on Taiwan as its parliament plans to enact a pending legislation to fight internet piracy, and tightening customs and border checks against import and export of pirated products.

This is just a small step taken by Taiwan to fight the menace of piracy, but in the long run it has to do a lot more to make sure that the world does not look at it as a 'Haven for Pirates'.

Tuesday, January 13, 2009

Thanjavur Dolls acquire GI Status [India]

The dancing dolls (thalai aatti bommai) of Thanjavur can now boast of one more feature the Geographical Indication (GI) mark. The doll has been included in the Government of India's GI Registry, a statutory recognition of the toy's geographical origin to the Thanjavur region. From now on, the term dancing doll of Thanjavur' would refer only to the authentic Raja-Rani' pair, which stand on a curved pedestal.
The GI-registered dolls, which are believed to have come to Thanjavur during King Sarafoji's regime in the early 19th century, are unique as they remain vertical and upright always, thanks to a clay tablet placed inside the round curved pedestal.
Among the other products registered with the GI registry are Darjeeling tea, Chanderi saree, Kancheepuram silk, Mysore sandal soap, Solapur terry towel and Kangra tea. Under the Geographical Indication of Goods (registration and protection) Act, 1999, agricultural, natural or manufactured goods originating or manufactured in the territory of a country, or a region or locality in that territory, are registrable as geographical indications. This gives to the registered proprietor and its authorised users the legal right to the exclusive use of the GI and also the right to obtain relief in case of its infringement. It also ensures that only genuine products are marketed. Putting the Thanjavur dolls under GI protection is no mean achievement as it is common for the entire world. Just like trademarks, the GI mark too are source-identifiers. Besides ensuring monopoly for the association or group the Thanjavur Chamber of Commerce in this case the GI mark shields a product from bogus claims and poor quality. In the case of the Dancing Dolls, the GI registry has taken note of the unique production method involving plaster of Paris, papier mache, wood pulp and sago. It recognized the raja-rani' motif of the doll tradition and attributed the dolls to the skills of artisans in and around Thanjavur.
Now that it has been registered, artisans cand register themselves with the Chamber to become GI-recognised craftsmen. The membership will also entail inspection by internal and external experts, who are mandated to audit the quality of the dolls in keeping with the culturally rich tradition of Thanjavur.

Thursday, January 08, 2009

Companies [Appontment and Qualifications of Secretary] Amendment Rules, 2009 [India]

The Ministry of Corporate Affairs has vide notification dated January 5, 2009 [please refer to the text below] has raised the limit of paid up share capital for compulsory appointment of a company secretary (under wholetime employment) in an Indian company, from Rs. 2 crores to Rs. 5 crores.

This notification shall come into force from the 15th day of March, 2009.

Companies [Appointment and Qualifications of Secretary] Amendment Rules, 2009 - Amendment in Rule 3

NOTIFICATION NO. G.S.R. 11 (E), DATED 5-1-2009
In exercise of the powers conferred by clauses (a) and (b) of sub-section (1) of section 642 read with clause (45) of section 2 and section 383A of the Companies Act, 1956 (1 of 1956), the Central Government hereby makes the following rules further to amend the Companies (Appointment and Qualifications of Secretary) Rules, 1988, namely :—

1. (1) These rules may be called the Companies (Appointment and Qualifications of Secretary) Amendment Rules, 2009.

(2) They shall come into force from the 15th day of March, 2009.

2. In the Companies (Appointment and Qualifications) of Secretary) Rules, 1988, in rule 2,
(i) in sub-rule (1) and in the proviso to sub-rule (4), for the words "rupees two crores" the following words shall be substituted, namely:—
"five crore rupees";
(ii) in sub-rule (3), the second and third proviso shall be omitted;
(iii) after sub-rule (3), the following sub-rule shall be inserted, namely:—

"(3A) A company having a paid up share capital of two crore rupees or more but less than five crore rupees may appoint any individual who possesses the qualification of membership of the Institute of Company Secretaries of India constituted under the Company Secretaries Act, 1980 (56 of 1980), as a whole-time secretary to perform the duties of a secretary under the Companies Act, 1956:

Provided that where a company has appointed under sub-rule (3) or this sub-rule, a whole-time company secretary, possessing the qualification of membership of the Institute of Company Secretaries of India, such a company is not required to obtain a certificate from a secretary in whole-time practice under rule 3 of the Companies (Compliance Certificate) Rules, 2001."

Wednesday, January 07, 2009

Raju, Satyam Directors could face a ten-year jail term [India]

A team of officials from market regulator Securities and Exchange Board of India (SEBI) will arrive in Hyderabad on Thursday to begin a probe amid speculation that police might arrest Mr. Raju, but nobody knows his whereabouts. Mr. Raju became incommunicado after sending a letter to the Satyam Board of Directors on Wednesday morning. There was utter confusion after a TV channel reported that he had left either for the US or Dubai.

Mr. Raju is believed to have met nobody in the last two days. It is also possible that he might have handed over his letter to company officials before becoming incommunicado.
Some of the more serious penalties that Raju and others are likely to face under various laws are:
* Section 23 of the securities contract regulation Act 1956, that imposes a penalty of imprisonment up to 10 years and fine up to Rs 25 crore. The adjudicating officer of Sebi is empowered to award such punishment to directors and management executives for violating the listing agreement by making false and inaccurate disclosures in the company's quarterly and annual results. The penalty is severe because of the enormous damage that the investors are liable to suffer on account of false disclosures.
* Section 24 of the Sebi Act 1992 that imposes a penalty of imprisonment up to one year for infringement of any provisions of the law or rules and regulations, including fraudulent and unfair trade practices (FUTP).
* Section 477-A of the Indian Penal Code, that imposes a penalty of imprisonment up to seven years. The police may on their own or on the recommendation of the serious fraud investigation office (SFIO) invoke this IPC provision meant to punish those found to have falsified accounts "...willfully and with intent to defraud."
* Section 211 of the Companies Act that imposes a penalty of imprisonment up to six months. The company law board is empowered to punish those who are found to have "willfully" failed to comply with the requirements of law relating to the annual financial statement.

Significantly, the job of the prosecuting agencies has been made easier by the damaging admissions made by Raju in his resignation letter to the board. Having taken responsibility for cooking the Satyam books to the tune of Rs 7,136 crore, it is just as well that Raju said, "I am now prepared to subject myself to the laws of the land and face the consequences thereof." For all his exertions in his resignation letter to save the skin of other directors, they have reason to worry because the Companies Act does not only hold the board to account for any such failure of due diligence, it also makes no distinction in the liability of executive and non-executive or independent directors. The onus is on them to prove the action they had taken to discharge their fiduciary responsibility.