LAW WIRE™ - COMMUNICATING THE LAW™

India IP and Innovation Forum

2011-12-12T21:31:00.000-08:00

India IP and Innovation Forum

www.managingip.com/IndiaIP2012
Regency Hyatt Hotel, New Delhi

February 28, 2012

Free for IP counsel, academics and R&D professionals

Dear Colleague:

Managing IP and Law Wire Blog invite you to the inaugural India IP & Innovation Forum on February 28, 2012 in New Delhi.

The forum provides the best platform for IP counsel, their advisers and leading officials to meet and debate the latest legal issues and practical strategies for IP owners in India, from patent prosecution to portfolio management strategies.

Easy ways to register

Visit www.managingip.com/IndiaIP2012
Email mfabri@euromoneyplc.com
Call +852 2842 6995

Agenda topics:

· Patent prosecution tips

· Defending your copy right

· US focus – recent patent reform and implications for Indian IP owners

· The Indian Patent Act and software patentability

· Litigation in life sciences – lessons learnt from recent cases

· Trade mark protection in India

· Portfolio management strategies

Speakers include:

Viswanathan Seshan, head of IP&S India, Philips Electronics India

Keshav Dhakad, director, IPR & license compliance, Microsoft India

Anshuman Sharma, country general & legal head, Novartis

R Parthasarathy, partner, Lakshmi Kumaran & Sridharan

Rajiv Chauhan, VP and general counsel, Pernod Ricard

Aravind Chinchure, assistant vice president, Reliance Industries Ltd

V Lakshmi Kumaran, managing partner, Lakshmi Kumaran & Sridharan

For more information about the agenda, please see the brochure here: http://www.managingip.com/pdfs/IndiaIP.pdf

Don’t forget that the forum is free for IP counsel. Places are allocated on a first come, first served basis, register today to secure yours.

Advisers, consultants or private practitioners can SAVE US$200 by registering before December 23, 2011.

We look forward to meeting you in February.

Kind regards,

James Nurton

Managing Editor

www.mangingip.com

Website "Means" Requires Algorithm Disclosure

2011-12-12T19:34:00.001-08:00

In Ex parte Catlin, (U.S. PTO Bd. App. & Int. February 3, 2009)(precedential), the Board held that a method claim for implementing an on-line incentive system that recited "providing, at a merchant's web site, means for a consumer to participate in an earning activity to earn value from a merchant" was invalid for indefiniteness under 35 U.S.C. Section 112, second paragraph, where the application failed to disclose any algorithms that transformed the disclosed general purpose processor to a special purpose computer programmed to perform the disclosed functions:

According to Administrative Patent Judge Horner,

. . . we have thoroughly reviewed the Appellants' Specification and have not been able to locate an adequate disclosure of structure, material, or acts corresponding to the functions of allowing a consumer to participate in an earning activity and earn value from an earning activity. In particular, the Specification does not disclose any specific algorithm that could be implemented on a general purpose computer to allow a consumer to participate in an earning activity and earn value from an earning activity. Accordingly, the Specification fails to disclose the algorithms that transform the general purpose processor to a special purpose computer programmed to perform the disclosed functions of the first elements of claims 1, 9, and 20. The Appellant has failed to disclose any algorithm, and thus has failed to adequately describe sufficient structure, for performing the functions recited in the means elements contained in the first step of claims 1, 9, and 20 so as to render the claims definite. Accordingly, claims 1, 9, and 20, and claims 2-8, 1 1 - 19, and 2 1-25 depending therefrom, are unpatentable . . . as indefinite.

46th Annual Corporate Patent Seminar

2011-12-12T19:31:00.001-08:00

Registration is now open for the 46th Annual Corporate Patent Seminar in Austin, Texas on November 14-16th. Past participants have included representatives from Procter & Gamble, Caterpillar, SC Johnson, Pfizer, Eli Lilly and others.

Limited to senior-level corporate counsel, the CPS is an informal group of patent professionals who exist only for the purpose of putting this seminar together. The cost is $800 per person and additional information including registration information can be found at www.corporatepatent.com

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

2009-10-05T01:54:00.000-07:00

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"

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

2009-09-22T05:03:00.000-07:00

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 OKTaTaByeBye.com, a travel web site based on the colloquial saying “Ta Ta”, as in bye-bye or see you later. OKTaTaByeBye.com is run by a large online travel company that operates MakeMyTrip.com.

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 OKTaTaByeBye.com that it is a legitimate, online travel community, Duggal focuses on on how the site links back to the company’s MakeMyTrip.com site, where people can book trips online. This, according to Duggal, shows that OKTaTaByeBye.com is actually trying to use TaTa’s trademark to “fish” for new customers to its MakeMyTrip.com 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]

2009-09-22T04:52:00.000-07:00

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

2009-09-22T04:51:00.000-07:00

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]

2009-09-22T04:49:00.000-07:00

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]

2009-09-22T04:43:00.000-07:00

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.

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

2009-09-14T22:38:00.000-07:00

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.

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

2009-09-03T04:13:00.000-07:00

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

2009-09-03T04:05:00.000-07:00

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]

2009-09-03T04:01:00.000-07:00

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 'mdhfoods.com' 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]

2009-09-03T03:08:00.000-07:00

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: http://www.cafc.uscourts.gov/opinions/08-1448.pdf

Legal Issues for Entrepreneurs

2009-08-31T22:07:00.000-07:00

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.

Tata Sons wins case against travel portal

2009-08-28T00:01:00.000-07:00

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, 'oktatabyebye.com'. Gurgaon-based mmt admin (commonly known as MakeMyTrip) has been using the domain name 'oktatabyebye.com'.

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 (makemytrip.com). According to Tata Sons, both the sites offer similar services. However, MakeMyTrip says both cater to separate class of persons. While makemytrip.com offers discounts and easy access to travel plans, oktatabyebye.com 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.

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

2009-08-27T22:09:00.000-07:00

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

2009-08-27T22:00:00.000-07:00

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 www.inta.org.

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: www.utahcyberlaw.org.

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

2009-08-26T01:37:00.000-07:00

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 www.legifrance.gouv.fr

Cyber Regulation Appellate Tribunal Court inaugurated [India]

2009-08-25T01:40:00.000-07:00

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.

'Tweet' isn'tTwitter Trademark [United States]

2009-08-22T03:29:00.000-07:00

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?

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

2009-07-13T01:38:00.000-07:00

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.

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

2009-07-03T23:45:00.000-07:00

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.

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

2009-04-06T23:22:00.000-07:00

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]

2009-04-06T02:14:00.000-07:00

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. WhenU.com., 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.

India ranks fifth in reporting cyber crime cases

2009-04-01T01:25:00.000-07:00

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

2009-04-01T01:20:00.000-07:00

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.

Advocacy group: UK databases illegal

2009-03-27T01:27:00.000-07:00

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]

2009-03-27T01:24:00.000-07:00

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."

ITC evicts squatter from Indian Domain Name

2009-03-19T04:52:00.000-07:00

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 Namegiant.com, 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.

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

2009-03-17T23:58:00.000-07:00

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. Power.com, a California corporation; Steven Vachani, who "purports to be the CEO of Power.com"; 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]

2009-03-17T23:56:00.000-07:00

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]

2009-03-17T23:52:00.000-07:00

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]

2009-03-17T23:49:00.000-07:00

Life-science-obsessed cable TV giant Discovery Communications has sued Amazon.com 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 Amazon.com 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

2009-03-17T23:41:00.000-07:00

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]

2009-03-17T05:08:00.000-07:00

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.

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

2009-03-10T01:35:00.000-07:00

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]

2009-03-10T01:33:00.000-07:00

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

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

2009-03-09T23:35:00.000-07:00

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.

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

2009-03-08T23:10:00.000-07:00

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]

2009-03-08T23:03:00.000-07:00

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.

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

2009-02-27T00:49:00.001-08:00

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.

Recession hits Intellectual Property

2009-02-16T10:52:00.000-08:00

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.

Intellectual Property is the Future Strength for the US Economy

2009-01-30T23:01:00.000-08:00

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.

For more on the Forthcoming book of Blaxill and Echardt please visit http://www.marketwatch.com/news/story/hidden-driver-us-recoveryinnovation-intellectual/story.aspx?guid={FEDB3473-8CE5-4F6B-868E-F664D90F5C81}&dist=msr_1

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

2009-01-17T09:24:00.000-08:00

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

2009-01-17T03:41:00.000-08:00

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'.

Thanjavur Dolls acquire GI Status [India]

2009-01-13T00:09:00.000-08:00

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.

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

2009-01-08T21:38:00.000-08:00

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."

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

2009-01-07T23:32:00.000-08:00

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.

Corporate India, Regulators 'stunned' by Satyam fraud [India]

2009-01-07T00:51:00.000-08:00

Terming disclosures of financial wrong-doings at Satyam as an event of 'horrifying magnitude,' the Securities and Exchange Board of India on Wednesday said it would take all steps under the law for which it has started discussions with government and bourses. "We are in touch with Ministry of Corporate Affairs. We are also in discussion with them as to what steps need to be taken from the perspective of power they have under the law and Sebi has under the law," Sebi chairman C B Bhave said.

Sebi was also forwarding the letter written by Satyam's chairman B Ramalinga Raju on his stepping down with the confession that the profits in the company were inflated over the years, leading to wide gap between real and imaginary assets.

Govt to refer Satyam case to Serious Fraud Investigation Office
The government has decided to refer the Satyam case to Serious Fraud Investigation Office, an official of the Ministry of Corporate Affairs said.
All regulators and government agencies will make coordinated efforts to get to the bottom of the Satyam wrongdoings, the official said, adding that the 'company management not been fair to the shareholders'.

Satyam plunges to all-time low
Meanwhile, the Satyam Computer stock nosedived nearly 70 per cent to an all-time low of Rs 58, following the resignation of the company's chairman B Ramalinga Raju and Managing Director B Rama Raju.

Shares of Satyam plunged as much as 67.71 per cent to a low of Rs 58, but was later trading at Rs 73.50, down 58.96 per cent in the afternoon trade on the Bombay Stock Exchange.
The scrip, which had opened at Rs 179.10, plunged within minutes of Satyam chairman and managing director tendering their resignation.

Raju had been under attack over the $1.6-billion acquisition fiasco of firms promoted by his family. The counter saw frantic selling after the announcement and nearly 13 crore (130 million) shares had changed hands on both the bourses within an hour.
Satyam stock holds a 1.56 per cent weight in the 30-share bluechip index Sensex. Following the same, the benchmark index also plunged over 400 points and was trading down nearly 4 per cent at 9,922 points in the noon trade on the BSE.

On the National Stock Exchange, the scrip plunged 55.63 per cent to an all time low of Rs 79.40. It was later trading at Rs 80, down 55.29 per cent in the afternoon trade.
In a regulatory filing, the company said Raju would continue to be the chairman till the board is expanded.

Satyam Chairman Raju resigns, admits to fraud [India]

2009-01-06T22:38:00.001-08:00

Satyam Computers founder and chairman Ramalinga Raju had resigned from the Satyam board.
Raju has written a letter to the board giving details of the balance sheet. Balance Sheet has inflated cash balances of Rs 5040 crore and accrued interest of Rs 376 crore is non-existent. Rs 1230 crore was arranged to Satyam and is not reflected in the books.

While Ram Myanpati will act as Interim CEO, Merrill Lynch can be entrusted to explore. As per the revelations, second Quarter numbers were inflated to Rs 2700 crore vs Rs 2112 crore actual numbers. No board member had any knowledge of the real situation of the books. Shares in Satyam Computer shed all gains to turn negative after the embattled Indian outsourcer said its chairman has resigned from the board. Shares were down 16.81 percent at 149 rupees. (11.22 a.m.)

HC relief for foreign law firms on tax payment [India]

2009-01-03T01:27:00.000-08:00

In a significant order, a division bench of the Bombay high court has ruled that foreign law firms, even though working as solicitors for multinational corporations with operations in India, will pay tax only in those countries where they give legal advice and not in India.

The appelant before court was Clifford Chance, a top-notch legal firm from London which acted as solicitors for several multinational corporations interested in four major power projects in India. The clients included big names such as GEC Alsthom Group, and Electricite de France. Clifford Chance told court that it billed its clients on an hourly basis and maintained detailed "time sheets'' that showed whether the legal advice was given in India or abroad.

On that basis, the firm calculated that it had earned a little over Rs 5 crore from its India operations during 1996-97. Ispat Industries was the only Indian firm involved in one of the four power projects. On the contrary, the income tax department said that Clifford Chance had received more than Rs 17 crore in legal fee for acting as advisors on the four power projects and it was immaterial whether the advice was given in India, UK or any other country. It said that the whole income was taxable in India as the projects from which it was derived were in India. However, Salve argued that legal service given by a solicitor from his home country to a client who was overseas could be taxed only in the country of residence of the solicitor. Finally, justice S Radhakrishnan and V C Daga ruled that under statutory provisions, services which are to be taxed must be both "rendered in India'' and "utilized in India'' for them to fall under the income tax bracket. The court held that this was not the case with Clifford Chance's earnings which came from giving legal advice to its clients in other countries, even though the power projects were in India. Thus it said that tax could be levied only on Rs 5 crore that the solicitors had earned by giving legal advice to firms in India.

From Assets to Profits: New Book on Intellectual Property

2009-01-02T02:29:00.000-08:00

If intellectual property never comes of age as a mainstream topic for investors and corporate strategists, it won't be Bruce Berman's fault.

As CEO of Brody Berman Associates in New York, a communications and management consulting firm that focuses on innovative businesses and intellectual assets, Berman has been a tireless proponent of the importance of IP and attendant issues. Not coincidentally, he's also quite a networker in the community of IP thinkers and practitioners.

Those two characteristics have enabled Berman to assemble some of the better books on the subject of IP -- including his new offering, From Assets to Profits, which follows Making Innovation Pay (2005) and From Ideas to Assets (2002), all from John Wiley & Sons, Inc.

Contributors to the current volume (along with Berman himself) include the heads of IP business at Hewlett-Packard Co. and Goldman Sachs; the former head of IP business at Lucent and IBM Research; and IBM Corp.'s former VP of IP strategy, among others. Each in turn examines a facet of IP. A few highlights:

Berman kicks things off with a chapter on IP investing and the spectrum of people--some controversial, some less so--who do it. "Has today's more contentious, bottom-line approach for managing IP rights improved innovation, patent quality, or increased shareholder value?" he asks. "Probably. But you won't hear most strategic IP owners admitting that."
John A. Squires chief IP counsel for Goldman Sachs & Co., contributes a chapter on IP in financial services. In finance, Squires says, "patents are generally designed for, and deployed primarily by, the founders of the venture as a functional edge for the operational risk that the venture may incur in the future." Squires goes on to show how patent issues figured in the formation and launch of Regulatory DataCorp LLC (RDC), a for-profit database and interdiction software venture now owned by twenty of the world ' s leading financial institutions.

Another interesting chapter is "The Evolving Role of IP in M&A: From deal-breaker to deal-maker." This one was written by Ron Laurie, the veteran silicon valley IP lawyer who wrote the first internet business-method patent, for Priceline's reverse auction. "IP," he writes, "was traditionally viewed in M&A transactions as a possible deal-breaker, effectively an afterthought that IP lawyers attended to. When it came to consummating a transaction, these professionals were much more likely to regard all news as bad news."

Today, Laurie says, IP in M&A is starting to be seen as an important deal facilitator that bankers, private equity capital providers, and others need to understand from the start.

You can find out more about the book (and about Berman) on the Brody Berman website.

Evalueserve Study: India to Emerge as Global Innovation Hub

2009-01-02T02:26:00.000-08:00

India will emerge as the next global hub for innovation, according to a study on "R&D Ecosystem in India" conducted by Evalueserve and released by the British High Commission and the Canadian High Commission in India.

India targets to increase its R&D spend from less than 1 percent of GDP to 2 percent by 2012 under the 11th Five-Year Plan. The move will catapult India to the league of developed nations that spend 2.5 percent of their GDP on R&D on an average.

The Indian R&D ecosystem comprises various supporting infrastructure, government departments, research organisations, funding institutions and industry associations. The government is focusing on public-private partnerships, such as knowledge parks and incubator programmes, to promote commercialisation, transfer and diffusion of technology.

Angel investors and venture capitalists also have an important role in the commercialisation process, given the limited availability of funding for early stage companies and innovators. Further, venture capitalists are also providing a lot of late-stage funding. The number of private equity/venture capitalist deals in late-stage funding rose from 33 in 2005 to 104 in 2006, while the number of early stage funding deals rose from 19 in 2005 to 59 in 2006.

That India is becoming increasingly conducive to innovation is evident from the fact that the total number of patents filed in the country has increased significantly. The number of patent applications filed grew at a CAGR of 23.3 percent, from 10,592 in 2001-02 to 24,505 in 2005-06. The growth accelerated after India became Trade-Related Intellectual Property Rights (TRIPS) compliant in 2005.

Some IPR issues currently faced by India include low awareness on IP protection and longer patenting process. The Federation of Indian Chambers of Commerce and Industry (FICCI) drafted the Public Funded Research and Development (Protection, Utilisation and Regulation of Intellectual Property) Bill, 2007, an indigenous version of the Bayh-dole Act, to address these issues. The new legislation will emphasise education opportunities in science, technology, engineering and mathematics, and help R&D institutions and scientists to own the intellectual property they create.

Access the complete report at http://www.evalueserve.com/Media-And-Reports/WhitePapers.aspx.

Evalueserve provides custom research and analytics services to a client base of Global 5000 companies, in the following areas - Financial and Investment Research, Business Research, Market Research, Intellectual Property, Expert Network, Data Analytics and Modelling and Knowledge Technology Services. We currently have 2,475+ professionals in our research centres in India, China, Chile & Romania.

L'Oreal takes MyDollarStore to High Court over illegal imports [India]

2008-11-24T03:11:00.000-08:00

French cosmetics and toiletries giant L’Oreal has hauled discount retailer MyDollarStore to court over issues relating to intellectual property rights (IPR) and illegal imports, it is learnt. The company has filed a case against MyDollarStore in the Delhi High Court recently.

In recent times, MNCs have been upset over the move by retailers to import top global brands, claiming that this leads to loss of business opportunity, unfair competition and product cannibalisation. However, sources said hectic parleys are on between the two parties and the talks could lead to an out-of-court settlement.

MyDollarStore is a discount store chain which set up shop in 2004 and now has 47 stores across several cities. Most of the stores are located in malls and near Big Bazaar outlets. The chain plans to scale up presence across most Big Bazaar outlets. The discount store is associated with basement bargains in the US. MyDollarStore formats price products at Rs 99 and above in India, and are perceived as expensive by bargain seekers. While products are priced at $1 (approximately Rs 48.9) at a MyDollarStore outlet in the US, the same products sell at a higher rate in India owing to transportation costs and import tariffs. L’Oreal source said the company was concerned about protecting the properties of its brands, which include quality and consumer perception. “We distribute the brand in a way that ensures a certain value around it. An unplanned distribution creates confusion or leads to an unpleasant consumer experience which may work against our brand,” the source said. L’Oreal India has recorded an attractive growth rate of over 40% plus in the country, and globally it has identified India as one of its top five markets. Sources said the company fiercely guards its right to market and distribute its brands in India.

Several MNCs have invoked the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007 Act to stop retailers from importing their foreign brands. Companies like Hindustan Unilever, L’Oreal, Lancome Perfumes, Oakley, Nivea and Mico have already registered several brands under notification No.47/2007 of the IPR Act with the Customs. Recently, Future Capital picked up 28% in Sankalp Retail Value Stores, a franchisee of the US-based discount format MyDollarStore. The format is expected to help scale up profit margins at Big Bazaar and is being set up as a ‘shop-in-shop’ concept. MyDollarStore outlets usually stock limited top brands like Coke and generally sell other lesser-known brands. But lately they have been stocking well-known brands, including that of L’Oreal like Garnier, etc. Big Bazaar & Food Bazaar, Reliance Retail, Spencer’s and MyDollarStore import sizeable consignments of top consumer brands and their variants from markets like Taiwan, Thailand, Gulf and the US. L’Oreal operates in India through its wholly-owned subsidiary L’Oreal India and has four divisions—consumer products, professional products, active cosmetics and luxury products.

Patent officers should coordinate to bring uniformity in standards [India]

2008-11-24T03:09:00.000-08:00

Many of India’s pharma companies, including even the big and transnational ones who themselves have some stake in innovation and R&D, are alleging that patent authorities in India have become very liberal when it comes to grant of patents. Many frivolous patents have been granted and even bogus applications are being entertained, they say. The Indian Pharmaceutical Alliance, a group of big India-born drug companies, is mulling a thorough study of the patents granted since 2005 to find out how many of these are in fact ‘bad patents.’ At the other end of the scale, the foreign pharma companies not only brush aside the allegation of granting patents for ‘trivial inventions’ but also aver that “a lot of important applications” have in fact been turned down by India’s patent authorities. The question that underlies this row is what’s a ‘patentable invention’. At a very general and non-codified level, the newness or rather the surprise element of an invention should be the deciding factor.

The World Trade Organisation’s Trade-Related Intellectual Property Rights (TRIPS) agreement defines the term ‘patentable subject matter’ with due considerations to present-day commercial realities—it says an invention should be “new, involve an inventive step and capable of industrial application” to be deserving of a patent. National governments have drawn a lot of freedom from the TRIPS agreement itself and even autonomously to elaborate on the TRIPS definition. However, national laws of many countries, including the US, are framed in such a way that even “incremental, adaptive or cumulative” inventions could qualify for patents if such invention has a definitive industrial use and thereby considerable commercial value. Indian government has been chary about unfair patenting—thanks to lobbying by domestic industry and the unrelenting stand of leftist outfits. It introduced an additional provision—Section 3(d)—in Patents Act to make patenting criteria more stringent in the pharmaceutical space. This provision was introduced through the third amendment to the Act, which also introduced product patenting for pharma and agrochem inventions.

While the Big Pharma—the large pharmaceutical companies based in the US and EU who hold most of the patents—have been a strident critic of Section 3(d), international organisations like the World Intellectual Property Organisation endorsed it and termed it TRIPS-compliant. According to this provision, incremental inventions (like salts, isomers etc of known molecules) can be patented only if they have contributed to improve the efficacy of the (known) substance. And the patent authorities—read the examiners—would decide if efficacy has really been improved. The current strife over the allegation of the patent authorities practically becoming very liberal in grant of patents would need to be viewed in this context. The fact is India’s Patent Act, even with the fairly elaborate rules notified under it including those to support the Section 3(d), bestows substantial discretionary authority with the patent authorities. Patent examiners in India are still grappling with the complexity of the world of pharmaceutical inventions—the area is abstruse and dynamic enough to baffle even the seasoned examiners. Leaving a lot of things to the discretion of a group of patent examiners is therefore bound to generate conflicts. Here, what the government can do is to create many layers of examiners so that the probability of genuine error can be minimised. But the patent examination, search and grant system in India is currently highly unorganised. The four patent offices—Delhi, Mumbai, Kolkata and Chennai—are yet to achieve a fair degree of cohesiveness among them. These offices, manned by patent controllers and scores of patent examiners who assist them, are allegedly employing separate yardsticks and this is what caused the current allegations and counter-allegations. Clearly, there is a case for a very high degree of coordination between the four patent offices. Patents are anyway prone to contestation. Some disputes would inevitably reach the courts. Such disputes can however be minimised by bringing as much uniformity as possible in standards of patent grant. The Patent Act already provides for pre and post grant opposition and making a review plea before the controller who granted/denied the patent. And there’s the intellectual property appellate board, which is the body for the aggrieved to appeal to. What is lacking is proper coordination among the patent controllers and examiners. The government would do well to address the issue immediately.

ICANN to allow new top-level domains – warning to brand owners

2008-10-30T04:08:00.000-07:00

The Internet Corporation for Assigned Names and Numbers (ICANN) is responsible for the allocation of all top-level domain names. There are presently only a limited number of top-level domains (e.g. .com, .net, .org etc) but ICANN has announced it intends to open the market for any person to create new top-level domains of their choosing.

ICANN has issued a draft "Applicant Guidebook" on which it is inviting comments. The draft guidebook may be seen here. ICANN is inviting comments from the public on the draft guidebook, and states that it will receive comments for 45 days (from 24 October 2008). The draft guidebook states that, during the (as yet undetermined) application period, any "established entity" from any country may apply to operate a top-level domain. The top-level domain proposed may either be an "open" domain, which is available to any type of applicant, or a "community based" domain, which must relate to an identifiable and pre-established community that has endorsed the registration of the domain. The application must show that the applicant will have a dedicated registration and use policy, and that the applicant has the operational, technical, financial and organisational capability to maintain the top-level domain proposed. The draft guidebook states that the proposed registration fee for the new top-level domain will be $185,000. Of particular interest to brand owners, the draft guidebook contains details of the proposed objection mechanism which will allow interested parties to challenge the registration of a new top-level domain. The proposed grounds of objection are:String Confusion Objection – existing operators of top-level domains can complain that a domain applied for is confusingly similar to an existing top-level domain; Legal Rights Objection – a "rightsholder" (which is not defined, but this is likely to mean a trade mark owner or someone with unregistered trade mark rights/reputation) may complain that a domain applied for infringes their rights; Morality and Public Order Objection – the parties who may complain about a domain applied for which is contrary to morality and public order are yet to be determined by ICANN, but they may be limited to Government bodies; and Community Objection – an "established institution" within a defined community may complain about a domain applied for which may be targeted at such community if a significant part of that community substantially objects to the application. The draft guidebook contains a long description of the proposed procedure to be followed if objections are raised to top-level domain applications. The procedure will involve arbitration with set rules similar to a UDRP arbitration that is operated by one of a number of providers (e.g. WIPO). The cost of the procedure is not outlined in the draft guidebook, but it is proposed that String Confusion and Legal Rights Objections should be dealt with by the arbitration provider for payment of a fixed fee, and other Objections should be dealt with for payment of an hourly rate. There is no procedure proposed to notify brand owners if a top-level domain is applied for which features a registered trade mark. As a result, brand owners will need proactively to monitor ICANN's website to see the applications that have been made. There is only a limited time period proposed in the guidebook during which objections may be made to applications. It is therefore very important that brand owners wishing to object to applications do so within the required time period. Otherwise, costly court action might be the only remedy available to brand owners after the new top-level domain is approved. Further information about the proposals may be seen on ICANN's website.

Congress Gets Tough On Intellectual Property [United States]

2008-10-01T01:28:00.000-07:00

Lawmakers have approved sweeping legislation that is designed to bolster the federal government's ability to protect patents, trademarks, and other intellectual property (IP). The bipartisan legislation, the Prioritizing Resources & Organization for Intellectual Property Act (S. 3325), passed the Senate by unanimous consent on Sept. 26 and cleared the House by a vote of 381-41 two days later.

The bill significantly toughens civil and criminal laws against counterfeiting and piracy, provides law enforcement agencies with increased funding for investigations and prosecutions, and creates a new White House office of IP enforcement coordinator.

"IP makes up some of the most valuable and most vulnerable property we have," Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) said in a statement. "We need to do more to protect it from theft and abuse if we hope to continue being a world leader in innovation."

The bill is strongly supported by pharmaceutical companies, manufacturers, and others in the business community. "This is a win for both parties and, more important, for America's innovators, workers whose jobs rely on IP, and consumers who depend on safe and effective products," U.S. Chamber of Commerce President and Chief Executive Officer Thomas J. Donohue says.

It's unclear whether President George W. Bush will sign the legislation into law because the Administration opposes the provision that creates a new Cabinet-level post for IP coordination. According to the bill, the IP coordinator will be chair of an interagency committee tasked with devising a worldwide strategic plan to combat piracy and counterfeiting. However, in a joint letter sent to the leaders of the Senate Judiciary Committee on Sept. 23, the Justice and Commerce Departments says the establishment of an IP coordinator within the Executive Office of the President (EOP) is "objectionable" on constitutional grounds as a violation of separation of powers.

"While the Administration has been a longtime supporter of strong inter-agency coordination...the statutory creation of an EOP coordinator with the duties described in the bill constitutes a legislative intrusion into the internal structure and composition of the President's Administration," the letter states.

India - United States - Copyright Treaty [Intellectual Property]

2008-09-11T08:32:00.001-07:00

Protections granted under the Indian Copyright Act apply to U.S. citizens just as it applies to Indian nationals. The current Indian Copyright Act entered into force in 1957 but it is based on the 1911 Copyright Act, which in turn was based on United Kingdom copyright laws. Traditional international copyright principles are part of the Indian copyright legislation. For instance, India grants automatic copyright protection (no registration is required) to literary, dramatic, musical and artistic works, computer software, and cinematograph films and sound recordings for sixty years- some term variations apply. Even though copyrights are automatic, authors may register their works in the Copyrights Register maintained by the Copyright Office of the Department of Education. Ideas are not protected under Indian copyright law nor are titles or names, short word combinations, slogans, short phrases, methods, news, and plots or factual information. To receive protection, works must be original; the joint authorship concept is recognized; and copyrights may be assigned for 5 year if no other time-limit is set. Usually, the author is the owner of the copyrighted work; the government is considered the author of government works. An author is the creator, composer, producer, or photographer -depending on the case, - of the work. In the case of employment-related works under contract of service or apprenticeships, the employer will be the copyright owner unless otherwise provided. Translations are afforded copyright protection just as the original work provided that they are authorized by the author of the original work. Computer programs are protected under Indian law as literary works, and their authors enjoy the right to sell, offer to sell, or give on hire "regardless of whether such a copy has been sold or given on hire on earlier occasion." In general, foreign works mentioned on the International Copyright Order are protected in India as well.

As opposed to the U.S., India grants protection of moral rights. This means, infringement exists when a copyrighted work is distorted, mutilated, modified and these or similar acts affect the author's honor or reputation. Moral rights remain with the author even after the author's death or assignment of the work.

India is signatory to the following international copyright agreements- this means U.S. citizens enjoy the rights and privileges afforded by these international agreements adopted by the Indian legislature,- (a) the Berne Convention for the Protection of Literary and Artistic works; (b) the Universal Copyright Convention; (c) the Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of their Phonograms; (d) Multilateral Convention for the Avoidance of Double Taxation of Copyright Royalties; and (e) the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement.

Indian International Copyright Order grants protection to foreign works from the following 116 countries. Indian protection of foreign works from these countries is relevant for U.S. businesses registered under the laws of any of them. E.g. if a U.S. business registered in St. Kitts & Nevis produces a copyrighted work and outsources some activity related to this work to India, India is going to protect that work as a foreign work. The International Copyright Order includes Albania, Argentina, Australia, Austria, Bahamas, Bahrain, Barbados, Belarus, Benin, Bolivia, Bosnia & Herzogovina, Botswana, Brazil, Bulgaria, Burkina Faso, Cameroon, Cape Verde, Central African Republic, Chile, China, Colombia, Congo, Costa Rica , Cote d'Ivoire, Croatia , Cuba, Cyprus, Czech Republic, Democratic Republic of the Congo, Denmark, Dominican Republic, Ecuador, Egypt, El Salvador, Equatorial Guinea, Estonia, Finland, France, Gabon, Gambia, Georgia, Germany, Ghana, Greece, Guatemala, Guinea, Guinea-Bissau, Guyana, Haiti, Holy See, Honduras ,Hungary, Iceland, Indonesia, Italy, Jamaica, Japan, Kenya, Latvia, Lesotho, Liberia, Libya, Lithuania , Luxembourg, Malawi, Malaysia, Mali, Malta, Mauritania, Mauritius, Mexico, Monaco, Mongolia, Morocco, Namibia, Netherlands, Niger, Nigeria, Norway, Panama, Paraguay, Peru, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova, Russian Federation, Rwanda, Saint Kitts & Nevis, Saint Lucia, Saint Vincent and the Grenadines, Senegal, Slovakia, Slovenia, South Africa, Spain, Sri Lanka, Suriname ,Sweden, Switzerland, Thailand, The Former Yugoslavia Republic of Macedonia, Togo, Trinidad and Tobago, Tunisia, Turkey, Ukraine, United Kingdom, United Republic of Tanzania, United States of America, Uruguay, Venezuela, Yugoslavia, Zambia, Zimbabwe.

Mattel blocks 'Scrabulous' in India [Intellectual Property]

2008-09-08T00:18:00.000-07:00

The networking site, Facebook, has restricted the popular “add-on” application, ‘Scrabulous’ to most users. Mattel Inc. owns Scrabble rights outside Canada and the United States of America and had approached the Indian courts in February 2008, seeking an order for taking down Scrabulous from Facebook and other servers.

The brothers, Rajat and Jayant Agarwalla, and their web-design and technology company, R J Software, were previously served a lawsuit by game-making giant Hasbro Inc., owner of Scrabble rights in Canada and the U.S. , at a New York federal court for violating its copyright and trademarks. Hasbro also sent a notice demanding that Facebook remove the application from the site. “Facebook took the unfortunate decision to restrict most users from accessing Scrabulous on August 22, in response to a ‘take down notice’ from Mattel on August 14,” said Mr. Jayant.

Mr. Jayant said, “The High Court had reserved judgement in this matter after hearing both parties. It surprises us that Mattel chose to direct Facebook to take down Scrabulous without waiting for the High Court’s decision.” He also sounded disappointed with Facebook as he said, “It is even more astonishing that Facebook, which claims to be fair and neutral party, took the step even though they were fully aware of the circumstances under which the Mattel letter was sent.”

“We now await the decision of the High Court and shall accordingly decide our future course of action regarding Scrabulous,” Mr. Jayant asserted.

First Arab Satellite Channel On IP Rights Launched In Egypt

2008-07-31T03:52:00.000-07:00

In a bid to promote awareness of intellectual property rights issues and provide information about IP in the Arab world, the first dedicated IP Arab satellite channel has been launched.
Based in Smart Village in Cairo with offices in most major cities of the world, the first independent IPR satellite channel will have exclusive programmes that tackle IPR issues regionally and globally.

The new channel, launched on 7 July and reporting in both Arabic and English, will broadcast on NileSat.

‘The idea behind establishing a satellite channel dedicated to IP rights is to strengthen awareness in IP issues and give a clearer image of the IP situation in the Arab world. The new satellite channel is intended to a credible source of information that satisfies the growing interest in issues relating to IP. It will also contribute to the promotion of IP awareness in the region and around the world,” said Talal Abu-Ghazaleh, chairman of the Talal Abu-Ghazaleh organisation, an Arab organisation for global professional services including intellectual property rights. Abu-Ghazaleh is owner of the new channel.

In 2004, Abu-Ghazaleh launched a one-of-a-kind project, the ag-IP-news agency, a specialised global intellectual property news agency.

Hasbro takes Facebook game Scrabulous to C-O-U-R-T [United States]

2008-07-28T22:51:00.000-07:00

Game-making giant Hasbro has filed a lawsuit against Scrabble knock-off Scrabulous and sent a notice demanding Facebook remove the popular game from the social-networking website.
Scrabulous.com was launched by brothers Rajat and Jayant Agarwalla in India in 2005 and rocketed to popularity as a free "add-on" application for Facebook, where more than 500,000 people reportedly play the online word game daily.

Toy and game manufacturers Hasbro and Mattel, which share ownership of the Scrabble trademark, asked Facebook in January to remove the renegade online version of its game from the website.

On Thursday, Hasbro presented the request to Facebook in the form of a demand backed by US law regarding copyright infringement on the Internet.

Hasbro also filed a lawsuit against Scrabulous and the Agarwalla brothers in federal district court in New York. "Facebook has tried to use its status as neutral platform provider to help the parties come to an amicable agreement," the California-based website said in response to an AFP inquiry. "We're disappointed that Hasbro has sought to draw us into their dispute; nevertheless, we have forwarded their concerns to Scrabulous and requested their appropriate response."

The lawsuit is weak leverage against the brothers, since Scrabulous lists no assets in the United States and a court decision here would need backing by India's legal system to be enforced. "Our hope and expectation is that the parties can resolve their disagreements in a manner that satisfies the parties, that continues to offer a great experience to gamers and that doesn't discourage other developers from using our platform to share creativity and test new ideas," Facebook said.

The Agarwallas have said in public reports that they expect fans to remain loyal to Scrabulous, from which the siblings earn advertising revenues. Filing of the civil suit comes a week after videogame colossus Electronic Arts released, with Hasbro's blessing, a free online Scrabble game customized for Facebook websites in the United States and Canada.

Nobel laureate criticises intellectual property rights system [International]

2008-07-27T23:10:00.000-07:00

US economist Joseph Stiglitz has warned that intellectual property rights are stifling innovation. According to the Intellectual Property Watch news service, the professor, who was awarded a 2001 Nobel Prize in Economic Sciences for his work on the relationship of information and markets, said at the opening of Manchester University's Institute for Science, Ethics and Innovation on Saturday that the intellectual property rights regime "closes down access to knowledge". It was clear, he said, that specific restrictions applied particularly in the patent system.

Stiglitz criticised the current approach of treating copyright and patent rights as "intellectual property". Intellectual property, he insisted, is public property and not something to be "owned". It is difficult to prevent others from enjoying its benefits, he said, because it is fundamentally different to, and should not be compared to, the ownership of physical property. This approach creates monopoly power over knowledge that is often abused. Stiglitz gave as an example the current "patent thicket" in software, which results in anyone who writes a successful software program being sued for alleged patent infringements.

Another problem Stiglitz highlighted was that "the social returns from innovation do not accord with the private returns associated with the patent system. The marginal benefit from innovation is that an idea may become available sooner than it might have. But the person who secures the patent on it wins a long-term monopoly, creating a gap between private and social returns". The system is widening the gap between developed countries and developing countries, claimed Stiglitz, who is also known as a critic of globalisation. Medical care in threshold countries is suffering because patent rights are preventing the production of cheaper generic medicines.

The Nobel Prize winner does not believe that the patent system should be abandoned altogether, but sees a possible solution in restricting property rights to defined, tangible areas as well as to specific countries. Tools such as prizes or government funding could be used to promote access to knowledge and spur innovation in areas where there are well-defined objectives - such as a cure for malaria. John Sulston, a Nobel Laureate in medicine, shares Stiglitz's concerns. He expressed his apprehension about the continued trend towards the private ownership of science and innovation, which was funnelling research into areas that were particularly profitable whilst areas less likely to make money were being ignored. IP is an ideological issue in quarters such as the WIPO (World Intellectual Property Organization), Sulston said. Drug companies see any improvements to the patent system as weakening it, but they forget that the system should be a “good servant” - and not elevated to a “theistic level".

In its latest annual report (PDF file), the International Chamber of Commerce (ICC) has now called for the business community to clarify the mechanisms of intellectual property rights for the benefit of the general public. The growing "politicisation" of the patent system and enforcement of copyright is bound to cause concern on the part of those who do not understand the system. The report says that business must focus greater attention on putting forward the very arguments that Stiglitz rejects, namely that commercial copyright not only encourages research and development but it also promotes transparency and the dissemination of knowledge.

WTO Ministerial Meeting: IP Compromise Remains Elusive

2008-07-27T23:07:00.000-07:00

Compromise on intellectual property issues remained elusive at last week’s World Trade Organization ministerial meeting. An initial statement by the European Union initially identified GIs as a "poltical must have," along with agriculture, non-agricultural market access, and services. However, the US later announced that it does not intend to engage in negotiations on GI extension. "These TRIPS issues are important to many members, but we think it's vital to keep the focus of this meeting on agriculture, (manufactured goods), services. This meeting is not the time to create new mandates on the TRIPS issues," a spokesperson for US Trade Representative Susan Schwab reportedly said at a press briefing on 22 July.

Norwegian Foreign Minister Jonas Støre is continuing informal consultations on three intellectual property issues: 1) the multilateral register for wines’ and spirits’ geographical indications (GIs), 2) extending geographical indications protection beyond wines and spirits (“GI extension”), and 3) proposals to require patent applicants to disclose the origin of genetic material and traditional knowledge. Støre told Intellectual Property Watch late Thursday that movement on these issues would depend on progress on agriculture and non-agricultural market access.

The WTO's goal for this so-called "July 2008 package" was to agree on “modalities” in agriculture and non-agricultural market access (NAMA) — ie, the formulas and other methods to be used to cut tariffs and agricultural subsidies, and a range of related provisions — and to look at the next steps in concluding the Doha round of negotiations.

Free Japanese Patent Machine Translation Service

2008-07-25T00:57:00.001-07:00

You can obtain English machine-translations for Japanese patent and utility model documents from 1993 onwards on the Japan Patent Office's free-of-charge "IPDL" (Industrial Property Digital Library) internet service at http://www.ipdl.inpit.go.jp/homepg_e.ipdl.

From the IPDL homepage, choose the "Patent & Utility Model Gazette DB" link. A simple number search will - as a first search result – return the PAJ English abstract, where available. Clicking the "Detail" button on the top of the result screen will start the machine-translation of the original Japanese unexamined application. Alternatively, clicking the "Japanese" button will display the original Japanese document. In cases where no PAJ English abstracts exist you will immediately get the machine-translation from the Japanese.

See the screenshots at http://www.jpo.go.jp/torikumi_e/hiroba_e/paj_15.htm

You can also try Yahoo! Babel Fish - Text Translation and Web Page Translation

LexisNexis offers a fee-based English machine translation service of Japanese patent documents "in minutes" at $39 per translated document (regardless of length).

Free Chinese Patent Machine Translation (CPMT) Service

2008-07-25T00:55:00.000-07:00

The CPMT service is integrated with an English search interface and can be used for obtaining the English full text (including claims and specification) from a searched result (by previous human translation).

See the screenshots at http://www.cnpat.com.cn/430homepage/guidehome.html and then start by choosing “Patent Search and Machine Translation” from the homepage of China Patent Information Center (CPIC) at http://www.cnpat.com.cn/.

U.S. Copyright Office Offers Online Registrations

2008-07-25T00:54:00.000-07:00

Beginning July 1, 2008, the Copyright Office is offering online registration of claims to copyright. Online registration through the electronic Copyright Office (eCO) is the preferred way to register basic claims for literary works; visual arts works; performing arts works, including motion pictures; sound recordings; and single serials. Advantages of online filing include a lower filing fee; the fastest processing time; online status tracking of your claim; secure payment by credit or debit card, electronic check, or Copyright Office deposit account; and the ability to upload certain categories of deposits directly into eCO as electronic files. To register your claim electronically, go to the Copyright Office website at http://www.copyright.gov/ and click on the eCO logo.

Foreign Outsourcing of Application Preparation May Require Export Administration Review [US}

2008-07-25T00:50:00.000-07:00

According to the USPTO on July 23, 2008, applicants and registered patent practitioners are reminded that the export of subject matter abroad pursuant to a license from the United States Patent andTrademark Office (USPTO), such as a foreign filing license, is limited to purposes related to the filing of foreign patent applications. Applicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the United States should contact the Bureau of Industry and Security (BIS) at the Department of Commerce for the appropriate clearances.

If an invention was made in the United States, technical data in the form of a patent application, or in any form, can only be exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application, after compliance with the Export Administration Regulations (governing exports of dual-use commodities, software, and technology, including technical data, which are codified at 15 CFR Parts 730–774) or following the appropriate USPTO foreign filing license procedure. See 37 CFR 5.11(c). A foreign filing license from the USPTO does not authorize the exporting of subject matter abroad for the preparation of patent applications to be filed in the United States.

Information regarding the EAR may be obtained from the BIS Web site at http://www.bis.doc.gov. Questions regarding the EAR should be directed to the BIS’s Outreach and Educational Services Division at (202) 482–4811.

Author's estate wins battle of Narnia domain name [UK]

2008-07-25T00:42:00.000-07:00

A couple who bought a web domain name as a birthday present for their 11-year-old son have lost a battle with the estate of C.S. Lewis to keep it. Richard and Gillian Saville-Smith, from Edinburgh, paid £70 for the name www.narnia.mobi in September 2006 so that their son Comrie, who is a fan of C.S. Lewis, could use it as an e-mail address. The author's estate lodged a complaint with the World Intellectual Property Organisation, which ruled yesterday that the domain name should be transferred.

Companies had a three-month period in 2006 to express interest in .mobi website names before they became more widely available. The couple bought the Narnia name, along with a number of others, including The Queen.mobi and USPresident.mobi, “just for fun”.

Domain name disputes focus partly on whether a “cybersquatter” is using the site for commercial gain and whether trademarks are involved. Mr Saville-Smith claimed yesterday that he had done nothing at all with the site and had not tried to make any money from it.

Same script, 2 films: Big B movie caught in legal row [India]

2008-07-23T00:29:00.000-07:00

Percept Picture Company has brought an injunction against UTV Motion Pictures, alleging that the idea of Shoojit Sircar's Shoebite was earlier sold to them as Johny Walker with Big B in the lead. But UTV representatives said they had not received any injunction order yet.

Shailendra Singh of Percept said, "We were to make Johny Walker with Amitabh Bachchan and Shoojit Sircar. Bachchan was even paid a signing amount but we couldn't manage to get the shooting dates and so the project was put on hold. We were very excited about the film, dealing with a pan-India subject, and our company even did a reconnaissance for it." Bachchan apparently even returned the signing amount to Percept and the whole matter was put behind by the company till it saw some promotional material of a film titled Shoebite, with Bachchan and Sarika in the lead. "A red alarm went off in my head," Singh said. "I realised that Shoebite looked identical to our film, Johny Walker." Singh said he tried calling UTV's Ronnie Screwvala but failed. Meanwhile, Percept gathered evidence to try and prove that Sircar had sold the same subject to UTV. Percept then did what it thought was correct; it took the matter to court. The official release from Percept Holdings said, "Percept approached the Delhi high court to protect its intellectual property in the script, Johny Walker, which has been registered. Counsel Rajiv Nayyar, instructed by Ameet Naik of Naik, Naik and Company, and Rishi Agarwal appeared for Percept. The Delhi high court was prima facie convinced that Shoojit Sircar disregarded the terms of his engagement with Percept and was making the Amitabh Bachchan-starrer, Shoebite, with UTV based on Percept's script. The high court granted an injunction, restraining UTV from infringing on Percept's copyright in the script and dialogue of the film, Johny Walker, in any manner, including by making the film, Shoebite, based on the script." It is an ex-parte injunction and a notice has been issued to UTV and Sircar. The court will next hear the matter on September 3. Trade reports say Shoebite is almost 60% complete, having finished schedules in Shimla and Nashik. UTV said it had not received any injunction order while Sircar remained unavailable for comment. Singh and Percept are, however, adamant that UTV will not be able to continue with the shooting/trading of Shoebite till the legal issues are sorted out. But what is the film, Shoebite, about?

Bachchan has written on his blog, "The film is a glimpse into the life of 60-year-old bookstore owner John Pereira, a man like most married men, who takes his wife of 40 years, Aditi, somewhat for granted. His entire world, however, turns upside down the day Aditi meets with a near-fatal accident and falls into deep coma. Sitting there by the side of her inert form, John decides to do something for her as an act of penance. Something extraordinary."

WIPO for private-public role to fight software piracy in India

2008-07-23T00:26:00.000-07:00

The World Intellectual Property Organisation (WIPO), a specialised agency of UN, has said that the best solution to stop the software piracy in India, which has reportedly led to a loss of about two billion dollars in revenue last year, is public-private coordination.

Software piracy is a huge problem in India. As a result of which many global computer giants are facing the heat worldwide. The best possible way to put an end to software piracy in India is a close coordinated scheme between private and public sectors in the country, Director of Copyright Law at WIPO Jorgen Blomgvist told PTI.

A study by the Business Software Alliance (BSA), an international association representing the global software industry, in May showed that computer software piracy rates in India registered huge monetary losses in 2007.

Talks But No Breakthroughs Yet On IP Issues For Ministers At WTO [International]

2008-07-23T00:23:00.000-07:00

Intellectual property issues have been a topic of debate at the World Trade Organization ministerial negotiations since Friday and while there have been no changes in positions there has been some talk of looking for compromises, according to sources attending the event. Ministers from some IP-proponent countries raised the issues as critical to the heads of delegation meeting on Monday, the first day of the mini-ministerial in Geneva, while opponents held a meeting of like-minded countries reinforcing their position against the inclusion of IP issues in the talks, sources said.

WTO Director General Pascal Lamy began on Friday to talk with officials about IP issues in an attempt to find a way to navigate the standstill on them, sources said. Lamy held meetings on Friday, Saturday and Sunday, they said. However, on Monday evening, the issue was not a primary topic of the Green Room meeting, the smaller, closed gathering held in Lamy’s office. The ministerial is scheduled to run from 21-27 July.

The focus in the next few days is expected to be squarely on the issues of agriculture and non-agricultural market access (NAMA) before IP issues become critical, if at all, according to several sources. But the outcome of the mini-ministerial (about 40 of the WTO’s 153 members) will be tied to addressing demands from the European Union, Switzerland, India, Brazil and others on issues related to intellectual property and trade.

The IP issues are: the creation of a mandated register on geographical indications - product names associated with a place and characteristics - for wines and spirits; extension to other products of the higher-level GI protections currently enjoyed by wines and spirits; and an amendment to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) to require the disclosure of origin of traditional knowledge and genetic material in patent applications, intended to bring TRIPS in line with the UN Convention on Biological Diversity (CBD).

A draft modalities text has been prepared by proponents, claiming support from a majority - over 100 - of WTO members (IPW, WTO/TRIPS, 18 July 2008). The text, TN/C/W/52, is now posted as a document to the WTO website. The opponents’ longstanding position favouring a voluntary register and database for consultation, referred to as the joint proposal, has been submitted again and posted as document TN/IP/W/10/rev.1.

A possible split in the IP issues may have been suggested by Lamy, according to sources. It generally has been the view that the GI register and the CBD amendment might have more middle ground for negotiating, while the GI extension might be more two-dimensional, sources said.

But such a split would not be acceptable to IP proponents, an official from a proponent country said. And the opponents’ meeting on Monday, which included countries such as Australia, Chile, Costa Rica, Mexico, New Zealand and the United States, reconfirmed the view that none of these issues should be discussed this week, according to a participant.

Cybersquatting: Don’t let your IP slip through the net

2008-07-21T04:46:00.000-07:00

Cybersquatting is the practice of registering domain names incorporating trade marks of third party companies and then trying to sell the domain name back (for a handsome profit) to the trade mark proprietor. It's not going away - it's growing and it's a huge problem for trade mark proprietors.

The number of domain name disputes lodged in terms of the Uniform Domain Name Dispute Resolution Procedure (UDRP) that applies to .com, .net and .org domain names increased by 18% in 2007 compared to the number filed in 2006 and by 48% versus the number lodged in 2005.

The increase can be attributed to:
The rise of "pay-per-click" advertising, whereby cybersquatters associate the domain name they have registered with a website containing adverts promoting a variety of competing brands. Every time Internet users access this website and click on one of the adverts, the cybersquatter receives money.
Domain tasting, whereby cybersquatters register a number of domain names and then wait several days before paying for the domain names. They then count the domain names that attract the most Internet users and then pay for only for those. The remaining domain names are then deleted. Problem is, in the period between the cybersquatter registering and paying (or does not pay) for the domain name, it is reflected as being registered.
The use of privacy services by cybersquatters, who are thereby able to register domain names without revealing their identity to the general public. Cybersquatters can thus remain anonymous while trade mark proprietors must go to great lengths to establish the cybersquatter's identity.

There are a number of steps that companies can take to combat cybersquatting, the most important of which is to develop a domain name registration and conflict policy.

Such a policy would clearly identify relevant criteria to determine which domain names should be registered, whose responsibility it is to administer them and in which countries they should be registered.

As a general rule, companies should ensure that companies register their trade marks and trading names in the countries in which they trade, thereby preventing third parties from launching a website to sell competing goods and services under a domain name identical to a company's trade marks and trading names.

Not only should a company continually ensure that its most important trade marks and trading names are registered as domain names, but it should continually monitor what domain names have been registered that incorporate its trade marks and trading names.

In short, companies must monitor the domain name space to check what domain names have been registered that might incorporate their trade marks and domain names.

Internet domains to open up, prepare for .whatever [International]

2008-07-21T04:40:00.000-07:00

"Dot-com," the ubiquitous term that has come to serve as a description for all things Internet-related, could be in the sunset of its heyday following a key decision on domain names.
The Internet Corporation for Assigned Names and Numbers, or Icann -- the body that regulates the Internet, voted unanimously on Thursday to ease up restrictions on domain names such as .com or .net.

The decision, made on the final day of week-long meetings in Paris, could trigger a frenzy of bidding as companies rush to claim domains like .investment or .travel. In fact almost anything could become a web address under the new rules -- from personal names to trademarked brands for major corporations. Be prepared for .news, .startrekfans and .somethinginappropriate.

Bidding wars for domain names are expected to reach well in the six-figures. "You can pretty much guarantee, unfortunately, (that) the most sought after one will probably be .sex," Bryan Glick of Computing Magazine said. Although, that could mean pornographic sites would move to their own neighbourhood on the web, making it more difficult to unintentionally stumble onto naughty sites. Individuals could get domains named after themselves so long as they could prove they have a business plan and "technical capacity" according to the plans for the system.
However, companies with intellectual property linked to a specific name will have first dibs on their own domain, like .ctv, for example. The new rules would mark a historic change from the current system where only .com, .net, .edu or .org are permitted, in addition to country domains like .ca or .au.
The new system could be in place as early as next year, but many details have to be worked out first.

Aslan et al take on Edinburgh couple for Narnia.mobi [UK]

2008-07-21T04:38:00.000-07:00

A major test case on internet names is due to be resolved – with the couple who bought narnia.mobi taking on the company that owns the rights to CS Lewis' world-famous books. CS Lewis (Pte) Ltd contests that Richard and Gillian Saville-Smith are essentially cybersquatting by owning the domain – which they say they bought for their 11-year-old son Comrie.

"We were saving it as a surprise for our little boy's birthday – to coincide with the release of the new Narnia film – so that he could have one of the coolest email addresses in the world!" poet Mrs Saville-Smith told the BBC.

The domain was bought back in 2006, when the new .mobi domains came in and the case is being investigated by the World Intellectual Property Organisation (WIPO). CS Lewis (Pte) Ltd has insisted that Mr and Mrs Saville-Smith have been using the domain in 'bad faith' to make money, a claim which the couple, from Edinburgh, deny.

Artists' Resale Right in the News [United Kingdom]

2008-07-14T23:15:00.000-07:00

The Artists' Resale Right hit the news again recently thanks to a letter to The Telegraph from a host of prominent British contemporary artists (including Damien Hirst) calling for the right to be extended to the estates of deceased artists.

Introduced two years ago, the right gives living artists a 4% slice of any sale proceeds when their work is resold later in their career. Though the drop-off in the London art market predicted by auction houses when the levy was introduced does not appear to have hit the fortunes of Sotheby's et al, this interesting piece from The Economist underlines some of the drawbacks of the resale right as well as its advantages.

Angiotech win boosts firms looking for patent protection in UK [Patent Law]

2008-07-14T23:13:00.001-07:00

A decision by the House of Lords backing Angiotech Pharmaceuticals in a dispute with Conor MedSystems is being hailed as a groundbreaking decision that will make it easier for pharmaceutical firms to get patent protection in the UK.

According to Canada-based Angiotech, the Lords confirmed, “in a precedent-setting decision”, the validity of one of the firm’s patents related to its paclitaxel coated stents. The patent in question was granted in June 1997 and opposed by Conor and four other companies but after more than “nine years of legal battles, their challenge proved unsuccessful and the validity of the patent was maintained,” Angiotech notes. Then, in February 2005, Angiotech brought a lawsuit against Conor in the Netherlands and the latter responded by commencing proceedings in the UK to revoke the patent. Conor argued that the claims in the patent lacked “inventive step” (ie, were obvious) under UK law. Both the UK trial court and the UK Court of Appeal decided that the patent was indeed invalid so Angiotech appealed to the House of Lords which has upheld the validity of its patent and agreed with the Dutch court’s earlier decision that clarifies the obviousness standard in relation to innovations. Commenting on the case, Sue Streatfield, an intellectual property specialist at law firm Eversheds, said it could lead to “a lowering of the current threshold for achieving inventive step”. She noted that Lord Hoffman found that the test for the latter is to be determined by whether the product is obvious not whether it has the claimed effect. Therefore, “so long as a patent is sufficient, the test should not be affected by the amount of evidence the specification contains as to whether the invention will work,” Ms Streatfield added. The House of Lords decision, which was unanimous, reflects “an important development in bringing uniformity to the interpretation” across Europe, Angiotech added.

India's first IP auction symposium held [India]

2008-07-08T02:28:00.000-07:00

CPA, the world's top intellectual property (IP) management specialist and the leading provider of outsourced legal support services, in conjunction with Ocean Tomo, hosted India's first ever "Live Intellectual Property Auction - Asian Simulcast and Symposium" in Bangalore, recently.

Nearly 65 lots of IP assets were offered for sale in 20 categories including smart cards, manufacturing and automation, online and mobile commerce, lighting technology, telemedicine, computer systems and software, digital media systems, domain names, security and authentication systems, messaging and electronics and handheld devices. Total sales for the live auction conducted in Amsterdam came to USD $12.6 Million (INR 544 Crore), including buyers premium.

Bhaskar Bagchi, Country Head, CPA, India, said, "The Simulcast and Symposium gave us a fantastic opportunity to showcase the importance of making IP a readily usable business asset and provided us with a platform to pull together organisations and thought leaders to think about the future of IP. Working hand-in-hand with Ocean Tomo to deliver such a momentous event further validates our commitment to help corporations carefully manage, maximize and understand their patent portfolio."

The symposium attracted participants from academia, government, large corporations and SMEs and also featured prominent speakers and senior IP professionals addressing the importance of India as a global player in the IP marketplace.

Dipanjan Nag, director, Ocean Tomo, said, "This is the first time that we have organised such an event in India and the support has been overwhelming. Our associations with bodies and organizations such as the Department of Industrial Policy & Promotion (DIPP), Department of Information Technology and CPA will help us reach our goals of introducing a forum for facilitating the open and public exchange of Intellectual Property."

Indian tech firms eye semi IP business [India]

2008-07-08T02:25:00.000-07:00

Indian technology companies facing cost pressures from a global economic slump and domestic competition are seeking a way out by boosting R&D investments to develop semiconductor intellectual property.

Ittiam Systems and Cosmic Circuits are pursuing the pure IP route, having rejected the services business; service providers Wipro and Mindtree are now developing chip IP and are using it to attract new services around their IP products.

Ittiam Systems is India's largest pure IP company, focusing on advanced media communication applications for which software solutions are either unavailable or too expensive. Its IP includes synthesizable RTL cores that can be integrating into an ASIC being designed by its customers.

In 2005, Ittiam began investing in multi-format high-definition video decoder IP. The video decoder can handle most video standards, enabling SoCs for HDTV and HD-DVD applications," said Srini Rajam, Ittiam's chairman and CEO.

"Venture funds and investors believe that IP companies cannot scale in revenue," said Ganapathy Subramaniam, CEO of Cosmic Circuits, an analog semiconductor IP company. "ARM and Rambus have proven them wrong. But it is also a fact that while there are many IP companies in the world, only very few of them have been able to scale in revenue."

Cosmic has created over 75 analog IP cores for portable power management, video analog front-end, WLAN and WiMax analog front-ends. The company works with more than 10 foundries to create IP cores from 0.35 nm to 65 nm.

"India is slowly emerging from services and getting into the business model of licensing IPs," Subramaniam added. Market researcher Gartner Inc. ranks Wipro-NewLogic as the leading global provider of WLAN and Bluetooth IP, estimating that it holds two-thirds of the global market for IEEE 1394 IP cores. Wipro's chip IP arm is focusing on wireless and wireline connectivity.

"Developing IP is an important differentiation for the leading design service houses and...wireless communication, analog components and DSP-based IPs are the areas of promise for Indian companies," said A. Vasudevan, vice president of semiconductor and system solutions at Wipro Technologies.

Mindtree Ltd., which specializes in short-range wireless technologies, said it is focusing on Bluetooth IP. It has invested in ultrawideband technology, and plans to offer UWB IP in future products, according to S.N. Padmanabhan, senior vice president for semiconductors at Mindtree.
Mindtree also has several peripheral IP blocks usually bundled with the Bluetooth or UWB products. "The entry barrier is very low if someone has to build synthesizable IP at the RTL level," Padmanabhan said. "The semiconductor industry needs various IPs [and] smaller players can provide small, standards-based, popular IP blocks." Building IP blocks is the easy part, he added, noting that "marketing them is the toughest."

Sridhar Mitta, who headed Wipro's unsuccessful IP startup EnThink, acknowledged that India's track record for IP development is not good. "The [lessons] of EnThink are that product or IP companies will not get attention in large service companies," he said. "Indian companies will see IP business as an adjunct to their service businesses."

Matta said the best opportunities for Indian success in IP development are in volume markets like PCs or cellphones. Adopting standards and creating new ones will also boost India's IP efforts.

Gartner forecasts that Indian IP development will be dominated by big chip makers here as well as independent IP providers. "Some of the independent Indian IP providers are Wipro, Cosmic Circuits, Mindtree and HelloSoft," said Ganesh Ramamoorthy, Gartners' principal research analyst for semiconductor IP and design.

Big retailers at loggerheads with MNCs over brands [India]

2008-07-08T02:23:00.000-07:00

serious conflict is brewing between Indian retailers and multinationals over imports of global brands. To stay afloat in the dog-eat-dog world of retail, local retailers have reached arrangements with overseas players to bring in some international brands, rattling many MNCs who manufacture or market these products locally. In some cases, these brands have not yet been introduced in India. Several major MNCs with a long presence in India are invoking the Intellectual Property Rights (imported goods) Enforcement Rules 2007 to stop retailers from importing foreign brands. Hindustan Unilever, L’Oreal, Lancome Perfumes, Oakley Inc, Nivea and Mico have already registered several brands with the Customs department. Sources said other MNCs are expected to follow suit. Market circles perceive this as a move to prevent Indian retailers from getting first access to these brands. Some of the retailers are debating plans to legally contest the move, since they possess a free sale certificate from the source of import. Retailers like Big Bazaar & Food Bazaar, Reliance Retail, Spencer’s and Sankalp Retail (MyDollarStore), among others, have begun importing sizeable consignments of leading consumer brands and their variants for better fill rates, product variety and higher margins.

However, the multinationals are not amused, and claim that it leads to loss of business opportunity, unfair competition and product cannibalisation. The fundamental issue here, according to analysts, is that the Indian arms of the leading FMCG companies would like to control the way their brands are marketed and sold. They would also like to determine when new products and variants of existing products should be introduced in India. Retailers sourcing directly from abroad disrupt the extent of control the FMCG companies can wield. The legal issue is whether IPR rules can be used to block such imports. The Customs department has the right to confiscate consignments and alert the owner of the IPR — which could be a trademark, design or patent. The 2007 rules are intended to protect IPR owners from violations of intellectual property by way of import of goods.

Virtual bites: Digital piracy and Bollywood [India]

2008-07-08T02:19:00.000-07:00

On a trip to Helsinki in Finland, Rajjat Barjatya stumbled upon 15,000 Indian families who had regular access to Bollywood movies even when no production house was distributing them there.
"The families were paying monthly rent to a website that delivered the latest pirated Bollywood content," says Barjatya, who figured that the Indian entertainment sector was being plagiarised and producers who were spending millions on marketing and publicity were being robbed, virtually.

"There was a huge gap in demand and supply of Bollywood content to NRIs settled all over the globe," adds Barjatya, the managing director of Rajshri Media, the digital arm of Rajshri Productions.

Today, Barjatya is doing a roaring business among the NRI population settled in the US, UK and Canada. Success speaks for Barjatya. Rajshri's blockbuster film Hum Aapke Hain Kaun has been viewed over 500,000 times till date and can be downloaded for $4.99.

The website hosts over 6,000 hours of premium video content, all of which has been licensed from India's leading content owners and can be streamed free, ad-supported and downloaded at a nominal price between $4.99 and $9.99.

Barjatya has also unveiled 90 webisodes and mobisodes, of three minutes each, that will be available for free online streaming and as mobile downloads for Idea subscribers.

Piracy of intellectual property is not new to the media and entertainment sector. However, the scale of the problem is definitely new-fangled. A recent study estimates that the Indian entertainment industry loses $4 billion and more than 800,000 jobs each year because of piracy.
Not ready to give up on digital distribution just yet, entertainment majors such as Rajshri Media, UTV, YashRaj Studios, and Shemaroo Entertainment, among many others, are slowly building their digital roadmaps to tap the 5 million broadband-connected homes in India.

"First with music, and now with movies, as broadband capabilities expand, hundreds of thousands of copies race across the Internet daily, clearly harming producers and legitimate retailers," laments Siddharth Roy Kapur, CEO, UTV Motion Pictures.

In the US, the largest market for both Bollywood and non-Bollywood content, there are about 200,000 Indian millionaires, with some 15 per cent of Silicon Valley start-ups believed to be owned by Indians, according to a report by JPMorgan. UTV, informs Kapur, will look to target the overseas customers first with its digital offering.

Filmed entertainment executives have only to look at the music industry to see the dangers of insufficient action — take digital piracy seriously or lose billions as well as fundamental control of the value chain.

Barjatya probably read the warning signals in 2006. He released Rajshri's film Vivah online back in 2006 expanding his distribution for the 25 million Indians spread across the globe. "Physically reaching so many people is not possible and yet these are affluent NRI households with an appetite for Indian cinema. So, the Internet is the best medium to supply cinema as close to 51 per cent of NRI households have broadband access," mentions Barjatya.

Thanks to broadband penetration, digital theft has become free or costs as much as a writeable CD. Kapur acknowledges and says, "The rising number of user-generated sites like YouTube has made it easier to share videos. We do send notices to websites hosting illegal content and they respond favourably by taking off the content."

But the rising number of video-hosting sites also means that it is virtually impossible to keep track of illegal videos. Even as India's box office revenues are expected to swell up to $7.4 billion by 2010, according to PricewaterhouseCooper estimates, the downloaded content can garner more than $1.4 billion for the producers.

UTV is already rethinking its pricing strategy and release schedules for its online consumer by tightening digital distribution and security to control data leaks.

"We are working with technology companies to develop workable online distribution and rights management systems and to create easy-to-use channels at the right price," he says.

Technology can be a big help for the industry. Rising acceptance of peer-to-peer (P2P) networks among youth allows them access to one anothers' hard drives, enabling files to be freely copied or distributed from one computer to another. P2P networks do not use a central server and hence are difficult to track down, disable or prosecute.

For instance, when The Matrix Reloaded was released, pirates used a file-sharing computer programme called BitTorrent that let digital thieves download films for free within three hours of its release.

Rana Gupta, business head, Safenet, explains, "The impact of such incidents on a film's ultimate box-office and DVD performance is hard to gauge, but the longer you can prevent a scenario like this the better the return on investment for a studio."

Earlier this year, Ratatouille, the animated film from Walt Disney's Pixar, made its way online about 10 days before its release. Safenet's MediaSentry services help the studios in infringement management, early leak identification services, and various business intelligence tools to analyse data online.

"MediaSentry enables content producers to track down websites infringing copyrighted data," Gupta says. Simply put, Safenet's proprietary technology gets the digital addresses of those who download illegal files and this information is given to the Internet service providers (ISPs), which can ask the customer to stop.

Legal action has closed some sites that connect users with pirated movies. Motion Picture Association of America won its battle with TorrentSpy, a peer-to-peer site that is now closed. But Pirate Bay, a similar Sweden-based service, is still running. Pirate Bay creators say it is merely a platform and is neither uploading nor downloading proprietary content.

Back in India, Rajshri Media uses digital media rights (DRM) protection to prevent illegitimate duplication of its content, it isn't exactly foolproof. "We are focusing on bridging the demand gap and haven't really invested in protecting content from bootleggers. But we are evaluating various software techniques to make the Internet a more secure medium of distribution," adds Barjatya. It looks like a long way before Barjatya and Kapur can cast a virtual safety net over their digital assets. No one expects to eliminate piracy. But given that a film's opening weekend often accounts for 60 to 70 per cent of its earnings, every day's delay in the availability of pirated copies can make a big financial difference.

Ebay Ordered to Pay Damages for fakes [International]

2008-07-08T02:14:00.000-07:00

Online auctioneer eBay has been ordered by a French court to pay over $61 million to fashion label - LVMH Moet Hennessy Louis Vuitton SA for selling counterfeit goods on its site. LVMH Moet Hennessy Louis Vuitton SA is home to prestigious brands such as Louis Vuitton, Givenchy, Fendi, Emilio Pucci, and Marc Jacobs. Allegedly, eBay had a sale of Louis Vuitton fakes; LVMH questioned whether the Internet is a free-for-all for the 'most hateful, parasitic practices'. eBay countered saying that LVMH's actions had more to do with protecting uncompetitive commercial practices at the costs of consumer choice and the livelihood of law-abiding sellers empowered by eBay than protesting against counterfeits.

A spokesperson for eBay said the auctioneer plans to appeal the ruling. All said, this isn't the first such instance of eBay having been sued by a luxury brand; past plaintiffs against the online auctioneer include the likes of Tiffany and Company (USA), Montres Rolex SA (Germany), and L'Oreal SA (Europe). eBay is like a magnet for counterfeiters mainly because of the sheer volume of products sold through its auction system as also the difficulty in patrolling fast-moving transactions. And like Google, eBay too relies on intellectual-property (IP) owners to alert the company about suspicious postings/products on its site. Nevertheless, the auctioneer maintains it spends millions of dollars every year trying to clean up fakes from its site.

Tech Giants Band Together to Buy and Sell Patents [International]

2008-07-07T23:54:00.000-07:00

About eight years ago, Nathan Myhrvold, a former Microsoft exec started Intellectual Ventures, a company that amasses patents that it can then license. Several tech giants, including Nokia, Intel, Apple and Sony, invest money in the holding company’s war chest.

Now, several big tech companies are banding together in a slightly different patent-related venture. Verizon, Google and Cisco are among a group of companies joining up to defend themselves against patent-infringement suits by buying up patents before the so-called patent trolls get their hands on them.

Here’s how it works: The venture, called Allied Security Trust, buys patents that others might use to bring infringement claims against its members. Member companies will pay roughly $250,000 to join the group and will each put about $5 million into escrow with the organization, to go toward future patent purchases. Allied Security Trust will sell the patents they acquire after they’ve granted themselves a nonexclusive license to the underlying technology.

Intellectual Ventures: On the Prowl?

2008-07-07T23:48:00.000-07:00

It might be the single company with the most patents that you’ve never heard of: Intellectual Ventures.

The six-year-old enterprise — the subject of a lengthy profile by Intellectual Property Law & Business — is the brainchild of Nathan Myhrvold, the former chief technologist at Microsoft. And its goal is singular: to amass dozens upon dozens of patents that it can license. (Intellectual Ventures claims to have no desire to manufacture or commercialize any products.) In March 2006, Myhrvold penned an opinion piece in the WSJ, “Inventors Have Rights Too.”

How does the company get its patents? Well, it buys a lot of them, with a $400 million war chest provided by a who’s who of tech companies: Nokia, Intel, Apple, Sony, and Microsoft. And according to the story, the secretive venture dreams them up, hiring fleets of consultants to brainstorming sessions on ideas in a variety of industries. Some in the IP asset management field estimate that Intellectual Ventures has amassed 3,000-5,000 patents.

But not everyone’s supportive of the company:
As the patent stockpile grows, so does the speculation–and the fear. IP lawyers and tech executives worry that Intellectual Ventures is less interested in changing the world with big ideas, and more focused on becoming an uber-troll, wreaking litigation havoc across industries with its patents.

The privately held company won’t discuss its finances. But if it doesn’t work out, Myhrvold probably won’t have trouble finding work. According to the story, the 47-year-old gajillionaire holds advanced degrees in theoretical and mathematical physics, mathematical economics, geophysics, and space physics. He studied quantum physics at Cambridge with Stephen Hawking, is a published nature photographer and “has had his state-of-the-art kitchen–and his recipes–featured in New York Times magazine.”

India, China attract clinical outsourcing'

2008-06-30T05:10:00.000-07:00

Cost pressures, the need to tap global talent, and growth opportunities in emerging markets has led Western pharmaceutical companies to shift substantial manufacturing and clinical-trial works to India and China, according to a new study. Big pharmaceutical companies like Merck, Eli Lilly and Johnson and Johnson are now counting these two countries for advanced research and development, the study sponsored by the Ewing Marion Foundation said. Indian and Chinese scientists are rapidly innovating and creating their own intellectual property as a result of Research and Development activities, the report entitled 'The globalization of innovation: Pharmaceuticals. Can India and China Cure the Global Pharmaceutical Market".

In 2006, 5.5% of all global pharmaceutical patent applications (WIPO PCT applications) named one inventor or more were located in India, and 8.4% in China. This had increased fourfold from that in 1995. Through detailed interviews with executives of 16 pharmaceutical firms in China and India on their business models, value-chain activities, partnerships and technology capabilities, the researchers concluded that Indian and Chinese companies are making strides in most of the lucrative segments of global value chains. In less lucrative segments such as preclinical testing, animal experimentation and manufacturing, Chinese firms appear to be more prevalent while India is a more mature venue for chemistry and drug-discovery activities. Domestic Indian and Chinese firms rarely have the capital and the regulatory expertise to develop a drug beyond phase II clinical trials. Their commercial development of new intellectual property therefore necessitates relationships with major multinational corporations.

The study found that India is playing a more strategic role in early discovery and its drug companies have the most experience in selling generic drugs that meet FDA standards. Companies such as Ranbaxy, Aurigene, Advinus, Nicholas Piramal and Jubilant have negotiated long-term deals with Western pharmaceutical companies to discover and develop new chemical entities. In a growing number of cases, the Indian companies share the financial risk in discovery as well as the potential financial rewards. One Chinese company, Hutchison MediPharma, has formed a similar partnership with Eli Lilly. Others are likely to follow suit as Chinese contract research organizations gain experience and Western companies trust in China's ability to protect intellectual property, said the researchers.

India, Singapore IPR cooperation likely to be signed soon

2008-06-24T06:36:00.000-07:00

Union Minister of Commerce and Industry Kamal Nath on Monday stated that a bilateral agreement on Intellectual Property Rights (IPR) cooperation between the intellectual property offices of India and Singapore will be signed shortly. During his bilateral meeting with Lim Hng Kiang, Minister for Trade and Industry of Singapore, Nath informed that as regards the Association of Southeast Asian Nations (ASEAN)-India FTA, considerable progress was made during the last meeting in Bali and added: "I am now hopeful that we would be able to achieve our target of announcing the conclusion of negotiations at the AEM-India consultations in August". During the interaction, Kamal Nath said that Singapore was India's fifth largest merchandise trading partner and fourth largest merchandise export market and added that India's exports to Singapore grew by 16 per cent in the year 2007-08 compared to a growth of 42 per cent in the imports from Singapore.

He further stated that Singapore ranks fourth in terms of foreign direct investment in India during the period 1991-2008 with investments of 4.7 billion dollars. The total bilateral trade during 2006-07 was 11.49 billion dollars and has increased by 25.88 per cent to 13.42 billion dollars in the year 2007-08 (upto February 2008) over the same period in 2006-07. Major items of Indian exports to Singapore were: petroleum (crude and products); other commodities; transport equipments; electronic goods and non-ferrous metals. Major items of Indian imports from Singapore were: electronic goods; petroleum (crude and products); organic chemicals; machinery (except electrical and electronic) and project goods.

The top five sectors attracting Foreign Direct Investment (FDI) inflows from Singapore are: petroleum and natural gas, mining, services sector, construction activities and power, whereas the top five sectors attracting technology transfer are: electrical equipments (including computer software and electronics), hotel and tourism, food processing industry, chemicals (other than fertilizer) and miscellaneous mechanical and engineering industries.

Infosys expands patent portfolio in the United States

2008-06-05T04:20:00.000-07:00

Infosys Technologies has announced that it has been granted two patents by the United States Patent and Trademark Office (USPTO). These patents are in the area of holography and mobile communications. This is the first time that Infosys has bagged patents from the US Patent and Trademark Office work done by its Software Engineering and Technology Labs (SETLabs), a 500-people center comprising researchers, engineers and consultants.

The Lab, set up in 2000 with the aim of bolstering research practices, has filed over 100 patent applications in the last 18 months. The two patents have come at a time when the company is looking at non-linear growth model, breaking the link between revenue and employee growth.

Subu Goparaju, head of Software Engineering & Technology Labs (SETLabs), the research arm of Infosys said, "the patent titled 'displaying holographic three dimensional (3-D) images' describes the realization of actual 3-D communication using computer-generated holography to send/receive information and the associated optical elements required to make a lightweight handset.

Existing technologies use high resolution LCD to give the illusion of 3-D while actually displaying a 2-D image. Actual 3 dimensional imaging which includes a representation of depth information along with amplitude information is not being used in these cases. This patent addresses the issue of 3-D in mobile communication.

The patent titled "method and system for providing reliable and fast communications with mobile entities" proposes a mobile Internet Protocol-based solution to support generic mobility over heterogeneous networks.

There are a number of problems to be overcome to support generic mobility over heterogeneous networks today. This solution leverages a split-TCP type approach where the TCP connection between the communication entities is split at a suitable gateway.

The solution does not require any extension at the mobile host and provides improved performance even for mobility across heterogeneous networks due to an inherent ability to adapt to changing network characteristics. It supports communication between two mobile hosts or between a fixed and a mobile host, where mobile host(s) can roam over heterogeneous networks and also supports a layer 3 handoff.

Across Indian IT services companies, the $5.7-billion TCS has filed over 200 patent applications in the last five years. Says Avinash Vashishta, CEO, Tholons (an advisory firm), "India IT majors have been running a software factory and R&D is one area where they have to do a lot. The focus being services, barring a few small exceptions they have not been able to create a business around R&D — that is, develop IP products and market them." Now, to get to the higher billing tasks and delink revenue growth from manpower growth, a focus on R&D is a must. The top IT majors could show the way.

E-filing in India, a long way to go [IP in India]

2008-06-03T05:10:00.000-07:00

The government’s ambitious project to encourage electronic filing of patent and trademark applications has received an embarrassingly poor response in its first year. Of the 35,000 patent applications filed last year, only 410 (1.17%) were filed online. Worse, only 0.24% or 242 of the one lakh trademark applications during 2007-08 were filed online.

The facility for filing of patent and trademark applications from anywhere in the world at any time through the Internet, was launched in July 2007 to help the Indian Patent and Trade Mark Offices function as paperless offices. Government officials termed the poor show as “teething troubles” and blamed it on ignorance and reluctance on the part of Companies and individuals to use the new system.

To correct the situation, the government had asked patent officers and the National Informatics Centre (NIC) to provide training to patent attorneys, through a programme conducted in the four metros. Consequently, in the two months of the current financial year, online applications for patents and trademarks have improved marginally. Online applications constituted 4.9% of the 6,000 patent applications filed so far in this financial year while it also constituted 1.34% of the 20,000 trademark applications.

Currently, there are only about a dozen countries that have e-filing facilities, with India recently becoming a member of this elite group which consists of countries like USA , Japan , South Korea, China and the European Patent Office. With patent applications from China outstripping those from India by leaps and bounds, the Centre has launched a national awareness, sensitisation and consultancy programme by roping in universities, laboratories, state level chambers of commerce and industry, patent attorneys and the scientific community.

The proactive campaign which involves an outlay of Rs 20 crore, would establish a correlation between intellectual property, innovation, productivity and competitiveness. The objective of the programme was to take the intellectual property regime to the bottom of the industrial pyramid and invigorate the proprietary rights culture in the country. An effective online filing system can prove to be the lynchpin for this strategy’s success.

The benefits of e-filing of patent and trademark applications include getting an application number immediately, on-line verification assuring error-free filing and obtaining the filing date, a speedy registration process, being able to save the date locally in the applicant’s personal computer, printing the completed application data and recalling the contact details for subsequent applications. This would have meant savings on paper, valuable time and money.

Payments can be made through the Payment Gateway of authorised bankers, which would save time and money and also put an end to the hassles involved in visiting and filing the applications in the offices. NIC has developed modules for e-filing and on-line processing with State Bank of India providing the payment gateway.

But patent lawyers said though the e-filing system is a major improvement over the previous one, it also hasits own limitations.

Incidentally, the government is working towards sending more officials to be trained by the World Intellectual Property Organisation, UNIDO, as well as Japanese and US patent offices. Several vacant posts of patent examinees also need to be filled up.

To enhance the prestige of the Indian Patent Office (IPO) and to attract work from abroad, the government is also in the process of transforming IPO into an International Search Authority and an International Preliminary Examining Authority under the Patent Cooperation Treaty. Currently, there are only 12 such authorities.

Besides, India would soon join the Madrid Protocol on Trade Marks. Madrid Protocol is a simple and cost-effective system for registration of International Trademarks. India’s membership of the Madrid Protocol will aid Indian Companies in registering their trademarks in other member countries of the Protocol through a single application.

FICCI advocates 'knowledge centres' [India]

2008-06-03T04:33:00.000-07:00

Industry body Ficci today said knowledge and education centres should be set up in patent offices across the country to educate the public with the role of Intellectual Property in emerging economies. The centres could house exhibition areas, besides making available literature on Intellectual Property to create awareness about protection and enforcement of IP, according to a Ficci release.

Ficci and the Department of Industrial Policy and Promotion (DIPP) have constituted a Consultative Working Group to make the Indian Patent Office more responsive to industry. In recommendations made to DIPP, Ficci said users who file patent applications electronically should be incentivised by reducing their filing fee. Transactions of records across patent offices also need to be expedited, it said.

As a result of deliberations of the consultative group, a separate wing in Mumbai Patent Office has been set up for data analysis. The data include records on technical fields by year of filings, number of patents granted to a company in each sector, list of companies filing patents, pending applications and country-wise patents in force. The patent office has also made online the abstracts of patent applications as well as copies of patents granted and decisions of the controllers, enabling third parties to check legal status of the patent application, the chamber said.

India not to open legal services sector soon: Ministry of Commerce

2008-06-02T00:09:00.000-07:00

The ongoing World Trade Organisation (WTO) talks will not lead to India opening up the legal services sector to foreign firms, Commerce Secretary Gopal Pillai said. However, he has made it clear that permitting foreign legal firms into India to deal with mergers and acquisitions (M&A) as well as arbitration cases will be beneficial. "The Indian legal services sector needs reforms that involve issues related to limited liability, number of partners and advertising restrictions. Once that is done, it has to be ready for liberalisation of the sector," Pillai said.

"In this round, we won't commit opening up of the legal services sector in the services negotiations of the Doha Round. But opening of the sector has great potential for the Indian professionals," Pillai said, adding that foreign lawyers would not come and practice in Indian district courts.

"They are interested in M&A and arbitration between companies." Currently, foreign law firms are not allowed to provide their services in India while professionals in the sector are not comfortable to liberalising the sector for foreign participation. The resistance by the Indian legal professionals for entry of foreign firms into India is because of a multitude of regulations.

For example, advocates in India are not allowed to advertise. More over, there are restrictions on the number of partners in a legal firm, which cannot cross 20. The Bar Council of India Rules prohibit Indian advocates from sharing remuneration with any person or legal practitioner who is not an advocate.

"We understand that there are limitations. But in the future most of them will be addressed. On issues of liberalisation, the commerce ministry will be guided by the law ministry as well as the Bar Council, with whom we are interacting. Surely, Indian law firms with just 20 partners will be at a disadvantage when a US firm with 2,000 partners set up base in India," added Pillai.

At present, there are nearly one million lawyers in India. The global legal services market has been estimated at $220 billion while India's share stands at $300 million.

Will 'Peter the Scot' harm Indian Geographical Indications? [India]

2008-05-29T21:34:00.000-07:00

India can have its whisky, and drink it too, but it risks losing out in the global rice and tea market.
A ruling by the Supreme Court on Tuesday ended the almost two-decades-long challenge by an association of Scotch whisky makers to Khoday India Ltd’s right to have a non-Scotch whisky brand called Peter Scot because of the similarity between the words “Scot” and “Scotch”.
But the ruling could result in global retaliation and affect Indian products such as basmati rice and Assam tea, say analysts. That’s because the Supreme Court ruled in favour of Khoday despite the geographical indication (GI) status enjoyed by Scotch. Unlike a trademark—a unique and distinctive sign to identify a product or service—a GI is a sign used on goods that have a specific place of origin and possess qualities or reputation that are due to that origin.
In many cases, a GI is merely the name of the place where the goods originate. “Champagne” and “Tuscany” are some examples of GIs. Indian examples include “Assam tea”, “Darjeeling tea” and “Kanchipuram silk saree”. Basmati rice is also a GI.

In this case, Khoday, which began producing Peter Scot 40 years ago, registered the trademark in 1974. Twelve years later, the Scotch Whisky Association or SWA, a group of manufacturers and exporters of Scotch whisky, raised an objection before the registrar of trademarks, arguing that the word “Scot” was deceptively similar to “Scotch” and would mislead the consumers into believing that the product was of Scottish origin. The registrar ruled in SWA’s favour.
Khoday appealed to the Madras high court which too ruled against it. The high court order delivered in October was challenged by Khoday in the Supreme Court.
A two-judge bench on Tuesday allowed the appeal and validated the use of the trademark “Peter Scot”.
The judgement swung in favour of Khoday on two points. The first was the delay of 12 years on part of SWA in filing an objection.
The second was that consumers of Scotch whisky in India are discerning enough to distinguish between Scotch whisky and whisky made in India.
Referring to precedents from countries such as Australia and the US, the judges said the legal test applied to check deception of consumers by the high court were incorrect.
The judgement states: “However, tests laid down in Australia and United States in respect of self-same goods are noticed herein before are somewhat different. But then we are concerned with the class of buyer who is supposed to know the value of money, the quality and content of scotch whisky. They are supposed to be aware of the difference of the process of manufacture, the place of manufacture and their origin.”
The apex court’s judgement, interestingly, overturns numerous verdicts of high courts in the country that granted SWA relief by passing restraining orders against liquor manufacturers in India for using words such as “Scot”, “Highland” and “Chief”, words that SWA contended were associated with Scotch whisky brewed in Scotland.

Staff of Deutsche Telekom suspected of privacy breaches [Germany]

2008-05-29T21:32:00.000-07:00

Security staff at the German phones giant Deutsche Telekom are suspected of breaching German data privacy laws during a secret attempt to identify the sources of high-level leaks to the media, the company said Saturday. Using the company's own records of millions of numbers dialled, the dates and the durations, the internal-security unit had hunted for possible matches between news reporters and Telekom directors.

Both public prosecutors and a German law firm have been assigned to investigate the suspected breach three years ago of German data- retention laws. Bonn-based Telekom said it had purged the security department last year to ensure it operated within the law.

The scandal was first reported Saturday morning by the German news weekly Der Spiegel in advance of its Monday issue. Telekom, one of the biggest companies on the German stock market, remains one third in federal ownership. Its affairs are closely followed by the German news media, which have often reported leaks from authoritative sources. Spiegel said the corporate security division had suspected senior executives or supervisory board members might be to blame.

Telekom said calls were not actually tapped, but the billing data had been illegally accessed in 2005 and "according to new claims" in 2006 too. Chief executive Rene Obermann said, "We're taking this very seriously. We have reported it to the public prosecutor."

In recent years German companies whose shares are traded in the United States have adopted the US practice of investigating and publicizing criminal actions within their own bureaucracies.

A sound achievement: Bose inducted into Inventors Hall of Fame

2008-05-29T02:17:00.000-07:00

Driving uphill to the 500,000-square-foot glass and steel headquarters of the Bose Corporation, accurately dubbed “The Mountain,” one can see that Amar Gopal Bose has accomplished quite a lot in his 78 years.

Originally from Philadelphia, Bose, who was recently inducted into the 2008 National Inventors Hall of Fame, first discovered his love of audio electronics while fixing radios in his basement as a teenager during World War II. Later, in high school, he would take off Fridays to work at a radio repair shop, an arrangement that his classmates often teased him about and that lasted until he attended the Massachusetts Institute of Technology in 1947.

He has since grown his audio empire —known as the Bose Corporation — into one of the top sound research and development facilities in the world. The company builds all types of high-end audio equipment, from commercially available music players and home theaters to auditorium sound systems and equipment for military aircraft and submarines and even NASA. The Bose Corporation has also branched out into automotive work, developing a new type of vehicle suspension system not yet on the market.

But the start of the Bose Corporation –which employs 9,000 people worldwide and has annual sales of $2.5 billion — was a modest one. Bose and fellow MIT electrical engineering student Sherwin Greenblatt, now the company president, founded the corporation in 1964 with funding from military contracts.

Bose began the company just years after earning his doctoral degree in electrical engineering from MIT and attending New Delhi’s National Physical Laboratory as a Fulbright Scholar. He has since maintained a 50-year partnership with MIT in which he has been both professor and collaborator. As with the university, Bose has created a reputation for innovation. His corporation is home to over 100 patents and trade secrets, with at least ten new patents up for approval each year. In 1987, the Intellectual Property Owners Association co-named him and fellow scientist Dr. William Short “Inventor of the Year” for their acoustic waveguide speaker technology. His induction into the Inventors Hall of Fame came earlier this month. But such honors, he said, are only as good as the next invention.

And it is the future that Bose is most eager about. India, he says, is one of the leaders in the software and IT business, and he sees the nation leading the world in years to come. Technological advancements in South Asia are increasing, said Bose, noting that the United States must ensure it keeps pace. To keep up, he said, the United States must invest in education, one of the things that Bose considers most important for a nation’s survival. Countries like China and India treat education with utmost importance, he added.
Bose’s parents had a strong influence over his life. His father, an immigrant from what is now Bangladesh, was in the business of importing cocoa fiber products. He was also a lecturer and activist for freedom for India during British rule. His mother was born in the United States, but steeped in Indian culture.
“[Being Indian] definitely had an influence,” he said.
When he was a professor at MIT, he always tried to meet the parents of doctoral students, so he could tell more about the students. “You can see the correlation; usually the relationship is pretty tight. You can know a lot about someone’s character by meeting their parents,” he said.
Despite his age and achievements, Bose, who has two children in their 40s, remains a dedicated scientist and researcher who still works six days a week. He likes to conduct most of his research at his home in Wayland, Mass., since he says the work is more mathematical and he doesn’t want to be disturbed. When he’s not at the job, he plays badminton and swims (three times a week) and enjoys listening to classical music.
And he shows no signs of slowing down. When asked if he was planning on retiring anytime soon, he quipped: “What’s that?”
“Research is play for me,” he said as he sat in his office high atop the Bose Mountain, with a postcard-picture perfect view of the Massachusetts countryside. “You’re playing games with the universe,” he said.
He has a wall-sized dry erase board next to his desk so he can write down complicated mathematical formulas and equations that pop into his head throughout the day. “To do research you have to believe something is possible,” he said.
As for inventions the corporation may pursue in the future, Bose remains open minded. “Whatever people come up with that’s interesting and challenging. … If it’s just for sales, we’re not interested. We only want the best product, and we’ll continue on the same path trying to make excellence in whatever we do.”

India to zoom past 500 million subscribers by 2010, says PwC report

2008-05-29T02:10:00.000-07:00

At a compounded annual growth rate (CAGR) of 28 percent, India is all set to achieve 539 million mobile subscribers by 2010 says a new report from ASSOCHAM and Price Water House Coopers. The report further estimates that while the rest of Asia will growth a CAGR of 22 percent, China and Africa will grow at a rate of around 14 percent during the period.

The PwC report also highlights that revenues from mobile services will increase to $35 billion by 2010, when compared to $22 billion in FY07.

According to PwC report, innovation in pricing of services and handsets were the two main factors contributing to the growth of mobile services in the country.

At the same time the report cautions operators to keep a check on the dwindling ARPU.
The report also points out operators need to devise a relevant package in offerings for the rural subscribers. The data usage in such segments is unlikely to achieve high uptake due to lack of local content on offering, says the report.

The report also mentions that the telecom manufacturing sector in the country is still lacking. It says manufacturers from Far East, particularly from China are dominating the market currently.

“Such companies are already in the third phase of their business evolution and can take advantage of not just low cost production capacities, but also a high degree of technological innovation and their own intellectual property,” says the report.

Settle Toshiba vs Tosiba fast: Supreme Court asks Delhi High Court [India]

2008-05-26T01:52:00.000-07:00

The Supreme Court has asked the Delhi HC to expeditiously decide the trademark dispute between the Japanese company Toshiba and an Indian company which uses the trademark Tosiba for its electrical goods.

The largest manufacturer of heavy electrical items of Japan claims that such a use infringes on its trademark Toshiba. Justice SB Sinha and Justice LS Panta said: “We would, however, request the Delhi High Court to consider the desirability of disposing of the suit filed by the appellant (Kabushiki Kaisha Toshiba) against the respondent (Tosiba Appliances Co) as expeditiously as possible”. It in its notice, the company had said: “The trademark Toshiba is such a well-known trademark in India and abroad that its use or the use of a phonetic equivalent mark in respect of electronic and electrical goods would cause immense confusion and deception amongst the purchasing public and the trade. Our clients were surprised when they recently learnt of the adoption and use of the mark Tosiba both as your trademark and an essential feature of your trading style in respect of a range of electrical goods including electric irons. The adoption of the mark Tosiba is clearly mala fide and amounts to infringement of our clients’ various registered trade marks.”

Starbucks registers trademark in several Indian languages [India]

2008-05-26T01:50:00.000-07:00

Scalded by trademark infringement from names including Starstruck, global coffee giant Starbucks Corp. is taking no chances.

The Seattle, US-based company has trademarked the “Starbucks” brand in at least 10 Indian languages, including Tamil, Telugu, Punjabi, Bangla, Gujarati and even Urdu—almost as diverse as the states it eventually set up shop in.

It’s still unclear when Starbucks will enter India after the international coffee chain withdrew its application from the Foreign Investment Promotion Board, which approves investments into the country from abroad, in November because government officials raised objections to the majority foreign holding structure of the proposed venture. In India, overseas brands can’t hold more than 51% of any single-brand outlet. Starbucks’ overseas holding was adding up to more than that.

Stung by the objections, Starbucks decided to put on hold its India plans. With the ranks of middle-class Indian swelling, drinking coffee in outlets similar to Starbucks is becoming fashionable in India’s cities and big towns. The country already has several indigenous brands such as Barista and Cafe Coffee Day, and international ones such as Costa Coffee. But with coffee drinking turning into a fad, even those who have had little to do with coffee chains have stepped in. India’s first and most celebratedproducer of herbal beauty potions and creams, Shahnaz Husain, has registered Startstruck as a trademark, brewing up a bit of storm. Starbucks is locked in a legal battle over the similar sounding name.

Starbucks is also challenging another case in India’s Controller General of Patents, Designs and Trade Marks for a deceptively similar name. The American chain is now in 13,000 locations worldwide and if the company has its way, it will be in 27,000 more locations, including some in India.