Sony Pictures Network India Pvt. Ltd. v. Sportsala : case analysis

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September 23, 2021

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This article is written by Vivek Maurya from ICFAI Law University, Dehradun. In the article, the author has critically analyzed a copyright case that is Sony v. Sportsala and has also mentioned John Doe or Ashok Kumar’s order in copyright cases.

Table of Contents

Introduction

In this case, the plaintiff Sony Pictures filed a lawsuit against a number of browser-based websites, seeking a permanent injunction against the distribution, production, reproduction, or making available on their platforms of content from the ongoing cricket matches between India and England and India and Sri Lanka. The plaintiff seeked an interim injunction against the defendant’s activities because they infringe on the plaintiff’s copyright under Section 51 of the Copyright Act of 1957, and as a result, other issues such as audience sharing, low TRP, and limited advertising capabilities have harmed their business, prompting the plaintiff to seek a permanent injunction against such illegal activities.

Facts of the case

The England and Wales Cricket Board Limited (ECB) and Sri Lanka Cricket (SLC) have granted Sony Pictures Network the exclusive license and media rights to broadcast the India Tour of England 2021 in India, Pakistan, Afghanistan, Sri Lanka, Nepal, Bangladesh, Bhutan, Myanmar, and the Maldives. Later, Sony Pictures found that www.sportsala.tv was streaming these events on their website. www.Sportsala.Tv is a website that is in the business of streaming and uploading unlicensed material. The website, among other things, illegally streamed athletic events and had previously infringed on Sony Pictures Networks’ exclusive media rights. Sony Pictures Network filed this lawsuit to prohibit them from doing so during the 2021 India-England International Cricket Series.

Issue of the case

The issue framed in the suit is:

How to stop www.sportsala.tv from infringing their exclusive contents?

The relief prayed in the suit

Pass a permanent injunction prohibiting the defendant , their partners, owners, officers, employees, agents, and representatives, franchisees, head-ends, and all those acting as principal or agent on their behalf from:

Transmitting / communicating, telecasting, to subscribers or otherwise, the India Tour of England 2021 and the India Tour of Sri Lanka 2021, whether through the Plaintiff’s Channels or Platform, or any other channel or any other signal piracy.
Transmitting/communicating to the public/making available any match, footage, clip, audio-video, audio-only, and/or any part of the India Tour of England 2021 and the India Tour of Sri Lanka 2021, including live score updates, play-by-play, and/or textual and/or audio-only commentary, via any website, application and/or any other digital platform via the internet, mobile and/or radio delivery.
The Plaintiff’s channel includes reproducing, making sound and/or visual recordings of the Plaintiff’s Channels or the feed thereof, and communicating the same to the public without the Plaintiff’s permission; and doing anything else that is likely to infringe on the Plaintiff’s exclusive rights in the India Tour of England 2021 and the India Tour of Sri Lanka 2021.

Pass an order enforcing the aforementioned injunction against the defendant’s or any other person’s that provides access to the defendant s’ websites / mobile applications.
Allow the Plaintiff to submit an affidavit with the Joint Registrar to be implemented under Order I Rule 10 CPC if they provide additional ways to access the same principal infringing websites that have been injuncted.
Pass an order allowing Plaintiff to inform all search engines and request that listings of websites/URLs/mobile applications that infringe on the Plaintiff’s Copyright and broadcast reproduction rights be taken down/deleted from their search results pages.
Pass an order requiring defendants to reveal the names and addresses of all servers they utilize, as well as any additional websites or mobile applications discovered to be engaged in unlawful or pirated activities.
Pass an order requiring the Registrants of defendant’s websites to provide the names of the proprietors of the aforementioned websites that distribute the Thop TV application.
Pass an order for damages in Plaintiff’s favour, subject to the defendant’s’ violation of Plaintiff’s rights, as described in this Suit.
An order for the appointment of two Local Commissioners with the attendant powers to be issued in the case of defendants who are currently unidentified and/or unknown as of the date of the order.
In order to carry out the aforesaid instructions, the Registry may be instructed to issue additional summonses in the name of Ashok Kumar’s / Unnamed defendant s, whose information will be provided by the Plaintiff as and when it becomes available.
An order for the defendant to deliver all apparatus that they may use to re-transmit and/or store the broadcasts of the India Tour of England 2021 and the India Tour of Sri Lanka 2021, as well as any related content or other infringing material, to the Plaintiff’s authorized representatives for destruction.

Judgment

The Court ordered an interim injunction prohibiting the defendants from hosting, streaming, reproducing, distributing, or transmitting to the public any cinematograph work, material, program, or event in which the plaintiff owns the copyright. This is known as the Ashok Kumar or John Doe order since it was obtained as a temporary ex parte injunction on the broadcast.

MSOs and cable operators were also covered by the temporary injunction, and local commissioners were appointed to monitor and enforce the Court’s directives. The Court’s rulings principally apply to Sony Pictures’ copyrights, implying that non-infringing and fair uses of content related to cricket matches between India and England/Sri Lanka are permitted.

These are usually injunctive reliefs given by the courts to protect plaintiffs from damage. Injunctions are equitable remedies that cannot be obtained as a matter of right but are accessible only when parties have exhausted all other legal options, meaning that John Doe’s orders are likewise to be the last option for granting relief.

Ratio decidendi

The Court noted that the plaintiff possessed exclusive media rights from the ECB and SLC and that a prima facie case had been established in favour of the plaintiff for protection against the illegal transmission, broadcasting, communication, telecast, and unauthorized distribution of any event, match, film, clip, audio-video, or audio-only of the India Tour of England, 2021, planned from August 4 to September 14, 2021, and the India Tour of Sri Lanka 2021 scheduled from 13 July 2021 to 27 July 2021.

The Court further stated that if the plaintiff is not given an injunction for safeguarding its rights against the defendant, it is possible that the plaintiff would suffer irreparable loss and harm, which cannot be repaid in monetary terms and may be reimbursed to the plaintiff afterwards. The Court assigned two local commissioners to investigate the defendant’s unauthorized dissemination.

Case Analysis

This case analysis discusses the copyright infringement and the John Doe or Ashok Kumar order, which has been issued by the Court to prevent the infringement.

Copyright Infringement

The use or creation of copyright-protected content without the consent of the copyright owners is known as copyright infringement. Copyright infringement occurs when a third party infringes on the copyright holder’s rights, such as the exclusive use of a work for a certain period of time. Music and movies are two of the most well-known kinds of entertainment that are subjected to major copyright violations. Infringement lawsuits may result in contingent liabilities, or funds set aside in the event of a lawsuit.

The following are the exceptions to infringement under Section 52 of the Copyright Act of 1957:

Use for personal or private purposes, including research.
Use for evaluation of that work.
Use for the coverage of current events and current affairs, including the coverage of a public speech.

Remedies available against infringement

In the case of copyright infringement, there are two sorts of remedies available:

Civil remedy

Where copyright in any work is infringed upon, the owner of the copyright is entitled to all such remedies by means of injunction, damages and accounting, according to Section 55 of The Copyright Act, 1957.

Criminal remedy

The copyright holder can bring criminal proceedings against the infringer under Section 63 of the Copyright Act, 1957, which provides for at least six months of imprisonment, which can be extended to three years, and a fine of Rs. 50,000, which can be extended up to Rs. 2 lakhs.

If the defendant proves that he was unaware and had no reasonable grounds to believe that copyright existed in the work at the time of the infringement, the plaintiff will not be entitled to any remedy for the whole or part of the profits made by the defendant from the sale of the infringing copies as the court may deem reasonable in the circumstances.

Power of police to seize infringing copies

Any police officer not below the level of sub-inspector may make copies without a warrant to produce before a Magistrate if he is convinced that an offence under Section 63 in relation to the infringement of copyright in any work has been committed.

An overview of Ashok Kumar or John Doe order

The media and entertainment industries are increasingly pursuing John Doe or Ashok Kumar’s orders against internet service providers, unlawful unlicensed distributors, and cable operators in an effort to combat piracy.

Meaning of Ashok Kumar or John Doe order

Blocking injunctions for whole websites should only be issued if it can be proved that the entire website contains illegal material.

India’s media law jurisprudence has long piqued curiosity since the country has one of the world’s largest multimedia businesses and customer bases. As a result, in 2003, India entered the John Doe orders period or Ashok Kumar orders age, as it is known in the Indian legal system.

The Delhi High Court issued the first ex parte interim order in the matter of Taj Television & Anr v Rajan Mandal & Ors, 2003, enabling the plaintiff to search and seize equipment and gadgets of the unknown defendant, thereby establishing the jurisprudence of issuing orders against John Doe/Ashok Kumars. While the Taj Television verdict was seen as hazy in terms of implementation and the drafting of execution directives, Indian courts have developed in the last decade to deal with IP infringement cases.

Implementing John Doe order

The growing media and entertainment industries have embraced this development with open arms, seeking John Doe orders against internet service providers, unlawful unlicensed distributors, and cable operators as an effort to minimize piracy and its threat.

In India, the John Doe orders jurisprudence is still in its early stages, with the Indian judiciary and legal system working hard to enhance and adapt their rules as technology advances. In India, John Doe orders are regulated by Order 39 rules 1 and 2 of the Civil Procedure Code, 1908, as well as Section 151 of the CPC and the perpetual injunction provisions of the Specific Relief Act, 1963.

As a result, in order to get John Doe orders, plaintiffs must demonstrate a prima facie case, with a balance of convenience and possible damage, as well as establish the owner’s property rights. The following John Doe order criteria were used by Indian courts in the 2003 case Bloomsbury Publishing Group v News Group Newspapers.

Steps for claiming John Doe order

First and foremost, the claimant must show that he has a strong case against the defendant. Without a question, the stronger the order, the stronger the argument.
Second, the order must be written in such a way that it is obvious what the defendant needs to follow.
Third, the defendant against whom the injunction is requested must be identifiable.
Fourth, it will only be effective against someone who understands that the order applies to him after being made aware of the provisions.

However, there are certain complexities, such as the execution of orders in light of technical constraints and jurisdiction concerns, which John Doe identified solely by a numerical IP address, which may or may not really be within the court’s jurisdiction.

Judicial Guidelines

In the case Eros International and Anr v BSNL & Others, 2016 the Bombay High Court expanded the required instructions to deal with unnamed defendants, including ISPs and anonymous bloggers who break the piracy laws, not just for the executive authorities but also for the jury and the plaintiff.

The Court has ordered that copyright holders verify and authenticate the allegedly unlawful connections before demanding their banning and that advocates and general counsels double-check the links. Finally, pursuant to Order 39, Rule 1 of the CPC, the plaintiff is required to provide all relevant evidence to the High Court as an affidavit on oath.

The Court has also made guidelines for judges, which need to be followed while issuing John Doe orders. Advising them to check the list and verify its validity or assign this task to a neutral third party. ISPs are required to post a note on the blocked webpage that provides the facts of the case and the reason for the block, the copyright holder’s address, and a declaration that any aggrieved party, including viewers, may file a lawsuit with at least 48 hours notice to the plaintiff’s attorneys. The validity of the block was also shortened to 21 days, after which the plaintiff would have to visit the court and request an extension of the restriction.

Conclusion

Due to the absence of formal embedding of these orders, plaintiffs have a broad range of options for seeking unjust enrichment, with courts having the authority to utilize these as ordinary remedies. Some courts have been careful and cautious in their application of these remedies, requiring full and open information and even limiting their reach. Given its tight adherence to the examined criteria, a 21-day review time is provided for the appointment of investigators and the restriction of material banning. However, these are only ideals and most courts have recast this remedy to favour the plaintiff. In this case, the Delhi Court was lenient in making the decision, conducting no preliminary inquiry into the claim’s legitimacy and tilting the balance in favour of the plaintiff, leaving equity elusive. Orders issued by Ashok Kumar need to be reworked and clarified to ensure that equality is not jeopardized by the very orders that were issued to protect it.

References

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Distribution agreements in China

By

Shoronya Banerjee

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September 23, 2021

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This article has been written by Muskan Kalra, pursuing the Diploma in Advanced Contract Drafting, Negotiation, and Dispute Resolution from LawSikho.This article has been edited by Ruchika Mohapatra (Associate, LawSikho) and Dipshi Swara (Senior Associate, LawSikho).

Introduction

We often come across headlines such as HFCL signs nationwide distribution agreement with Beetel, Kramer electronics signs distribution agreement with cyber-security manufacturer High Secs Labs, but what is the importance of drafting such agreements?

Distribution agreements help the supplier or the manufacturer of the products in the distribution of their products in markets. It helps in reducing their burden and whenever a supplier wants to sell his products overseas such as in China, where the market is huge, such types of agreements aid in protecting the rights and properties of the suppliers and in case of any disputes further well-drafted agreement always acts as a saviour.

In this article, the author discusses how distribution agreements are drafted, important clauses in these agreements and if one wants to enter into such contracts with Chinese distributors what pointers do they need to keep in mind while drafting such agreements.

What are distribution agreements?

Any business enters into various agreements during its business cycle. Distribution agreements are one of them. Distribution agreements are those agreements whereby the manufacturer or the supplier of the goods appoints certain individual entities known as distributors. This arrangement helps the manufacturer to sell the products to the public or to wholesalers further down the line of distribution. For example, Samsung enters into various distribution agreements with different entities in different geographical locations, another example can be of beverages companies such as Coca-Cola, PepsiCo. etc.

Types of distribution agreements

Before we talk about the drafting of Distribution Agreements, we need to understand the different types of distribution agreements.

1. Exclusive distribution agreements

In simple words, exclusive means entire or absolute so, exclusive distribution agreements are those agreements where the distributor has the sole authority or the absolute rights of selling or marketing the products of the manufacturer within the territory. For example, a book supplier company provides the exclusive rights to Flipkart and now no other online distributor can be involved.

2. Non-exclusive distribution agreements

In non-exclusive agreements, there can be more than one distributor; there will be no obligation on the seller to provide exclusive rights to the distributor. The supplier can enter into various distribution agreements with different distributors.

3. Wholesale distribution agreements

Numerous times, we see that farm products companies have entered into an agreement with farmers and they sell the product in their name or any boutique company buying clothes in bulk from some weaver and selling them under their name. Such agreements are examples of wholesale distribution agreements.

4. Developer distribution agreements

In the case of any apps, games, websites, or any other intellectual property, the developer enters into an agreement with the distributing entity, and such agreements are known as developer distribution agreements.

How to draft such agreements?

For drafting these agreements following clauses will be included:

Parties and recital clause

Firstly, we need to identify the parties that are involved, that is the supplier and the distributor and it needs to include all their details after that the execution and effective date need to be included.

In recitals, it should be stated why the supplier and distributor are getting into this agreement. In simple words, the recitals should summarise all the important facts that led both parties to enter into this distribution agreement.

Scope of distributorship/rights granted

This clause is one of the most important clauses in this agreement. It needs to be defined whether the distributor will have exclusive rights to sell the product within the territory or not and whether the supplier will also sell the products directly to the customers or not.

Product and territory

This clause shall define all the details regarding the product or the product line and it can also be decided whether the new brands produced by the supplier will be included in this agreement or not or what are the products that will be excluded from this agreement.

The clause shall clearly define the area under which the distributor will be allowed to sell and promote the product. It can be stated that the distributor upon consultation with the supplier can expand or reduce the territory.

Distributor’s obligations

While determining the distributor’s obligations, exclusivity will play a major role. If the parties are entering into an exclusive distribution agreement, then the supplier can set the specific targets for the sale so that he doesn’t suffer losses and can include in the clause that if such target is not completed within the specified time, then the agreement can be terminated or if not terminated then the supplier can enter into non-exclusive distribution agreements.

Term of the agreement

In this clause, we need to address for how much time this agreement will be valid when it will come into force, when it will end and whether it will be renewable or not.

Confidential information

All the rights related to the intellectual property of the supplier shall remain protected. The clause shall provide the instructions for the usage of intellectual property by the distributor. It should also restrict the distributor to disclose trade secrets.

Governing law and dispute resolution clause

In governing law, we need to specify which system of law will be applicable to the contract as parties may be residing at different places and if this is not specified it can create confusion and chaos. While deciding the governing law, there should be some nexus between the residence of the parties or where the performance of the contract is taking place and the governing law.

In the dispute resolution clause, it can be added that in case of any disputes parties can try to solve the disputes amicably, and then they can appoint either a sole arbitrator or multiple arbitrators as per their convenience. For this clause seat and venue needs to be decided, the language of the arbitration proceedings should be specified.

Distribution contracts in China

Entering into distribution contracts is the most common way by which foreign suppliers can enter the markets of China but while entering into such agreements with Chinese distributors following pointers shall be taken into consideration:

Exclusivity

While entering into a distribution contract with a distributor from China, the supplier will have to determine whether the distributor will have exclusive rights for the products or not. In case the distributor has been granted exclusivity, it is always a good idea to include minimum sales targets as it will help to achieve minimum business goals. It can be added that in case the minimum targets are not achieved, then the supplier will have the right to appoint more distributors or he can terminate the contract.

China anti- monopoly law

While entering into a distribution agreement in China, we need to keep in mind China’s anti-monopoly law. The aim of this law is to create an open and competitive market; in other words, it prohibits those agreements which exclude or restrict competition. This means that in the distribution agreement suppliers cannot have a certain price or a minimum resale price though there are certain exceptions to it such as improvement in the product quality, increase efficiency.

Protection of intellectual property rights

While entering into the distribution agreement, the supplier needs the protection of his intellectual property, be it for trademarks or designs. In the agreement, proper guidelines can be stated for the use of intellectual properties by the distributor. Apart from that, suppliers should make sure to register all the trademarks or patents or any other intellectual property in China before entering into a distribution agreement as this ensures an extra layer of security.

Confidentiality agreements

Often suppliers use confidentiality agreements to protect their trade secrets and it also restricts the distributor from disclosing any confidential information to any third party. But what if the distributor himself uses all the trade secrets to make a better product with low cost as these types of situations are quite common in China. To avoid this, the manufacturers are often advised to enter into an NNN agreement with their distributor. It refers to a non-distribution, non-use and non-circumvention agreement and with the use of this agreement the supplier can ensure that the distributor will not take your market opportunities.

Termination and licenses clause

In this clause, various grounds for termination shall be stated. Apart from that, the supplier can ensure to have a long term notice period before termination such as 90 days as it will help in buying back existing stock present with the distributor.

While entering into distribution agreements in China, it is preferable that the distributor obtains all the licenses as he will be more aware of the domestic licenses that need to be obtained for selling the product. This will help the suppliers in reducing their burden and ensuring proper compliance.

Governing law and dispute resolution

In China, Civil Law parties are free to choose their governing law and in the absence of this clause, the Chinese law will prevail. But while choosing litigation as the option of resolving disputes, it is better to choose Chinese courts as sometimes the judgements of other countries’ courts might not be enforceable in China and if we look from another angle that is the implementation of the agreement was in China so it is better to choose Chinese law.

While choosing arbitration as a method of dispute resolution, it is important to specify the body. Mostly the Hong Kong International Arbitration or Singapore International Arbitration Centre are chosen as their processes are also convenient for foreign parties.

Also, the agreement should be drafted in both the languages i.e. English and Chinese and the reasoning behind this is sometimes in the case when there is a dispute and the agreement was only drafted in English, then it might become one of the grounds because of which the distributor didn’t understand the agreement properly. For the avoidance of any confusion due to linguistic issues, the agreement should be drafted in both languages.

These were some of the items which should be kept in mind regarding distribution contracts in China but suppliers should never forget the power of negotiation. It is very important to have a clear scope of work and make the best out of the negotiation process.

Sample of this agreement

This Distribution Agreement (“Agreement”) is made and entered on____day of_____at_____

BY AND BETWEEN

______, a company registered under the provisions of Companies Act, 2013 bearing CIN no.___and having its registered office at New Delhi, India

(Hereinafter referred to as “Supplier” which expression unless repugnant to the context or the meaning thereof shall include its assignees and nominees)

AND

______, a company incorporated under the laws of____and having its head office at_______

(Hereinafter referred to as “Distributor” which expression unless repugnant to the context or the meaning thereof shall include its assignees and nominees)

The Supplier and the Distributor will be individually referred to as “Party” and collectively as “Parties”

Whereas

The Supplier is the manufacturer of the product and is willing to increase the sales of the product in the territory.
The Supplier has approached the Distributor who has a wide and extensive network to undertake the distribution of the product in the territory.
The Distributor agreed to enter into this Agreement whereby the Distributor will undertake the distribution of the product subject to the terms and conditions contained herein.

THEREFORE, In consideration of the mutual promises contained herein, the Parties hereby agree as follows

1. Definitions

(a) “Products” shall mean the Supplier’s products to be sold by the Distributor

All the products as referred to in Schedule 1 will be incorporated herein by reference

(b) “Territory” shall mean the geographical area as described in Schedule-2

2. Appointment

The Supplier hereby appoints the Distributor as its exclusive distributor for the Products in the Territory. The Distributor shall not have any authority to make any commitments whatsoever on the behalf of the Supplier.

3. Distributor’s Obligations

(a) Distributor shall try to do the best efforts to promote and maximise the Products sale in the Territory.

(b) Distributor shall monthly report all the sales of the Products and marketing activities of the previous month by the 15^th of every month.

(c) Distributor shall neither advertise the Products outside the Territory nor solicit sales from purchasers located outside the Territory without the prior written consent of the Company.

(d) Distributor shall not in any way alter the quality of the Products and shall not represent any false or misleading facts on behalf of the Supplier.

4. Payment

Distributor shall pay all the charges due hereunder within 45 days after the date of Supplier’s invoice. All the payments of the undisputed invoices shall be made on time. Suppliers may impose a late payment charge of 0.5% per month on any overdue unpaid balances.

5. Nature of Relationship

(a) The relationship between the Distributor and Supplier is sole of Independent Contractor

(b) In no circumstances the Distributor or its assignees shall be deemed as employees or the representatives of the Supplier.

6. Term

This Agreement shall be effective from____day of September 2021 and shall continue up to a period of 2 years unless terminated earlier herein. The Agreement can be terminated by giving a prior notice of 90 days.

7. Termination

(A) If any of the Party fails to perform his obligations then the other Party may provide the notice and if the default is not cured within 30 days then the Agreement shall stand terminated.

(B) Either Party can terminate the Agreement without any notice in case of insolvency and bankruptcy.

8. Confidentiality

Distributor acknowledges and agrees that in the term of this Agreement the Distributor will be exposed to various trade secrets and confidential information of the Supplier thereby the Distributor agrees not to disclose any of such information to any third party. In the event of termination of this Agreement, there shall be no use or disclosure by Distributor of any confidential information of Company, and Distributor shall not manufacture or have manufactured any devices, components or assemblies utilizing Company’s patents, inventions, copyrights, know-how or trade secrets.

9. Governing Law and Dispute Resolution

This Agreement shall be construed and enforced according to the laws of India.
In the event of any claim or controversy or dispute between the parties(“Parties”) hereto relating to this agreement, the aggrieved party will send the notice to the disputing party to solve the issue within 60 days of the notice issued.
In case of any dispute(es) or claims including any breach or termination or interpretation which is not solved within the cure period then the Parties will try to solve the issue amicably through discussion on any convenient place with good faith.
In case, the dispute is not solved within the 30 days period of time then the dispute shall be referred to the arbitral tribunal consisting of three arbitrators, with one arbitrator appointed by each party and then the third will be appointed by the two arbitrators appointed. An arbitral tribunal shall be formed within 20 days from the appointment of the first arbitrator.
The seat and venue of the Arbitration will be New Delhi and the proceedings will take place in accordance with the Arbitration and Conciliation Act,1996.
The proceedings and arbitral award shall be in the English Language.
The fees and any other expenses will be borne equally by the parties.
The jurisdiction over this agreement shall lie with the competent courts of New Delhi.
The arbitral award shall be binding to both the Parties.

Conclusion

Distribution Contracts play an important role in governing the relationship between the supplier and the distributor. The success of the business depends on how well the products are distributed as that plays a major part in generating profits and there comes the importance of a well-drafted distribution agreement. Apart from the profits the distribution agreement helps to manage the risks and will also help in establishing the product market overseas. After the completion of drafting, the agreement should be properly reviewed and analysed so that both the parties are well aware of their rights and obligations and it will also help in reducing further risk of disputes. Thus, reduce the risks and maximise the profits as it will serve as the way to flourish.

References

Students of LawSikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skills.

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Highlights of the Pegasus hearing before the Supreme Court

By

Diva Rai

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September 23, 2021

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1600x960_397986-pegasus-spyware-and-sc — Image source - https://bit.ly/3zBtmJI

This article is written by Shruti Yadav, currently pursuing an integrated BA-LL.B degree from Jagran Lakecity, Bhopal. This article summarises the recent hearing in the Supreme Court regarding the pegasus case.

Table of Contents

Introduction

Exposures linked with Israeli cyber-intelligence firm NSO Group’s spyware Pegasus have lately created global headlines and sparked political disputes and public outrage. Pegasus is a hacking software or spyware developed, marketed, and commissioned to governments worldwide by the Israeli company NSO Group. Various sources reported that at least 300 people had been targeted in India, which included two serving ministers in Prime Minister Narendra Modi’s government, three opposition members, one constitutional authority, several journalists and business people.

Pegasus spyware started gaining attention after news outlets such as The Washington Post and The Guardian reported on purported spying.

In forensic tests, on a small sample of phones connected with these numbers, 37 phones, 10 of which are Indian, showed clear indicators of Pegasus spyware targeting. As part of a collaborative investigation called the “Pegasus Project,” Paris-based media nonprofit Forbidden Stories and Amnesty International accessed the leaked database and shared it with news organisations. This instilled a sense of fear and indignation in the people of India. Therefore various petitions were filed against the government in the Supreme Court on the subject matter.

What is Pegasus and how does it work

The Israeli malware that was recently found to have been used to target hundreds of Indian phones has become less reliant on clicks. Pegasus has the ability to infect a device without the target’s knowledge or consent. Pegasus is marketed as “a world-leading cyber intelligence solution that enables law enforcement and intelligence agencies to remotely and covertly extract data” from “virtually any mobile device”, developed by Israeli intelligence agencies veterans. Until early 2018, NSO Group clients relied primarily on SMS and WhatsApp communications to persuade targets to click on a malicious link, resulting in mobile device infection. It is called Enhanced Social Engineering Message (ESEM), according to a Pegasus brochure. When the phone is led to a server through a malicious link packaged as ESEM, the operating system is checked, and the appropriate remote exploit is sent.

Amnesty International first reported the use of ‘network injections’ in its October 2019 report, which allowed attackers to install spyware “without needing any input from the target.” Pegasus has several methods for achieving zero-click instals. One over-the-air (OTA) approach is sending a covert push message that causes the target device to load the spyware. The victim is ignorant of the installation.

A Pegasus brochure brags “NSO uniqueness, which significantly differentiates the Pegasus solution” from any other spyware available in the market. An attacker usually only has to provide the Pegasus system with the target phone number for a network injection. According to a Pegasus brochure, “the rest is done automatically by the system,” and malware is installed in most cases.

However, network injections may not function in some circumstances. For example, the remote installation fails when the target device is not supported by the NSO system or its operating system is upgraded with new security protections. Once infected, a phone becomes a digital spy under the attacker’s complete control.

Pegasus connects to the attacker’s command and control (C&C) servers after installation to receive and execute commands, as well as give back the target’s sensitive information, including passwords, contact lists, calendar events, text messages, and live phone conversations (even those via end-to-end-encrypted messaging apps). The attacker has access to the phone’s camera and microphone and the GPS feature, which may be used to track a victim.

Pegasus only transmits scheduled updates to a C&C server to avoid consuming much bandwidth and alerting a target. The malware is made to elude forensic investigation and anti-virus software detection. When and if required, the attacker can disable and delete it.

Why is pegasus seen as a threat?

The Pegasus controversy concerns the claim that an Indian client of Israeli spyware used it to spy on opposition leaders, journalists, and others without their knowledge. Congressman Rahul Gandhi, electoral strategist Prashant Kishor, billionaire Anil Ambani, and others are on the purported hit list.

The administration has been cornered in Parliament on this subject by an angry opposition, which is seeking a comprehensive discussion in the presence of Prime Minister Modi and an inquiry into the accusations.

The administration has claimed that no unlawful monitoring was carried out and has thus far declined to launch an investigation; the Bengal government, on the other hand, has demanded a judicial investigation.

Hacking is against the law in India. The Indian government has not revealed if Pegasus was used to hack into devices so far. The administration has only given general assurances that measures are in place to prevent illegal spying. It has also stalled any attempts by opposition leaders in Parliament to investigate the allegations.

The surveillance allegations come amid an intensifying crackdown on freedom of speech and peaceful assembly by the Bharatiya Janata Party-led national government and its enforcement of the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021. These regulations are aimed at internet intermediaries such as social networking platforms, digital news services, and curated video streaming sites. While the government claims its goal is to prevent misuse of social media, such as the propagation of “fake news,” the bill allows for more government control over online material, threatens to impair encryption, and would severely limit online privacy and freedom of speech. Human rights advocates, nonviolent demonstrators, and religious minorities have been detained more frequently in politically motivated cases, notably under counterterrorism, sedition, and national security legislation. There is evidence that the phone numbers of several activists currently in jail on terrorism charges were on the leaked Pegasus list.

In some cases, their lawyers, relatives, and friends were also on the list. The right to privacy is established under international human rights law, and arbitrary or unlawful invasions of that right are prohibited. The Indian Supreme Court has also stated that privacy limitations are only legal if they are both necessary and proportional to achieve a legitimate goal. The excessive, unlawful, or arbitrary use of spyware for monitoring, like Pegasus, infringes on the right to privacy, inhibits freedom of expression and association, and puts people’s safety and lives in jeopardy. The Pegasus disclosures should act as a wake-up call for the urgent need to recognise and safeguard the right to privacy following the Supreme Court’s decision on the subject. The government should implement surveillance reforms that include independent judicial supervision, judicial remedies, and a data privacy framework that respects people’s rights.

Petitions against the government on pegasus

On August 5, a petition was filed by senior journalists N. Ram and Sashi Kumar for an independent probe headed by a former or sitting top court judge into the mass surveillance of over 142 potential “targets”, including journalists, lawyers, ministers, Opposition politicians, constitutional functionaries and civil society activists, using military-grade Israeli spyware Pegasus.

The Supreme Court also heard separate petitions filed by Rajya Sabha member John Brittas and Supreme Court advocate M.L. Sharma on the same issue, which has seen more petitions being filed, including one by the Editors Guild of India for an independent investigation into the Pegasus allegations and another by five journalists who were targets of surveillance.

In their petition, Mr Ram and Mr Kumar claim that widespread monitoring employing military-grade malware violates many fundamental rights and looks to be an attempt to infiltrate, undermine, and destabilise independent institutions that are vital to our democratic system. They have demanded full transparency from the government on whether the surveillance was authorised, as it appears to be an attempt to silence free expression and suppress dissent. According to the petition, the administration has yet to respond whether the illicit hack was carried out with its approval.

The journalists claim that eavesdropping has severely harmed their right to free expression and privacy. There is no legal foundation for it. The legal monitoring system established by Section 5(2) of the Telegraph Act appears to have been entirely disregarded, and people have become targets.

Everything that has transpired in the Supreme Court

On Bengal’s judicial probe

The Supreme Court urged the West Bengal government to wait and not go ahead with a separate judicial inquiry into the Pegasus snooping allegations when the Apex Court seized the issue.

After senior advocate Abhishek Manu Singhvi gave an oral assurance to convey the apex court’s message of “restraint” to the government, a bench of Chief Justice of India (CJI) N.V. Ramana and Justice Surya Kant did not pass a formal order staying the work of the government-appointed commission of inquiry.

Justice Madan B. Lokur, a former Supreme Court judge, and Justice Jyotirmay Bhattacharya, a retired Chief Justice of the Calcutta High Court, make up the investigation panel.

Senior attorney Harish Salve, representing the petitioner, an NGO named “Global Village Foundation,” argued that a parallel investigation could not occur while the highest court was considering the case. The government announcement that appointed the panel in July was challenged in the petition. It claimed that the commission lacked the authority to conduct such an investigation. Mr Salve claimed that the investigation committee had published a public notice and that the procedures were ongoing.

The Bench indicated that it might take up the Pegasus cases next week and issue a blanket order. It linked the petition with the Pegasus cases that were on the docket at the time.

Any ruling in the Pegasus case, according to Justice Kant, will most certainly have a pan-India impact.

On August 17, the Supreme Court issued a pre-admission notice to the Centre in response to petitions requesting an independent investigation into allegations that the government spied on journalists, activists, dissenters, legislators, Ministers, and other individuals using Israeli-based spyware.

Following the issuance of the notice, a Bench composed of CJI Ramana, Justices Kant and Aniruddha Bose stated that it would examine the following steps, including the formation of a committee to investigate the accusations, in due course. The notice was issued after the government, backed by Solicitor General Tushar Mehta, held hard in its two-page affidavit, denying “all and any” charges. Mr Mehta has previously stated that any information concerning government software purportedly used to combat terrorism would jeopardise national security.

Court’s question to the petitioners

Even though former Union Minister Ravi Shankar Prasad repeated that the monitoring and spying claims were unfounded, the Supreme Court observed that the allegations of spying through Pegasus spyware were significant if the reports were accurate. The Supreme Court bench of Chief Justice of India (CJI) N V Ramana and Justice Surya Kant asked the lawyers for the nine petitioners seeking a probe into the alleged snooping to serve copies of their petitions to the Government of India. The CJI raised two issues: first, why the petitions were filed now when reports about the use of Pegasus spyware first surfaced in 2019. Second, considering that most of the persons reportedly snooped on are famous politicians and journalists, why were no FIRs filed by the people who were supposedly snooped on.

According to senior lawyer Kapil Sibal, Pegasus could not be utilised unless the government or its agencies purchased it. The Centre must explain why no action has been taken or why no FIR has been filed in the case of suspected spying. It is a question of privacy and dignity, said Sibal, representing renowned journalists N Ram and Sashi Kumar. The administration should explain why it has “remained silent.”

According to senior attorney Arvind Datar, the terms of the present legislation do not allow for the filing of an FIR, who appeared for journalists Rupesh Kumar Singh and Ipsa Shataski, who were on the Pegasus target list. This case should be treated as a class-action lawsuit by the court. According to Sibal, the scope of the surveillance became apparent only after recent claims about why the petitions were submitted now. Individuals, he added, have no way of accessing material because Pegasus only offers its services to governments. The previous hearing had witnessed a barrage of questions from the Bench, including if there was any “verifiable material” other than foreign newspaper reports to support a judicial order for an inquiry into the Pegasus allegations.

The Court on parallel proceedings and debates

Petitioners in the Pegasus spying case should put their trust in the Supreme Court and not engage in “parallel processes and discussions” on social media platforms and other sources while their case is pending, said the Chief Justice of India N.V. Ramana.

The Chief Justice, who presided over a three-judge Bench, told them that if they had anything to say, they should write it down in affidavits and file them in court, where they would be discussed. “There needs to be some order. It is up to them if they want to post something on Twitter or Facebook. We want them to put their trust in the court now that they have arrived here [to the Supreme Court],” Chief Justice Ramana said.

He emphasised the importance of not misinterpreting questions from the bench during court proceedings. “We have questions for everyone. They may give you some discomfort at times. You may not like it, but that is how the court works. Counsel must be accountable. If they want something, they should go to court for it. “Chief Justice Ramana addressed the attorneys, including senior advocate Kapil Sibal, who has been leading the petitioner side, highlighting the former Union Ministers and parliamentarian’s numerous hats.

Government’s response

Former Union Minister Ravi Shankar Prasad reaffirmed that the claims of monitoring and spying were unfounded.

The government’s Solicitor General, Tushar Mehta, requested extra time to review the numerous applications. He requested a brief break in the proceedings. In a two-page affidavit filed in the Supreme Court, the Centre stated that it “unequivocally denies all claims” made by petitioners that the government used military-grade malware to eavesdrop on journalists, lawmakers, activists, and court personnel.

“A cursory examination of the captioned petition and other related petitions reveals that they are based on conjectures and surmises, as well as other unfounded media reports or incomplete or uncorroborated data,” the affidavit stated.

“It is, however, contended that the Union of India will form a Committee of Experts in the area to dispel any erroneous narrative disseminated by certain vested interests and with an object of evaluating the concerns presented,” the two-page brief affidavit of government stated.

Conclusion

The allegations against the government of spying on civilians, journalists, and opposition members are sordid and grave. The notions of democracy are threatened if the allegations were to be true. The Supreme Court is robust in dealing with the matter. We must have faith in the judicial process to extract the truth and preserve the privacy and rights of the people of India.

References

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Use of foreign language in a contract

By

Shoronya Banerjee

-

September 23, 2021

0

document-428336_1280 — Image source: https://rb.gy/5z1i1d

This article has been written by Aditya Sunil Naik, pursuing the Diploma in Advanced Contract Drafting, Negotiation, and Dispute Resolution from LawSikho.This article has been edited by Ruchika Mohapatra (Associate, LawSikho) and Dipshi Swara (Senior Associate, LawSikho).

Table of Contents

Introduction

Parties to a contract; act in their best interest when they choose to record the terms of their agreement in writing. This helps ensure that there is no misunderstanding about their rights and obligations under the agreement. By having the terms recorded and agreed upon, usually with a signature, it is made clear that the parties consent to be bound by the agreement.

Having a written contract also has benefits when a dispute arises between parties. Provided that the agreement is duly stamped, it can be admitted as evidence for any purpose by any person having the authority to receive evidence by law or the consent of parties.Further, if an agreement is required to be registered under Section 17 of the Registration Act, 1908 or the Transfer of Property Act, 1882, it must be registered failing which it cannot be admitted as evidence.

From the above, it is clear that the agreement in writing merely reflects the intentions of the parties to a contract and is kept as a matter of record, either for mutual convenience or if required by law. Therefore, the question of consensus ad idem and free consent comes into the picture in this context.

Essentials of a contract

Section 10 of the Indian Contract Act, 1872 (“the Act”) provides that an agreement is a contract if it fulfills the following essentials:

It is made by the free consent of the parties;
The parties are competent to contract;
The agreement is for a lawful consideration;
The agreement is made with a lawful object; and
The agreement is not hereby expressly declared to be void.

While the Act does not lay down any other specific requirement for an agreement to be a contract, requirements may be prescribed by other laws. Examples of the stamp duty and registration of certain agreements have been discussed above.

For written contracts, it is a settled principle that the contract must be construed and given effect as it is, even if the result is that the document is found to record a transaction intended by neither of the parties to it. However, if a party to an agreement is told that any stipulation recorded in the agreement would not be enforced, the Court held that he cannot be held to have assented to it.It held that the document does not amount to the real agreement between the parties and the other party cannot sue on it.

Consensus ad idem

Consent is defined under the Act as to when two or more persons agree upon the same thing in the same sense. This “meeting of the minds” is known as consensus ad idem. The Supreme Court has held that the word “thing” must be construed as widely as possible as the whole contents of the agreement, whether it consists, wholly, or in part, of delivery of material objects, or payment, or other executed acts or promises.

Once parties have agreed to a common intention by expressing certain words, they cannot go back on it and deny that what they did was the reasonable interpretation of those words, as has been seen earlier. In a leading English case, Lord Watson held that whoever becomes a party to a written contract “agrees to be bound, in case of dispute, by the interpretation which a Court of law may put upon the language of the instrument,” whatever meaning he may attach to it in his own mind. Therefore, it is clear that courts place very strict reliance on written contracts and would interpret the same by what is contained in it.

The exceptions to this are in the following situations:

1. Ambiguity

It is possible to avoid the enforcement of an agreement if it can be proved that a term is ambiguous and as a result of this ambiguity, there is a misunderstanding without either party’s fault. However, it is quite unlikely that such a scenario arises in a written agreement as the terms are well-defined and reviewed before execution.

2. Fundamental error

While there may be consent and all other essentials fulfilled, the consent may have been given under a mistake, which the party is not prohibited from showing. The mistake must be such that it must prevent any real agreement upon the same thing in the same sense. Such a fundamental error may pertain to the nature of the transaction, the person being dealt with, or the subject matter of the agreement.

Free consent

The Act provides that consent is said to be free when it is not caused by:

coercion, as defined in Section 15; or
undue influence, as defined in Section 16; or
fraud, as defined in Section 17; or
misrepresentation, as defined in Section 18; or
mistake, subject to the provisions of Sections 20, 21 and Section 22 in The Indian Contract Act, 1872.

Free consent is essential to a valid contract that is enforceable by law. Where there is consent, but not free consent, there is generally a contract voidable at the option of the party whose consent was not free, as given in the sections stated above.

Foreign language in a contract

From the above discussion, it is clear that there has to be a meeting of minds between the parties to a contract for it to be enforceable and that such a consensus must be a result of the free will of the parties. Now that the fundamentals are clear, we shall examine the question of the use of foreign language in a contract.

The doctrine of non est factum is available to a party who claims to avoid a contract, which essentially means that the party intended to sign a contract that was wholly different from the one signed. In such a case the contract is void, and not voidable. The transaction is invalid not merely due to fraud, but because the “mind of the signer did not accompany the signature” and he never intended to sign. This, however, is a very limited defence available in select situations. It is the exception to the rule that a party is bound by the contract they sign, irrespective of whether they bothered to read all the terms and conditions.

A party cannot claim to avoid a condition in a contract executed by him in print on the basis that he did not read it or that it was written in a language that he did not understand. In the case of the latter, the onus is on the party to ask for the terms to be explained in a language he understands. The fact that the party does not know the language in which the contract was executed does not necessarily raise a presumption that he did not understand the terms contained therein.Moreover, if there are circumstances to show that the party understood the contents of the contract, there is a valid contract.

However, such a condition can be avoided only in the case where he proves that he signed the contract on the assurance that he would not be bound by that condition.In a case, before the Privy Council, it was held that where a party had signed a contract and was told that a stipulation contained in it would not be enforced, that party cannot be said to have assented to it, and consequently, the contract did not represent the true agreement arrived between the parties.

Literate persons, especially businesspeople, are expected to read and understand the terms of the contract before signing since their money is involved in it. In such a case, the contention that the document was not read would not be accepted. The House of Lords laid down that the defence of non est factum was not to be allowed where a person of full age and capacity had signed a written document embodying the contract. It would be allowable so long as the person signing the document had made a fundamental mistake as to the character or effect of the document.

However, there are certain protections available for the benefit of differently-abled persons, senior citizens, and illiterate persons. If a differently-abled person executes a document without understanding its terms, there is no real consent, as his mind did not accompany execution. In such a case, the transaction is valid only if the document is read over to the executant and he understands it.

The Supreme Court has held that where the document is in a foreign or alien language, the person seeking to rely on the document will have to prove that the document was read over and properly explained to the executant so as to make him understand the consequences of it. These principles are applicable to pardanashin women and would be applied to documents made by old, invalid, infirm, and illiterate persons.

Conclusion

Therefore, from the above discussion, it is clear that as a general rule, having a contract in a different language from what the party understands does not affect its validity. This is because of the general presumption that the party is expected to go through the contract and understand the terms before executing it. However, exceptions apply in cases where a party is misled and was made to sign a contract wholly different from what was represented. Also, protections apply to certain classes of persons discussed above to ensure that they are not duped. From a practical standpoint, it may be advisable to draft and execute a contract in a language that can be understood by the party to avoid any misunderstanding or dispute.

Students of LawSikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skills.

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How to draft a surgical assistance agreement : an analysis

By

Oishika Banerji

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September 23, 2021

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This article has been written by Mayank Srivastava pursuing the Diploma in Advanced Contract Drafting, Negotiation and Dispute Resolution from LawSikho. This article has been edited by Ruchika Mohapatra (Associate, Lawsikho) and Dipshi Swara (Senior Associate, Lawsikho)

Table of Contents

Introduction

There are many amazing medical drama movies and series out there. Among these, one such TV series is “The Good Doctor”. This series focuses on the character of Shaun Murphy, a young autistic surgeon whose skills and knowledge are unsurpassed. This series beautifully demonstrates the working life of doctors, their long hour’s shifts, and the commitment of the hospital to save every life possible. Yet, scenes at the operation theatre remain the most interesting. Surgeons along with the assistants at the operation theatre have a job to be done, surgeons have their specific role, and assistants have their own. And together they make the impossible possible, that is, saving human lives. Coming to the non-fictional world, we don’t realize much about what goes behind the curtain. The role of surgical assistants, their agreements with the hospitals, obligation of hospitals and assistants towards each other, and whether there exists any formal structure to draft an agreement for such relation between assistant and the hospital. Through this article, the author seeks to shed light on all the aspects of a surgical assistance service agreement.

What is a surgical assistance agreement?

Before defining the surgical assistance agreement, we must understand who surgical assistants are.

Surgical assistants are qualified health professionals whose role is to assist the surgeons and nurses during the surgery. They perform preoperative and postoperative duties for better treatment of the patients. It is their job to help the surgeon carry out a safe operation with optimal results for the surgical patient. They work directly under the supervision of surgeons and as per the hospital terms and policies.

Some of the services rendered by the Surgical assistant: –

a) Administering needles;

b) Closing surgery sites;

c) Controlling bleeding;

d) Dressing wounds;

e) Performing minor surgical procedures;

f) Facilitate positioning of the patient;

g) Assist circulator and anesthesia;

h) Aid in the transfer of patient;

i) Apply specific dressing material;

j) Follow patient to recovery as needed, etc.

The Surgical Assistance agreement is the contract between the hospital and the agency which provides services of surgical assistants. During the surgery, the surgeons require the assistance of various services (as mentioned above), and these services are rendered by surgical assistants. To appoint such assistant(s), to specify the roles and responsibilities of those assistant(s), and the duration and availability for which the surgical assistants are mandatory to be present in the hospital, this agreement becomes essential.

Significance of surgical assistance agreement

1) Avoiding mismanagement and uncertainty

As mentioned above, the services of surgical assistants vary, and there exist many types of surgical assistants who perform different tasks. In a case where surgical assistants with unregulated working terms get appointed in the hospital, it would cause a huge mismanagement and uncertainty in the performance of surgery as well as in other day-to-day works.

The duties of surgical assistants can be divided into preoperative and postoperative duties and there are few obligations that are mandatory for the surgical assistants, like- Arrival time, availability, responsibilities etc. It is recommended to regulate these terms in the contract otherwise the system and relationship between the hospital and surgical assistant would lead to mismanagement.

2) Functioning of surgery, the reputation of the hospital

Better services and reputation are interconnected with each other. Behind the services rendered by the surgical assistant, the primary goal behind is to help the surgeon and ease the process of surgery and offer better post-operative care. Thereby, this is an essential agreement to uphold the quality of services and consequentially, the reputation of the hospital.

3) Avoiding post- contractual conflicts

Post-contractual conflicts contain complaints regarding infringement of non-compete, intellectual property, or any other clause. Thereby, by drafting this agreement, the parties can protect their individual interest. And further to provide remedies for any future conflicts, the parties can also stipulate an efficient dispute resolution clause to save time for each party.

Essential clauses of surgical assistance agreement

1) Responsibilities of Assistant

It is the most essential clause of the agreement. The hospital (party) shall stipulate all the duties, obligations, and responsibilities under which the services of surgical assistants are required. Responsibilities like, closing wounds, cutting sutures, monitoring vitals on electronic equipment, inserting tubes and administering needles, monitoring time schedule during emergency cases, obligations with regards to bylaws, rules, etc., and prohibitions of fraud and abuse with medical programs, should be mentioned here. An example of this clause is mentioned as follows;

“The Surgical Assistant shall provide surgical assistant coverage for elective and emergency cases from 7:30 AM to 3:30 PM provided that the Hospital gives notice sufficient time period, usually 24-48 hours and at least 45 minutes for emergency cases.

No Party shall knowingly or intentionally conduct its behavior in such a manner as to violate the prohibitions against fraud and abuse in connection with the Medicare and Medicaid programs.

The Parties shall comply with all state and local laws and regulations and the standards of any applicable organization, including, but not limited to the Healthcare Organizations.”

2) Responsibilities of Hospital

Drafting this clause is as important, if not more, as the responsibility of a surgical assistant. Since the surgical assistant will work as per the guidance and terms of the hospital, it becomes essential to stipulate such terms beforehand, otherwise, it would lead to mismanagement. In this clause, the parties shall also stipulate terms that would help the surgical assistant during the course of his/her work, for ex- patient information. An example of this clause is mentioned as follows:

“The Hospital shall pay compensation for its willingness to provide services from 7:30 am to 3:30 pm daily including call coverage services.

The Hospital shall provide patient information to the Surgical Assistants for billing purposes.”

3) Compensation

Compensation for surgical assistant’s services including other benefits shall be stipulated here. An example of this clause is mentioned as follows:

“The Surgical Assistants shall be entitled to reasonable compensation from the Hospital for all services rendered by him hereunder. The Surgical Assistant shall also be entitled to reimbursement from the Hospital for all expenses paid or incurred by it in the performance of its duties.”

OR

“The Surgical Assistant shall be eligible for the compensation of Two Lakh Fifty Thousand Rupees (Rs 2,50,000). Payment will be made to the Surgical Assistant on a bi-weekly basis consisting of twenty-six pay periods per year.”

4) Term and Termination

Grounds of termination, and the date, or the year by which the normal termination will be executed, shall be stipulated in this clause. This is an essential clause to stipulate as to what the circumstances are that will be grounds for terminating the agreement. An example of this clause is mentioned as follows:

“This Agreement is effective for a period of 24 months (2 years) from the commencement date. Either party shall have the right to terminate this Agreement upon thirty (30) days written notice to the other party.

Either party shall terminate the Agreement for cause. Such termination may be evidenced by written notice which shall specify thereof to Surgical Assistants or Hospital. The term “cause” shall include any material breach of this Agreement.”

5) Non-Compete

This clause protects the surgical assistants from working for a direct competitor within an area for a specific period of time. This clause is usually used as a protective measure for safeguarding the interests of the hospital. An example of this clause is mentioned as follows:

“The Surgical Assistant hereby agrees that, without the prior written consent of the Hospital, directly or indirectly, during the term of this Agreement and for a period of 1 year from the termination of this Agreement, the Surgical Assistant shall not engage with any hospital which is competitive with the Hospital.”

6) Intellectual Property

Every hospital achieves success and reputation not only through its services but also through its technology, process, and other methods of functioning. This clause is essential to protect the interest of the hospital at present as well as in future time. An example of this clause is mentioned as follows:

“The Surgical Assistant agrees that all technology, processes, innovations, methods and including but not limited to all patents, copyright, copyright registrations in and to any of the foregoing along with the right to practice, use, reproduce which related to the surgical assistant services to patients which are developed or made by the Surgical Assistant while employed by the Hospital belong to the Hospital.”

7) Independent Contractor

An Independent contractor is defined as an independent/self-employed worker who is appointed to perform certain tasks. Such a contractor is not like an employee but an individual entity that works for other companies or individuals. This clause shall be drafted only in such cases where the surgical assistant is an independent contractor or whether the parties wish to maintain the relationship as an independent contractor. An example of this clause is mentioned as follows:

“It is expressly agreed that the Parties shall be an independent contractor and the relationship of the Parties shall not constitute as to create a partnership, employment, or joint venture relationship between the parties. Neither party shall make any claims upon the other party for any employee benefits, employment or income taxes, unemployment insurance, or workers compensation benefits of any kind.”

8) Indemnification

To hold the other party not liable during service provided, this clause shall be stipulated. This is not a mandatory clause and it is dependent on the party’s wishes whether to indemnify for losses or not. An example of this clause is mentioned as follows:

“The Surgical Assistants agrees to indemnify the Hospital and save it harmless against any liabilities, including judgments, costs, and reasonable counsel fees, for anything done or omitted by the Surgical Assistants in the execution of this Agreement, except as per the clause 3 (Term and Termination).

9) Applicable law

The medical services shall always comply with the laws of the country. And therefore, services rendered by the surgical assistant shall comply with such laws. An example of this clause is mentioned as follows:

“This Agreement shall be governed by and construed in accordance with the laws of India without regard to principles of conflict of laws. The parties further agree that if a controversy or claim between them arises out of or in relation to this Agreement and results in litigation, the courts of New Delhi shall have jurisdiction to hear and decide such matter.”

Conclusion

The Surgical Assistant Agreement is an essential document that stipulates terms that are mandatory for the services rendered by the Surgical Assistant to assist the surgeon. It helps avoid mismanagement and post-contractual conflicts between the parties. Clauses- Responsibilities of Hospital; Surgical Assistant, Non-compete and Compensation, Non-compete and Intellectual Property are mandatory to be stipulated. Parties shall also consider as to what type of relationship they wish to maintain in the Agreement- Independent contractor or not. Important points that the parties need to keep in mind- what kind of requirement is there for the hospital to assist the surgeon, availability, and other services rendered by the Surgical Assistant. All mentioned above points can be used to draft a clearer and suitable agreement as per the terms of the parties.

References

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skills.

LawSikho has created a telegram group for exchanging legal knowledge, referrals, and various opportunities. You can click on this link and join:https://t.me/joinchat/J_0YrBa4IBSHdpuTfQO_sA

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Electronic signature and fraud

By

Oishika Banerji

-

September 23, 2021

0

This article has been written by Sangeeta Choudhury pursuing the Diploma in Advanced Contract Drafting, Negotiation and Dispute Resolution from LawSikho. This article has been edited by Anahita Arya (Senior Associate, Lawsikho) and Dipshi Swara (Senior Associate, Lawsikho)

Table of Contents

Introduction

The traditional signatures are handwritten signatures that distinctively speak of each one’s identity. After the boom of the internet, it became necessary to create methods where people need not be required to be present at the signing table. Hence, the Electronic signature or E – Signature as popularly known by people came into existence. Electronic signatures have swept the globe today where many industries have since adopted this new method of signing and have abandoned the old method of signing and approving documents.

Even though the Electronic signature was invented as early as 1977 by Ronald Rivest, Adi Shamir and Len Adleman, the Electronic Signature gained legal acceptance only a few years ago when the then President of the United States of America, Bill Clinton signed the Federal ESIGN Act into law. In India, the notion of E- Signature was introduced through the Information Technology Act, 2000 which is based on UNCITRAL Model Law on Electronic Signature 2001.

The UNCITRAL Model Law on Electronic Signature 2001, clearly outlines the importance of electronic signature “The increased use of electronic authentication techniques as substitutes for handwritten signatures and other traditional authentication procedures has suggested the need for a specific legal framework to reduce uncertainty as to the legal effect that may result from the use of such modern techniques (which may be referred to generally as “electronic signatures”). The risk that diverging legislative approaches be taken in various countries with respect to electronic signatures calls for uniform legislative provisions to establish the basic rules of what is inherently an international phenomenon, where legal harmony, as well as technical interoperability, is a desirable objective.”

What is an electronic signature?

It is clear that different modern state legislations have taken notice of the concept of E-signature, giving it meaning and shaping its definition to fit its socio-political structural norms. A few definitions devised by foreign legislative bodies are listed below.

Article 25, Electronic Identification, Authentication and Trust Services, states:

An electronic signature shall not be denied legal effect and admissibility as evidence in legal proceedings solely on the grounds that it is in an electronic form or that it does not meet the requirements for qualified electronic signatures.
A qualified electronic signature shall have the equivalent legal effect of a handwritten signature.
A qualified electronic signature shall have the equivalent legal effect of a handwritten signature.

Section 106, Electronic Signatures in Global and National Commerce Act defines an electronic signature for the purpose of US law as “an electronic sound, symbol, or process, attached to or logically associated with a contract or other record and executed or adopted by a person with the intent to sign the record.
Section 7, Part II, Electronic Communications Act, 2000 defines an electronic signature as anything in electronic form that —

Is incorporated into or otherwise logically associated with any electronic communication or electronic data; and
Purports to be used by the individual creating it to sign.

In basic terms, an electronic signature is just that: a signature in electronic form. It enables signatories to approve or agree with the terms of a document, just like with wet signatures. An electronic signature is essentially a process that uses computers to authenticate the signatory and certify the integrity of the document.

Advantages of E- signature

The main reason for the world to quickly adapt to the concept of E-signature is mainly due to the several advantages of e-signature. Printing, scanning, signing, re-scanning papers or using courier services to transfer documents back and forth was the previous system, which was not only time-consuming but also included a lot of paperwork and the risk of losing vital documents in transit which in turn reduces the expense of the company on paper, printing, packing, shipping and mailing cost. Moreover, e-signature tends to shorten the time between decision making and its implementation as e-signature speeds up the approval process which is always a positive for the company.Another important advantage is e-signatures have the same legal status as wet-ink signatures on any document, according to statutes like the Uniform Electronic Transactions Act (UETA) and the Electronic Signature in Global and National Commerce Act (ESIGN Act)and increases an organization’s environmental and technological credentials.Hence, E-signature methods are used by many of the world’s largest businesses, including insurance, healthcare, and financial services, to validate client identities, authorize treatment plans and procedures, and prove the identity of their clients at any given time.

Can E-Signature be forged?

Despite the fact that modern life is becoming easier and nicer to live with each passing day due to all technological advancement, however, as Marian Wright Edelman puts it,” there is always a piece of bad in every seed of good.” Digital document signatures are one of the newest ways for fraudsters and dishonest organizations to take advantage of clients.This allows fraudsters to scam against the general public especially the old or disabled or non – tech-savvy people who easily fall prey to such scams as people signing contracts electronically may not be given time to read the fine details and may not receive copies for their records. The National Crime Records Bureau, India reports that the number of recorded cases of obtaining fraudulent digital signatures is on the rise. In 2009, there were just four similar incidents; by 2011, there were twelve. In 2012, ten cases were reported. However, analysts believe the actual figures are significantly higher.

Common frauds related to e-signature?

Employees from home security firms went door to door, claiming phony crime numbers and persuading families to purchase alarm systems. According to a report, salespeople forced customers to sign agreements on handheld electronic devices without allowing them to browse through the terms. Businesses were also accused of copying and pasting electronic signatures from one document to another without the agreement of the client.In Arizona, a Peoria mold-removal business admitted in court records to forging a digital signature to deflect blame in a dispute with a homeowner.

Even large public and private corporations are victims of similar deceptions. Signatures are falsified to facilitate illegal share transfers, post minutes of meetings that were never conducted, and reorganize entire boards of directors. It appeared like several other Monday at Unicorn House in Kandivali, Mumbai but by the conclusion of the evening of March 9, 2015, the three-story building was the middle of an uproar because some person had changed the names of its executives on a government website and if that wasn’t enough, then there is more when the Mumbai-based company’s inspectors were going through the finances of DDPL Worldwide Foundation Pvt. Ltd some scamsters at that moment decided to play spoiler, and all hell broke loose. The eight-year-old land development firm’s signature information had been altered as three unknown people from Delhi, Madhya Pradesh, and Pune had replaced the original directors. The profiles of the directors of DDPL’s partner firm, Unicorn Infra Projects, were also modified. Some believe the fraudsters were after money from a multi-crore rupee land project that the company is building. They may have sought to present themselves as corporate executives in order to make a land deal with unsuspecting parties but the narrative didn’t end there. Some people attempted to fraudulently boost the company’s authorized share capital from Rs. 5 crore to Rs. 45 crore as the goal was to distribute the increased capital’s portions among the crooks and as a result, existing directors’ shares would have been reduced to almost nothing. It was later discovered that the alleged fraudsters used a bogus PAN card and an MTNL bill to get a digital signature certificate in the name of one of the directors of DDPL and Unicorn. The certificate was utilized to get access to the company’s page on the MCA portal, and they had carried out a corporate hijacking step by step. If the hoax had continued a bit longer, they may easily have deceived individuals in the company’s name.

Preventing E-signature fraud

It’s difficult to spot a fraud suspect in a crowd. According to a report, the average fraudster has no prior fraud charges or convictions. However, there are some behavioral red signs to keep an eye out for. According to a recent survey by the ACFE, 92 percent of employees who commit fraud exhibit one of these behaviors, before the fraud is discovered like, living above and beyond one’s means problems with money, relationships with vendors or customers that are unusually close, control concerns or a refusal to share responsibilities or addiction issues.However, this is only possible to some extent if the fraudster is known or an employee but it is not possible to keep an eye on the whole world where now due to the technological boom, everyone has access to all data.

Therefore, it is critical to protect electronic signatures from fraudulent practices which are possible by using a variety of methods, one of which is to use a cloud-based electronic signature process that verifies the signatures of all parties e-signature can be protected.

If anyone is using e-signatures to sign any documents, it is not only critical to read the documents carefully no matter what, but also to use a cloud-based electronic signature process that verifies the signatures of all parties.
Also, documents that have been signed electronically must be able to be verified after they have been signed. The check can be performed with Adobe PDF-reader, for example, if the signed document is in PDF format and the digital signature technique is PADES standard compatible.
There are some security services that allow the use of an e-signature with a digital ID (known as a “digital signature”), which becomes invalid if the signed document is changed after it has been signed.
Also, as each e-signature is appended to the document, another approach is to use digital signature encryption. This creates a detailed audit trail that includes the date and time each signature was applied and, hence, if any trickster tries to change the e-signature, it will immediately be known.
In simple words, the simple and easy way to prevent e-signature fraud is a strong authentication, verification and ratification method.

Case laws

In Marketlend Pty Ltd v. Blackburn illustrates how fraud manifests itself in the context of electronic document execution and how the risk might be reduced. Marketlend provided the cash to a small business that sells mobile homes and residential vans, on the condition that the return would be guaranteed by the company’s directors, Matthew and Sarah. Matthew and Sarah were married, but they were no longer together. Marketlend required that agreements be signed electronically using DocuSign. Both Sarah and Matthew had DocuSign accounts. DocuSign, Inc. is an American company headquartered in San Francisco, California, that allows organizations to manage electronic agreements. Marketlend used the DocuSign platform to send many emails to Matthew’s company’s email address, each with a document attachment. Sarah allegedly used DocuSign to sign each document. Marketland had had no prior contact with Sarah. Matthew was declared bankrupt after the company went into insolvency. Sarah was chased by Marketlend for the remaining cash (almost $ 700,000). The court concluded that Matthew exploited Sarah’s account to sign the agreement without her knowledge or consent because she did not sign it when he asked her to. The evidence included DocuSign metadata and mobile phone location information. Sarah was not obligated to pay Marketlend the outstanding balance.

Barwick v Geico was a 2011 Arkansas case where someone who applied for vehicle insurance on the Internet was given a policy by Geico. The applicant waived medical benefits coverage as part of the application procedure and electronically signed a document to that effect. Arkansas law at the time stated that medical benefits coverage could only be denied ‘in writing.’ Arkansas, on the other hand, had already implemented the UETA when the application was filed.

The applicant was driving the insured vehicle when it was struck by another vehicle. Geico denied their claim when they provided medical bills under the coverage. When Barwick sued, Geico cited the applicant’s acknowledgment of signing an electronic renunciation of coverage. However, the plaintiff contended that the waiver was ineffective because it was not in writing, as required by law. The court agreed with Geico, and a higher court upheld the decision, citing Arkansas’ UETA implementation as support.

Conclusion

The expanding number of online transactions and contracts needs stronger protection.Electronic signatures are without a doubt a huge step forward in efficiency but electronic signature forgery is extremely real and worrisome, especially as large businesses become increasingly reliant on them, especially at a time when the globe is facing a pandemic. Traveling for the sake of conducting business has become a luxury since the world has come to a halt. Today electronic signature is very significant in carrying out day-to-day business but at the same time, we need to be increasingly cautious and alert to prevent any electronic signature frauds with carefully considered practices and procedures.

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The concept of trademark and its legality in modern pop culture of India

By

Sneha Mahawar

-

September 23, 2021

0

Trademark — Image Source: https://bit.ly/2Nu3QAH

This article is written by Rishika Rathore, B.A., L.L.B. student, from the School of Law, Jagran Lakecity University. It deals with the discussion on trademark laws in India and briefs over its implications on Indian modern pop culture, along with the study of case laws.

Introduction

“Value of a trademark is directly proportional to your aggression and risk ratio” is a famous quote by Kalyan C. Kankanala, the author of the book named “ Fun IP” which is based on the study of intellectual properties. This quote can be used as a tool for generating the essence behind the importance of trademarks. Trademarks are unique symbols or words that are used to represent a business, product, brand, or even any kind of art.

Once a trademark for any symbol gets registered, such symbol or series of words cannot be used by any other person, company, organization, etc. till the time its trademark remains in use within the official papers and fees are being paid regularly. So in case, a person does something extraordinary, he or she can get that thing marked under the law. In this article, a brief study has been done on the concept of the trademark in modern pop culture and Indian trademark laws, along with various case laws that roam around the term “trademark”.

Trademark

Trademarks can be seen everywhere in our day-to-day life. The consumers of particular brands use trademarks to identify those products or services and associate the trademarks of such products with a certain reputation. For instance, the Apple logo, the McDonalds ‘M’, or Nike’s ‘tick’ are some famous trademarks that people generally get to see.

A trademark is an intellectual property right that highlights the differences between the goods and services of one company from those of another, along with permitting the people to maintain ownership rights of their unique products and creative services. A trademark is nothing but the words, slogans, logos, shapes, colours, sounds, and signs that differentiate one brand from another. For example, the tagline of the Red Bull energy drink is “Red Bull Gives You Wings”. The basic difference between a brand and a trademark is that brands can be a symbol or logo, but trademarks are unique logos that indicate the distinct nature of a particular brand, having wider implications than brands. The symbol of a trademark is “™”, when the trademark gets registered, the symbol changes to “Ⓡ”.

Indian trademark laws

In India, trademarks are regulated by the Indian Trademark Act, 1999. In the 1940s, there were no specific laws regarding trademarks. Thus, the infringement cases of registered and unregistered trademarks were used to be heard under Section 54 of the Indian Specific Relief Act, 1877. Moreover, the registration was determined under the Indian Registration Act, 1908. Later, the Trademark and Merchandise Act, 1958 was introduced to provide better protection of trademarks and to prevent the fraudulent acts of misusing marks on merchandise. The registration of a trademark was also provided under this Act to enable legal aid for the owners of the trademark.

The Government of India replaced the Trademark and Merchandise Act, 1958 with the Indian Trademark Act, 1999 (1999 Act) by complying with the obligations of the Trade-Related Aspects of Intellectual Property Rights agreement (TRIPS), which was recommended by the World Trade Organization. Under the 1999 Act, exclusive rights were given to police to make arrests in cases of trademark infringements, also providing the provisions regarding punishments and penalties for the offenders. It also increased the time duration of registration and registration of a non-traditional trademark. The motive behind the Trademark Act is to grant protection to the users of trademark and regulate the provisions on the property along with providing legal remedies for the implementation of trademark rights.

Pre-release trademarks

Section 9(1) of the Trademark Act, 1999 states that the pre-release publicity, promotions of the title of the film is sufficient for trademark protection. Thus, trademark registration can be granted to a well-known mark or a mark that carries a distinctive character, even before the movie gets officially released in theatres.

Initial interest confusion

The doctrine of initial interest confusion originated in the United States. It is an easy-to-use principle when it comes to the determination of infringement. It says, in the cases of trademark infringements, the plaintiff is liable to prove that the activities performed by the defendant have confused the consumer’s attention over a product or service, even if the primary interest was rectified at the time of purchase. Whatever confusion about the similarity has happened, it should relate to the origin of the product or service for the requirement of the fact that similarity of title has amounted to confusion, as stated in Section 29(1) of the Trademark Act, 1999. For instance, if a film confuses the audience that it has been extracted from another film that has been registered its trademark, then it is not essential to prove the source of confusion at the time of purchase. It simply means that a mere commission of infringement of a known mark is sufficient under the doctrine of initial interest confusion.

Trade name mixtures

Under Section 29(7) and Section 27(2), it has been prohibited to make unfair representations of a trade by a trademark owner. If a producer dilutes a well-known trademark, intending to conceive commercial profits and increasing his business reputation, then it will amount to clear infringement. If the trademark holders establish that the title has contributed to their commercial gain or has affected their reputation, the movie makers could be liable. For instance, if a brand named “sky blue” gains commercial profit from a movie, deliberately named “sky blue”, then the movie maker has to face its consequences or vice versa.

Modern pop culture

The term “pop culture” was coined in the mid-19th century to highlight the cultural traditions of the people, in contrast to the state culture of governing classes. Popular culture or pop culture generally refers to the traditions and substantial culture of a particular society. In modern terms, pop culture refers to cultural activities like music, art, literature, fashion, dance, film, internet culture, television, and radio that are consumed by the majority of a society’s population. After the end of World War II, a notable shift in the history of pop culture took place.

The definition of pop culture began to emerge with the growing manufacturers for mass consumption. With the growing capitalism, the need to generate more profits took the path of marketing by distinctive modes, like advertising, media, music, taglines, slogans, etc. Pop culture has multiple origins like pop music, movies, series, radio, video games, publishing of books, internet, comics, websites, etc. These industries make a profit by inventing and promulgating cultural material that has become a principal source. Also, cyberspace has advanced the strength of popular culture by providing a new channel for transmission.

Trademarks in modern pop culture

The concept of trademark and its registration is treated as synonymous in pop culture and social media. In pop culture, trademarks are given for symbols, slogans, slang, or names that are specifically used by any artist. Film studios make use of the trademarks to protect their principal characters and movie segments like Shaktiman, Harry Potter, Spiderman, James Bond, etc. Trademark law makes it easy for people to recognize the source of a product or service accurately so that there is no possibility of confusion. A trademark must be used following the use or selling of products or services. According to Section 2(1)(e) of the Indian Trademarks Act, 1999, a certification trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. Trademarks do not end as long as the trademark continues to be used in commerce by the owners.

In the United States, under Section 2(a) of the Lanham Act (also known as Trademark Act of 1946), it has been allowed by the U.S. Patent and Trademark Office (USPTO) to deny or cancel a trademark if it is “downgrading” any person, institution or national symbol. Trademark registration of iconic movie or webtoon characters opens a door for money-making deals that support the mitigation of movie production and promotion costs. Hollywood’s major production house, Walt Disney was perhaps the first to showcase the huge earning potential from films as well as popular characters. For example, Mickey Mouse, globally the most famous iconic cartoon character, was registered as a trademark far back in 1928. By 2018, the iconic Disney mascot had clocked up global retail sales worth US$12 billion and continues to show strong growth potential.

Trademarks in Indian pop culture

The moviemakers around the world try to take supreme care when it comes to choosing an exclusively unique title or name for their film to make it a blockbuster hit among the audience of all classes. This uniqueness catches the eyes of viewers and brings them to watch the film in theatres. Under the Indian Trademark Act, 1999, the title or name of a film can be registered and protected in Class 41st of the fourth schedule of Trademark Rules, 2001 (goods and services are classified into 45 Classes of a trademark under the trademark registration process). Series of movie titles are easy to get under trademark protection and registration as compared to the single movie title. For example, the Singham franchise, i.e., Singham, Singham II, and Singham III, or Golmaal franchise, i.e., Golmaal Fun Unlimited, Golmaal Returns, Golmaal 3, and Golmaal Again are a series of film titles that got trademarked. Moreover, celebrities in India like Shah Rukh Khan, Ajay Devgan, Kajol, Sunny Leone, etc. have registered their names as trademarks.

Trademarking of song titles

Kolaveri di

The very first song title that acquired a trademark in India was a blockbuster song, “Why this Kolaveri di” that went viral all over the world. It was a mixed song in Tamil-English sung by Dhanush, a South-Indian actor. This Tamil-English mix song became an international hit on YouTube, Facebook, and Twitter as it gained 4.10 million views in just 4 days of its official release. One of the biggest music companies of India, Sony Music Entertainment, recorded this song and filed for registration of a trademark “Why this Kolaveri di”. An application for a trademark was requested for the protection of song lyrics. Through this step, Sony was allowed the launch of various products such as compact disks, cassettes, and SD Cards including film and non-film entertainment content, and the discovery of talented programs with the brand name “Why this Kolaveri di” and also restricted others from using it.

Jai Ho

Jai ho is a very popular song composed by A.R. Rahman in the movie Slumdog Millionaire which was directed by Danny Boyle. In 2014, Salmaan Khan’s film “Jai ho” got released and gave birth to legal issues for its film’s title. This issue made A.R. Rahman trademark the title of his song “Jai ho” for which he won an Oscar and Grammy award for the best song composition. Here, the basic principle of the trademark was established, which says that the first person to file for registration of the title of the song is entitled to trademark registration and protection under the Indian Trademark Act, 1999.

Duniya Sharma Jayegi

In a recent case of 2020, a song came out on YouTube with the title “Beyonce Sharma Jayegi”, of the movie “Khali Peeli” starring Ananya Panday and Ishaan Khatter. “Beyonce” is a globally-renowned and reputed trademark of an American singer Beyonce Knowles, who registered a trademark for ‘Beyonce’ in India. But, the movie’s producers did not seek her permission to use the trademark. Therefore, the song title was changed to “Beyonse Sharma Jayegi.” But this was not enough as it has been clearly stated in Section 29(9) of the Trademarks Act, 1999 that the spoken words are just as important as the look of the mark. It was argued that changing a single letter will not cancel it from getting infringed if the word or sentence sounds phonetically the same. Eventually, the song title was changed to “Duniya Sharma Jaayegi”.

Trademarking of movie titles

In India, leading production houses apply for registration for titles and labels of their movies. Phir Hera Pheri, Munnabhai M.B.B.S, and Dhoom franchises are examples of movie series where the producers have applied for registration of movie titles and labels. Some of the movies that caught into the controversy of trademark wars are:

Shortkut

The famous Indian actor and producer Mr. Anil Kapoor had registered the title “Shortcut”, with the Indian Motion Picture Producers’ Association (IMPPA), for his movie starring Akshay Khanna, Arshad Warsi, and Amrita Rao. On this, an objection was raised by a producer, Bikramheet Singh Bhullar saying that such a title had already been registered by him before it got registered by Anil Kapoor. In this chaos, Anil Kapoor finally terminated the registration and changed the title to “Shortkut – the con is on” (Bikramjeet Singh v. Anil Kapoor, 2008).

Thoda Pyaar Thoda Magic

The title “Thoda Pyaar Thoda Magic” of Yash Raj Films production came under dispute when it was opposed by actor cum producer Saahil Chadda, saying that the title of his film “Thoda Life Thoda Magic” has been already registered with the Indian Motion Picture Producers Association. The director of “Thoda Pyaar Thoda Magic”, Kunal Kolhi argued that the title of his movie has been registered with the Film and Television Producers’ Guild of India. But later, Saahil filed a complaint with IMPPA. Eventually, both the movies got released without any alteration in their respective titles.

Kabhi Alvida Naa Kehna

In the case Biswaroop Roy Choudhary v. Karan Johar (2006), an interim injunction was imposed in 2006 on Biswaroop Roy Choudhry, an Indian author for using the film’s title “Kabhi Alvida Na Kehna”. This 2006 movie was written and directed by Karan Johar and produced by Dharma Productions, although the film was never registered to get a trademark. The plaintiff used the title and registered it with the registrar of trademarks to restrain (Karan Johar) the defendant from using the title “Kabhi Alvida Naa Kehna” for their movie. But the Delhi High Court held that even though the defendant did not register the title he was the actual user of the trademark. The court further stated that the actual use of the trademark was always a relevant factor that would deter the court from granting the injunction as a relief. Hence, the court ordered a denial to the plaintiff about the interim relief and held that the plaintiff approached the court in a delayed manner. The court further stated that Kabhi Alvida Naa Kehna was a common phrase, it cannot be used exclusively.

Harri Puttar

In the case of Warner Bros Entertainment Inc v. Harinder Kohli (2008), some claims by Warner Bros, stating that its trademark rights in the Harry Potter series were infringed by a Hindi movie “Harri Puttar- A Comedy of Terrors”. The matter knocked on the door of the Delhi High Court. The court ruled that infringement has been done because if it analyzes the two titles both an unlearned (probably watch Harri Putter) as well as a cinephile (probably Harry Potter) has certain chances of getting confused about the title of the movies with each other, even though there is no much difference between the structural or phonetic similarity.

Trademark of names

Kajol Twitter controversy

In 2010, some derogatory remarks appeared on Twitter, from a Twitter handle named “Kajol Nysa”. After this, many news channels caused chaos by reporting that the said tweet was posted by actress Kajol, by assuming and believing this due to the name of the Twitter handle. Seeing the news, Kajol clarified that she does not own any Twitter account and said tweets had been made by some other person. Following this incident, Kajol initiated several applications to trademark authority in her name, in various business categories, to check the misuse of her name.

Sanjeev Kapoor story

A shocking incident was revealed by famous Chef Sanjeev Kapoor, when he witnessed his name on a book called “Khazana of Chinese Recipes” with his photo on the book’s cover page while waiting at a traffic signal. At that time, Sanjeev had written only one book called “Khazana of Indian Recipes”. Following this incident, he has filed many trademark applications of his name to protect his name from misuse.

Misuse of celebrity trademarks around the world

Paramount Pictures Corporation v. Pete Gilchrist (2007)

In this case, the Court of the United States of America uniformly provided standard trademark protection to literary titles of single works only after proving the secondary meaning, even when the contents of the work were so little illustrative of the title. As per the facts of this case, the defendant (Pete Gilchrist of Brooklyn, New York) had taken an unfair advantage of the (Paramount Pictures Corporation of Los Angeles, California) plaintiff’s rights in the trademark to use the domain name of the plaintiff’s company. The WIPO Arbitration and Mediation Center observed that the movie title attained a secondary meaning and thus the use of the plaintiff’s trademark is confusingly similar and it does not account for a legitimate non-commercial or fair use of the domain names. Following these observations, the defendant was restrained from using the disputed domain name.

Warner Brothers Entertainment v. The Global Asylum (2012)

In the case, Warner Bros Entertainment (plaintiff) filed a suit against Global Asylum (defendant) for trademark infringement of the word “Hobbit”, seeking a temporary restraining order against the distribution of the defendant’s film “Age of Hobbits”. The US District Court established four-factor tests for injunctive relief, that is, the possibility of success on the standards, the possibility of irreversible harm to the plaintiff if the injunction was not provided, a balance between sufferings in favour of plaintiffs, and that an injunction would benefit the people at large.

The plaintiff was asked to satisfy this four-factor test, following which, the Court found that the plaintiff has a guarding interest in the “Hobbit” mark and the defendant’s action of using such a mark can probably confuse the minds of people. Moreover, the Court observed that the “Hobbit” mark has obtained secondary meaning in the markets. Thus, the Court concluded that Warner Bros Entertainment has substantially used the word “Hobbit”, including in three prior series of “Lord of the Rings” films that acted as additional evidence of secondary meaning. The Court found the balance of sufferings also inclined towards the favour of the plaintiff, and therefore rejected the defendant’s contention and granted an injunction on the basis of public interest.

Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar (2001)

In this case, Celine Dion, a Canadian singer, and her company owned the domain name ‘celinedion.com’ that was registered with Network Solutions of Herndon, Virginia, USA, on March 6, 1995. Jeff Burgar (defendant) started to run and carry on business with the name ‘CelineDionClub.com’. The World Intellectual Property Organization ruled that the defendant’s domain name was creating confusion and was quite similar to the domain name owned by Celine Dion and the company.

Robyn Rihanna Fenty v. Arcadia Group Brands Ltd. (2013)

In this case, Rihana, a famous pop star and style icon, issued proceedings against the defendant who was a well-known high street fashion retailer, for selling a t-shirt carrying her image. The image portrayed on the t-shirt had been photographed by an independent photographer during the video shoot for a single from her 2011 “Talk That Talk” album. The defendant had a license from the photographer but he had not taken any license from Rihana. Thus, she claimed that selling such a t-shirt, without her consent has infringed her rights because the public shall make assumptions that she had licensed the use of her image to the defendant. The defendants argued that customers would buy the shirt because of their liking towards the product and the image for its qualities while stating that there was nothing on the t-shirt which represented it as a product of Rihana’s merchandise. The London Court of Appeal observed that a considerable number of purchasers can probably get deceived while buying the said t-shirt by believing that it had been permitted by Rihana, and such instances can damage Rihana’s goodwill.

Chorion Rights Limited v. Ishan Apparel (2010)

In this case, the defendants used the name of a popular fictional character, “Noddy” to advertise its product, which as per the claims of the plaintiff, was violating their trademark that had been registered firstly by them and also has been in use long before the defendant started using it. Due to lack of evidence from the plaintiff’s side, the Delhi High Court established that the defendants were the first party to get it trademarked.

Conclusion

The emergence of Indian modern pop culture can be seen in the Indian film industry which combines multilingual Cinemas like Telugu, Kannada, Bengali, Hindi, etc., and continues to remain the most enormous among all entertainment worlds. The abstraction of music tunes, ideas, themes, and scripts has become a constant process for Indian cinemas and this process has given rise to several questions upon creativity and the originality that every artist tries to demonstrate. This omnipresence, usage, and implementation of emerging digital technologies like the internet have shaped the industrial and artistic talents of Indian pop culture and hence brought out the requirement of protection with the accomplice of intellectual property rights like the Indian Trademark Act, 1999.

References

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skills.

LawSikho has created a telegram group for exchanging legal knowledge, referrals, and various opportunities. You can click on this link and join:

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Solar legislation in India : an overview

By

Sneha Mahawar

-

September 23, 2021

0

Solar legislation — Image Source: https://rb.gy/6zi13x

This article is written by Aditya Anand, a student at Symbiosis Law School, Noida. In this article, the author has tried to give a brief description of the solar sector and its legislation.

Table of Contents

Introduction

Solar energy is a clean form of energy that hardly has any negative impact on the environment and is a form of renewable energy. As per a report of 2018, India is the third-largest solar power after China and Japan. India has produced 27 GW and it aims to produce 100 GW by the end of the year 2022. Several policies of the government were formulated over the few decades which indicates the intense dedication to have a sustainable and economical form of energy.

Background

India has rich sources for maximum utilization of solar energy and other types of renewable energies. India is third in Asia and fourth in the world in terms of solar power production. The foundation for the production and utilization of solar energy was laid down by establishing an organization called the Commission of Alternate Sources (CASE) in the year 1981 headed by the Department of Science and Technology. It became an independent department named as Department of New Energy Sources (DNES) in 1982 and a full-fledged ministry in 1992.

The current ministry for enforcing the laws of solar energy is the Ministry of New and Renewable Energy (MNRE). The main aim of the ministry is to develop and deploy new and renewable energy for enhancing the solar and other renewable sources of the country. In order to promote the use of renewable energy, the government has provided exemptions in indirect taxes such as sales tax, excise duty, and customs duty.

As per the report of the Ministry of New and Renewable Energy, India receives about 5,000 trillion kWh of solar energy over its land. India has very few sources of fossil fuels which compels the country to be highly dependent on gulf countries that would be required to fulfill the capacity. Solar energy can be the most secure source as it is abundantly available. India is currently using 38% of the total solar capacity. Effective capture of a fraction of total solar energy can meet the entire country’s requirements.

The first initiative towards the development and use of solar energy was the National Solar Mission that was started in the year 2010 that is also known as Jawaharlal Nehru National Solar Mission (JNNSM) that was part of the India National Plan on Climate Change(NAPCC). NAPCC is a mission mode action for sustainable growth started by the Government of India in the year 2008. Its primary objective was to intensify the solar mission plans. The aim was to promote the solar mission and to make this source of energy competitive with fossil fuel. It also included the establishment of the solar research center, development of solar technology with international collaboration on technology development to gain maximum government funding and international support.

The establishment of Solar Energy Corporation of India Ltd (SECI), which comes under the administrative control of the MNRE, was set up on September 20, 2011, to facilitate the implementation of JNNSM and achievement of targets set therein. It was originally incorporated as a Section 25 (not for profit) company under the Companies Act, 1956.

Government initiatives

India has a huge demand for energy as a developing country as a result of rapid industrialization and urbanization. Currently, electricity is the primary source of energy and that too is mostly generated from fossil fuels. India is the fifth-largest producer and consumer of energy. India is currently producing 53% electricity from coal and as per a study, this cannot last for a longer period, since it is a non-renewable source of energy. The increasing demand for energy due to the increasing population has become a matter of concern for energy conservation and maximizing the usage of never-ending sources of energy. The Government of India has introduced some major plans and laws to increase the usage of solar energy. Since India is a tropical country and most of the states receive direct sunlight throughout the year, it has a tremendous scope of solar energy.

The major initiative that was launched was to fulfill the primary objective of producing solar energy of 20GW by the end of 2020 and this has been achieved long back as there has been heavy development in this sector. The Government of India further aims to extend the utilization of solar energy up to 100 GW by 2022. The two major producing solar energy-producing states are Karnataka, producing around 7,100 MW, and Telangana, producing around 5,000 MW.

In August 2020, PM announced the mega initiative program named “one sun, one world, one grid” to distribute solar power to the whole world including the areas where the sun does not always shine to create a trans-national electricity grid.

International approach

The International Solar Alliance, an initiative to promote solar energy, was jointly undertaken by the Honorable Prime Minister of India Narendra Modi and former Prime Minister of France Francis Holland at the 21st session of the United Nations Climate Change Conference of the Parties (COP 25) in 2019 held in Paris, France. The basic objective was to mobilize the investment in the solar sector and create funds of 1,000 million USD by 2030 and address key challenges for better utilization of sources.

The Government of India has also invited investments by non-resident Indians. The basic aim is to promote foreign direct investment in the solar sector. Indian entities (Non-Resident Entities) in an Indian Company are governed by the Foreign Exchange Management Act, 1999, and the rules and regulations thereunder (FEMA). Investments by Non-Resident Entities can be made on a repatriation basis that is the investment (net of applicable taxes) can be remitted outside India.

Legal framework relating to solar energy

The solar sector does not have specific laws. The major laws that affect and regulate the solar sectors are as follows:

Electricity Act, 2003

This Act was formulated in the year 2003 to regulate the electricity sector. It provides the framework for the development of the electricity sector. The Act also mentions the preferential tariffs and quotas for opting for renewable energy. The Act deals in the legislation regarding incorporation, generation, transmission, distribution, and also the tariffs in the sale. The distribution of licenses for grid connectivity has also been incorporated. The issue of the license is the mandatory procurement for using renewable energy at a large scale. The Act also mentions the commissions at the central and state level such as electricity regulatory commissions with the appeal provision provided to an Appellate Tribunal for Electricity (APTEL) which has been created under the Electricity Act. However, if the issue is not solved, then one can directly approach the Supreme Court of India. The Act also applies to solar sector-related disputes.

National Renewable Energy Act, 2015

This Act was formulated in 2015 with the purpose to promote the sources of renewable energy. The objective of this Act is to encourage the use of renewable energy, mitigate the dependency on fossil fuel, ensure energy security, and reduce local and global pollutants. It aimed at promoting the initiatives against climate change, creating an eco-friendly environment and pollution-free sources of energy. The use of renewable energy will reduce the emissions of CO2, greenhouse gases, and other toxic pollutants. The Act also contributes to ensuring the fulfillment of national and international objectives of increasing the share of renewable energy sources.

National Electricity Policy, 2005

This policy was formed in the year 2005 in compliance with Section 3 of the Electricity Act 2003. It allows preferential tariffs for power produced from renewable energy sources. It has completed its past objective of producing enough electricity to ensure access to increase the minimum per capita availability to 1,000 kWh per year by 2012.

An adequate amount of electricity is a need in today’s life. The National Electricity Plan formulated under Section 3(4) of the Act requires the Central Electricity Authority (CEA) to frame a National Electricity Plan once every five years and revise them from time to time following the system of National Electricity Policy. Section 73(a) authorizes short-term, prospective plans for the development of an electricity system and coordinates the activities of various planning agencies for the optimum utilization of resources.

Tariff Policy, 2006

This policy is the mechanism of the Renewable Purchase Obligation (RPO) that is to fix a minimum percentage of the purchase of energy consumption by the states from renewable energy sources. It also provides a special tariff for the solar energy sector. The policy was formed in 2006 by the Ministry of Power in continuation of the National Electricity Policy, 2005. The percentages for energy purchases that were made applicable for tariffs were to be determined by the State Electricity Regulatory Commission (SERC) from April 2006.

Integrated Energy Policy, 2006

This policy is an advisory by particular focusing on renewable energy development and setting targets for the addition and advancement of capacity. The policy covers wide aspects of energy such as security, access, affordability, availability, pricing, efficiency, and environment. The major aim of the energy policy has been to provide energy that can be sustainable, efficient, cost-effective, and safe. The policy has been formulated under Section 63 of the Electricity Act for the long-term procurement of electricity from grid-connected solar PV power projects.

Challenges

The pandemic has hindered and adversely affected the growth and development of solar energy. As per the report of Solarify in the year 2019, solar energy was the fastest-growing renewable energy sector that was flourishing with much potential and development. There was increased support of the government as most of the policies were undertaken directly by the Ministry.

The coronavirus outbreak has brought the world to a standstill and deeply impacted the lives of all. The objective has been deeply hit by the deadly disease. There was a decline in the imports of solar equipment by 70% in the year 2020 as compared to imports in January 2019. There was a huge decline in energy demand as it dropped from 163.73 GW to 127.96 GW when the lockdown was declared as most offices and shops were closed and electricity was no longer needed. The supply side had also been greatly affected as 85% of the labor in solar parks were migrants and due to a decrease in demand, the supply also got affected.

However, during the lockdown on 10th July 2020, the Atma Nirbhar Bharat Campaign was launched as Asia’s largest solar project in Rewa, Madhya Pradesh to reduce the dependency on imported solar equipment and to promote the solar sector within the country.

Conclusion

Over the decades, the solar energy sector has seen a rapid increase in the production of solar cells and their usage. However, there are no exclusive laws governing this sector but they are collectively controlled by the existing laws. There has not been any landmark issue regarding this sector as the market and popularity of solar sector energy has not yet been popularized much among the local people. Yet, it is advisable and hopeful that sector-specific laws be formulated and enacted at the earliest to make the system efficient and prevent future conflicts.

References

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skills.

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Things the entertainment industry should do to protect intellectual property

By

Sneha Mahawar

-

September 23, 2021

0

This article is written by Shruti Yadav, currently pursuing an integrated BA-LL.B degree from Jagran Lakecity, Bhopal. This article talks about intellectual property in regards to the entertainment industry.

Introduction

Intellectual property rights are the rights given to persons over the creations of their minds. They usually give the creator an exclusive right over the use of his/her creation for a certain period of time. They are also a well-known type of legal intellectual property protection for content creation. These rights, however, have contributed enormously to the world, in particular economically. The Indian industries of media and broadcasting have tremendously developed in the past three decades. In the internet period, access to the latest technology and information has increased exponentially, eliciting the public’s creativity and producing and sharing a large number of original works. Even issues related to the creativity and originality of content generated by artificial intelligence are being resolved. This has brought many difficulties in the protection of intellectual property rights to the broadcasting and media industries. The legislative and judicial departments encourage creativity, the free and fair dissemination of content while constantly striving to prevent abuse and exploitation of original creations. Therefore, intellectual property rights have become more prominent in the media and entertainment fields. Several pressing issues related to this sector have come forth in India.

What are intellectual property rights?

Intellectual property rights (IPR) are the legal rights that grant creators protection for their original works, designs, or the appearance of products, artistic works, scientific advancements, etc. On the topic of the entertainment industry, intellectual property rights, particularly copyrights and trademarks, come into play. Copyrights can be filed for lyrics, music, dialogues, and screenplay. Celebrities have been making use of the protections that trademark law offers for many decades now to make a profit for themselves. Although intellectual property rights protection may appear to provide a minimal level of protection, when used intelligently, it can produce maximum advantages and value of creation, allowing for the development, protection, and monetisation of world-changing technology.

Types of intellectual property rights

Different types of intellectual property rights are:

Patents

A patent is used to stop an invention from being further produced, sold, or recreated or used by another party without consent. Patents are the most prevalent type of intellectual property rights. A patent proprietor has every right to capitalise on his/her/their patent, including buying and selling the patent or conferring a license of the invention to any third party under mutually acceptable terms.

Different categories under the ambit of patents are:

Utility: A utility patent preserves the creation of a new or improved product, process, the composition of matter, or machine that is beneficial
Design: A design patent protects the ornamental design of a valuable item.
Plant: A plant patent protects new kinds of plants produced by cuttings or other nonsexual means.

Copyright

Copyright is not used to protect ideas. Instead, it only includes “tangible” creations and original work, for instance, art, music, architectural drawings, or even software codes. The copyright proprietor has the exclusive right to sell, publish, and reproduce any literary, musical, dramatic, artistic, or architectural work designed by the original creator.

Trademarks

Trademarks are the secrets of a business. They are exclusive systems, formulas, strategies, or other confidential information and are not intended for unapproved commercial use by others. This is a necessary kind of protection that can aid businesses to obtain a competitive edge. The term trademark attributes to a recognisable insignia, phrase, word, or symbol that signifies a specific product and legally distinguishes it from all other products of its variety. A trademark solely identifies a product as belonging to a particular company and acknowledges the company’s possession of the brand.

Role of intellectual property rights

Talking about the entertainment industries, intellectual property rights, especially copyrights and trademarks, come into action. However, it is essential to recognise where intellectual property rights in the entertainment industry come into action and where they do not.

While naming a film

A filmmaker has the right to register the film’s title before the beginning of the shooting to restrict others from using the same title. However, copyright and trademark laws are not relevant for naming a film. The reason is that copyright is intended to incentivise creativity since much work is required in the creative process. A work necessitates having a certain measure of “authorship”, like song lyrics, to solicit copyright protection. The writing is of the “minimum amount” in movie titles, so it does not warrant copyrights or trademarks. This is why numerous films have the same name.

Screenplay and writing

The film’s screenplay is one of the most striking things that are within the domain of intellectual property rights in the entertainment industry. The writing, screenplay, full script, that contains acting instructions and scene directions, locations, cinematography, and other film production methods can all be used to estimate the story of the film and how it stands out amongst others. Filmmakers can file for copyrights for the film’s screenplay and script under copyright rules. This gives them sole ownership of their work. Ideally, the producer will come upon a ready-to-film script. The screenplay, on the other hand, usually necessitates the expertise of a professional screenwriter. A screenplay might be original work or an adaptation of previously published material, such as a novel, a play, or a film. The script itself has always been deemed to be an original creation to which IP rights are connected. The producer typically utilises a scriptwriter to write a short narrative canvas for the film and a first draft; the contract may also specify any other drafts, re-writes, or polishes foreseen for accepted payments. The legal status of the writer’s contract varies according to the prevailing copyright and related rights legislation. Suppose the movie is an adaptation of existing work. In that case, the producer will arrange an option agreement to obtain the right to use this material before going forth. An option agreement affirms that the proprietor of the underlying work – a script, book, article or short story – grants to the producer, for a detailed period, the right to create a film.

Suppose the film is produced and the option is applied. In that situation, the copyright owner is compensated for the continuous right to utilise his or her work in the film. While negotiating the conditions for securing rights to the screenplay, TV rights, and the right to release in ancillary markets such as home video and new media, a rights acquisition agreement is also usually negotiated. For example, experienced producers will seek to obtain several rights to optimise profitability and produce sequels freely. On the other hand, the original copyright owner will try to retain certain rights, such as publishing rights, stage rights, broadcast rights, and character rights (if you want to write a sequel). A detailed rights purchase agreement can help avoid unforeseen legal problems down the road.

Music, lyrics and background score

The music, lyrics, and background music form the core of the film and therefore belong to the entertainment industry’s intellectual property. Early practices allowed filmmakers to pay musicians and lyricists and protect the copyrights of their work under their production banner. However, since Javed Akhtar v. Producers Guild in (2010), writers and musicians can claim copyright for their creations and continue to receive royalties instead of transferring the copyright to the film’s producer on a one-time payment basis.

Copyright infringement

The long list of credits at the end of the film gives an idea of the army involved in the production. This is a complex collaborative effort that generates many different levels of rights related to different production elements (such as script, music, director, and performance). The rights associated with these must be licensed, transferred, and registered to allow the producer, the person responsible for turning the idea into a marketable concept, for declaring ownership of the film, raising funds necessary to produce the film and distribution rights for a license so that they can reach the broadest possible audience.

Producers are responsible for getting a film project off the ground. While they may not be the author of the original conception for the screenplay, a film project is unlikely to see the light of day without their vision and passion. Throughout the film-making process, producers negotiate various contracts that define how the IP rights arising from the input of the numerous creative contributors will be applied and compensated. These agreements are underpinned by the Copyright law and the Contract Act, 1872 and are known as the chain of title documentation.

Filmmakers are obligated to pay dues for using songs by other lyricists or musicians in their films. In the case of “remixed songs” or “movie remakes”, both the music composer and the film producer must pay the original creator expenses separately. Otherwise, they may be sued for copyright infringement. For example, in October 2019, Dr. Zeus charged the creator of the Bollywood movie “Bala” for copyright infringement. The British artist claimed that his hit song “Don’t Be Shy” was recorded in the film without his approval and further accused the Bala producers of plagiarizing his work. The producers of Bala subsequently issued an official statement stating that they had completed the due process to obtain the copyright from Carmen Entertainment, a company that owns the global copyright to the relevant song. The film production company Maddock Films further claimed that Karman Entertainment granted them an official license to reproduce the song. This allows filmmakers to include the song in their movies without paying extra.

However, suppose the filmmakers did not seek copyright to recreate or even use the notes/melody in their films. In that case, the filmmakers of Bala could be sued for copyright infringement. The Indian Censorship Council and other film institutions enact laws to assist film artists in their literary creations. Such laws prohibit filmmakers and music directors from “borrowing” or “imitating” the original and creative works. These laws ensure that other filmmakers use the works of original creators for both credit and monetary gain, thus protecting their rights.

Trademarks and merchandising

Trademarks also feature prominently in movies. Like other companies, movie studios use trademarks to create unique identities and stand out in a crowded marketplace, from the great appeal of 20th Century Fox and the more exclusive focus of its sister company Fox Searchlight to the icons of animation Pixar and Disney family. Movie titles can also be protected as trademarks. Registering these film elements as trademarks can open the door to lucrative licensing and sales agreements, helping pay for film production and promotion costs. Walt Disney demonstrated the potential to generate ancillary income (that is, beyond theatrical distribution) of films and their characters. Mickey Mouse is the world’s best-known cartoon character and was registered as a trademark as early as 1928. By 2010, global retail sales of the iconic Disney mascot had reached $ 9 billion and continued to show strong growth potential. Star Wars is another notable example of film marketing. Star Wars was first released in 1977, followed by five other blockbusters, creating a lucrative multi-million dollar Star Wars collection (from action figures to lightsabers, keychains and books). Star Wars has become an enduring cult phenomenon. This trend will continue when the filming of Star Wars VII begins later this year.

Technical innovation

A large amount of technical equipment is used to make movies including the camera, as well as lighting, editing, sound, and special effects equipment. Innovation is the hallmark of this industry. Throughout its history, intelligent minds have been looking for new and improved ways to push the limits of possibility. Many of these technological advancements are protected by patents. Since Thomas Edison and Lumiere brothers brought movies to the public, the industry has undergone tremendous technological changes. The golden age of silent movies gave way to sound movies, which gave new importance to dialogue and performance, which in turn gave birth to new types of movies. The invention of the Technicolor (invented in 1916 and after decades of improvement) gave the film a more realistic feel. It used increasingly innovative and high-performance sound systems, Warner Bros. Vitaphone (used to produce the first feature film sound, Jazz Singer 1927) to Dolby Surround (first introduced in 1982) enhanced the movie experience.

Piracy issues in the media and entertainment industry

Piracy is a threat to artists’ creative freedom. Piracy refers to the unauthorized copying and distribution of all or most of the copyrighted works. In movie productions, piracy occurs through the unauthorized copying of movies in various formats. The recent shift in the entertainment industry has shifted to digital platforms, where all creative content is available online. With new technologies such as virtual reality, you can create 360-degree immersive environments without taking risks.

When it comes to the media and entertainment industry, piracy has reached its peak. Whenever a movie is released, a copy of the movie will be uploaded to many pirated websites within a few hours. This causes considerable losses to the producers of this film. Because there are pirated versions on these websites, people choose to watch them instead of going to the theatre. Low box office income has brought economic losses to filmmakers. Some of these sites are Tamil rock musicians, your seeds, ROMCOM, F movies, etc.

The paid subscription apps like Netflix, Hot Star, Amazon Prime, ET Times, and The Indian have paid a heavy price to become media partners for the film. These hacked sites release such movies or videos before the media partners. As a result, these applications have fewer subscribers, leading to the loss of application owners.

Therefore, piracy has become a vital issue, as the cancer of the media and entertainment industry. Sometimes, even after getting a protected job, piracy can still occur, making us shake our heads because people even steal someone’s hard work in order to make money. Just as chemotherapy cures cancer, stricter laws are required to curb this piracy and protect people’s hard work. The potential problem is that it is difficult for copyright owners to track infringers due to the ubiquitous digital technology.

Ways and means in the legal sphere to protect Intellectual Property Rights

Unsurprisingly, copyright and trademarks play a central role in protecting the industry’s intellectual property rights. India had copyright and trademark regulations even before independence, and the regulations have also been revised as the times change. Where legislation is not clear, Indian courts have filled the gaps time and time again. Compared with patents, the protection and enforcement of copyright and trademark rights are robust.

De minimis infringement

The de minimis principle has been implemented by the Delhi High Court as a defence against copyright infringement. The doctrine states that “the law does not care about trivial matters.” It has long been regarded as a common-law defence and justification for criminal acts. Considering that a large number of small-scale copyright infringement incidents often occur inadvertently, the “minimal” criterion occupies an important position in copyright law.

The Delhi High Court applied this concept while deciding a copyright infringement lawsuit in Independent News of India v. Yashraj Films Pvt Ltd (2012). Here, a singer appeared on a chat TV show. In an interview with the singer, a part of a popular song was played. The alleged infringement is considered trivial and therefore cannot be prosecuted. In the process, the Court laid down five considerations for such cases:

The size and type of harm – in the case at hand, it was found that only five words were used. The judges considered this to be too trivial and insignificant to warrant an actionable claim;
The cost of adjudication – this relates to the amount that would be charged by the copyright owner when compared to the cost of adjudication;
The purpose of the violated legal obligation;
The effects on legal rights of third parties; and
The intent of the alleged wrongdoer.

Section 52 of the Copyright Act 1957 sets out the exceptions deemed not to amount to copyright infringement. The applicability of de minimis as a defence has been recognised in India beyond the scope of Section 52 of the Act. Despite the lack of apparent textual legislative support, considering the ultimate motives of the alleged offender, the Court has freely adapted the minimum defence. However, there may be some textual support. Copyright infringement is established when the alleged infringer copies the work “as is” or copies most of the content of the work. So logically, if the court concludes that the number of copies in a particular case is minimal, the inference may be that the number of copies involved is not significant. Of course, in this case, it is necessary to ensure that the first of the five principles above (i.e. the size and type of lesion) is evaluated from a quantitative perspective and not from a qualitative purpose.

Governing laws and rights

India is a common law country and a signatory to various international IP treaties. The essential ordinances which protect intellectual property in the Indian media and broadcasting industry are:

The Copyright Act 1957; and
The Trademarks Act 1999.

These acts are exhaustive in terms of distinguishing:

Original content;
Owners’ rights;
Remedies for infringement;
Fair use and defences;
Broadcasting, moral and performance rights; and
Border measures against the import of infringing copies and material.

In particular, copyright protection is extraterritorial because India is a signatory to the Berne Convention and the Trade-Related Intellectual Property Agreement. Indian law does not require copyright registration to seek protection. In addition, the courts protect customary rights, such as personality rights and marketing rights. Today’s unique challenges facing the media and broadcasting industry can be measured by the various issues involved in judicial review and interpretation.

Broadcasting rights, internet streaming and statutory licensing

Section 37 of the Copyright Law grants broadcasting organizations a special right, called “reproduction right by broadcasting”, independent of the copyright of the creator or owner of the broadcast work. The duration of the rights is 25 years. In the 1997 Asia Industrial Technologies v Ambience Space Sellers case, the Mumbai High Court held that as long as broadcasting organisations can watch in India, broadcasting organizations can enjoy this right even if they are outside India.

The right entitles a broadcaster to prevent others from engaging in the following concerning the broadcast of a programme or a substantial part thereof:

re-broadcasting;
disseminating a broadcast without authorisation in exchange for payment; and
making unauthorised sound or visual recordings of the broadcast or reproducing, selling or renting such recordings.

The Copyright Act does not define a ‘broadcasting organisation’, although ‘broadcasting’ is defined as ‘communication to the public’:

by any means of wireless diffusion, whether in any one or more of the forms of signs, sounds or visual images; or
by wire.

Section 31D of the Copyright Law allows broadcasters to apply to the Intellectual Property Appeal Board (a court specializing in intellectual property issues) to set statutory royalties for literary and musical works and sound recordings. The organisation must pay royalties to the copyright owner at the rate set by the board of directors. This clause uses the terms “radio transmission” and “television transmission”. In 2013, Section 31D was introduced into the Regulation. By then, the legislature had understood that the internet was a medium for sharing content. The Court had to work recently to resolve the question of whether streaming services are eligible to become broadcasters. The Mumbai High Court responded to this question in the Tips v Wynk case in 2019 based on the legal licensing system stipulated by the law. The Court held that online streaming services could not benefit from a legal licensing system because Section 31D only applies to radio and television stations. The Court interpreted the exclusion of any reference to the internet in the clause as a conscious choice to restrict the legal licensing system to radio and television stations.

In the case of live broadcasting

The broadcasting and media industries, especially sports and live competitions, have always focused on contemporary or simultaneous reports of such events broadcasted by authorized official broadcasters that invest in broadcasting rights through web pages and mobile applications.

In Star India v. Piyush Agarwal (2013), a Delhi High Court judge approved a limited injunction restricting the defendant from disseminating live game information in the form of ball-by-ball score updates or minute-by-minute and game alerts without requiring a permission certificate. Member of the Cricket Control Council of India (BCCI) (the body that manages, organizes, and promotes Indian cricket matches). The plaintiff has obtained BCCI’s television broadcasting license and is trying to prevent the defendant from reporting on its mobile app for modern text-based cricket matches. The Court announced a limited injunction that allowed the defendants to delay their appearance in court by 15 minutes after the actual broadcast so that the official broadcasters could benefit from their investment. On appeal, the Appeals Chamber of the Delhi High Court overturned this decision, holding that the information and updates are basic facts and are not protected by copyright law. Therefore, posting or sharing competitive information or facts, whether for commercial or non-commercial use, does not constitute copyright infringement, unfair competition, or unfair enrichment. The Supreme Court reviewed the sentence. Although the Supreme Court reinstated the temporary arrangement made by the sole judge, it has not yet made a final decision on this issue.

Ways to combat online piracy

John Doe orders have always proven to be an effective way for rights holders to protect their physical and digital world rights. The first order passed by John Doe in India-Taj TV v. Rajan Mandal (2002)-involved the infringement of the rights of broadcast reproduction of sports television channels. The High Court of Delhi appointed a Court Commissioner to confiscate equipment at an unnamed television station premises. A cable TV operator retransmitted the 2002 World Cup without reaching an agreement with the plaintiff (official broadcasting company). Over the years, many media companies and broadcasters have successfully used the John Doe model to combat mass piracy.

However, John Doe’s orders also led to abuses in which content and legal entities were blocked under the guise of such orders. This resulted in the Bombay High Court in Eros International Media v BSNL (2016) prescribing a three-step verification test for blocking orders to be passed:

written verification and assessment by an external agency of infringing uniform resource locators (URLs);
second-level verification by the complainant and its advocates; and
an affidavit on oath.

The Court also stipulated that all internet service providers must implement a protected page providing court and order details so that any legal or innocent party can seek help in court. John Doe orders are fading in today’s digital age (piracy is instantaneous, and piracy cannot be traced), so a new solution is needed. In this regard, the 2019 Delhi High Court’s decision on the fight against piracy, through a dynamic court order, provided significant relief to copyright owners in the media and broadcasting industries to combat Hydra Headed fraudulent websites. To identify and prevent such sites from hosting and providing pirated content, the Court issued a ruling in UTV v 1337X (2019). It said to design effective mechanisms by issuing “dynamic bans” to harm identified websites and mirrored websites in the future. The Court stipulated the following factors to classify a website as a “fraudulent website”: The primary purpose of the website

is to facilitate infringement;
the traceability of the owner;
the website operator does not respond to the removal notice;
the website contains infringement promotion A description of the copyright and

traffic or frequency of visits to the site.

The Court’s criteria for identifying rogue websites were necessary to avoid the dynamic injunction from being used against genuine online platforms that fit under the category of intermediaries and are granted statutory protection under the Information Technology Act 2000.

However, in 2016, the Indian government formulated specific guidelines in its National intellectual Rights Policy 2016. The objectives of these policies are:

Raise awareness about the economic, social and cultural benefits of copyright protection
Raise awareness about these piracy technologies
Provide appropriate amendments in accordance with the Cinema Law and related legislation. To strengthen the provisions of the law, established an intellectual property management and promotion team.

Other initiatives taken by the government to curb piracy are

To combat piracy, the Maharashtra Cyber Cell has worked with several production firms.
In 2019, numerous E-Commerce Policies, which includes a unique section on Anti-Piracy Measures, was released.
The Indian government’s Ministry of Home Affairs has created a nationwide cybercrime reporting portal, where citizens may file complaints about cybercrime. There are two types of complaints: the first being women and children’s complaints, and other cyber concerns. The second category includes concerns about online piracy.

Conclusion

The media and broadcasting industry is proliferating and traversing its traditional standards towards new pastures avenues. Of course, new challenges are emerging with such growth. It is encouraging that Indian courts resolve these issues in accordance with global jurisprudence, taking into account the balance that must be maintained between freedom of expression and the rights of the content owners. The problems covered in this article are not the only issues. Many others are under discussion both inside and outside the Indian courts. At the very least, it is clear that Indian courts face cutting-edge legal issues when it comes to these areas. Certainly, the Indian judiciary appears to be up to the challenge of addressing these issues. The media industry itself is ready for this battle. The industry may be able to solve more problems in the future. Given the experience so far, areas such as contract management, arbitration, and technical measures require special attention.

References

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skills.

LawSikho has created a telegram group for exchanging legal knowledge, referrals, and various opportunities. You can click on this link and join:

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Nike Innovate C.V vs. Li Jian Fan

By

Oishika Banerji

-

September 23, 2021

0

Image source: https://blog.ipleaders.in/insights-oligopolistic-nature-nike/

This article has been written by D.Priya pursuing the Diploma in Cyber Law, FinTech Regulations and Technology Contracts from LawSikho. This article has been edited by Aditi Deshmukh (Associate, Lawsikho) and Dipshi Swara (Senior Associate, Lawsikho).

Table of Contents

Introduction

Nike Innovate C.V of Beaverton, Oregon, United States of America is the trademark owning subsidiary of a publicly traded multinational company Nike, Inc., (“NI”), headquartered in the United States of America. NI is active in the clothing industry, further Nike Innovate owns a portfolio of trademark registration for JORDAN (Word Mark) throughout the world. On March 31st, 2013, the domain named <authenticjordanair.com> was registered with eName Technology Co., Ltd (the “Registrar”) by Li Jian Fan of Putian, Fujian, China. The said domain name resolves to a website that purports to sell “JORDAN” sneakers.

On August 29th, 2018, a complaint was filed in WIPO Arbitration and Mediation Center (the “Center”) by Nike Innovate C.V against Li Jian Fan to transfer the disputed domain name which resembles Nike Innovate C.V’s Trademark “JORDAN”. On which the WIPO (World Intellectual Property Organisation) appointed Deanna Wong Wai Man as the sold panelist on October 12, 2018 and the matter was decided on 24 October 2018.

Facts of the case

Nike Innovate being the owner of the registered trademark named ‘JORDAN”, which has jurisdiction throughout the world, found that a website registered in the domain name <authenticjordanair.com> with eName Technology Co., Ltd (the “Registrar”) with no rights and legitimate interests. Further, the website is purported to sell “JORDAN” sneakers which is confusing and identical to that of Nike Innovate C.V’s Trademark “JORDAN”.

Being aggrieved by the misuse of a confusing domain name, Nike Innovate C.V, filed a complaint with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2018. After verifying with the “Registrar”, the center confirmed that Li Jian Fan listed as the registrant and provided the contact details. The “Center” sent a formal communication to the parties on confirmation of the language of the proceedings to be in English and Chinese. On September 7 2018 proceeding began, as the complaint satisfied the requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for “UDPR” (the “Rules”) and the WIPO Supplemental Rules for “UDPR” (the “Supplement Rules”).

In order to understand “UDRP”, we have to first understand the meaning of the Domain Name dispute and cyber-squatting. Domain name dispute is nothing but trademark infringement on the internet. The issue is the relationship between Domain Name registration and trademark rights. A major challenge is that registration for Domain Name is on a first-come, first-serve basis and the person who registered a domain first is the owner of that Domain Name, in such circumstances, disputes arise from the abusive and bad-faith registration of Domain name that includes trademark, and is known as “Cybersquatting”. The only intention of the cyber squatter is to fetch financial gain by reselling the well-known internet domain at a profit. The dispute of such a nature is resolved by approaching WIPO (the “Center”) with the help of “UDRP”.

Parties arguments

Nike Innovate C.V contends that the disputed domain name is confusingly similar to its trademark of “JORDAN”, that Li Jian Fan has no rights or legitimate interest regarding the disputed domain name, and that the registered domain name was being used in bad faith.

Nike Innovate C.V claimed that its trademarks are famous and well known in the clothing industry, and provide a sales number of carrying its trademarks all over the world. Nike Innovate C.V further contended that the disputed domain name is linked to an active website, using Nike Innovate C.V’s trademarks and offering counterfeit products for sale to consumers with no rights or legitimate interest regarding the domain name and uses in bad faith.

Lis Jian Fan, on the other side, failed to respond to any of the Nike Innovate C.V contentions.

Panel decision

The panel decision is based on the two issues:

Language of proceedings.
Policy requirement; namely identical or confusingly similar, rights or legitimate interest, and registered and used in bad faith.

Language of proceedings

As per paragraph 11(a) of the “Rules”, the language of the administrative proceedings shall be the language of the registration agreement. The Complainant Nike Innovate C.V registered in English, whereas Li Jian Fan registered in Chinese. On perusal, the panel concluded that even after giving the liberation to select their respective language to contest the case, the respondent Li Jian Fan failed to respond in the language’s selection and the fact that the website to which dispute domain name lead contains not a single word in Chinese and only contains text in English, so the panel concluded the proceedings shall be in English.

Policy requirement

In order to contest the issued under “UDRP” the policy requires it to fulfill the three major elements:

the disputed domain name is identical or confusing, similar to a trademark or service mark in which the complainant has rights;
the respondent has no right or legitimate interest in respect of the disputed domain name;
The disputed domain name has been registered and is being used in bad faith.

Identical or confusingly similar

After perusal of the evidence, the panel finds that the complainant Nike Innovate C.V has shown that he has valid rights in the trademark “JORDAN”, which also shows the use and registration of the same as trademark in a large number of jurisdictions throughout the world. The panel finds that the addition of “authentic” and “air” does not distinguish the disputed domain name from Nike Innovate C.V trademark.

Further, the panel finds Nike Innovate C.V intensively using the sign “air Jordan” as an unregistered trademark for one of its shoe products links since 1984. Therefore, the panel ruled that the disputed domain name is confusingly similar to the Nike Innovate C.V registered and unregistered trademarks as per the WIPO Overview(Section 1.8) and it needs to be protected as per WIPO Overview, (Section 1.3) for unregistered trademarks.

Right and legitimate interest

Nike Innovate C.V has provided enough evidence that Li Jian Fan has no rights or legitimate interest in the disputed domain name as he is not authorized with any license, distribution agreement or other permission from the trademark owner Nike Innovate C.V to resell or distribute and Li Jian Fan neither making a legitimate noncommercial use or fair use of the Nike Innovate C.V, trademark “JORDAN”.

After considering the facts that Li Jian Fan failed to show evidence to prove his rights and legitimate interest, the panel ruled that Nike Innovate C.V had satisfied the requirement of the “Policy”.

Registration and used in bad faith

Nike Innovate C.V being the owner of the famous trademark provided evidence to show that Li Jian Fan used the domain name in bad faith as the website displays Nike Innovate C.V trademark “JORDAN” across its top banner intended to divert consumer to the disputed domain name, where unauthorized products are sold. The panel took note of the fact that the mere search engine must have shown that Nike Innovate C.V trademark “JORDAN” at the time of registration of the domain name <authenticjordanair.com>.

The panel further noted that Nike Innovate C.V submitted enough evidence to show that Li Jian Fan is already conducting opportunistic domain name squatting activities, using the domain name in bad faith to take unfair advantage of the trademark in a habitual manner in order to fetch financial gain. Therefore, the panel concluded that Nike Innovate C.V satisfied the requirement of the “Policy” under the ‘registered and used in bad faith’ clause and that it is in accordance with paragraph 4 (i) and 15 of the Rules, thus the panel ordered that the disputed domain name <authenticjordanair.com> be transferred to the Nike Innovate C.V.

Conclusion

As the facts and evidence clearly showed that Li Jian Fan registered the domain name in order to confuse the customers and that he has no rights or legitimate interests to the trademark, “JORDAN”. Further, Nike Innovate C.V proved that Li Jian Fan registered the disputed domain name to divert consumers to the disputed domain name to sell unauthorized counterfeit copies of the Nike Innovate C.V products in bad faith. Based on the said evidence and fact, the panel ordered to transfer the disputed domain name to the complainant Nike Innovate C.V.

A similar view is also taken in Oki Data Americas, Inc V. ASD, Inc, WIPO cases No. D2001-0903, Nintendo of America.Inc V. Tasc. Inc and Ken Lewis, Arcelormittal (SA) v. Manuel Lopez, Manuel Lopez Cantu and Philip Morris Products S.A Vs. Yang Jian Nan.

Therefore, it is concluded that the mere concept of registering domain name in first come first served bases with addition of prefix and suffix to the existing trademark, will not prevent the trademark owner from claiming their rights against the misuse of their trademark as per the Uniform dispute resolution policy, further the policy protects not only the rights of the trademark holder but also protect the unregistered sub products on providing with evidence that the owner using the product name for long time and on production of evidence that advertisements made on the unregistered products. Thus, the above case explains the domain name dispute and cybersquatting in a detailed manner.

References

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