VOL IX                                                      ISSUE NO. 18                                    September 05, 2017          

In This Issue

India: "Building Trademarks" and the Right to Click Pictures

The very definition of a trademark under Indian law stresses the need to be “graphically represented”, i.e. in a two-dimensional form. Section 2(1)(zb) of the Trade Marks Act, 1999 defines a trademark as - “…a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others…” Such a mark may include: “…a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.”

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India: Supreme Court directs Prashar Bharati not to re-transmit Live Sporting Events to Private Cable Operators

In a recent judgment delivered by the Supreme Court of India, Hon’ble Justices Ranjan Gogoi and Navin Sinha, upheld a ruling of the Delhi High Court and said that the live feed received by Prasar Bharati, from content rights owners is only for the purpose of re-transmission of the said signals on its own terrestrial and DTH (Direct to Home) networks and not to Cable Operators so as to enable the Cable TV operators to reach such consumers who have already subscribed to a cable network.  

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India: "Building Trademarks" and the Right to Click Pictures

 

Source: Tripadvisor.in

 

The very definition of a trademark under Indian law stresses the need to be “graphically represented”, i.e. in a two-dimensional form. Section 2(1)(zb) of the Trade Marks Act, 1999 defines a trademark as -

 

“…a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others…” Such a mark may include: “…a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.” [1]

 

These requirements exist for entirely practical reasons. Representations must clearly demonstrate the nature of the mark and show each feature clearly enough to permit proper examination, and thereafter, must allow the ordinary consumer to comprehend what is being claimed as a trademark. For a non-traditional trademark, such as a colour, shape, sound or smell, the application must include a concise and accurate description of the trademark, whether as a written description, or in the form of a picture. This description is not a mere formality and in fact plays an essential role when considering the role of the mark in trade.

 

However, with changes in society, technology and the paradigms of representation, what constitutes a trademark has been evolving over the last few decades, and perhaps has even more evolving to do. The Indian trademark law has already recognized three-dimensional or shape marks, as well as the packaging and “trade dress” of goods. The recently announced Trade Mark Rules, 2017, have taken a further step by including “sound marks” within the ambit of what may now qualify as a trademark. Rule 26 of the new Trade Mark Rules now provides for the representation of sound marks as applicable trademarks. In this respect, a sound mark application may be submitted “…in the MP3 format not exceeding thirty seconds’ length, recorded on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations”. Thus, we see that even with regard to sound marks, graphical representation has not been completely done away with. The sound will need to be represented “graphically” in the form of musical notations.

 

Yet another milestone in Indian trademark law was achieved with reputed newspapers recently claiming that Taj Mahal Palace Hotel in Mumbai became the first building in India to achieve trademark protection for its architectural design.[2] While the provision to copyright architectural plans and layouts (which we shall discuss at length subsequently) has been around for quite some time, 'trademarking' buildings and other architectural designs has been a hotly debated topic all around the world, with the principal question being whether they qualify for such protection, and what the granting of such rights to an architectural structure would entail. The following is a tabular representation of the registration/application numbers –

 

 

 

The Taj Mahal Palace Hotel may be the first building to be granted trademark protection in India, but several landmark buildings around the world, principally in the United States of America have already achieved this distinction. A few such examples are -

 

 

 

Under the American Lanham Act, architectural works are also eligible for registration. Therefore, the USPTO’s procedure provides for registration of an architectural structure as a trademark if “the three-dimensional configuration of a building is able to be registered only if it is used in such a way that it is or could be perceived as a mark. ” [3]

 

In the evolution of the criteria of “graphical representation” of trademarks, the next significant step is being taken in the European Union, where the requirement of “graphical representation” is being done away with altogether! The EU Trademark Reform Package, which came into effect in March, 2016, now provides that national trademarks and European Union trademarks (EUTMs) shall from now on consist in:

 

 any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of: …

 

(b) being represented on the register, in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

 

The natural implication of this is that it will now become much easier for brand owners to apply not only for colors, three-dimensional shapes, sounds and scents as trademarks, but it also opens up new avenues for the eventual registration of marks in the form of holograms or even movement marks, such as in the form of GIFs!

 

From a practical point of view, though, there will remain uncertainties and technical obstacles to the protection of unconventional trademarks. These obstacles are inherent to the current filing system for trademark applications, the examination process, and the need for a mark to be distinctive. Even though the assessment of eligibility of non-traditional trademarks will indeed be a challenge, it is exciting to ponder upon the new trademarks that are likely to come into being as a result of these revolutionary changes.

 

So, what is the right all about?

 

Ever since the registration certificate was issued on May 17, 2017, the story was widely covered in mainstream media with suggestions being made by some media houses that henceforth royalty will need to be paid for taking a photograph of the building. Filtering out the obvious element of sensationalism in the news as reported by the mainstream media, a closer look at the registration document shows that the registration covers “services for providing food and drink; temporary accommodation’. In effect, the building design/image cannot be used in respect of services for which the registration is obtained without authorization from the owner.

 

What happens if a third party commercially exploits the image e.g., to make coasters, fridge magnets or let us say postcards with image identical or similar to the registered mark. Will the registration recently granted help? The answer is - it will be persuasive, however, the owner of 'Taj Mahal Palace' hotel will need to establish its reputation and goodwill, that is, rely upon its common law rights that exist independent of registration to stop a third party from copying its trade mark. As per the Indian trademark law, the current registration only grants exclusive rights in relation to services for which registration has been granted. Therefore, ideally Indian Hotels Company should have also filed applications in Class 14, 16, 21, and 25,etc, to enlarge its statutory right and prevent others from commercially using the said images in printed matter, souvenirs or other products in that class. Thus, by necessary inference, tourists are very safe to take photos with the ‘Taj Mahal Palace’ hotel in the background during their next trip to Mumbai as long as the same are not for commercial use.

 

A case for panorama rights?

 

To move the debate away from trademark law, it is pertinent to mention over here that the European Union Copyright law has a provision, colloquially called ‘Freedom of Panorama’, that permits taking photographs and video footage and creating other images (such as paintings) of buildings and sometimes sculptures and other art works which are permanently located in a public place, without infringing on any copyright that may otherwise subsist in such works, and the publishing of such images. It limits the right of the copyright owner to take action for breach of copyright against the creators and distributors of such images. It is an exception to the normal rule that the copyright owner has the exclusive right to authorize the creation and distribution of derivative works. The phrase is derived from the German term Panoramafreiheit ("panorama freedom").

 

Directive 2001/29/EC of the European Union provides for the possibility of member states having a freedom of panorama clause in their copyright laws[4] . Panoramafreiheit is defined in Article 59 of the German Urheberrechtsgesetz[5] , and in the United Kingdom, Section 62 of the Copyright, Designs and Patents Act, 1988, states that “a copyright in a building (sculptures, models for buildings and works of artistic craftsmanship) is not infringed by (a) making a photograph or film of it or by (b) making a broadcast or a visual image of it.[6]

 

However, the law in France is not as liberal as its counterparts in Germany and the UK. Article L122-5 of the French Code of Intellectual Property only provides for a ‘limited’ freedom of panorama for works of architecture and sculpture. The code authorizes “reproductions and representations of works of architecture and sculpture, placed permanently in public places (voie publique), and created by natural persons, with the exception of any usage of a commercial character[7] . The limits to freedom of panorama in France have a drastic effect on Wikipedia articles about French architecture. Wikimedia Commons editors routinely delete any images of recent French architecture. For example, on February 1, 2017, the image of the new Philharmonie de Paris concert hall by architect Jean Nouvel, opened in 2015, was deleted as a violation of freedom of panorama. There is no clear image of the Louis Vuitton Foundation building, opened in Paris in 2016; only a poor quality image where the building is unidentifiable, and another where it mostly hidden by trees.

 

Moving westwards from the continent, in Canada, Section 32.2 (1) of the Copyright Act states that, “it is not an infringement of copyright for any person to reproduce, in a painting, drawing, engraving, photograph or cinematographic work, an architectural work, provided the copy is not in the nature of an architectural drawing or plan, or a sculpture or work of artistic craftsmanship or a cast or model of a sculpture or work of artistic craftsmanship, that is permanently situated in a public place or building”[8] .

 

Finally, in the United States, the Copyright Act of 1976, states that, “the copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.” [9]

 

With regard to India, the Copyright Act, 1957, also provides for exception to copyright infringement. Though the phrase “Freedom of Panorama” is not expressly mentioned in the statute itself, but a constructive interpretation of Section 52 (1) (s) and (t) together gives Indian law the scope for Freedom of Panorama. While Section 52 (1) (s) provides for an exception in so far as making or publishing of a painting, drawing, engraving or photograph of a work of architecture, Section 52 (1) (t) extends a similar right as against sculptures and works under Section 2 (c) (iii) i.e. “any other work of artistic craftsmanship”. This is where the panorama exception in India can be appreciated. Whereas most of the above quoted European and American legislations are subject to qualifications like non-commercial use, as it only allows for freedom of panorama if the copyrighted work is put to use for non-commercial or educational purposes, the Indian law is not subject to such qualifications.

 

[1]Section 2(1)(m), Trade Marks Act, 1999.

[2]Indian Trademark Application Nos. 3386350 and 3386351.

[3]scholarlycommons.law.northwestern.edu/cgi/viewcontent.cgi?article=1031&context=njtip (fn 125.) United States Patent and Trademark Office, Trademark Manual of Examining Procedure § 1301.02 (c), available at                 http://www.uspto.gov/web/offices/tac/tmep/ .

[4]Article 5(3)(h) of 2001/29/EC

[5]§59 UrhG (Germany)

[6]Section 62 of the United Kingdom Copyright, Designs and Patents Act, 1988

[7]Article 5, Section 11 of Code on Intellectual Property

[8]Section 32.2. (1) of the Canadian Copyright Act

[9]17 U.S. Code § 120(a)

 

 

 

 

 

 

 

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India: Supreme Court directs Prashar Bharati not to re-transmit Live Sporting Events to Private Cable Operators

Source: Prasarbharati.gov.in

 

 

In a recent judgment delivered by the Supreme Court of India, Hon’ble Justices Ranjan Gogoi and Navin Sinha, upheld a ruling of the Delhi High Court and said that the live feed received by Prasar Bharati, from content rights owners is only for the purpose of re-transmission of the said signals on its own terrestrial and DTH (Direct to Home) networks and not to Cable Operators so as to enable the Cable TV operators to reach such consumers who have already subscribed to a cable network.

Brief facts

  • The Board of Control for Cricket in India (‘hereinafter referred to as ‘the Respondents’) is the approved national level body holding virtually monopoly rights to organize cricketing events in the country. There is currently in force a Media Rights Agreement between Star India Private Limited and BCCI under which Star India Private Limited has been granted exclusive rights to telecast cricketing events that take place in the country.

  • Star India Private Limited, in turn, has engaged ESPN Software Private Limited for distribution, inter-alia, of the telecast of all cricketing events covered by the Media Rights Agreement.

  • The BCCI and its original assignee, Nimbus Communications Limited had earlier moved to the Delhi High Court by way of Writ Petition (No.7655 of 2007) praying for directions to be given to the Prasar Bharati Broadcasting Corporation and the Union of India to encrypt Doordarshans Satellite Transportation Feed of live broadcasting signals of cricket matches organized by the BCCI to the Doordarshan Kendras and transmission towers throughout India for subsequent broadcasts on Doordarshans terrestrial and DTH networks.

  • In addition to the above, an appropriate declaratory relief was also prayed for to the effect that no television network, DTH network, Multisystem network or local cable operator can broadcast such events without a licence from the content rights owners/holder was also sought. The said writ petition was dismissed by the learned Single Judge of the High Court primarily on the ground that the matter relates to the policy domain, and, therefore, is beyond judicial reach and scrutiny. Aggrieved by the decision of the Single Judge LPA No.1327 of 2007 was filed before the High Court.

  • Writ Petition (No.8458 of 2007) was also filed initially by BCCI and its erstwhile assignee Nimbus for striking down Section 3 of the Sports Broadcasting Signals (Mandatory Sharing with Prasar Bharati) Act, 2007 (hereinafter referred to as the ‘Sports Act, 2007’) insofar as it relates to cricket test matches and also striking down the notification dated September 13, 2000, issued by the Central Government notifying DD1 (National) channel and DD (News) channel as mandatory channels to be carried compulsorily by the Cable Operators. In the same writ petition the notifications dated July 3, 2007 and October 19, 2007, notifying the sporting events mentioned therein in respect of cricket to be of national importance were also challenged. Also challenged the order of the Government of India dated May 29, 2007.

  • Subsequently, ESPN Software India Private Limited and Star India Private Limited had been impleaded in the aforesaid writ petitions in view of Media Rights Agreement.

  • The aforesaid appeal (LPA No.1327 of 2007) and Writ Petition (No.8458 of 2007) were allowed by the Division Bench by holding that on an interpretation of the provisions of Section 3 of the Sports Act, 2007 and Section 8 of the Cable Television Networks (Regulation) Act, 1995 (hereinafter referred to as the ‘Cable Act, 1995’) the signals received by Prasar Bharati from the Respondents should not be placed in the designated Doordarshan channels which are to be compulsorily carried by the Cable Operators under Section 8 of the Cable Act, 1995.

  • Aggrieved by the order of the Division Bench of the Delhi High Court, the present appeals have been filed by the Union of India, Prasar Bharati, Home Cable Network Private Limited and Sopan Foundation (hereinafter referred to as ‘the Appellants’)

Appellant’s Submissions

  • The object of the The Prasar Bharati (Broadcasting Corporation of India) Act, 1990 (hereinafter referred to as the ‘Prasar Bharati Act, 1990’), is to reach maximum number of citizens and provide access to news and information to citizens living in the remote villages and hamlets of the country. Under Section 12 of the Prasar Bharati Act the primary duty of the Corporation is to organize and conduct public broadcasting services to inform, educate and entertain the public and to ensure a balanced development of broadcasting on radio and television. Section 12(2)(e) of the Prasar Bharati Act, 1990 clearly stipulates that Prasar Bharati shall, inter alia, be guided by the objective of “providing adequate coverage to sports and games so as to encourage healthy competition and the spirit of sportsmanship.”

  • Similarly, the object behind the enactment of the Sports Act, 2007 is to provide access of sporting events of national importance to a large number of viewers on free to air basis. It is in the above light that the provisions of Section 3 of the Sports Act, 2007 and Section 8 of the Cable Act, 1995 have to be construed.

  • The aforesaid provisions should not be read and understood to be confined to re-transmission of the live signals compulsorily shared with Prasad Bharati by the content owners only on the terrestrial and DTH networks of Prasar Bharati. Any such view would be counter-productive and go against the mandate of Section 3. Sub-section (2) of Section 3 was also pointed out to contend that the possible loss of revenue to the content rights owners/holder due to the mandatory requirement of sharing live feeds with the Prasar Bharati has been adequately taken care of by the scheme of arrangement of revenue contained in sub-section (2) of Section 3. It is urged that it is in the light of the above that the provisions of Section 8 of the Cable Act, 1995 have to be construed.

  • It is further contended that though the Cable Act, 1995 is anterior to the enactment of the Sports Act, 2007, Section 8 of the Cable Act, 1995 should not be understood to have been whittled down by the enactment of Section 3 of the Sports Act, 2007 in the absence of any conspicuous indication of such legislative intent in Section 3. In fact, the mandatory duty cast on the Cable Operators by Section 8 is another step in the direction of providing access to the masses which clearly suggests that the provisions of the two enactments operate harmoniously in their respective fields without impacting each other.

Respondent’s Submissions

  • It was contended that ESPN Software Private Limited and Star India Private Limited under the Media Rights Agreement will be seriously infringed in the present case if the view taken by the High Court is to be adopted. Though such rights may seemingly come under Section 37 of the Copyright Act, 1957, it is argued that the telecast of the cricket matches is like production of a cinematograph film within the meaning of Section 2 (f) of the Copyright Act.

  • There is a statutory curtailment of the said right under Section 3 of the Sports Act, 2007, the extent of which must be understood to be confined to the explicit contours of the said provision which cannot be readily and easily extended. Any unwarranted extension would amount to an invasion of the copyright/broadcasting right of the Respondents. The legislation is expropriatory in character. It must, therefore, be strictly construed.

  • It is urged that Section 8 (1) engrafts a must carry obligation and such must carry obligation cannot extend the scope of the must share mandate contained in Section 3. Emphasis is laid on the words “its terrestrial networks and Direct-to-Home networks” appearing in Section 3 to contend that the must share mandate must be understood to be to enable the Prasar Bharati to re-transmit the same on its terrestrial and DTH networks only.

  • Star India Private Limited specifically contended that a huge amount of revenue of over INR 3000 crore (approx. USD 468640200) has been paid by them towards broadcasting/telecasting rights which must be allowed to have full effect and any restriction in the exercise of such right, if at all, can operate only to the extent explicitly provided for in Section 3.

  • BCCI, specifically argued that any extended meaning to Section 3 beyond what flows from its plain language would have the effect of infringing the rights of the BCCI under Article 19(1)(a). Several precedents have been cited to contend that the right under Article 19(1)(a) would extend to receipt of information also.

  • Article 19(1)(a) is certainly expansive to include receipt of information. The same is to the effect that in the present case it is not the contention of BCCI that the provisions of Article 19(1)(g) of the Constitution have been violated. Insofar as the provisions of Article 19(1)(a) of the Constitution is concerned, it was contended that, at best, the present instance is a case where the slice of the cake becomes a little smaller; but that by no means would attract Article 19(1)(a).

Judgment

  • Much argument had been advanced as to whether Section 3 of the Sports Act, 2007, is expropriatory in nature. The Court had no hesitation in holding the said provision of the Act to be of such a nature to the extent that it curtails or abridges the rights of a content owner or holder and television or radio broadcasting service provider.

  • Sharing of revenue between the content rights owner or holder and the Prasar Bharati envisaged by Section 3(2) of the Sports Act, 2007, would hardly redeem the situation to take the Sports Act, out of the category of expropriatory legislation. Section 3 therefore, has to be interpreted very strictly.

  • Not only did the Court not find in the provisions of Section 3 of the Sports Act, 2007, any recognition of the requirement stipulated in Section 8 of the Cable Act, 1995; the plain language of the said provision i.e. Section 3 of the Sports Act, 2007, made it clear that the obligation to share cast on the content rights owner or holder, etc. with Prasar Bharati is to enable Prasar Bharati to transmit the same on “its terrestrial and DTH networks”. If the legislative intent was to allow Section 3 not to operate on its own language but to be controlled by Section 8 there would have been some manifestation of such intent either in Section 3 or in Section 8 (by an appropriate amendment thereto).

  • In the absence of any such legislative intent it will only be correct to hold that Section 3 of the Sports Act, 2007, operates on its own, without being controlled by any of the conditions or stipulations contained in Section 8 of the Cable Act, 1995.

  • Therefore, the Court came to the conclusion that under Section 3 of the Sports Act, 2007, the live feed received by Prasar Bharati from content rights owners or holders is only for the purpose of re-transmission of the said signals on its own terrestrial and DTH networks and not to Cable Operators so as to enable the Cable TV operators to reach such consumers who have already subscribed to a cable network.

 

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