Battle of the Eagles

It has recently been reported that  U.S. based Retail Royalty Company had filed a suit for trademark infringement by popular Indian retail clothing brand Pantaloons. Pantaloons is owned by the Aditya Birla Group which in itself goes on to show its powerful reputation in the Indian market and among the consumers. It had been alleged that the Indian company had adopted a logo deceptively similar for the same line of business as its American counterpart.

Facts 

The defendants were using the name ‘URBAN EAGLE AUTHENTIC OUTFITTERS’ with the logo of an URBAN EAGLE whereas, the plaintiff was selling its clothing line under the brand ‘AMERICAN EAGLE OUTFITTERS/AMERICAN EAGLE’ with the logo of AMERICAN EAGLE. The defendants intended to settle the matter as soon as possible and proposed that they would remove the phrase ‘AUTHENTIC OUTFITTERS’ and retain ‘URBAN EAGLE’ word mark along with a new Eagle device as logo. The Defendants further proposed that for the goods already available in the retail stores the labels would be removed and only the term URBAN EAGLE would be used. The Plaintiffs contented that the defendants should be prevented from even making use of the mark URBAN EAGLE since it was deceptively similar to the plaintiff’s AMERICAN EAGLE.

Decision 

The court disagreed on the aspect of the plaintiff stating that there was deceptive similarity between the two marks owing to the use of the word EAGLE, it was observed that the plaintiff could not claim monopoly over the word ‘EAGLE’ since it was a word used in common parlance, it would be a different case if monopoly was claimed on AMERICAN EAGLE since this was the trademark registered by the plaintiffs in the trademark register. A comparison of the two logos showed that the plaintiff’s depicted an Eagle on the verge of landing/descending whereas that of the defendant’s showed an eagle taking a flight/ascending hence, there was a distinction between the two marks. The court stated that since the decision was almost at an exparte stage, and the defendant had not been given an opportunity to file return statements and replies because they had only been granted two days time for the same hence, the views of the court were only prima-facie. The plaintiff had alleged that there had been a case of trademark infringement under Section 29(1) by the defendant; also, there was a case of deceptive similarity. The court was of the view that with the removal of ‘AUTHENTIC OUTFITTERS’ by the defendant there existed only URBAN EAGLE and it was not similar to AMERICAN EAGLE, the two were sufficiently distinct in nature. The court reiterated that the plaintiff had a trademark claim for the use of the word AMERICAN EAGLE, it could not restrain others from using ‘EAGLE’ as a part of their mark. The court failed to find any public interest in the present litigation since the goods in question were clothing not pharmaceuticals which demanded extra caution to prevent deceptive goods from flooding the market. Also, the court was convinced that if the defendant would only use URBAN EAGLE there would be no confusion whatsoever among the consumers. The court rejected the plaintiff’s copyright claim over ‘swooping eagle’ mark and stated that copyright protection under Section 13 was granted only to original artistic works and the same would not qualify within that criteria. Finally, the court stated that the plaintiff could be given monetary compensation if it is shown that there is a balance of convenience in its favor however, no interim injunction order was granted by the court citing the same as prima-facie observation of the court.

Conclusion

This is an ongoing litigation so the verdict is not final for either of the parties but Pantaloons can take a breather for now. While the observations with regard to logo of the two brands might be acceptable, considering that the two depict an Eagle in a different positions (ascending/descending), but the fact that URBAN EAGLE and AMERICAN EAGLE don’t sound confusingly similar can be disputed -considering that while purchasing clothes not everyone has a discerning eye, people can mistake between the two products as well as the logo. The sophistication of the consumer is often an important test resorted to when deciding cases of trademark infringement and in the present case it can be stated that literate, semi-literate, and illiterate people all purchase these goods and the probability of confusion can be reasonably high. Also, the two operate in the same market of goods as well the price of the goods are quite close (based on the information available online) which further increases the possibility of confusion. The defendants did not give any argument to explain their adoption of the phrase ‘AUTHENTIC OUTFITTERS‘ , it is understandable that ‘outfitters’ is a descriptive term but when used with the EAGLE logo and name it can be a cause for confusion among the purchasers regarding the origin of the goods (it can be assumed that there has been a licensing agreement between the two companies hence, similarity of name.) Another issue on which I do not agree with the Hon’ble Delhi High Court is regarding the copyright claim under Section 13, an important condition for copyright claim is that the work must be original but it does not set a very high bar for creativity the work of the plaintiff might not be new and reinforcing the known image of the American Eagle but it has been adopted in a unique fashion such that it invokes the identity of the plaintiff’s brand itself. An Artistic work under the Indian Copyright Act doesn’t have to qualify as a very high quality of work, it can be random scribbling but still be protectable under copyright. It is important to note that the defendant has agreed to make certain amends which a great move to settle the issue soon but regarding the previous conduct, questions can be raised (unless there is a settlement.)

Of course, the above decision is not a final verdict and is merely a prima-facie observation it can be subject to change in the upcoming proceedings after the defendant files a written response to the plaintiff’s allegations. Do you agree with these observations or hold another view for this case? decide for yourself you can access the judgment  here.

Image From: https://en.wikipedia.org/wiki/American_Eagle_Outfitters

Error 404: Author not Found

This blog post is dedicated to the works of popular authors of regional languages who often do not live to see the success and popularity that their works eventually achieve. This post seeks to highlight the fact that there are various Indian authors who have produced some of the finest literary works and yet, never earned significant amount of money from their works.  There have been instances where through the passage of time the identity of the original author is lost and while the work remains extremely popular, the author is long forgotten.

This is the exact situation for the famous ghazal ‘Na kisi ki Ankh ka noor hoon, na kisi ke dil ka qarar hoon‘ [Neither do I bring brightness/joy to anyone’s eyes, nor do I reside in anyone’s heart] which is often associated with the last Mughal Emperor in India -Bahadur Shah Zafar in his last few years. It has been widely believed that this ghazal was his work and  the melancholy in the couplet ideally suits his personality and the circumstances that he was living in (towards the end of his life). Bahadur Shah Zafar was in fact known to be an aficionado of poetry and himself was a very expressive and articulate poet however, this particular ghazal is not among his works of poetry. It has been claimed recently that the original poet is said to be Mustar Khairabadi (grandfather of popular lyricist cum writer Javed Akhtar). Javed Akhtar has stated in an interview that his grandfather had indeed penned down the poem; the poem has been published in a five set volume of books under the title ‘Khirman’. This has given rise to a new dispute whether Bahadur Shah Zafar was the original author or is it really Mustar Khairabadi? this question will remain unanswered it seems.

On a similar note, one of India’s finest literary authors is Munshi Premchand, his works have been read and loved by a lot of all people of different age groups but the truth of the matter is that he himself died in a state of poverty. His works were protected by virtue of copyright laws but the implementation (this was the pre-independence day era) and remuneration at that time were really less. Adding to these factors is the reasoning that many authors are usually not aware of the extent to which the works can be used as a source of income, for instance, translation into different languages itself would not only increase the market for the author but also the revenues. Munshi Premchand’s works were not heavily translated (unlike Tagore) and hence, never received as much recognition and income as it ought to have. His successors might have had more luck because by then India had gained independence and in 1997 all his works were within the public domain.

The only question that I will like to put through this small blog/rambling is what is more important for an author the popularity of the work or the revenues it generates? A politically correct answer would be both but then, if one looks at these instances then it is quite evident that these amazing authors penned down their work irrespective of the monetary advantage. Again, does this mean that the concept of a quid pro quo for copyright laws is flawed? because, the creators would anyway create and publish their work irrespective of the financial aspect (also, the YouTube video uploaders confirm to this logic). Maybe evaluating every creation solely in terms of money is unfair considering that most of the authors have a deep sense of attachment to their works, disparaging of their work is definitely a bigger concern and is protected under the Moral Rights of an author . While no monetary compensation is a strict no-no, it can be argued that a just compensation is adequate, enforcing copyright to an extreme too is unfair for the society (the Happy Birthday song was worth thousands of dollars when covered by copyright! read here). Also, the main concern is that the artist should not be forgotten for their valuable contribution. The controversy regarding Bahadur Shah Zafar’s couplets seems to be pointing towards this issue and is a reminder that may be moral rights of the author are far more important than monetary compensation.

Image Courtesy: https://popcornlawindia.wordpress.com/2015/09/24/happy-birthday-in-public-domain-now/

 

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Of India’s (IP) concerns with U.S.

On 22^nd September, the Center for Internet and Society (CIS) India wrote an open letter to Prime Minister to look into certain IP law related concerns for India ahead of the U.S. – India talks this week (ongoing). There were two major IP issues addressed:

1. The U.S. should ratify the Marrakesh Treaty for visually impaired persons; and
2. The Indian government should not enter into the Trans Pacific Partnership Negotiations (TPP).

Marrakesh Treaty

India is a signatory to the Marrakesh Treaty which calls for a balance between Copyright Laws and Limitations, Exceptions for People with Visual and Print Disability. The Indian Copyright Amendments, 2012  also witnessed the inclusion of an exception for reproducing published works into Braille for the convenience of such visually disabled individuals. The World Blind Union had earlier released[1]in its ‘Right to Read’ Campaign that almost 90% of all the published works was inaccessible to the visually impaired individuals, and the same has been cited by the CIS in its letter.[2] India’s Copyright Amendment 2012 allows room for compulsory licensing of works for the use of visually impaired individuals (prior to Marrakesh Treaty it had been introduced in India.) The Marrakesh Treaty can come into effect only after 20 countries ratify it; currently the number is stuck at 9 countries which does not include the U.S. The letter requests that the U.S. should also sign the treaty since it is home to some of the largest publishing houses and would encourage a proper implementation –of the treaty and India’s new amendment.

Trans Pacific Partnership

The TPP is undoubtedly one of the most controversial regional agreements in the current times. It has included provisions which call stringent IP laws leaving lesser rooms for exceptions and limitations and stand to the benefit of mostly U.S. based authors, Entertainment Industry and dangerously their pharmaceuticals. The TPP discussions have been very cryptic till date and hence, raised the bar for suspicion. Member countries like Australia and New Zealand have faced protests by citizens against adopting TPP provisions which hamper public health and are solely lead by the U.S. (for its Corporate houses)[3]. The CIS letter raises concerns about the U.S. making an attempt at including India in the TPP Agreement, it also makes a reference to the report of Hon’ble Ambassador Shri Arun  K. Singh where he has disagreed with the U.S. report suggesting TPP is beneficial for India and U.S. both (clearly the benefit is unilateral). India is currently in the stage of using and developing technology and cannot afford to lose out on limitations and exceptions of IP enforcement. Also, it is necessary to reiterate that India is currently the largest manufacturer of generics and compliance with U.S. dominated patent laws will inadvertently hit the pharma generics really hard. The letter simply requests the PM not to accede to the U.S. intent of making India a party to the TPP.

On a slightly different note it is interesting to note that owing to the high price of  cancer drugs in the U.S. ,at the time when they are close to losing patent protection, has lead to the U.S. government looking for alternatives. In a recent article it has been stated that New Delhi will be providing cheaper ‘off-patent’ drugs to the U.S. to benefit the American citizens.[4] It will be interesting to see how the U.S. intends to continue with its stringent Patent enforcement regime even in the future when it is clearly beginning to affect the public health concerns (affordability and accessibility).

It can be stated that the CIS has pointed out two major IP issues that the government needs to be aware of at the time when it is negotiating with the U.S. for better bilateral relations (inevitably dealing with IP issues as well). It is worth looking out for how the negotiations pan out!

Image Courtesy: http://www.bilaterals.org/?leaked-investment-chapter-of-the 

Footnotes

[1] Worldblindunion.org,. ‘Marrakesh Treaty – Right To Read Campaign’. Web. 26 Sept. 2015.

[2] Prakash, Pranesh. ‘Open Letter To PM Modi On Intellectual Property Rights Issues On His Visit To The United States Of America In September, 2015’. The Centre for Internet and Society. N.p., 2015. Web. 26 Sept. 2015.

[3] It’s Our Future,. ‘It’s Our Future – Kiwi Voices On The TPPA’. N.p., 2015. Web. 26 Sept. 2015.

[4] Rajghatta, Chidanand. ‘India To Supply Generic Cancer Drug To U.S.’. Times of India. N.p., 2015. Web. 26 Sept. 2015.

To the Batmobile!

The history of this case dates back to 2011 when DC Comics sued Mark Towle for copyright and trademark infringement on selling a replica of the ‘Batmobile’. Mark Towle runs a business of selling cars that are replicas of the cars that have been shown on TV shows and the movies. The Batmobile was introduced for the first time in 1941 as the car which is the primary mode of transportation for the superhero character Batman. The car has always been depicted as equipped with the latest and futuristic technologies that enable Batman to fight the villains featured in the story. The Batmobile has also been depicted in the Batman movies in the year 1969 and 1989 (and several others as well but the model in question was similar to the one represented in these movies). In the year 1965 the National Periodical Publication (predecessor to DC) entered into an agreement with channel ABC for producing the Batman series, the agreement involved licensing copyrights to the literary property such as comic strips, and books. The 1966 show represented the Batmobile on TV screens for the first time, it was different from the comic strip representation but retained the substantial features such as the bat shape, futuristic technology, black color etc. In 1979 DC entered into a similar agreement with Batman Productions Inc. which further sub licensed it to Warner Bros. and a movie was made in the year 1989 again, featuring the batmobile in a different avatar but similar to the original concept.

The defendant in this case was engaged in selling cars resembling the batmobile from the 1966 series and 1989 movies. He promoted his business by creating a site batmobilereplicas.com and called his cars as the ‘Batmobile’ even though he had not been authorized by DC to sell the cars under the impugned mark. The District Court in its decision held that ‘Batmobile’ was a character entitled to protection under the copyright law the reason being that it has been prominently featured in the comics, series, and movies and is more like a side kick if not an extension of Batman’s persona. Also, DC comics had a valid copyright claim over the Batmobile depicted in the series and movie based on the fact that the two were based upon the original comics and subscribed to the original idea of ‘Batmobile’.

The case was referred for appeals before the Ninth Circuit Bench for final decision. In order to decide the copyright claim the court dwelled on these factors:

• Physical as well as Conceptual Qualities: The character should have distinct attributes, appearance associated with itself to be identified as capable of being protected under Copyright Laws. In this case the physical features and the attributes of Batmobile were distinctive and hence, qualified this test.
• Sufficient Delineation Test: Whether the character is sufficiently delineated from the story line such that if removed from the story it would still be a distinct identity. The Batmobile in itself invokes its origin to Batman series (comic /TV/ movie) hence, it has carved a distinctive identity among the other cars. It is no ordinary car, it is equipped with gadgets, has the shape of a bat, is black in color, and is the primary mode of commutation for Batman.
• Specially Distinctive: In the comics Batmobile is described as a vehicle which is more like a side kick to Batman’s adventures in fighting the villains or in giving the cops a chase. It has a unique name -exclusive to itself and as described above distinctive traits as well. Hence, it qualifies this test as well.

After an in depth analysis on the characteristics of Batmobile the court held that it was a character which was copyright-able (concurring with the trial court). It was concluded that DC was the original copyright owner of the character Batmobile, despite the licenses given in 1965 and 1979 DC had retained certain rights with itself including merchandising rights with regard to the characters (including Batmobile). The defendant’s work was an unauthorized derivative work and he could claim copyright over the same only if there were certain features which he had significantly contributed to (the original) else, copyright vested with DC.

The judge seems to be very well versed with the Batman comics (how cool is that?) and has repeatedly quoted from the comics (and even referred to James Bond in  between) making the decision a really interesting read. I am ending this post with one such quote mentioned by the judge in the decision:

“In our well-ordered society, protection of private property is essential[1].”

Image Courtesy: http://www.comicvine.com/batmobile/4055-41463/forums/what-is-the-best-batmobile-682177/

Footnote:

[1] Greenway Productions television broadcast March 23, 1966.

Haribo, please bear with Lindt!

By Swati Tata

After the rejection faced by Nestle for the request to trademark the shape of its four-fingered KitKat bar, it was now Haribo’s turn to lose to its long time rival Lindt over a similar issue. Their claim was that the gold bear wearing a red bow on Lindt’s product infringed their trademark.

Haribo claimed that the consumers would often confuse their Gummy Bears in yellow bear packaging with a ribbon around its neck with Lindt’s product, even though Lindt’s product consisted of chocolate and jelly bears. They claimed that Lindt had ripped off their “Gold Bear” trademark for selling their “Lindt Teddy” which was introduced in the market in 2011.

The first round in court went in favour of Haribo in 2012. However, the case went to the Federal Court of Justice after an appeal court rejected that ruling. The Federal court held that a similarity between a word mark and a three-dimensional shape could only arise if a similarity is found in the meaning of the two.[1] To compare the shape of a HARIBO bear with the shape of Lindt’s chocolate bear is pointless since the foundation of the suit was the word mark.

Image source: http://consumerist.com/2015/09/23/lindt-beats-haribo-in-legal-battle-over-candy-bears/

What needs to be seen is if Haribo, like Neste, shall appeal to the European Court of Justice, which of course depends upon the Federal Court’s ruling.

Click here for the press release if you can read and understand German 🙂

[1] The final curtain in the GOLDBEAR saga,The IPKat, available at http://ipkitten.blogspot.in/2015/09/the-final-curtain-in-goldbear-saga.html