This article is written by Aarti Gosavi who is pursuing a Diploma in Intellectual Property, Media & Entertainment Laws from LawSikho.
“Intellectual property is the oil of the 21st Century” as quoted by Mark Getty. Intellectual Property is intangible property that cannot be easily seen by the naked eyes. Intellectual property can be bought, sold, mortgaged as well as licensed just like any other tangible property.
The types of intellectual property are patents, copyright, trademarks, design, and geographical indications, plant variety and layout designs of integrated circuits. The need to protect intellectual property is to motivate and incentivise the creators and inventors to continue innovating and creating something new which is useful to the public at large and in turn helps the overall economy of the country.
Infringement is a violation of a right or the violation of terms and conditions in an agreement. Infringement of IP rights takes place when there is a breach of the terms and conditions mentioned in the agreement or piracy or direct imitation of the intellectual property of the competitor. It also takes place when someone just uses someone else’s creation without giving due credit to the original creator, in cases of unregistered intellectual property, and to the registered proprietor in case of registered intellectual property.
I) In case of trademarks where the defendant is found to falsify the trademark i.e. using the trademark and does the following acts:
1) makes any alteration,
2) addition or effacement or otherwise,
3) applies such trademark or a deceptively similar mark to goods or services or any package containing goods,
4) uses any package bearing a mark which is identical with or deceptively similar to the trademark of such proprietor, for the purpose of packing, filling or wrapping therein any goods other than the genuine goods of the proprietor of the trademark without the permission of the registered proprietor, then it is considered to be an infringement of the trademark.
II) In the case of copyright where the defendant is found illegally reproducing, or distributing copyrighted material through any medium then it is known as copyright infringement or piracy with exception of fair dealing in India.
III) In case of patents where the defendant is found manufacturing, selling, offering for sale, using or importing the patented innovation without the express permission of the inventor is considered to be an act of patent infringement.
IV) In case of design infringement the design is copied in exactly the same manner and applied to an article in which the design has been registered for selling or using it in any commercial way without the express consent of the proprietor.
The remedies available are civil and criminal remedies. Civil remedies include passing off in case of unregistered intellectual property and injunction, damages, rendition of account of profits in case of registered intellectual property.
Passing off – It is a type of infringement where someone uses the mark of the goods belonging to the original user on their goods with the intent that consumers will think that the goods belong to the original user. If someone opposes this passing off then it prevents other people from using the goodwill of the original user’s business with that of their business.
Injunction – In case of infringement of intellectual property the person who has suffered losses can stop the other person from using his or her intellectual property by way of injunction or in common terms also known as stay order.
The types of injunctions are as follows:
Temporary Injunction – As the name suggests this type of injunction is temporary only for a short period of time or till the time the court gives the next order.
Permanent Injunction – As the name suggests this type of injunction is permanent in nature where the injunction is given forever.
Mandatory Injunction – In this type of injunction if the court finds it necessary then it may grant mandatory injunction to prevent any violation of the terms of a contract or it may ask the person to do something that comes under the purview of mandatory injunction.
Damages – The person who has suffered losses in the business can easily ask to be compensated by the opponent by claiming damages in court.
Rendition of account of profits – In this remedy, the defendant is supposed to pay to the plaintiff the loss suffered by him/her due to infringement of the plaintiff’s intellectual property by the defendant till the time of injunction.
Delivery-up – The court along with damages on account of profits may ask the defendant to deliver the infringing labels or marks or goods for destruction or erasure.
Criminal remedies for Patents, trademarks, copyright are as follows:
Patent – The court if it finds appropriate shall order to seize, forfeit or destroy the goods as it may think fit without any compensation.
Trademarks – The penalty for infringement of a trademark in which the defendant is found to falsify the trademark and imprisonment for a term not less than six months which may extend up to three years and fined not less than fifty thousand rupees which may extend up to two lakh rupees.
Copyright – The penalty for infringement of copyright is a punishment of six months imprisonment which can be increased up to three years and the person can also be fined fifty thousand rupees which can be extended to three lakhs.
Design – There are no criminal remedies for infringement of design in India.
Amazon’s 1 click patent
The company Amazon was incorporated in July, 2004 with a mission that if anyone wants to buy anything they must be able to buy it online through Amazon. Barnes and Nobles was started in 1873 with a mission to be the best in the retail sector for any product that is available in the market. Amazon submitted a patent application by which users could place their order on the Amazon website if they want to buy it just by clicking once on it where the customer’s credit card details get stored in it after clicking on it just once on September 28, 1997.
The patent was granted to them on September 28, 1999, after two years one week which is now known as Amazon’s “1 Click” Patent. Amazon’s competitor Barnes and Noble.com created a cookie called Express Lane that functioned in a similar manner where Barnes and Noble’s server could capture all the credit card information previously submitted by the purchaser which was used to buy earlier product by the purchaser for which a record was kept by the Barnes and Nobles server.
The court ordered Barnes and Nobles to stop using the feature Express Lane since it infringed Amazon’s ‘1 click Patent’ where the cookie was an exact replica of Amazon’s 1 click Patent. Barnes and Noble appealed against the decision. The court again ordered them to stop using the feature Express Lane. Accordingly, the Express Lane feature was removed by Barnes and Noble.
Google trademark keywords
Internet search engine operators get a lot of money when they sell some words or phrases which are known as keywords. This in turn gives rise to paid advertisements which is a significant source of revenue for these search engines like Google which shows up on the search engine results page once the consumer types in those keywords. Search engine operators sell one company’s keywords to their competitors due to which if someone is searching for those company’s products then the competitors’ products also appear on the search engine page and this results in losses for the parent company.
The case of Rescuecom was raised in the 2nd U.S Court of Appeals where Google is accused of selling the trademarked name “Rescuecom” to Rescuecom’s competitors. The judge ordered Google to stop this practice since it resulted in significant losses to “Rescuecom”. American Airlines and Geico have also accused Google overselling their keywords as trademarks.
The Da Vinci Ccode case
In the case of Michael Baigent and Richard Leigh v. The Random House Group Limited, Baigent and Leigh alleged that Mr. Dan brown had copied a lot of portion of their original book Holy Blood Holy Grail which is a non-fiction work non-literally. There was no actual word to word or an exact reproduction of their work by Dan Brown. The case was dismissed because the judge held that there was no textual and non-textual copying of the work of the book “Holy Blood Holy Grail” and hence there was no copyright infringement of their work.
In this case, the Recording Industry Association of America also known as RIAA sued Napster, a peer–to–peer music sharing platform that allowed users to share music for free. Napster did not have any rights to the music that was being uploaded on its platform. The rights belonged to the recording artists and recording associations. RIAA sued Napster for infringement of their copyright and the judge ordered Napster to close down its servers since it had not paid recording artists and associations their licensing fees. Napster now operates as a music selling site and pays license fees for the music that it sells on its platform.
BRATZ Dolls v. Barbie
In the above case, Mattel Incorporation and MGA Entertainment Incorporation both were in the business of manufacturing toys and entertainment products for children. MGA became popular worldwide due to the manufacturing of BRATZ fashion doll which gave rise to cut throat competition to Mattel Incorporation. Mattel sued Carton Bryant who was their former employee and BRATZ Doll manufacturer claiming that MGA stole their idea of BRATZ doll from them and accused him of copyright infringement. This resulted in huge losses for Mattel and MGA made a profit of more than $ 1 billion.
The court held that Carton Bryant was on Mattel’s payroll when he first manufactured the doll the name BRATZ and design are considered to be Mattel’s trade secrets and hence the court ordered MGA to pay $ 100 million as damages to Mattel.
As we have seen infringement of intellectual property is a very serious crime and its infringement can cause serious harm to the economy of the nation thus we must always stay away from any kind of infringement of intellectual property. Therefore, since the creator or the inventor has invested a lot of labour and time in preparing or creating the original product any kind of infringement can be very demotivating for them which in turn affects the national economy.
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