NFTs reproducing a third party’s trademarks without authorization amount to trademark infringement
The Italian soccer team Juventus F.C. initiated a suit against Blockeras, an online fantasy football game based on an NFT (“non-fungible tokens”) player card. The present dispute concerns trademark infringement and unfair competition practices, consisting of the unauthorized use of the Juventus registered trademark, through the production, marketing and online promotion of digital playing cards NFTs. The NFTs reproduced the distinctive signs in question, insofar as they show the image of former player Christian (Bobo) Vieri wearing the Juventus shirt and the name of the team. The Court concluded that the creation and marketing of the cards in suit, constitutes an infringement of the trademarks enforced, and give rise to a likelihood of confusion due to the identity of the signs, used in a way that misleads the public as to the probable existence of a commercial or group relationship between the Blockeras and Juventus. Additionally, such conduct also risks causing a dilution of the Juventus trademark and the loss of the right to exploit such trademark, causing damages to their owner that are objectively difficult to quantify. Interestingly, by passing this landmark judgment the Court of Rome became the first European court to hold that NFTs reproducing a third party’s trademarks without authorization amounts to trademark infringement and warrant an injunction. The Court ordered Blockeras to withdraw from the market and remove from every website such products that are offered for sale and/or advertised, the NFTs and the digital content associated Juventus.
M-seal vs R-seal: Trademark Infringement Suit
In the present case, the Hon’ble Bombay High Court prohibited Riya Chemy from using the mark “R-Seal” or any other mark, giving temporary relief to Pidilite Industries Limited. The mark M-seal and the artistic representation had been acquired by Pidilite pursuant to an agreement dated 27th March 2000. The Court ruled that the two competing marks cannot coexist without confusing and misleading the general public. The Court opined that Riya Chemy’s marks R-SEAL being deceptively similar to the Pidilite’s registered marks M-SEAL, was not only violative of the rights of the Pidilite but that Riya Chemy had fraudulently acquired the registration of its Trademark.
Balance of convenience maintained: Ad interim injunction granted to Shemaroo whilst Saregama continues staging of its show in London
Shemaroo Entertainment Limited approached the Hon’ble Bombay High Court to seek an ad-interim injunction restraining Saregama India Limited and others from hosting a musical drama, completely based on the film ‘Disco Dancer’, starting from 16th November 2022 in London for four days. Shemaroo argued that as per the agreement dated 11th November 2011, executed between the producer of Disco Dancer and itself, Shemaroo was assigned all rights pertaining to the film and was therefore entitled to exploit the rights in the said film, as per the terms of the said agreement. On the other hand, Saregama claimed that it had acquired the rights to adapt and use the story and characters of Disco Dancer in or around September 2019. On perusal of the agreements, the Court decided that prima facie all rights pertaining to the film Disco Dancer stood assigned to the Shemaroo. Interestingly, although the Court was convinced that the balance of convenience lies in favor of Shemaroo, it also considered that the musical is to be staged in a theater in London from 16th November 2022 for four days in a row, for which the theater was already booked. Additionally, the production cost of about Rs.4.34 crores has already been incurred and the artists, who had been engaged, had practiced and reached the venue for the staging of the musical. In view of the above, the Court granted an ad-interim relief to Shemaroo, which will not affect the staging of the musical based on the film, provided that the entire collections from the staging of such shows were deposited with the Court within two weeks of staging such shows.
FIR filed against Vir Das and Netflix
On 04 Nov’22, an FIR under sections 51 (copyright infringed) and 63 (Offences of infringement of copyright) of the Copyright (Amendment) Act, 1957, was registered by theatre producer Mr. Ashvin Gidwani at the Cuffe Parade Police station against Mr. Vir Das, Mr. Anurag Shrivastav, Mr. Girish Talwar and Netflix Entertainment Services India LLP. In 2010 Das entered into an agreement with Gidwani to produce a show ‘History of India VIRitten (2010)’. In 2019, Das and Gidwani had a disagreement about releasing the show on Netflix. Subsequently, in 2020, Das released a stand-up comedy special called “Vir Das: For India” on Netflix. Gidwani alleges that Das is in breach of his 2010 contract and has used the idea, notion, and content from History of India VIRitten for producing Vir Das: For India.
Music in marriages or other religious ceremonies does not amount to copyright infringement
In a recent case decided by Justice Pratibha M. Singh, the Hon’ble Delhi High Court upheld that the use of music or audio recordings during marriage ceremonies does not amount to copyright infringement. A suit was initiated against an event management company providing DJ services at weddings. The company argued that they were exempted under Section 52 (1) (za) of the Copyright Act of 1957, from taking any licence to play the sound recordings, which belonged to the collective. Section 52 (1) (za) states that any performance or communication of literary, dramatic or musical work to the public in the course of any bona fide religious ceremony or an official ceremony held by the Central Government or the State Government or any local authority shall not constitute an infringement of copyright. This judgment clarifies that event management businesses are not required to pay copyright owners any royalties for playing music at weddings and hopefully puts end to the scuffle between the event management company and copyright owners.
India – UK FTA – An uphill battle against patent evergreening
India and United Kingdom (UK) are engaged in negotiations for Free Trade Agreement (FTA) to boost trade and investments between the countries. On a perusal of the model IP chapter published by the international trade website bilaterals.org, it can be inferred that the UK is requesting continuing patent extension and rights through minor modifications for medicines (a process known as “evergreening”). This could delay the expiration of patents, which would negatively affect the availability of cheaper drugs and their production by Indian generic drug manufacturers. Additionally, it has been suggested that pre-grant oppositions be prohibited, which would prevent India from opposing weak or invalid patents until after they have been granted. Doctors Without Borders/ Médecins Sans Frontières (MSF), a global medical humanitarian organization, has urged the governments of the UK and India to withdraw these provisions from the UK-India FTA negotiation. Not all hope is lost as India and the UK failed to conclude the negotiations for the proposed FTA by the set Diwali deadline and further discussions are pending.