This article has been written by Mr. Atul Chaudhary, a 3rd Year Student of M.S. Law College, Mumbai.

Introduction

Under the Berne Convention, the WIPO Copyright Treaty (WCT) is a special agreement that addresses the protection of works and the author’s rights in the digital sphere. The substantive rules of the 1971 (Paris) Act of the Berne Convention for the Protection of Literary and Artistic Works (1886) must be complied with by any Contracting Party, even if it is not bound by the convention. Additionally, the WCT lists two topics that need copyright protection: (i) computer programs, in any format or manner of expression; and (ii) assemblages of information or other materials (“databases”), in any format, which, due to the way their contents are chosen or organized, qualify as intellectual works.

Abstract

As to the rights granted to authors, apart from the rights recognized by the Berne Convention, the Treaty also grants: (i) the right of distribution; (ii) the right of rental; and (iii) a broader right of communication to the public.

The right of distribution is the right to authorize the making available to the public of the original and copies of a work through sale or other transfer of ownership.

The right of rental is the right to authorize commercial rental to the public of the original and copies of three kinds of works: (i) computer programs (except where the computer program itself is not the essential object of the rental); (ii) cinematographic works (but only in cases where commercial rental has led to widespread copying of such works, materially impairing the exclusive right of reproduction); and (iii) works embodied in phonograms as determined in the national law of Contracting Parties (except for countries which, since April 15, 1994, have had a system in force for equitable remuneration of such rental).

The right of communication to the public is the right to authorize any communication to the public, by wire or wireless means, including “the making available to the public of works in a way that the members of the public may access the work from a place and at a time individually chosen by them”. The quoted expression covers, in particular, on-demand, interactive communication through the Internet.

As to limitations and exceptions, Article 10 of the WCT incorporates the so-called “threestep” test to determine limitations and exceptions, as provided for in Article 9(2) of the Berne Convention, extending its application to all rights. The Agreed Statement accompanying the WCT provides that such limitations and exceptions, as established in national law in compliance with the Berne Convention, may be extended to the digital environment. Contracting States may devise new exceptions and limitations appropriate to the digital environment. The extension of existing or the creation of new limitations and exceptions is allowed if the conditions of the “three-step” test are met.

As to duration, the term of protection must be at least 50 years for any kind of work.

The enjoyment and exercise of the rights provided for in the Treaty cannot be subject to any formality.

The Treaty obliges Contracting Parties to provide legal remedies against the circumvention of technological measures (e.g., encryption) used by authors in connection with the exercise of their rights, and against the removal or altering of information, such as certain data that identify works or their authors, necessary for the management (e.g., licensing, collecting and distribution of royalties) of their rights (“rights management information”).

The Treaty obliges each Contracting Party to adopt, in accordance with its legal system, the measures necessary to ensure the application of the Treaty. In particular, each Contracting Party must ensure that enforcement procedures are available under its law so as to permit effective action against any act of infringement of rights covered by the Treaty. Such action must include expeditious remedies to prevent infringement as well as remedies that constitute a deterrent to further infringement.

The Treaty establishes an Assembly of the Contracting Parties whose main task is to address matters concerning the maintenance and development of the Treaty. It entrusts to the Secretariat of WIPO the administrative tasks concerning the Treaty.

The Treaty was concluded in 1996 and entered into force in 2002.

The Treaty is open to States members of WIPO and to the European Community. The Assembly constituted by the Treaty may decide to admit other intergovernmental organizations to become party to the Treaty. Instruments of ratification or accession must be deposited with the Director General of WIPO.

In the never before seen the Indian cabinet led by Prime Minister Narendra Modi has approved India’s accession to the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. The WIPO Internet Treaties lay down an international framework for preventing the unauthorised access to and use of creative works on the internet and other digital networks. It was concluded in 1996 and came into force in 2002. In 2012, India amended its copyright law to comply with the WIPO Internet Treaties, but strangely never accepted the WIPO theory, because of which it has drawn considerable international criticism, especially from the US.

At a time when India’s audiovisual industry faces stiff competition from Hollywood due to the free availability of pirated Hollywood movies, the Treaties will go a long way in reviving India’s audiovisual industry and specifically the regional audiovisual industry, which is on the brink of extinction. Apart from the audiovisual industry, the Treaties will also enable rights holders from other industries such as the film, music and publishing industries to get reciprocal protection of their IP abroad. Last but not the least, India may just be spared of the needless ignominy by the USTR and the US Chambers of Commerce’s International IP Index.

Case Laws

Renaissance Hotel Holdings Inc. V. B. Vijaya Sai And Others (19th January 2022)

 This case was an appeal by the Plaintiffs, who were owners and proprietors of the trademark “Renaissance”, against the judgement passed by the Karnataka High Court. The Appellant had initially filed a suit restraining the Respondent from using the trademark “Sai Renaissance” along with any other trademark similar or identical to the Appellant’s trademark. Considering that the Appellant and the Respondent were operating in the hospitality industry, this case had a nuanced approach towards understanding the legislative intent behind Section 29 of the Trade Marks Act, 1999 (“the Act”). The Appellant had been using the mark since 1981 and had gained popularity due to resources employed in advertisements and promotional activities. Having found that the Respondent was operating hotels under the name “Sai Renaissance” in Bangalore, they alleged that this was an infringement of their trademark and sought damages.

The Respondent contended that “Renaissance” was not a coined or inventive word but rather generic and was used honestly and concurrently by the Respondent since 15 years. The Trial Court restrained the Respondent from using the mark, but on the other hand, no damages were awarded. On appeal to the High Court, it was held that there was no proof that any unfair advantage was taken or harm caused to the Appellant’s reputation. The Supreme Court, thus, delved deep into the legislative intent behind Sections 29, 30, and 31 of the Act. Regarding the test under Section 29 of the Act, they opined that the Appellant need not prove actual damage if the trademarks are identical or similar, and so is the class of goods and services catered to by both parties. The High Court had erroneously held that even though infringement had been established, actual deception and damage were not proved.

Section 29(4) and Section 30(1) of the Act were read contextually and in its entirety rather than focusing on a specific part of the provision, contrary to the stance taken by the High Court. The Supreme Court was clear in its interpretation that in such cases, the Court would operate on the presumption that it is likely to cause confusion on the part of the public. Thus, in infringement actions, once it is found that the Respondent’s trade mark is identical to the Appellant’s registered trade mark in the same or similar class of goods and services, the Court cannot go into an enquiry of whether the infringement was likely to deceive or cause confusion.

Marico Limited vs. Abhijeet Bhansali[6]

Facts: The Defendant herein was a social media influencer, who also operated a YouTube channel of his own. In a video posted on the channel, the Defendant made denigrating comments about Parachute Coconut Oil, which is the Plaintiff Company’s product. The Plaintiff Company had earned immense goodwill in the market owing to the good quality of their goods and were vigilant regarding the disparaging comments being made about their product, as well as the use of their trademark ‘Parachute’. The use of the trademarked name violated the exclusive right conferred to the Plaintiff as the proprietor of the trademark, which amounted to infringement. Thus they approached the Bombay High Court seeking an injunction against the Defendant.

Held: The Court relied on the Trademarks Act, 1999 and in a clear interpretation of Section 29 of the Act, held that the Defendant was guilty of infringing the trademark of the Plaintiff by using it without prior authorization in his video. Hence, an interim injunction was passed against the Defendant along with an order for the removal of the impugned video.

RPG Enterprises Limited V. Riju Ghoshal Trading As RPG (21st March 2022)

This case reemphasises and highlights the various important principles of Indian trademark law. The Plaintiff’s mark was an acronym derived from the initials of its founders. Due to their popularity in various sectors and the use of the mark, the term “RPG” became a source identifier and acquired a secondary meaning. The Defendant’s use of the trademark containing ‘RPG’ as its only leading, essential and prominent feature in respect of their services thus gave rise to the question of infringement. The Defendant alleged that their mark was a logo mark, being inherently distinctive due to differences in style, the combination of words, colors etc.

Since abbreviations of a name can also constitute a trade mark, for example, KSB Properties, H&M Hennes & Mauritz AB etc., the Court proceeded to determine infringement. Certain factors, such as the extent of knowledge of the RPG mark, its recognition by the relevant public, the duration of the use of the RPG marks, the extent of the products in relation to which the RPG mark is being used, the extent and duration of advertising and promotion of the RPG mark etc., were important determinants to hold that the mark was well-known and had acquired secondary meaning.

Conclusion

The United States Trade Representative (USTR) has recurrently placed India as a priority watch list country under its annual Special 301 Report Since 2003, one of the primary reasons for India’s designation as a priority watch list country under the Special 301 Report has been its non-accession to the WIPO Internet Treaties. Even the US Chambers of Commerce’s International IP Index has ranked India in the bottom rung of countries because of its non-accession to the Treaties, apart from other reasons.

One of the possible reasons for the delay could be the perceived incompatibility between the anti-circumvention provisions as stipulated under Section 65A of the Copyright (Amendment) Act, 2012 with Article 11 of the WIPO Copyright Treaty. The other reason could be procedural delays magnified by the release of the National IPR Policy and the shift of the Indian Copyright Office from the Ministry of Human Resource Development to the Department of Industrial Policy & Promotion. Irrespective, the cabinet approval gives a reassuring signal to the outside world that India takes its international commitments seriously. Moreover, it is a step forward by India to harness the potential of its growing creative industry which is projected to touch $25.4 billion by the end of 2018.  One of the avowed advantages of ratifying to the Treaties is that it allows domestic creators to compete on a fair level with international competitors, which is beneficial for India’s local creative economy.

References 

This article was originally on World Intellectual Property Organization The link for the same is herein https://www.wipo.int/treaties/en/ip/wct/summary_wct.html

This article was originally written by Seemantani Sharma is an international copyright lawyer at the Asia-Pacific Broadcasting Union The link for the same is herein https://thewire.in/diplomacy/india-approves-accession-to-wipo-internet-treaties