Author: BASKARAN AND ASSOCIATES

Baskaran & Associates is a well established law firm managed by Adv. H.B. Keshava. We specialize in multiple areas of law such as Intellectual Property Rights, Technology Laws, Labor Laws, Business Laws, ADR, Criminal Laws and Cybersecurity Laws. We are based out of Pune and Chennai, but have been handling clients from all across the country. We have a team of the best individuals comprising of Advocates, Patent Agents, Charted Accountants and Company Secretaries. We aim to serve, provide and help businesses grow.

THE BIRKIN BRAWL

(Hermes Int’l v. Rothschild, 22-cv-384 (JSR), (S.D.N.Y. Jun. 23, 2023))

Introduction

In our increasingly tech-driven world, discussions about intellectual property rights have gained prominence. Notably, the Hermes Int’l v. Rothschild case made significant strides in Trademark issues related to NFTs, a term now widely recognized.

In the recent past, the terms “NFTs” and “Non-fungible tokens” have become popularised, but most people remain unaware as to what the term actually means. The concept of NFTs has allowed pictures of cats, DC comic characters, ferry men, etc. to be sold for more than 90 million USD.

Definitely an interesting concept, NFTs are considered a collector’s item. The word non-fungible means that they are unique and can’t be replaced. For instance, while one bitcoin is equal to another, no two NFTs can be considered equal. Although “NFTs” could refer to anything digital such as drawings, music and celebrity collectibles, NFTs gained broad recognition due to digital art.

This case involves Hermès seeking to protect its Trademark against Rothschild’s MetaBirkin NFTs, highlighting the evolving landscape of NFT-Trademark related disputes.

Facts

Los Angeles artist Mason Rothschild released 100 luxury NFTs known as MetaBirkins, a digital reinterpretation of Hermès classics. These unique pieces featured various faux fur styles, including an elegant Tiffany blue, a rendition of Vincent van Gogh’s The Starry Night, and a custom creation for rapper Young Thug.

Initially priced at around USD 450 each, these NFTs skyrocketed in value, reaching up to USD 46,000 within two weeks, a stark contrast to Hermès Birkin bags starting at USD 9,000. The collection generated approximately USD 800,000 in trades on OpenSea, the largest NFT marketplace, evolving from a tribute to a sought-after digital fashion commodity.

However, it’s important to note that Rothschild and MetaBirkins had no affiliation with the Hermès brand. The website clearly stated this lack of association.

The controversy emerged shortly after the MetaBirkins launch when Hermès issued a cease-and-desist order. Hermès asserted that they had not authorised or consented to the commercialization of their Birkin bag in the metaverse by Mason Rothschild. The Birkin, being their signature handbag, enjoys Trademark protection, preventing others from using its name and distinctive design. Hermès considered these NFTs an infringement on their intellectual property and Trademark rights, labelling them as fake Hermès products in the metaverse.

Rothschild countered by announcing that Hermès’ claims were baseless and expressed his determination to challenge them in court.

Birkins v. MetaBirkins

The Hermès v. Rothschild case hinges on whether NFTs can infringe existing Trademark rights. Specifically, it questioned whether creating an NFT version of a fur-covered MetaBirkin bag infringes Hermès’ Birkin Trademark and the distinctive look of physical Birkin bags.

Rothschild presented several arguments in his favour, emphasising his lack of formal affiliation with Hermès, such as slight modifications to the MetaBirkins’ design, and the belief that they don’t cause confusion with genuine Hermès products. Moreover, he argued for First Amendment protection, claiming the project was primarily artistic.

Regarding Trademark infringement, the jury considered a 7-part balancing test, including similarity, competition, bad faith, and Hermès’ likelihood of selling their own NFTs with the Birkin mark.

On the cybersquatting claim, the jury had to assess the distinctiveness of the Birkin mark at the time of domain registration, the similarity of the domain name to Hermès’ mark, and Rothschild’s intent to profit in bad faith, for commercial gain.

The Final Judgement

Judge Rakoff’s decision denied both parties’ motions for summary judgement, and the Judge’s rationale was filed a week before the jury delivered their verdict. The jury’s verdict, though concise at one and a half pages, found Rothschild liable for

Trademark infringement, Trademark dilution, and cybersquatting. Importantly, the jury determined that the First Amendment did not shield Rothschild from liability.

The crucial aspect of the jury’s verdict is that it concluded Rothschild’s use of the Birkin mark intentionally misled potential consumers into believing a connection with Hermès, going beyond mere confusion. In assessing Trademark infringement, the jury considered the seven factors, with none being determinative. Furthermore, the jury necessarily recognized Hermès’ Birkin mark as famous, a prerequisite for finding Trademark dilution.

Additionally, the jury determined that Rothschild acted with a “bad faith intent to profit from the Birkin mark.”

Implications

The ‘MetaBirkins’ case verdict represents a victory for brand owners and provides clarity on the importance of enforcing intellectual property rights in the digital realm. This outcome reinforces the idea that intellectual property rights should hold sway, whether in the physical or virtual world.

Notably, luxury brands such as Louis Vuitton, Gucci, and Givenchy have ventured into the NFT space. The ‘MetaBirkins’ case underscores that, unlike traditional gallery art, artists and brands may become competitors in the virtual landscape if they operate under similar or conflicting names.

Artists should understand that the issue lies not in creating art but in how it’s branded and presented to consumers, potentially infringing on intellectual property rights.

However, it’s crucial to note that the ‘MetaBirkins’ case was a US federal jury trial and does not establish mandatory legal precedent.

Conclusion

Intellectual property law, encompassing Trademark and Copyright protection, serves as a safeguard for creators and owners of original content. The intersection of these laws with NFTs is an evolving legal landscape, with the Hermès v. Rothschild case marking a significant milestone in clarifying their application in the NFT context.

This case stands as a pivotal moment in shaping the future approach to Trademark issues involving NFTs. It’s worth noting that the jury’s specific findings, such as Hermès having a famous mark and Rothschild’s bad faith actions, may not be universally applicable in all future cases. Nevertheless, this decision has established a vital precedent.

Written By-

Shruti Navayath

5th Year B.A.LL.B.

NMIMS, Kirit P. Mehta School of Law

Trendy but Sustainable!

Introduction:

We all love fashion. The clothes, the shoes, the bags, every piece takes our utmost attention and time. Our fashion becomes the way people identify us. But this identification industry is one of the most polluting industries in the world. The constant production of new styles, carbon emissions, toxic dyes along with other harmful materials put the environment at risk. Neither can we abolish this huge industry completely nor can we let it create the waste it does. This is where sustainability in fashion industry comes into picture.

Sustainability in Fashion:

Sustainability in the fashion industry is assessed in relation to the design, production and disposal of clothing and accessories in a way that it minimizes their impact on the environment and promotes social and ethical values. Intellectual Property Rights have been playing a very important role in this spectrum. Along with protecting fashion designs, logos, and innovations, IPR also aids in protecting the future of fashion industry. This can be done by way of use of certification marks which show sustainability of products. Fashion designers and manufacturers can use these marks to demonstrate their commitment to sustainability and differentiate themselves from less sustainable competitors. This can also help them in generating larger consumer base and earning profits. IPR can also help in protecting the rights of industry experts who create sustainable and ethically produced products. Some Western countries have introduced sustainable fashion regulations and standards to ensure that companies are responsible for their environmental and social impacts, while others have introduced tax incentives for companies that adopt sustainable practices, such as monitoring their carbon footprint or using durable materials. In India, Geographical Indicators protect traditional crafts and handicrafts known for their sustainability and use of natural materials.

As not every company has enough capital to easily go green, the role of Government in providing incentives is crucial.

Conclusion:

Sustainable fashion is the next trend. People follow this trend just as seriously as they follow any other trend. Every consumer, in light of climate change and environmental protection, is going green with their styles, making
Sustainable clothing is a Bold Fashion Statement.

By-
Savani Budhkar
4th Year, BALLB,
ILS Law College, Pune

Cover songs on YouTube: Where legality meets lyrical creativity (and copyright claims meet ear-bleeding renditions)

A cover version is the performance of a song that already exists, has been previously recorded, or has been commercially published by someone other than the original performer. This new recording is referred to as a cover version. The cover version has also been defined as a sound recording in relation to any abstract, sensational, or melodic work, when the sound recordings of that work have been recorded by or with the consent or agreement of the owner of the right in the work under Section 31 C of the Indian Copyright Act. With the advancement of new technology, it has become more easier for individuals to create and post cover versions online.

Before Section 31C, song covers were made under Section 52(1)(j) of the Copyright Act, which was a “fair dealing” provision that supplied the defendants with a defense that the cover version they made was fair and non-encroaching because it agreed to the pre-conditions set out in Section 52(1)(j). These recordings were known as “version recordings” throughout the business, and the term was used by the Delhi High Court in a few rulings in lawsuits. Aside from its casual use, the term “version recording” does not appear in the new Act. Section 31C has omitted and brought back as a Statutory License provision with certain amendments; thus preserving to a large extent.

Since the time of Bards this field has been profitable market, various producers for version recordings have emerged, as the statutorily recommended order under previous Section 52(1)(j) required them to send only notice and pay the agreed upon royalty to the writers of original works when a sound recording of the same original work was simply allowed to exist in open space. Which is why today you can enjoy ‘Sanam’ make a medley of your favorite 90’s songs.

The mechanical license on YouTube only covers the audio element of your YouTube cover. Synchronization license, sometimes known as a “sync” license, is required to publish video alongside the song. A sync license must be negotiated with the copyright holder. While copyright holders are required to grant mechanical licenses, they are not required to grant you a sync license, and there is no set fee for the license. The good news is that many music publishers have already entered into deals with YouTube that enable their songs to be utilized in exchange for a percentage of the ad money produced on YouTube. By contacting the music publisher directly, you may find out if there is already an agreement in place for the song you wish to utilize.

In general, novice producers make recordings of cover versions in order to obtain recognition; nevertheless, the majority of these recordings are broadcast without the permission of the original author of the work, which may land these new talents in copyright infringement proceedings. The repercussions of uploading a cover song without a music license are determined by the owner of the copyright. Some copyright holders don’t mind YouTube covers since they improve a song’s visibility and may introduce composers or original performers’ music to a new audience. One of the best ways to ensure that your video does not get flagged for copyright infringement is to put a disclaimer in the description making your intentions with the video extremely clear and crediting the original creator. This may look like “I hereby declare that I do not own the rights to this music/song. All rights belong to the owner _____________. No Copyright Infringement Intended. ”

WRITTEN BY–
SHARANYA CHOWDHURY

2ND YEAR, BALLB

RML NLU, LUCKNOW

Help! My chatbot is Racist

Jailbreaking is the process of removing software restrictions imposed by manufacturers or operating system providers on electronic devices like smartphones, tablets, or gaming consoles. It allows users to gain root access or administrative privileges, granting them greater control over the device’s operating system. As a result, they can customize the device, install unauthorized apps, and modify system settings that are typically inaccessible.

Jailbreaking offers both advantages and disadvantages. On the positive side, it provides users with greater customization options, enabling them to personalize their devices according to their preferences. Jailbreaking can also lead to instability or performance issues, potentially affecting the device’s overall functionality. Furthermore, the act of jailbreaking can void warranties provided by the manufacturer or operating system provider. Additionally, there is a risk of inadvertently installing malicious or pirated software, which can compromise the device’s security and stability.

Large language models (LLMs) have made remarkable advancements in natural language processing (NLP) and have found application in various fields such as healthcare, therapy, education, and customer service. Considering that users, including students and patients, engage with chatbots, the safety of these systems is of utmost importance. In this context, a study systematically evaluated toxicity in over half a million generations of ChatGPT, a popular dialogue-based LLM. The study found that assigning ChatGPT a persona, such as that of the boxer Muhammad Ali, significantly increased the toxicity of its responses. Such outputs can be harmful to unsuspecting users[1].

Most AI chatbots have built-in safety measures known as “guardrail mechanisms” to ensure responsible and safe usage of AI technology. These mechanisms prevent the generation of harmful or inappropriate content and guide the model to provide useful and appropriate responses. The guardrail mechanisms include pre-training on curated data, where the training data is carefully selected and filtered to minimize exposure to potentially harmful or biased content. After pre-training, the models undergo fine-tuning, a process involving human reviewers who review and rate possible model outputs based on guidelines and policies. This feedback loop helps the model improve its responses. Safety mitigations are also implemented, including reinforcement learning from human feedback (RLHF) and the use of the Moderation API to identify and warn or block certain types of unsafe or inappropriate content. OpenAI actively encourages user feedback to identify problematic outputs or false positives/negatives from the content filter, enabling continuous improvement and making the system safer and more effective.

Recent discourse in the legal circle has often discussed the rapid technological growth of AI and what it could mean for the future employment of lawyers. What we fail to notice in these times is that AI like everyone of man’s creations is not exactly perfect, it is simply the execution of a greater idea of a machine that can understand humans almost as well as other human beings do. Like every other invention this has also been subject to misuse and weaponization, which is what brings us to the conclusion and the lesson learned from this entire event. The author is of the opinion that technology will never pose a threat to lawyers and will only be a tool to make law and enforcement more accessible. This is the cause no matter how far we advance we will always require a set of human beings with the knowledge of law to monitor the growth and lay down guidelines for the use of such technologies. It is essential to recognize that while these guardrail mechanisms are in place, they may not be perfect, and there is always a possibility of errors or limitations in the AI’s responses. This is why it is safe to say that AI will not be replacing lawyers anytime soon.

WRITTEN BY –

SHARANYA CHOWDHURY

2ND YEAR, BALLB

RML NLU, LUCKNOW

[1] https://arxiv.org/abs/2304.05335

Counterfeiting Vs Trademark Infringement

Counterfeiting and Trademark infringement is often confused with being one and the same. While both counterfeiting and Infringement of trademarks are related to each other they are not identical. It can be said that: “All counterfeiting of marks is trademark infringement however not all infringement of trademarks is counterfeiting.” Counterfeiting is a narrower concept under trademark infringement.

Both Infringement and counterfeiting are problems that can hamper the economy. They jeopardize the competitive position of companies in the global hemisphere. Companies that engage in counterfeiting and infringement of the Trademarks of others gain huge profits by negatively affecting the business of other companies who are honestly creating their goodwill and reputation. Counterfeit products also pose a threat to consumer health since they are made without proper supervision and don’t follow compliance. A good understanding of Counterfeiting and Infringement and their differences can help us in combat the spread of these goods.

What is Counterfeiting in the context of IPR

The Indian Trademark Act, 1999 doesn’t define counterfeit therefore we look towards the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement and legal dictionaries for counterfeiting definition.

The Trade-Related Aspects of Intellectual Property Rights (TRIPS) defines counterfeiting as:

“Counterfeit trademark goods” shall mean any goods, including packaging, bearing without authorization a trademark which is identical to the trademark validly registered in respect of such goods, or which cannot be distinguished in its essential aspects from such a trademark, and which thereby infringes the rights of the owner of the trademark in question under the law of the country of importation;

Webster’s New world law dictionary defines counterfeiting as:

To copy or imitate something without the right to do so and with the intent to deceive or defraud by representing the copy or imitation to be the original or to be genuine if no original ever existed.

The common elements that can be derived from these definitions are that Counterfeiting is the creation of an identical good in order to deceive or defraud the purchaser of the good.

What Is Infringement Under the Indian Trademark Act?

Section 29 of the Indian Trademark Act,1999 defines Infringement of the Trademark. According to this section, “A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and, in such manner, as to render the use of the mark likely to be taken as being used as a trade mark.”

Violating the exclusive rights of the registered owner of trademarks without their permission is called Trademark Infringement. There are many ways of infringing an owner’s trademark which include, creating a mark similar or identical to the registered mark to create confusion in the minds of the general public of its association, or using the registered trademark’s name or part of it in the infringing mark in the same goods and service, etc. These methods of identifying trademark infringement are also listed in Section 29 of the Trademark Act,1999.

Difference Between Counterfeit Marks and Infringing Marks

A counterfeit mark is indistinguishable from the original or genuine mark. Infringing marks are considered confusingly similar to the genuine mark or original mark. This means that infringing marks might either be exactly identical to the genuine mark or it might be a mark that is being used in such a way that leads to confusion, deception or misunderstanding about the actual source of the Trademark. Counterfeiting also includes copying the packaging, instructions, stickers, etc of the original product. Counterfeit Products are very difficult to distinguish from the original products because even the essential features of the goods are copied to be exactly the same.

The remedies available for counterfeiting and trademark infringement also vary. Counterfeiting of a mark is punishable under the Indian Penal Code and is a cognizable offense. In the case of the Infringement of a Trademark, civil remedies in the form of injunction and damages can be sought by the registered owner.

The mere existence of counterfeit products is proof enough to bring legal action against the defendant. While in Infringement the plaintiff is required to prove that any other mark is deceptively similar to their mark to the extent that they can create confusion in the mind of the average person and that the defendant is not a registered owner of the mark and neither has permission from the registered owner to use the mark. Hence, the burden of proof is much more strict in cases of counterfeiting.

BY-

SHAKSHI SWARNKAR

2 YEAR LLB

ILS LAW COLLEGE, PUNE

FACTORS IMPACTING THE VALUATION OF IP ASSETS

Introduction

As people all across the globe become more aware of their intellectual rights and their ability to claim ownership of their creations, debates revolving around the valuation of such intellectual property are gaining traction. Intellectual property is a class of incorporeal property that is identified on the financial statements of corporations that own such intellectual properties.

It is important to distinguish between the “price” of an intellectual property asset and the “value” of an intellectual property asset. While price is the monetary value at which the asset trades in the market or the amount that a willing purchaser is ready to shell out. Value, on the other hand, represents the potential future economic benefits that the asset is likely to produce.

Valuation – though may seem deceptively lucid, the practical nuances and factors that are concomitant with executing valuations make it a complex exercise. Throw in the concept of intellectual property in the mix, it makes the process even more tedious. What makes the valuation of intellectual property assets complex is the fact that it involves a lot of inputs that are based on assumptions and projections. Furthermore, uncertainties around business projections, economic outlook, government policies, and technological disruptions dilute the accuracy of the value of intellectual assets.

FACTORS THAT INFLUENCE THE VALUATION OF IP ASSETS

As noted above, the valuation of an intellectual property asset of an enterprise is a gross product and amalgamation of a lot of factors, and thus, such factors should be kept in mind when intellectual property is valued.

Valuation Purpose: The purpose or the context for valuing or the benefits that will be accrued by an intellectual property asset indelibly impacts the valuation of the incorporeal property. Thus, factors such as access to technology or cost savings will impact the value.
Time: The considerable time reference when the intellectual property Is being valued is to be considered. An intellectual property affords an exclusive right to the owner or the licensee of the asset to exploit it for a limited time frame. For instance, a patent affords protection for a period of 20 years before it becomes available in the public domain. Valuation of the asset at different points in time will produce a different outcome. How the asset fit in its own product life cycle and the life cycle of the entity should also be considered.
Legal Status: The legal status of the asset owned by a firm will impact its valuation. Thus, whether an intellectual property asset owned by an enterprise is registered or unregistered will lead to different valuation results.
Individual or a Bundle Asset: Another factor that shall have an impact on the intellectual property owned by an enterprise is its status. Whether the asset is a stand-alone asset or part of a bundle of assets, inseparable from the bundle should also be paid attention to.
External variables: Factors such as the number of competitors in the market, barriers to entry into the market, legal policy framework, technological disruptions, and the degree of consumer preferences shall have an impact on the value of the incorporeal asset.
Geographical Protection and Jurisprudence: Whether the asset has been afforded protection limited to a particular jurisdiction or it enjoys protection in multiple nation-states will impact the value of the asset. For instance, a well-known mark that has its presence and is protected in multiple countries will be valued significantly higher than an asset that is only protected in a certain jurisdiction.
Miscellaneous Factors: Other factors such as tax implications, the industry in which the company operates, governmental supervision, investments, and the capital structure are some of the other attributes which can impact the value of the asset.

PURPOSES OF INTELLECTUAL PROPERTY VALUATION

Intellectual Property, an intangible or incorporeal asset is recognized as a legitimate asset on its financial statements by a company. Therefore, assets such as the company’s goodwill, its trademark, or any inventions which have received a patent registration must necessarily be valued. Secondly, if a company wishes to purchase or sell or license out an intellectual property, then a value must be ascribed to the asset in question. Furthermore, when two or more enterprises wish to merge or amalgamate, the intellectual assets of both entities need to be valued. What makes the valuation of Intellectual property more complex in this case is that valuation is to be considered in accordance with that of other tangible assets. Other areas for which IP assets are valued can be for the financing of a project or for securing a loan from a bank, ensuring the intellectual assets, efficaciously managing the overall asset portfolio, and ascertaining the tax implications for the company.

Intellectual Assets are valued from different perspectives based on the underlying cause for which they are being valued. For instance, International Accounting Standards now recognize and require intellectual assets to be valued at their cost in the initial stages. In the later or subsequent years, the asset is required to be valued at cost after any amortization and impairment charges. If an intellectual asset is acquired as part of an acquisition or a business combination, the asset’s cost is defined as its fair value at the acquisition date.

CONCLUSION

Intellectual Property and its valuation are, as evident from the Korero above, a complex exercise and warrants considering a plethora of factors. Thus, it is not uncommon to see that companies usually hire the services of a certified financial valuer. The company owning an intellectual asset may use different methods – depending on the stage in the life-cycle of the intellectual product, whether the asset is a stand-alone or a bundle of rights, and whether its acquiring value is to be gauged or the future economic benefits that can be expected from it are to be ascertained. In the former case, the company is more likely to use the cost approach, while in the latter case the company, to consider the future stream of cash flows, is likely to utilize the income method.

Intellectual assets bring with them a series of complexities and thus, a streamlined approach to ensure that such assets are valued efficaciously is required. In furtherance, the assumptions and projections must be incorporated in valuation models such that they consider all the factors and their impact on the value of intellectual assets.

BY-

RAGHAV GROVER

2ND YEAR LLB

ILS LAW COLLEGE

Social Media Influencers and Modern Advertisements in India

Social media influencers are the new age internet ‘celebrities’ who use social media platforms to rise to fame. These influencers create reels, blogs, videos, pictures, and more to gain followers and build connections with their audiences. Brands bank on the popularity of influencers to promote their products and services through influencer marketing.

Unlike, traditional advertisements, influencer marketing doesn’t appear at the first glance to be an advertisement. They might be mistaken by consumers as being the influencer’s personal recommendation instead of a commercial partnership. This also promotes false advertisement as influencers are seen endorsing products that they have never used and making false claims regarding them.

Regulation On Social Media Advertisements by

Influencers:

ASCI Guidelines

In India, the Advertising Standards Council of India (ASCI) is the self-regulatory body that sets guidelines for advertising across various mediums, including social media. The Guidelines for Influencer Advertising in Digital Media were released on June 14, 2021. These guidelines apply to all advertisers, including influencers, and aim to ensure that all advertising is truthful, honest, and not misleading.

Some of the key rules and guidelines for social media advertising by influencers in India are:

Disclosure of sponsored content: Influencers must clearly disclose any sponsored or paid content by using appropriate hashtags such as #ad, #sponsored, or #paidpartnership. The disclosure should be made upfront and prominently, and should not be buried within the post.
Truthful and honest advertising: Influencers must ensure that their advertising content is truthful and not misleading. They must not make false or exaggerated claims about a product or service or misrepresent its benefits or effectiveness.
Adherence to ASCI code: Influencers must adhere to the ASCI code for advertising, which includes guidelines on various aspects of advertising such as claims, comparisons, endorsements, and more.
Age-restricted products: Influencers must not promote age-restricted products such as alcohol or tobacco to minors.
Responsibility for content: Influencers are responsible for the content they post, and must ensure that it complies with all applicable laws and regulations, as well as community guidelines of the social media platform.

In addition to these guidelines, influencers must also comply with any specific guidelines or rules set by the social media platform they are using. For example, Instagram requires influencers to clearly disclose any sponsored content using its branded content tools. It is important for influencers to be aware of these rules and guidelines and ensure that their social media advertising practices are compliant with them. Failure to do so can result in legal action, fines, and damage to their reputation.

Consumer Protection Act, 2019

The Consumer Protection Act, of 2019 addresses the evolving market scenario in the country. It provides consumers with enhanced protection and transparency in influencer marketing. The Act mandates that influencers disclose any material connections or commercial relations that they have with brands that they are promoting. This includes any payments, gifts, or other incentives they have received in exchange for promotion.

The act also prohibits misleading advertisements, which means that influencers must ensure that the claims that they make about the products or services they are promoting are truthful and not exaggerated. If an influencer makes false or misleading claims, they can be held liable for any harm caused to consumers.

Misleading Advertisements are defined in Section 2 (28) of the Act as an advertisement which

falsely describes such product or service; or
- gives a false guarantee to, or is likely to mislead the consumers as to the nature, substance, quantity or quality of such product or service; or
- conveys an express or implied representation which, if made by the manufacturer or seller or service provider thereof, would constitute an unfair trade practice; or
- deliberately conceals important information;

The act also provides consumers with the right to file complaints against any misleading or fraudulent advertisements. In case of any violation, the influencers can face penalties such as fines and even imprisonment. The punishment for the misleading advertisement includes imprisonment up to a period of 2 years with a fine that may extend up to ten lakh rupees. This Punishment is stated in section 89 of the Act. Section 21 of the act gives Central Authority the power to remove any false advertisement.

What the Judiciary Says:

Marico Limited v Abhijit Bhansali [1]

The Bombay High Court, in its decision, had also identified “social media influencers” as a nascent category of individuals who have acquired a considerable follower base on social media and a certain degree of credibility in their space. The decision also noted the need to impose certain responsibilities on such influencers keeping in mind the power they wield over their audience and the trust placed in them by the public.

Aditya Kumar Jha v. UOI [2]the High Court of Allahabad held that the role of the ASCI is to ensure that advertisements are truthful and honest. Further, the test to determine if an advertisement is truthful and honest is the impact it has on a consumer and whether it is likely to mislead them.

Conclusion

According to some reports, half of the Indian population uses social media and this number is expected to keep growing. With the advent of digital media, influencer advertisement has become the new norm of advertisement. The Indian legislators have also taken notice of this and have accordingly come up with guidelines and statutes to stop misleading or false advertisements by influencers. The ASCI guidelines are being strictly applied to influencer and their posts with mechanisms for detecting violations set up in place.

BY-

SHAKSHI SWARNKAR

2ND YEAR LLB

ILS LAW COLLEGE, PUNE

[1] 2020 SCC OnLine Bom 265

[2] 2017 SCC OnLine All 3922

Unlocking the Voice Actor’s Rights in Indian Copyright Law

The Voice actor plays a very crucial role in Films and Advertisements in the Indian film industry. They engage the audience or customers with their talented voice acting and help in creating an authentic connection with the audience. Voices of voice artists are used and re-used to establish harmony with the visuals on screen. After the 2012 Amendment to The Copyright Act, 1957 (‘The Act’), many rights such as moral rights, equal share of royalty, etc. were provided to the Indian Performer. However, Indian voice actors still do not receive credit for their work and have to depend on the mercy of movie producers for royalties. In this article, we try to facilitate a legal discourse on the rights of the voice actor community.

Are Voice Actor Performers?

Performers are defined in section 2 (q) of the Copyright rules as: “performance”, in relation to the performer’s right, means any visual or acoustic presentation made live by one or more performers;

Section 2 (qq) defines a performer as “performer” includes an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer, a person delivering a lecture or any other person who makes a performance;

Someone who performs casually or incidentally in the normal course of the practice of the industry with respect to cinematograph films is an exception to this definition of a performer.

A voice actor can be considered a performer if they give a live visual or an acoustic presentation. In the case of Neha Bhasin v. Anand Raj Anand, it was held that live presentations in a studio also constitute a performance. The presence of an audience is not mandatory. Hence, an individual who does voice acting inside a studio is also a performer.

If a voice actor creates an original work, such as a character voice, narration, or singing performance, they may hold a copyright in that work. This means that they have the exclusive right to reproduce, distribute, and perform the work, and can license or assign those rights to others for a fee or royalty.

In cases where a voice actor is hired by a company to perform a specific role, the copyright in the recording may belong to the company, unless there is an agreement stating otherwise. However, the voice actor may still have rights in their performance, such as the right to be credited as the performer and the right to prevent the recording from being altered or used in a way that is detrimental to their reputation

Voice Actors That Are Not Performers

In movies, certain junior voice actors may be required to make crowd noises. Because there is no skill required in making these crowd noises and they don’t have a distinctive characteristic, such performances will not be considered performances under Section 2(qq).

Rights Of Voice Actors Under Copyright Rules 1957

Section 38 of the Copyright Rules 1957 deals with the Performer’s rights. According to this, section a performer has a special right known as “performer’s right” in relation to their performance. This right shall subsist until 50 years from the beginning of the year in which the performance was made.

Under Section 38A, if the performance is incorporated in a cinematograph film by a written agreement, the producer cannot dent an equitable share in the commercial use of the performance. The commercial use of the performance includes reproduction, issue of copies or distribution, communication to the public including broadcasting and commercial rental of a cinematograph film.

The provisions on assignments, licenses and copyright society apply with necessary modifications and adaptations to the performer’s right, as stated in section 39A(1) of the Act.

Problems That Voice Actors face in India

While voice actors are legally recognised as performers under the Indian copyright law, they don’t enjoy the rights given to performers.

Performer’s society- There is currently no joint Performer’s society that represents voice actors all over India. A single all-India Performer’s society for voice actors will help in streamlining the collection and distribution of funds, and can stop the unauthorised use of voice actors’ work. Such a society can also take up matters on behalf of its members in a court of law.
Royalties – The share of royalties that voice actors receive for their work is not uniform. Hence, voice actor has to determine their worth on their own. This leads to voice actors getting significantly underpaid.
Unauthorized Use – Unauthorized commercial use by producers also exploits a voice actor’s hard work.
Recognition- There is no national award for voice actors and their contributions. Not only this sometimes voice actors are not even mentioned in the credits of their work.

Conclusion

The Indian entertainment and media industry is the 14^th largest industry in the world. The Voice-over artists and voice actors have contributed majorly to the success of the industry. However, their contributions are not often recognised on par with other performers. It is now high time that voice-over artists are treated as performers under the copyright act and given the same rights that other performers enjoy.

BY-

SHAKSHI SWARNKAR

2ND YEAR LLB

ILS LAW COLLEGE, PUNE

TRADEMARK: BULLYING IN THE NAME OF PROTECTION

TRADEMARKS

Trademark protection is given to protect and safeguard the marks which are exclusively used by a particular entity to sell its goods or services under its name. These marks help the entities in differentiating their goods and services from that of others. But unfortunately, some powerful entities have gone beyond their legal rights of defending their marks and bullying the weaker entities.

TRADEMARK BULLYING

We say that trademark bullying has happened when a bigger entity that is generally registered under the Trademarks Act, 1999 threatens or tries to threaten the other entities which may be smaller in comparison, and generally unregistered by sending them to cease and desist notice on unreasonable grounds. The bigger entities in such a case try to threaten the smaller entities by creating a fear of suing the smaller entities in claims of infringement of the trademarks of the bigger entities.

Most of the time the companies which are involved in trademark bullying are large companies that have well-known marks registered and are not bothered about huge money getting spent on litigations. These large companies are aware of the fact that the smaller companies neither have sufficient resources nor are economically well off, which restrains them from pursuing against the bigger companies. The smaller entities even though may have a legitimate case in most of the cases tries to avoid the legal hassles as they are overpowered by large entities in terms of resources and money.

TRADEMARK BULLYING IN INDIA

In India trademarks are protected by the Trademark Act, 1999, and we are lucky enough to have provisions under this act to help the smaller entities from getting bullied by the bigger entities.

Section 142 of the Trademark Mark Act, 1999 protects the smaller entities from the larger entities when these bigger entities initiate a baseless infringement proceeding just to overpower the smaller entities.

Section 142 of the trademark act, 1999 states that:

“1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a trademark which is registered, or alleged by the first-mentioned person to be registered, or with some other like proceeding, a person aggrieved may, whether the person making the threats is or is not the registered proprietor or the registered user of the trade mark, bring a suit against the first-mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats and may recover such damages (if any) as he has sustained, unless the first-mentioned person satisfies the court that the trade mark is registered and that the acts in respect of which the proceedings were threatened, constitute, or, if done, would constitute, an infringement of the trade mark.”

We have provisions for bullying not only in the Trademark Act but also in the following acts:

Patent Act of 1970,
Copyright Act of 1957, and
Designs Act of 2000.

The aggrieved party can file a suit against the other party who threatens or bullies for a trademark under the provisions of section 142 of the Trademark Act, 1999, and can seek an injunction and monetary compensation. The trademarks which are eligible for this are only registered trademarks.

HOW IS IT DEALT JUDICIALLY?

Whether bullying has taken place in trademark would depend from case to case and would be decided by the courts by keeping all the situations and circumstances in mind.

In the case of Bata India Limited vs VitaflexMauch GmbH[2015], a lawsuit was filed by the plaintiff against the defendant in which the plaintiff wanted to restrain the defendant from issuing threats of legal proceedings on baseless grounds. Here the main questions were whether the notice which was issued by the defendant to the plaintiff contained any baseless legal threat and should the plaintiff be entitled to any damages or injunction for this. The Delhi High court held that the threats were made by the defendant to the plaintiff and were unreasonable. Therefore, the court issued an order against the defendant by restraining the defendant from issuing any further false threats.

Although India has a framework for protecting smaller entities from groundless, unreasonable, or baseless threats, there is no statute that would precisely define as to what would constitute a groundless, unreasonable, or baseless threat. However, some parameters such as the first user over the first one to file, deceptively similar which can cause confusion… etc. are used by courts to determine whether or not trademark bullying has occurred.

CONCLUSION

Thus, with this, we can conclude that there is a lack of clarity in the law with regard to what exactly constitutes trademark bullying as trademark bullying happens when an entity threatens the other entity with legal proceedings on unreasonable, baseless grounds. The smaller entities have to depend upon the fewer precedents to justify their contentions.

To make the law more efficient the term trademark bullying can be defined under the Trademarks Act, 1999, or the Trademark Rules, like the USPTO report. Also, under section 142 the terms baseless and groundless can be given more clarity so that courts can take decisions more efficiently.

BY-

SONALI JUYAL

2ND YEAR LLB,

ILS LAW COLLEGE, PUNE

Harmonizing Space Laws and IPR

The world post-World War II has seen tremendous growth in the field of space exploration. Ever since the launch of the first satellite in space, the Sputnik-I by the USSR followed by Explorer-I of the USA, space exploration has increased rapidly. But increased development in space exploration technology coupled with private participation and globalization has enumerated the need for clear reconciliation between Intellectual Property Laws and Space Laws as the need of the hour. However, as of today, there is no clarity as to the relationship between Space Laws and Intellectual Property Laws.

The Requirement for Harmonization

The need for harmonizing Intellectual Property Laws with Space Law lies in several recent developments. Firstly, there is an increased participation of private sector players in the field which was not the case in the 20th century. These private entities are generally far more aware and interested in protecting their property, both tangible and intangible, due to the increased opportunity of monetization and commercialization. This was hardly the case with the government organizations that dominated the scene until a couple of decades ago. Secondly, the rapid development of technology has opened up new business avenues in space transportation and Exploration. Space Tourism, for example, is now no longer a very distant dream. This could open up the need to deal with the issue of protecting IPs other than Patents and venturing into Trademark and Design protection in space. Thirdly, a lot of work in space exploration is now carried out simultaneously across the globe through mutual cooperation. The question arises as to whose jurisdiction would an IP developed in such a way come under.

Hindrance to Harmonization

The biggest issue with Intellectual Property Laws being harmonized with Space Laws lies in the fact that the former laws are municipal in nature, i.e. their jurisdiction and applicability is restricted to the territory of the sovereign that made the law. Contrary to this, Space Law is a field of International Law that is applicable to the Outer Space Region – starting roughly 100 km above sea level. According to Article II of The Outer Space Treaty, 1967 (one of the most important international treaties regarding space law) no sovereign state can appropriate Outer Space as its own territory. This essentially means that there exists no concept of State Sovereignty in Space.

Step Towards Harmonization

Presently, due to a clear distinction between the “Outer Space Region” and “An Object Launched in Outer Space” existing in the Outer Space Treaty, the state which launches the object in space will be the one that can register the object under an appropriate registry, and shall retain jurisdiction on that object once it is in space. However, no clear law exists on whether Intellectual Property Laws would extend as such in outer space. Also, the fate of an object created by any activity in outer space itself, eg. in the ISS, is also unknown.

In this regard, The United States is the only country that has made a move in clarifying its position in regard to IPs, specifically patents. The US Space Bill extends the applicability of American Patent law to objects in space. The European Union has also tried to take steps in this regard, which has led to confusion because of non-clarity.

Indian Legislation and the lack thereof

Like most nations, India also does not have legislation regarding the extension of Intellectual Property Laws to Outer Space. But with the increased participation of several private players from India, albeit in a limited capacity, the demand for a definitive legal provision in harmonizing space law and IPR Law gains more traction. Such a bill should comprehensively address all pertinent issues in this regard, for example:

A civilian control agency for all space-related activities except those of weapons development and national defense
Promotion of commercial use of space
Promotion of space tourism
Clarification and provisions relating to Intellectual Property Laws
Provision for licensing for entrepreneurs in space
Clear rules for all space-related activities, so that no adverse effects on the environment are caused
Clarification of Labour Laws in space etc.

Conclusion

Space is a frontier that has only started being explored. It is thus important to regularize and clearly define the rights, obligations, and procedures of humans in space. This is even more necessary when we take into account the great financial prospects that space exploration also holds. The above discussion thus clearly portrays the requirement for harmonization of Space Laws with Intellectual Property Laws and what aspects effective legislation should try to cover to deliver fruitful results in the future.

BY-

SAURADIP MUKHERJEE

2ND YEAR, LLB

ILS LAW COLLEGE, PUNE