Media Law & Fashion Law in India

Intellectual property law and the law governing the media are rapidly evolving while becoming increasingly complex. In the age of rapid social media advancement, protection of intellectual property has become a major concern for not only the owners of these rights but also for the lawmakers; and the Indian Courts are proactively working to safeguard the rights of the individuals. This issue of our newsletter mainly focuses on the recent developments in the media law and fashion law in India.

Tips win over Wynk
The Bombay High Court in its recent judgment in the matter between Tips Industries Ltd. vs. Wynk Music Ltd. & Anr., found that the telecom giant Airtel’s company Wynk was guilty of direct infringement of the copyrights of the plaintiff. The Court held that Wynk, did not fall under the statutory licensing provision of the Copyright Act, 1957. The fact of the case being, Tips Industries, the owner of copyrights of over 25,000 sound recordings licensed Wynk to use its music for its online streaming and downloads. After the expiry of the licensing period, no negotiations were reached by both the parties to further extend the licensing term. Even after the notice was given by Tips Industries to Wynk to remove the sound recordings from its portal, Wynk still kept using the sound recordings of Tips on its platform. Wynk invoked Section 31-D of the Copyright Act, 1957, claiming that they are a broadcasting organization entitled to a statutory license under the said section to communicate the work to the public by way of a broadcast of Tips’ musical work and sound recording. Section 31D of the Copyright provides for a statutory licensing scheme, as per which any ‘broadcasting organization’ desirous of ‘communicating to the public’ any sound recording, may obtain a statutory license to do so, provided they pay the royalty rates to the copyright owners, at rates fixed by the Intellectual Property Law Board. The court while issuing a permanent injunction against Wynk in this matter against using the sound recordings of Tips stated that Wynk’s feature of allowing users to download songs and store for unlimited future use constituted ‘sale’ and not ‘communication to the public’, and therefore, did not constitute a ‘broadcast’ for the purpose of Section 31D.

Delhi High Court upholds Personality Rights of Rajat Sharma.
The Delhi High Court in the case of Rajat Sharma vs. Ashok Venkatramani & Anr has upheld the celebrity rights of Rajat Sharma to his name and also recognized his publicity rights over the show ‘Aap Ki Adaalat’. In the present case, the Zee Media Corporation, in order to promote its new TV news channel published and circulated an advertisement featuring the names of famous news anchors with the names of their shows and channels for the promotion of their own TV news channel claiming it to be an anchorless channel. The court, while restraining the Zee Media from issuing any advertisements in the print media, TV channels or otherwise which contains the name of Rajat Sharma stated that Sharma had an unassailable right in his public persona and identity as a famous television show host. It also stated that the use of the Statement in the Advertisement amounted to false advertising.

A registered design cannot constitute a trademark.
The Delhi High Court in the case of Crocs Inc. USA vs. Aqualite India Limited, while dismissing the suit filed by the multinational footwear manufacturer Crocs, held that a suit for action against passing off solely based on a design registered under the Design Act, 2000 is not maintainable. Crocs filed a suit against Aqualite for alleging that the company was copying and adopting the designs of Crocs. The issue arose as to the filing of composite suit against various footwear companies for infringement and passing off in the light of the judgment passed in the matter of Carlsberg Breweries a/s v Som Distilliers. The court while thoroughly examining the provisions of the Designs Act, 2000 and the Trademarks Act, 1999 held that a composite suit for design infringement and passing off is maintainable on account of common questions of law and facts between the two causes of action, to avoid multiplicity of proceedings. However, it stated that a registered design cannot constitute a trade mark and the intention of the Legislature is clear from the prohibition contained in the Designs Act, is that a trade mark cannot be a design. The features of designs such as shape, configuration, pattern, ornament or composition of lines or colours applied to any article, even if used as a trade mark, cease to be a trade mark on registration being granted to the same as a design, and the registrant is to be deemed to have surrendered, abandoned, acquiesced and waived all rights to use such features as a trade mark. The court concluded the order stating that Crocs has failed to show any extra feature beyond the registered design which can be protected by passing off actions. The court opined that what is protected as a design cannot enjoy trade mark protection by virtue of trade dress under Trade Marks Act 1999.

Hermes International & Anr. Vs. Riyaaz Nasruddin Amlani & Ors.
The internationally famous French brand Hermes recently filed for a permanent injunction in the Delhi High Court against a restaurant named Social Goregaon, situated in Mumbai, for restraining the defendants from infringing the trademarks and copyright of the trademarks “Hermes”, “duc-carriage with horse logo” and copyright in the photographs of its advertising campaigns and trade dress in its “Evelyne Bag” for preventing the defendants from disparaging and tarnishing the said plaintiff’s trademark. The restaurant was using the trademarks as part of their restaurant décor. The restaurant used the logo of the “Hermes” rewording it as “HERPES” making it offensive for the visitor. The court while ruling in favor of Hermes stated that, “The power of seemingly naughty or irresponsible suggestion can sinister to the well-cultivated image of quality and class; it can be ruinous to the brand itself. Therefore, the petitioners’ discomfort, anguish and grievance must be remedied to some extent by the imposition of punitive cost”.

Delhi High Court upholds Louis Vuitton’s ‘Toile Monogram’ trademark.
The famous luxury brand Louis Vuitton moved to the Delhi High Court for restraining the defendants for infringing and passing off their famous trademarks “LOUIS VUITTON” and “LV” by using identical marks. The defendants were selling counterfeit products using identical mark on their goods which were infringing the trademark of the Plaintiff. The court found the defendants of being guilty for infringing and passing off the trademark Louis Vuitton and granted damages to the Plaintiff in light of the flagrant infringing activities of the Defendants.

The Fair & Lovely vs. Fair & Handsome disparagement fiasco.
The Delhi High Court in the matter Hindustan Unilever Limited vs. Emami Limited rejected the plea of HUL for granting injunction against the television commercial advertisement of Emami’s “Fair & Handsome”. HUL one of India’s leading brand filed an application seeking injunction against Emami Limited for disparaging the reputation and goodwill of their product “Fair & Lovely”. It was their contention that Emami’s Fair and Handsome brand of men’s fairness cream, had come out with a television commercial displaying a product that resembled its Fair & Lovely product terming it to be a fairness cream meant for the womenfolk with the same packaging of the product which would affect the reputation and goodwill of HUL’s fair & Lovely as a considerable amount of men also used the said cream. The court while rejecting the plea stated that the commercial advertisement does not leave an impression that in any manner disparages the product of the HUL, thus it cannot prima facie be concluded that the said TV commercial seeks to slander the goods of HUL in any way.

Hugo Boss becomes the real boss.
The Delhi High Court in the case of Hugo Boss Trade Mark Management GmbH and Company v. Ms. Sheetal Sabharwal granted an ex parte permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered marks “HUGO BOSS”, “BOSS” and other “BOSS” formative marks registered in Classes 9, 14, 18, 25, and 35 under the Trademarks Act, 1999. The defendant company infringed the trademarks of Hugo Boss using a deceptively similar mark “BOSS BIG BOSS” in respect of apparel, garments and other allied and cognate goods. The Court observed that the Defendant had no real prospect to defend the claim as the mark was registered in favour of the Plaintiff and its use by the Defendant would inevitably infringe upon the Plaintiff’s reputation and goodwill.

Drugs and Cosmetics Amendment Rules, 2019
On February 26, 2019 Central Government published a draft amendment to the Drug & Cosmetic Rules, 1945 (the ‘Rules’) to include a clause where a manufacturer / applicant intending to market a drug under a brand name shall furnish an undertaking that the ‘brand name or the trade name’ used by them shall not lead to any confusion or deception in the market over look alike, sound alike (LASA) drugs.

At present, neither licensing authority nor trademark office regulates the brand name or trade name. There are probabilities of assigning similar trade names for different drugs which may create confusion to medical practitioners or patients over LASA drugs. This amendment will thus protect the confusion caused among the people pertaining to specific products having similar drug name or trade name and would further lead to more protection of the intellectual properties of the owner of these products.

The Copyright Amendment Rules, 2019
The Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry issued a notification containing draft amendments to the Copyright Rules, 2019 which aims at providing solutions to the issues pertaining to statutory licensing as well as to introduce transparency in the functioning of the copyrights societies. Following are key highlights of the amendments:

• One of the major changes introduced in the draft amendment is pertaining to the statutory license for broadcasting of literary and musical works and sound recordings. The words “for each mode of broadcast” has been added in rules 29, 30 and 31, which deal with the statutory license for broadcasting of literary and musical works and sound recordings by replacing the words “by way of radio broadcast or television broadcast”. The second aspect of the Draft Amendments is the inclusion of new provisions for increasing transparency and functioning of the copyright societies in India.
• Additional criterias have been listed in Rule 57 for fixing the tariff schemes by copyright societies.
• A sub-rule is proposed to be inserted in Rule 58 for keeping separate accounts for royalties where it cannot be distributed within the specified time if the relevant author or the owner cannot be located or identified.
• A new Rule 65A has been proposed to be inserted to direct the copyright societies to publish an “Annual Transparency Report” within six months of the end of each financial year including information pertaining to all the activities in the financial year such as information on refusals to grant a licence, financial information on royalties due to authors and other owners, information on relationships with foreign societies or organizations, etc.
• A new sub-rule is proposed to be inserted in Rule 66, which deals with the code of conduct of the copyright societies, which requires the website of the copyright societies to make available: a feature enabling the users to search their database of works in form of the “Annual Transparency Report”; including details of undistributed royalties on account of work belonging to authors and other owners who could not be identified or located, etc.