Tort in IPR Rupayan Thakur

CIPRA Internship for December 2020 TorT in iPr A presentation by Rupayan Thakur Page | 1 Tort in IPR Defining Tort 1A Tort is an act or omission that gives rise to injury or harm to another and amounts to a civil 2wrong for which courts impose liability. In the context of torts, injury describes the invasion of any legal right, whereas harm describes a loss or detriment in fact that an individual suffers. The primary aims of Tort Law are to provide relief to injured parties for harms caused by 3others, to impose liability on parties responsible for the harm, and to deter others from committing harmful acts. Torts can shift the burden of loss from the injured party to the party who is at fault or better suited to bear the burden of the loss. Typically, a party seeking redress 4through tort law will ask for damages in the form of monetary compensation. Less common <ul style="display: flex;"><li style="flex:1">5</li><li style="flex:1">6</li></ul>remedies include injunction and restitution . Introduction to Intellectual Property Rights 7Intellectual Property is the product of the human intellect including creativity concepts, 8inventions, industrial models, literature etc. Intellectual Property Rights (IPR) do not differ from other property rights. They allow their owner to completely benefit from their product which was initially an idea that developed and crystallized. They also entitle them to prevent others from using, dealing or tampering with their products without prior permission from them. They can legally sue them and force them to stop and compensate for any damages. 9IPR is not a new concept. It is believed that IPR initially started in North Italy during the <ul style="display: flex;"><li style="flex:1">10 </li><li style="flex:1">11 </li></ul>Renaissance era. In 1474, Venice issued a law regulating Patents protection that granted an 12 exclusive right for the owner. Copyright dates back to 1440 when Johannes Gutenberg invented the printing press with replaceable and moveable letters which were wooden and th metal. Late in the 19 Century, a number of countries felt the necessity of laying down laws regulating IPR. Globally, two conventions constitute the core for IPR. These are : 1 https://www.britannica.com/topic/tort 2 https://courses.lumenlearning.com/wmopen-introbusiness/chapter/tort-law-liability-and-damages/ 3 https://lawexplores.com/the-nature-of-tortiousliability/#:~:text=Tort%20concerns%20civil%20wrongs%20leading,action%20for%20unliquidated%20damages.' %20( 4 https://blog.ipleaders.in/damages-under-tortlaw/#:~:text=Damage%20is%20the%20loss%20suffered,is%20available%20to%20the%20plaintiff. 5 http://www.legalserviceindia.com/legal/article-484-injunction-and-extra-judicial-remedies-under-tortlaw.html#:~:text=An%20injunction%20is%20an%20order,either%20damage%20or%20apprehended%20damag e. 6 https://uk.practicallaw.thomsonreuters.com/1-107-7154?transitionType=Default&contextData=(sc.Default) 7 https://www.wipo.int/about-ip/en/ 8 https://www.dubaicustoms.gov.ae/en/IPR/Pages/WhatIsIPR.aspx 9 https://www.wipo.int/edocs/lexdocs/laws/en/it/it037en.pdf 10 https://www.britannica.com/event/Renaissance 11 https://en.wikipedia.org/wiki/Republic_of_Venice 12 https://www.britannica.com/biography/Johannes-Gutenberg Page | 2 13 The Paris Convention for the Protection of Industrial Property (1883) The Berne Convention for the Protection of Literary and Artistic Works (1886) 14 Copyright, Patent, Trade Mark etc protects creators from those who would or wishes to pirate 15 these efforts. The US Constitution vividly describes the concept of IPR as well as their possible remedies in case of infringement. A similar approach too is taken by the European 16 Court of Justice (ECJ) . India in the context of IPR has also not remained behind. In order to ensure that the hard works of our nation remains our own glory and in order to protect our creators, it too has enacted numerous laws in this sphere. These include : 17 The Copyright Act, 1957 The Patents Act, 1970 18 19 The Trademarks Act, 1999 The Geographical Indications of Goods (Registration and Protection) Act, 1999 20 21 The Designs Act, 2000 22 The Semiconductor Integrated Circuits Layout Designs Act, 2000 The Protection of Plant Varieties and Farmers’ Rights Act, 2001 The Biological Diversity Act, 2002 23 24 Tort in IPR 25 Contributing to the growing domestic IP jurisprudence, the Delhi High Court has recently upheld unfair competition tort in a matter pertaining to data and information emanating from a 26 cricketing event and held that such information qualifies as quasi-property . This article briefly discusses the said emerging trend of protecting property rights through common law remedies and its plausible outcomes and consequences. IPR laws in India have selectively recognized the economic tort of unfair competition. The Trade Marks Act, 1999 provides for a non-obstante provision which allows a person to initiate an action for passing off in case of unregistered trade mark. However, such provision is not recognized in copyright, design or patent statutes. Till recently, the Indian Courts recognized unfair competition tort (passing off) only in trademarks. 27 However, in 2012, Bombay High Court observed that passing off action may lie against a design violation, provided that the consumers associate the unique design with the source and 13 https://www.wipo.int/treaties/en/ip/paris/ 14 https://www.wipo.int/treaties/en/ip/berne/ 15 https://www.whitehouse.gov/about-the-white-house/the-constitution/ 16 https://europa.eu/european-union/about-eu/institutions-bodies/court-justice_en 17 https://www.indiacode.nic.in/handle/123456789/1367?locale=en 18 http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_113_1_The_Patents_Act_1970_- _Updated_till_23_June_2017.pdf 19 http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf 20 http://www.ipindia.nic.in/act-1999.htm 21 http://ipindia.nic.in/writereaddata/images/pdf/act-of-2000.pdf 22 https://www.indiacode.nic.in/bitstream/123456789/1998/1/200037.pdf 23 http://legislative.gov.in/actsofparliamentfromtheyear/protection-plant-varieties-and-farmers-rights-act-2001 24 https://www.indiacode.nic.in/bitstream/123456789/2046/1/200318.pdf 25 http://delhihighcourt.nic.in/ 26 https://findwords.info/term/quasi-property 27 https://bombayhighcourt.nic.in/ Page | 3 that the infringer has copied the design with mala fide to deceive the consumers. [Videocon 28 Industries Limited v. Whirlpool India Limited, 2012 (6) Bom CR 178] The Division Bench further observed that : “Action for passing off can be initiated, where interest of an author or owner of a copyright work in his business reputation and goodwill is damaged by misrepresentation that falls outside the copyright law, i.e. the Act. Passing off action will be maintainable, when the claim is not based on infringement of copyright but damage to reputation and goodwill of the proprietor and the said damage is caused by deceit or 29 misrepresentation by the defendant.” Tangible properties like land, jewellery etc is protected from interference by trespass and 30 conversion, as well as from carelessly inflicted harm by the Tort of Negligence . But question remains of what a person's interest in the results of his intellectual efforts – to what are works of art and literature or scientific inventions afforded protection by the law of torts? <ul style="display: flex;"><li style="flex:1">31 </li><li style="flex:1">32 </li><li style="flex:1">33 </li></ul>In countries like the UK, New Zealand and Australia where Common Law is practiced, the 34 Tort of Passing off is a Common Law Tort that is used for the enforcement of unregistered 35 Trademark rights. A trader’s Goodwill is protected by the Tort of passing off from misrepresentation. It not only prevents misrepresentation by a trader of his goods or the services being provided but also holds out some connection or association with another when it is false. Actionable under Common Law, the law of Passing off in India is mainly to protect the Goodwill that is attached to unregistered Trademarks. One should not get benefit from the labour of another person is founded in the basic principle of law. In the Trademarks Act, 1999 the concept of Passing off is defined in Section 27(2), 134 (1)(c) and 135. The jurisdiction or power of the District Courts in the matter of passing off suits, to try the suit or issue injunction is referred in Section 134(1)(c). Establishment of the case and the irreparable injury or loss causes is done by the plaintiff. 36 A statutory law such as the United Kingdom Trade Marks Act, 1994 in Passing off and is a Common Law cause of action, providing for the enforcement of registered trademarks through infringement proceedings. 37 The Directive on the Enforcement of IPR (Directive 2004/48) lays down a number of enforcement measures, procedures and remedies which the Member States of the European 38 Union (EU) must make available to IPR holders to fight off infringement. These include : 28 https://indiankanoon.org/doc/188051985/ 29 https://www.lakshmisri.com/insights/articles/protecting-property-rights-through-common-law-remedies/# 30 https://blog.ipleaders.in/negligence-in-the-law-of-torts/ 31 https://gg.govt.nz/office-governor-general/roles-and-functions-governor-general/constitutional-role/constitution 32 <a href="/goto?url=https://www.aph.gov.au/~/media/05%20About%20Parliament/52%20Sen/523%20PPP/2012_Australian_Con" target="_blank">https://www.aph.gov.au/~/media/05%20About%20Parliament/52%20Sen/523%20PPP/2012_Australian_Con </a>stitution.pdf 33 https://www.investopedia.com/terms/c/commonlaw.asp#:~:text=Common%20law%20is%20a%20body,or%20written%20rules%20of%20law. 34 https://selvams.com/kb/in/trademarks/passing-offaction/#:~:text=Passing%20off%20is%20a%20form,the%20goods%20of%20another%20person. 35 https://www.investopedia.com/terms/g/goodwill.asp 36 https://www.legislation.gov.uk/ukpga/1994/26/contents 37 https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A32004L0048R%2801%29 38 https://europa.eu/european-union/index_en Page | 4 The issue of orders for the opposing party to present evidence which lies in its control (similar to a subpoena duces tecum ) 39 Measures for the preservation of evidence, namely, the description or the seizure of the <ul style="display: flex;"><li style="flex:1">40 </li><li style="flex:1">41 </li></ul>infringing goods (similar to the saisie-contrefaçon in France and to the Anton Piller <ul style="display: flex;"><li style="flex:1">42 </li><li style="flex:1">43 </li></ul>orders in UK ) Right of information orders to disclose information on the origin and distribution networks of the infringing goods or services Provisional and precautionary measures to stop alleged imminent or continuing IPR infringement and to stop the circulation of allegedly infringing goods Measures for the recall or removal of infringing goods from circulation, and measures for the destruction of infringing goods Nonetheless, it seems that a serious obstacle to using Directive 2004/48has been encountered 44 in non-cumul jurisdictions, which do not admit of Concurrent Liability in Tort and in contract. In its ruling the ECJ asserts that any infringement of IPR, within the meaning of Directive 2004/48, refers to both tortious as well as contractual infringement of IPR. The ECJ ruling minces no words when it states that, "It is apparent from the wording of that provision, in particular from the adjective 'any', that that directive must be interpreted as also covering infringements resulting from the breach of a contractual clause relating to the exploitation of an intellectual property right". Conclusion Property Rights are classified on the basis of their characteristics. However, the existing classification is inadequate to categorize certain rights which may also qualify as properties. One 45 such category is Quasi-property rights . Unlike the popular concept that property rights are available in rem, quasi-property rights are exercised against a specific class of users, generally the competitors. Equity Courts began using the term “Quasi-property” to describe interests that resembled property rights in their functioning even when they were not property rights, or, strictly speaking, ownership interests. The quasi-property rights were popularized by the early 20th Century judgment by the US Supreme Court in the case of International News Service v. 46 Associated Press (INS 248 US 215) . In this case, the respondent claimed quasi-property rights in the news reports. The Court held : “For, to both of them alike, news matter, however little susceptible of ownership or dominion in the absolute sense, is stock in trade, to be gathered at the cost of enterprise, organization, skill, labour, and money, and to be distributed and sold to those who will pay money for it, as for any other merchandise. Regarding the news, therefore, as but the material out of which both parties are seeking to make profits at the same time and 39 https://www.law.cornell.edu/wex/subpoena_duces_tecum 40 https://en.wikipedia.org/wiki/Saisie-contrefa%C3%A7on 41 https://constitutionnet.org/country/france 42 https://www.internationallawoffice.com/Newsletters/Intellectual-Property/India/Lex-Orbis/Using-Anton-PillerOrders-in-IP- Disputes#:~:text=Anton%20Piller%20orders%20can%20be,the%20destruction%20of%20incriminating%20evid ence. 43 https://www.britannica.com/topic/Magna-Carta 44 https://www.emerald.com/insight/content/doi/10.1108/eb006260/full/pdf?title=concurrent-liability-in-tortandcontract#:~:text=(1)%20where%20the%20defendant's%20liability,take%20care%2C%20but%20does%20not 45 https://openscholarship.wustl.edu/cgi/viewcontent.cgi?article=1140&context=law_journal_law_policy 46 https://supreme.justia.com/cases/federal/us/248/215/ Page | 5 in the same field, we hardly can fail to recognize that for this purpose, and as between them, it 47 must be regarded as quasi property, irrespective of the rights of either as against the public.” Secondary theories of Liability in both Trademark and Copyright law share the same origins – the Common Law of Tort and agency. Easing the reproduction of marks and by facilitating the distribution of infringing products globally, digital technology is posing threat to trademark holders. Secondary liability comes in two forms: vicarious liability and contributory liability. Courts have recognized the availability of both common-law theories of secondary liability – 48 contributory and vicarious in Inwood Laboratories Inc. v. Ives Laboratories Inc. represents 49 the seminal case in secondary trademark liability jurisprudence. The US Supreme Court confirmed the application of secondary liability principles to trademark law. Both secondary liability theories in Trademark law require an underlying act of direct infringement. This concept of vicarious liability in Trademark is similar to that of Common Law in which vicarious liability is established when the third party has the right and ability to control the actions of the direct infringer the third party derives a direct financial benefit from the infringement. For vicarious liability under trademark law, there must remain a sufficient link between the defendant and the alleged infringer. For establishing vicarious trademark liability a strong connection need to be proved. Vicarious trademark liability relies on 50 traditional tort law principles. Principal-Agent relationship exists if the defendant and the direct infringer have an apparent or actual partnership i.e., they have authority to bind one another in transactions with third parties. In addition to a relationship, direct financial benefit is also required to be established for secondary liability to be attached. 51 Procter and Gamble Co. v. Haugen plaintiff alleged that, defendants Mr. Haugen and the other distributor disseminated a voicemail message that identified plaintiff’s products and disparaged them as having “Satanic” qualities. Proctor and Gamble also wanted Amway to be held vicariously liable for the actions of its distributor. The court analyzed that plaintiff failed to demonstrate an employment or Principal-Agent relationship between Amway and Haugen. Hence, the court refused to hold Amway vicariously liable for Haugen’s actions. Thus, contractual relationships such as that between licensor and licensee or franchisor and franchisee are not sufficient to give rise to vicarious liability in trademark law. However, in 52 Government Employees Ins. Co. v. Google, Inc. a court found that an internet search engine could be vicariously liable for the infringing acts of its advertisers. Thus, the amount of control necessary to make a defendant vicariously liable is imprecise, and subject to application depending upon the case law. Words – 2029 47 https://www.quimbee.com/keyterms/quasi-property 48 https://supreme.justia.com/cases/federal/us/456/844/ 49 https://www.supremecourt.gov/ 50 https://www.investopedia.com/terms/p/principal-agentrelationship.asp#:~:text=The%20principal%2Dagent%20relationship%20is,in%20carrying%20out%20the%20ac t. 51 https://www.analysisgroup.com/Insights/cases/procter---gamble-co--v--haugen/ 52 https://law.justia.com/cases/federal/districtcourts/FSupp2/330/700/2314271/#:~:text=Plaintiff%20Government%20Employees%20Insurance%20Compa ny,on%20defendants'%20Internet%20search%20engines. Page | 6

Tort in IPR Rupayan Thakur

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