Intellectual Property Consultants

The idea of copyright began with the invention of the printing press, which is largely credited for spreading knowledge to the layperson. It was meant to protect the authors of the book who in the past had to copy their books by hand if they wanted to reproduce them. Without the printing press they had total control of who their ideas were passed to in the physical form, the downside of this control was that it was time consuming and expensive to reproduce their work.

Copyright was wildly violated in those times by printing press operators who sold bootleg copies of books for bargain prices. Back these bootleggers where considered criminals by law, but nowadays history classes look at them indirectly as heroes. Bootleggers had profound educational and social impacts of the printing press may never have been realized. Without bootleggers legitimate book publishers would have no competition, because their works were protected by copyright, so books would still cost the insane they did before the printing press. This violation of laws allowed information to spread freely though and without it the educational potential of the printing press may have never been realized.

Today copyright and the printing press still plays a large role in education worldwide. Virtually every single book out there has a notice printed in the front of the book saying something along the lines of “No part of this work may be reproduced or transmitted in any form or by any means, electronic or mechanical, including photocopying and recording, or by any information storage or retrieval system without prior written permission of [company name] unless such copying is expressly permitted by federal copyright law”. It has also grown beyond just print media to audio and visual media like music, movies and the internet.

According to Dallas employment attorneys, with respect to misappropriation of trade secret litigation matters, an employer can get injunctive relief in the form of a temporary retraining order, a preliminary injunction, and finally a permanent injunction.

In the event an employer chooses to go this route, then the employer has to meet a high burden including showing irreparable harm. With respect to money damages, an employer can get actual damages when the improper use of the trade secret leads to economic damages suffered by the employer. In Enterprise Mfg. Co. v. Shakespeare Co., 141 F.2d 916, 920 (6th Cir. 1944), the Court held that the damages should be in line and accord with the commercial setting of the injury, the likely future consequences of the misappropriation, and the nature and extent of the use the defendant put the trade secret to after misappropriation.

Furthermore, trade secret damages have been measured in terms of the loss suffered by the employer and the value of the trade secret to the former employee who misappropriated the trade secret. According to Los Angeles employment attorneys, an employer plaintiff can also recover damages in the form of lost profits. In addition, according to a qualified employment attorney, an employer plaintiff can also expect to recover what is called a reasonable royalty.

Moreover, an employer plaintiff can obtain exemplary damages if the plaintiff meets this burden. Lastly, an employer plaintiff can recover attorneys fees based on a breach of contract statute or an attorneys fee provision in the former employees contract. According to Dallas employment attorneys, it is difficult to obtain damages in the form of lost profits in trade secret cases.

Creation of the Right of Publicity in California

The “right of publicity” is generally defined as the right to control or prevent the unauthorized use or commercial exploitation of one’s name, likeness, voice or “personality.”[1] The right of publicity evolved from the right of privacy, which itself has evolved dramatically over more than a century. In 1890, Samuel D. Warren and Louis D. Brandeis published a seminal article in the Harvard Law Review entitled The Right to Privacy,[2] in which they argued for a remedy for those injured by unauthorized public disclosure of truthful but embarrassing private facts.[3]

By the mid 1900’s, some courts and state legislatures had adopted some elements of the Brandeis-Warren theory. However, the question arose as to how to apply these rights to celebrities who had voluntarily and affirmatively sought the spotlight.

Second Circuit Judge Jerome Frank answered that question in 1953 when he coined the term “right of publicity” in the case of Haelan Laboratories Inc. v. Topps Chewing Gum, Inc. [4] The Haelan case asked whether a baseball player could assign exclusive rights to produce a card with his photograph on it to one single baseball card manufacturer.[5] The court determined that prominent persons do possess a “right of publicity”[6] which was an assignable interest, unlike the strictly personal – and therefore non-assignable — right to privacy.[7]

Judge Frank’s opinion was followed by a prominent article by Professor Melville B. Nimmer that analyzed the right to publicity as an assignable property right.[8] Nimmer explained that a mere right to privacy did not sufficiently address the issues unique to celebrities; while the right to privacy protected individuals from indignity and embarrassment, the right to publicity dealt with a celebrity’s ability (and, theoretically, anyone’s ability) to protect the commercial value of his or her image and identity.[9]

California first codified the right of publicity in 1971, when the California legislature enacted Civil Code section 3344, which enables recovery by any living person whose name, photograph, or likeness has been used for commercial purposes without his or her consent.[10] California courts have recognized both the statutory and the common law right of publicity. [11]

 However, both the common law and statutory rights of privacy were only available to living plaintiffs; the right was not freely descendible and thus expired by operation of law upon the death of the person claiming the right.[12] This very issue lay at the heart of two seminal companion cases decided in 1979: Lugosi v. Universal Pictures[13] and Guglielmi v. Spelling-Goldberg Productions.[14] In those cases, the California Supreme Court determined that the heirs of deceased celebrities had no statutory protections against posthumous exploitation of the celebrity’s image.

In Lugosi, the heirs of actor Bela Lugosi (best known for playing the title role in the 1930 movie, “Dracula”) sued to enjoin and recover profits from Universal Pictures for licensing Lugosi’s name and image on merchandise.[15] The California Supreme Court upheld the decision of appellate court in finding that the right to exploit one’s name and likeness is personal and must be exercised, if at all, by him during his lifetime.[16]

Similarly, in Guglielmi, the California Supreme Court cited to and relied upon its opinion Lugosi in holding that Rudolph Valentino’s heirs could not obtain an injunction or damages from the defendant because Valentino’s right of publicity was not descendible under California law.[17] Because Valentino had not exploited his name and likeness during his lifetime, others could now use it without liability to Valentino’s heirs.[18]

Courts outside of California honored the Lugosi and Guglielmi decisions as well in applying California law. In Groucho Marx Productions, Inc. v. Day and Night Company, Inc.[19], the Second Circuit held that the rights of publicity were not descendible under California law. In that case, the Marx Brothers’ assignees sued a production company for interference with the assignees’ publicity rights; the production company incorporated three characters that strongly resembled the Marx Brothers in its Broadway musical, “A Day in Hollywood/ a night in the Ukraine.” The federal district court in New York had applied New York law, determining that New York recognized a descendible right to publicity and granting summary judgment to the plaintiffs.[20] The Second Circuit, however, reversed that decision, holding that the descendibility issue was governed by California law and as a result, the plaintiffs had no right to relief.[21]

Legislating a Post-Mortem Right of Publicity

The holdings in Lugosi and Guglielmi precipitated legislation designed specifically to create a statutory descendible right to publicity. In 1984, the California legislature enacted Civil Code section 990 (renumbered as section 3344.1 in 1999), creating a post-mortem right of publicity for “deceased personalities,” – individuals whose names, voices, signatures, photographs, or likenesses had commercial value as of the time of their death.[22] This legislation became effective January 1, 1985.

Section 990 explicitly stated that the right of publicity is a property right, “freely transferable, in whole or in part, by contract or by means of trust or testamentary documents” whether that transfer occurs before, by or after death of the personality.[23] The statute held that absent an explicit transfer of this right, it automatically goes to the statutory/ intestate heirs of the deceased (spouse, children, parents).[24] If the celebrity fails to transfer the right explicitly and dies without any statutory heirs, the right of publicity terminates.[25] Otherwise, the extended right of publicity would expire 50 years after the death of the deceased personality.[26]

In an attempt to maximally preserve First Amendment protections for creative outlets, the new statutory provision exempted from liability plays, books, magazines, newspapers, musical compositions, films, and radio and television shows that used a deceased celebrity’s likeness, name, voice, etc.[27]

 The registered owner of the posthumous rights to The Three Stooges comedy act relied on section 990 to obtain damages against an artist who reproduced his charcoal drawings of the act on lithographs and t-shirts.[28] The artist had claimed that his artwork was creative and transformative enough to warrant First Amendment protection against the plaintiff’s right of publicity claim, just like the specifically listed exemptions in the statute. The court agreed that when a work of art is so transformative that the value of the work derives primarily from the skill and creativity of the artist rather than from the fame of the celebrity depicted, the work may be protected by the First Amendment.[29] However, the court determined that Saderup’s depictions were more literal than transformative — a clear attempt merely to exploit the Three Stooges’ fame — and therefore First Amendment protection did not apply.[30] If Saderup wanted to continue to use these images, he needed to obtain the consent of the right of publicity holder.

However, that same list of exempt uses in section 990 posed new problems, exemplified in two main cases:

In Joplin Enterprises v. Allen,[31] a federal district court applied section 990 to find that a two-act biographical play about deceased singer Janis Joplin was not actionable. Joplin’s devisees alleged that the play constituted copyright infringement as well as misappropriate of Joplin’s privacy and publicity rights.[32] The court determined that section 990 applied only to unauthorized “merchandise, advertisements and endorsements,” and it explicitly exempted plays from liability.[33]

The Ninth Circuit similarly exempted an instructional dance video from liability under section 990 in Astaire v. Best Film & Video Corp.[34] In Astaire, the widow of famed dancer Fred Astaire sued a videotape manufacturer for using Fred Astaire’s image in a series of dance instructional videotapes – each tape opened with about 90 seconds of footage of Astaire. Mrs. Astaire claimed the company violated her statutory right to control the use of her husband’s name and likeness under section 990.[35]

The Central District of California agreed with Mrs. Astaire, finding that the company used Astaire’s image “on or in products, merchandise, or goods” in violation of the statute.[36] But the circuit court reversed and remanded, finding that the pre-recorded videotapes fell into the “film” exemption of section 990(n).[37] Indeed, the court determined that the film exemption applied even if the use was an advertisement or commercial announcement.[38]

The Astaire Amendment: Deleting exempt uses

After losing her difficult and expensive lawsuit, Mrs. Astaire teamed up with the Screen Actors Guild to sponsor legislation that would clarify and expand the post-mortem right of publicity. That bill, SB 209, passed in 1999 and became known as the “Astaire Celebrity Image Protection Act.”

 Most significantly, the Astaire Amendment eliminated the list of exempt uses of deceased celebrity likenesses, thereby substantially increasing the types of uses for which consent of the celebrity’s heirs is required. The bill also extended the descendible right of publicity from 50 years to 70 years following the celebrity’s death.[39]

Despite these amendments to clarify and expand the descendible posthumous right of publicity, there remained a gap in the law that was revealed by two similar cases regarding the posthumous rights of Marilyn Monroe: Milton H. Greene Archives, Inc. v. CMG Worldwide, Inc.[40] and Shaw Family Archives, Ltd. v. CMG Worldwide, Inc.[41] (collectively, the “Monroe cases”). When Marilyn Monroe died, she left the residue of her estate to her acting coach, Lee Strasburg, who, upon his death, left most of his estate to his wife, Anna Strasberg.[42] Anna Strasberg then transferred her interest in Monroe’s estate to Marilyn Monroe LLC, who licensed CMG Worldwide, Inc. to use Monroe’s images and likenesses.[43] In these two actions, CMG sued other parties for their unauthorized use of Monroe’s image.

In the Monroe cases, both courts interpreted section 3344.1 as prohibiting publicity rights from passing by will if the personality died prior to January 1, 1985.[44] In other words, the statutory descendible right of publicity did not exist when Monroe died, so, by operation of law, it could not have been a property right that she possessed upon death.[45] Because Monroe did not own this property right at the time of her death, she could not have transferred it in the residuary clause in her will.[46] Moreover, even if Monroe did possess the right, section 3344.1 only enables transfers to statutory heirs – Monroe had no statutory heirs, so her right would terminate in any event.[47] Both courts ruled against CMG on summary judgment.

The holdings in the Monroe cases had unsettling implications. Many deceased celebrities and their devisees left or transferred residual estates to charitable organizations, which relied in part on their ability to license the famous images for fundraising purposes. The Monroe holdings effectively removed from these organizations many rights they had relied upon. Reflecting these concerns, the federal district court for the Central District of California wrote:

The court reaches this conclusion with some reluctance because … at least some personalities who died before passage of the California … right of publicity statute[] left their residuary estates to charities, which will be “divested” of those rights under the court’s holding… As noted, however, nothing in this order prevents legislatures from enacting right of publicity statutes so as to vest the right of publicity directly in the residuary beneficiaries of deceased personalities’ estates or their successors-in-interest.[48]

 The 771 Amendment: Enabling retroactive transfers to residual estates

The California legislature wasted no time following the suggestion of the Milton H. Greene court. Merely six weeks after that opinion was published, State Senator (and former child actor) Sheila Kuehl[49] fast-tracked through the legislature[50] Senate Bill 771, designed specifically to clarify the scope of Cal. Civil Code section 3344.1 and to abrogate the decisions in the Monroe cases.[51]

The somewhat controversial SB 771 accomplished several goals. First, it explicitly stated that a deceased celebrity’s right of publicity applies to individuals whether or not they died before January 1, 1985.[52] The amendment deems, retroactively, that a deceased celebrity’s right of publicity existed and was transferable even if they died before the enactment of section 3344.1.[53] In the event the celebrity did not expressly transfer this right (and why would they, if they didn’t know it existed?), the right became part of the deceased personality’s residual estate and was transferred to whomever received those assets.[54] The resulting owner of that right has 70 years from the date of the celebrity’s death to control use of the celebrity’s image for commercial purposes.[55]

Despite the efforts to get SB 771 drafted and passed quickly, it still did not help CMG Worldwide and Marilyn Monroe LLC (“MMLLC”). On November 21, 2007, armed with the newly-passed SB 771, CMG and MMLLC filed a motion for reconsideration in the Milton H. Greene case, which the federal district court granted.[56] The court agreed that, due to the passage of SB 771, CMG and MMLLC did have standing to assert Monroe’s posthumous right of publicity under California law.[57] However, after a detailed analysis, the court determined that Monroe was domiciled in New York, not California, at the time of her death.[58] Because New York did not recognize either a common law or statutory posthumous right of publicity in 1962 and because, unlike California, New York has not passed a statute to recognize such rights retroactively, Monroe did not possess the right to publicity when she died and therefore could not have transferred it in her will.[59]

Right of Publicity Laws in Other States

 Though the right of publicity is derived from the Constitutional notion of the right of privacy, it is created and enforced via state laws. At least nineteen states have developed and passed a statutory right of publicity[60]; not all of them treat the right as descendible.[61] At least eleven other states only recognize a common law right to publicity.[62] The American Law Institute’s Third Restatement of Unfair Competition (1995), section 46, also recognizes the right of publicity as a separate legal theory.

The state of Indiana actually has the most comprehensive right of publicity statute on the books.[63] Enacted in 1994, Indiana’s law protects a deceased individual’s right of publicity for 100 years after his death and includes protections for the celebrity’s signature, photograph and gestures, as well as the more typical name, image and likeness.[64] Otherwise, Indiana’s law is similar to Cal. Civil Code section 3344.1.

 New York, on the other hand, gives celebrities a statutory claim against the use of only their “name, portrait, or picture…. for advertising purposes or for the purposes of trade.”[65] New York Senator Martin Golden and Assemblywoman Helene Weinstein presented SB 6005/ Assembly Bill A08836[66] to the New York Legislature. While early attempts were made to rush that bill through the New York legislature, the bill was halted, apparently due to concerns that it is overly broad in nature, posing potential conflicts with Constitutional rights and other rights.[67]

Potential Negative Implications of SB 771

The New York legislature’s hesitancy to rush right into endorsement of its bill — the identical twin to California’s SB 771 — reflects some of the real concerns about and potential problems resulting from SB 771.

Because SB 771 is retroactive in nature, it may grant rights to some people retroactively while taking away from others rights that they had relied upon by entering into contracts and otherwise lawfully exploiting certain images.[68] As a result, this area is certainly ripe for testing, with the strong possibility of some untenable judicial results and, subsequently, more statutory amendments.

 The statute attempts to preempt some future litigation by including this condition: If a statutory heir[69] exercised his or her rights to exploit a deceased celebrity’s likeness before May 1, 2007, and that exercise was not challenged successfully in court by a transferee of the celebrity’s residual estate, the residual estate transferees cannot use SB 771 to now come back and claim that right to publicity.[70] In fact, in this factual scenario, the residual estate is forever barred from claiming the right of publicity, which remains with the statutory heirs throughout the statutory period.[71]

 However, that statutory provision does not address what will certainly be the more common situation – when the transferees of a celebrity’s residual estate file suit for damages and an injunction against a person or company that lawfully used that celebrity’s image or likeness for commercial purposes long before enactment of SB 771. Due to the retroactive nature of SB 771, the residual estate could theoretically reach back many years and disgorge substantial profits from an entity whose use had been legal throughout that time, as well as permanently enjoin future use by an entity who may have built an entire brand around the use.

 Because the right to publicity differs so dramatically from state to state, and because there is so much overlap between right to publicity issues and issues dealing with trademark and copyright law, First Amendment protections, and other laws, several groups are pressing for Congressional enactment of a federal right to publicity law. The proposal by the International Trademark Association, for example, would amend the Lanham Act to add a federal right of publicity that would specifically preempt all state law, both statutory and common law.[72]

 The INTA’s proposed federal law does include a descendible and transferable right of publicity effective for a period of time after a celebrity’s death.[73] However, it also includes a provision that the California’s law lacks – a “grandfather clause” that protects the rights of prior users.[74]

Conclusion

Undoubtedly, California’s right of publicity statute remains on the frontlines of the evolution of this legal concept. As home to an abundance of celebrity’s, California’s statute is frequently tested and amended when those tests reveal a gap in the law. Senate Bill 771 represents only the latest step in the evolution, but it probably goes too far, creating more legal problems than it may solve.

As a result, SB 771 certainly will not be the last word on California’s statutory descendible right of publicity. Whether ultimately preempted by a new federal law or not, the California statute will need to address the rights of prior users who acted in reliance on their pre-SB 771 rights and are harmed as a result of this retroactive bill. Future litigation on this very issue, likely followed by yet another legislative amendment, is predictable.

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[1] See, e.g., Miller v. Glenn Miller Prod., Inc., 454 F.3d 975, 99. 988-989, n.6 (9th Cir. 2006).

[2] Samuel D. Warren and Louis D. Brandeis, The Right to Privacy, 4 Harv. L. Rev. 193 (1890).

[3] Id. at 213.

[4] 202 F.2d 866, 868 (2nd Cir. 1953).

[5] Id. at 867.

[6] 202 F.2d at 868.

[7] Id. at 868-869.

[8] Melville B. Nimmer, The Right of Publicity, 19 Law & Contemp. Probs. 203 (1954).

[9] Id. at 203-04.

[10] Cal. Civil Code. Section 3344(a). The statute exempts from liability uses made in connection with  news, public affairs, sports broadcasts or accounts, and political campaigns. Cal Civil Code, section 3344(d).

[11] Miller v. Glenn Miller Prod., Inc., 454 F,3d 975, 988-89, n.6 (9th Cir. 2006).

[12] Lugosi v. Universal Pictures, 25 Cal. 3d 813, 820-822 (1979).

[13] Lugosi, supra.

[14] 25 Cal. 3d 860 (Cal. 1979).

[15] Lugosi, 25 Cal. 3d at 817.

[16] Id. at 822-823.

[17] 25 Cal. 3d at 864.

[18] The implication is clear that had Lugosi and Valentino actually contracted with the defendants regarding use of their likenesses during their lifetimes, the heirs would have the right to enforce those contracts posthumously. In these cases, however the defendants were using the images without the benefit of a contract that related to use of the images.

[19] 689 F.2d 317 (2d Cir. 1982).

[20] 689 F.2d at 319.

[21] Id. at 323.

[22] Cal. Civil Code section 3344.1(h).

[23] (Former) Cal. Civil Code section 990(b) (now amended and renumbered)

[24] Id. at 990(d).

[25] Id. at 990(e).

[26] Id. at 990(g).

[27] Id. at 990(n).

[28] Comedy III Productions Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387 (2001).

[29] 25 Cal. 4th at 407.

[30] Id. at 409.

[31] 795 F. Supp. 349 (W.D. Wash. 1992).

[32] Id. at 350.

[33] Id. at 351.

[34] 116 F.3d 1297 (9th Cir. 1997), as amended by 136 F. 3d 1208 (9th Cir. 1998).

[35] 116 F.3d at 1299.

[36] Id. at 1300.

[37] Id. at 1301-1302.

[38] Id. at 1302.

[39] Cal. Civil Code section 3344.1(g).

[40] Milton H. Greene Archives, Inc. v. CMG Worldwide, Inc. (unreported), (No. CV-05-02200MMM), 2008 WL 655604 (C.D. Cal. Jan. 7, 2008), summary judgment affirmed by Milton H. Greene Archives v. CMG Worldwide, Inc., ___ F. Supp. ___. 2008 WL 1922980, No. CV 05-2200 MMM (C.D. Cal. March 17, 2008).

[41] 486 F. Supp. 2d 309 (SDNY 2007).

[42] Shaw, 486 F. Supp. at 312.

[43] Id.

[44] Id. at 317; Milton H. Greene, 2008 WL 655604, at *1.

[45] Shaw at 319; Milton H. Greene, 2008 WL 655604, at *1.

[46] Shaw at 319.

[47] Shaw at 319; Milton H. Greene, 2008 WL 655604, at *1-2.

[48] Milton H. Greene court’s May 14, 2007 Order granting summary judgment in favor of plaintiffs, at 36:15-20, n.38 and n.80.

[49] The bill was drafted and sponsored by the Screen Actors Guild at the urging of CMG. It received strong support from the Cecil B. DeMille Foundation, the Marilyn Monroe LLC, the Motion Picture and Television Fund, [John] Wayne Enterprises and the California Labor Federation.

[50] The  bill passed through the California legislature on September 7, 2007 and was signed into law by governor Arnold Schwarzenegger on October 10, 2007. It took effect January 1, 2008.

[51] Section 2 of Stats. 2007, c. 439 (S.B. 771).

[52] Cal. Civil Code section 3344.1(b).

[53] Id.

[54] Id.

[55] Cal. Civil Code section 3344.1(g).

[56] Milton H. Greene Archives v. CMG Worldwide, Inc., ___ F. Supp. ___. 2008 WL 1922980, No. CV 05-2200 MMM (C.D. Cal. March 17, 2008).

[57] ____ F. Supp. at ____; 2008 WL 1922980 at *3.

[58] More specifically, the court found that authorized representatives of Monroe’s estate had repeatedly represented in various forums that Monroe was a resident of New York, not California, and was only in California temporarily for work, with no intent to remain in California.  The court performed a lengthy and detailed analysis to determine that CMG was barred by judicial estoppel from asserting that Monroe was domiciled in California and therefore possessed a right of publicity under California laws. 2008 WL 1922980, at *33 - *34.

[59] Id. at *3.

[60] These 19 are: California (Cal. Civ. Code section 3344 and 3344.1), Florida (Florida Stat. section 540.08), Illinois (Ill. Rev. Stat. ch. 765 section 1075/1 et seq.), Indiana (Ind. Code section 32-36-1 et seq.), Kentucky (Ky. Rev. Stat. Ann. Section 391.170), Massachusetts (Mass. Gen. L., ch. 214 section 3A), Nebraska (Neb. Rev. Stats. Section 20-202), Nevada (Nev. Rev. Stat. sections 597.770 - 597.810), New York (N.Y. Civil Rights Law sections 50, 51), Ohio (Ohio Rev. Code Ann. Sections 2741.01 et seq.), Oklahoma (Ok. Stat., Title 12, sections 1448 and 1449), Pennsylvania (Pa. Cons. Stat. Title 42, section 8316), Rhode Island (R.I. Gen. Laws sections 9-1-28 and 9-1-28.1(a)(2)), Tennessee (Tenn. Code Ann sections 47-25-1102 to 47-25-1107), Texas (Texas Prop. Code Ann. Section 26.001 et seq.), Utah (Utah Code Ann. section 45-3-1 et seq.), Virginia (Va. Code section 8.01-40), Washington (Wash. Rev. Code Ann. 63.60-010 et seq.) and Wisconsin (Wisc. Stat. section 895.50(2)(b)).

[61] The following states’ right of publicity statutes do not appear to grant rights after death: Massachusetts, Nebraska, New York, Rhode Island, Pennsylvania, Utah, and Wisconsin.

[62] They are: Alabama, Arizona, Connecticut, Georgia, Hawaii, Maine, Michigan, Minnesota, Missouri, New Jersey, and Oregon.

[63] Ind. Code. Ann. Sections 32-36-1 et seq.

[64] Id. at 32-36-1-7 and 32-36-1-8(a).

[65] N.Y. Civ. Rights Law sections 50 and 51 (McKinney 2007).

[66] The New York bill is essentially identical to California’s SB 771. Like SB 771, it was introduced immediately after publication of the Monroe decisions and was similarly backed by CMG. There were rumors that CMG had hired a lobbyist specifically to assist the bill’s expedition.

[67] “Marilyn Monroe Historic Legislation Halted – Surprise to CMG and MMLLC”, PR-inside.com, June 25, 2007, located at http://www.pr-inside-com/marilyn-monroe-historic-legislation-halted-r161341.htm#.

[68]David Marcus, attorney for the Shaw Family Archives, claims (without specificity) that SB 771 conflicts with California laws relating to wills and estates. New York intellectual property attorney Nancy Wolff asserts that the California legislature violated its own procedural rules when it rushed SB 771 through. (“California Adopts New Right of Publicity Law,” pdnonline.com, October 12, 2007 (located at http://www.pdnonline.com/pdn/newswire/article_display.jsp?vnu_content_id=1003658099). If either or both of these assertions are true, they would provide additional grounds for legal challenges to SB 771.

[69] Other than someone who was specifically disinherited by the deceased personality. Cal. Civil Code section 3344.1(o).

[70] Id.

[71] Id.

[72] See the INTA’s Adopted Resolution on the Federal Right of Publicity at http://www.inta.org/index.php?option=com_content&task=view&id=285&Itemid=153&getcontent=3.

[73] Id.

[74] Id.

Trade Mark- A Fundamental Concept

A trademark or trade mark is one of the elements of Intellectual Property Right and is represented by the symbol ™ or ® or mark is a distinctive sign or indicator of some kind which is used by an individual, business organization or other legal entity to identify uniquely the source of its products and/or services to consumers, and to distinguish its products or services from those of other entities. A trademark is a type of intellectual property, and typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories.

The term trademark is also used informally to refer to any distinguishing attribute by which an individual is readily identified, such as the well known characteristics of celebrities. When a trademark is used in relation to services rather than products, it may sometimes be called a service mark, particularly in the United States.

Rights & Remedies of a Trade Mark Owner-

The owner of a registered trademark may commence legal proceedings for trademark infringement to prevent unauthorized use of that trademark. However, registration is not required. The owner of a common law trademark may also file suit, but an unregistered mark may be protectable only within the geographical area within which it has been used or in geographical areas into which it may be reasonably expected to expand.

Two types of remedies are available to the owner of a trademark for unauthorized use of his or her mark or its imitation by a third party. These remedies are:

• an action for infringement’ in case of a registered trademark; and




• an action for passing off’ in the case of an unregistered trademark

While former is a statutory remedy, the latter is a common law remedy. In an action involving infringement or passing off, a court may grant relief of injunction and/or monetary compensation for damages for loss of business and/or confiscation/destruction of infringing labels and tags etc.
Although registration of trademark is prima facie an evidence of validity of a trademark, yet the registration can not upstage a prior consistent user of trademark, for the rule is ‘priority in adoption prevails over priority in registration`.

Infringement of Trade Mark-

Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the license). Infringement may occur when one party, the “infringer”, uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers. An owner of a trademark may commence legal proceedings against a party which infringes its registration.

Trade mark Law in India-

The Indian law of trademarks is enshrined the new Trade Marks Act, 1999 came into force with effect from September 15, 2003. The old Trade and Merchandise Marks Act, 1958 was repealed at the same time. The new Trademarks Act of 1999 is in line with the WTO recommendations and is in conformity with the TRIPS Agreement to which India is a signatory.

India has declared certain countries as convention countries, which afford to citizens of India similar privileges as granted to its own citizens. A person or company from a convention country, may within six months of making an application in the home country, apply for registration of the trademark in India. If such a trademark is accepted for registration, such foreign national will be deemed to have registered his or her trademark in India, from the same date on which he or she made application in the home country.

Scope of Foreign Investors With Regard to the Registration of Trade Mark in India-

Registration of trademarks is one of the important protections that businesses should avail in India. Many foreign and domestic Applicants have been able to successfully register their marks in India. Indian courts have upheld many of those registrations and granted favorable decisions to rights holders.

In addition to the registering of their trademarks in India, businesses need to adopt other strategies for protecting their trademarks. Some of them are mentioned below:

• Get trademark searches conducted in the Indian Trade Marks Registry in the classes that are of interest to you including the ancillary classes.




• Get common law searches (this includes the internet, market surveys, yellow pages and directories) conducted to ascertain whether third parties are using your trademarks and if so, the extent of such use.




• Based on this information and after seeking the local counsel’s opinion decide if the trademark is available for use or not.




• Should the trademark be available for use, immediately apply for the registration.




• The rights holder should also consider hiring a watching service to monitor the trademark journals in order to alert them to any published, deceptively similar trademarks or descriptive trademarks that might be of concern.




• Should the rights holder own a trademark that has been used and has acquired goodwill and reputation, it is advisable that along with filing of the trademark application in India, they should also make press releases, publish cautionary notices and advertise the mark to ensure that the relevant section of the public is aware that they are entering the Indian market and are protecting their trademark from any kind of third party violation.




• The rights holder should also take immediate steps to register their domain names including country coded top level domain names in India, as there have been many instances of third parties registering domains for certain well known marks with the intention of extracting money by selling these domain names to the rights holders.




• Should the rights holder discover that their trademark is being infringed, they should take immediate steps to protect their trademark, either by the means of filing oppositions, cancellations, conducting investigations, sending cease and notices or initiating appropriate civil and criminal actions.

Cases of Trade Mark Violation in India-

Trade mark infringement especially among the corporate classes in India is rising on an alarming rate. Few of the notable cases have been described in brief.

1. Pantaloon dragged to court by Shoppers’ Stop and Lifestyle; Westside also contemplates similar action, (July 14th, 2008).

Shoppers’ Stop and Lifestyle have dragged their rival Pantaloon to court as they were miffed with an advertisement issued by the flagship company of Kishore Biyani owned Future Group that offered 10% extra discount to their loyal customers vide an advertisement issued in The Times of India, New Delhi, dated 28th June, 2008. The complainant retailers have accused Pantaloon of trademark violations and unfair business practices, says a Live Mint report. All the three parties operate department store format store chains in lifestyle segment.

Even Westside has taken objection to the ad saying, “We have sent a notice to them to which they have not responded,” said Smeeta Neogi, Head (Marketing) Westside.

Pantaloon’s ‘Central’ mall at Gurgaon had offered 30% discounts to its customers over the weekend. Loyalty card holders of competing retailers like Shopper’s Stop, Lifestyle and Westside, were lured by Pantaloon by offering an additional 10% discount on select brands of apparel. The advertisement asked such customers to: “Present your membership card to avail this offer.”

Loyalty cardholders are mainstay of business for most retailers. Shoppers’ Stop has a highly popular loyalty card programme branded “First Citizen.” According to analysts, more than two-thirds of Shoppers’ Stop’s apparel business is accounted for by its loyal customers.

“They (Pantaloon) are luring my customers by using my name in an unfair manner,” said Sandeep Mittal, the lawyer representing for both the petitioners.

The Honourable Delhi high court has issued an injunction restraining Pantaloon from using names of its rivals in the ads until the next hearing in the matter fixed for 31st July.

Taking potshots at these competitors is not new for Pantaloon. Last year, its Big Bazaar chain had put up hoardings, asking customers to “Keep West-aSide,” “Shoppers! Stop” and “Change Your Lifestyle. Make a Smart Choice.”

2. Amul wins trade mark case in Gujarat High Court, (Sep 24, 2007)

Amul has won the trade mark case in Gujarat High Court and no one else can use it.

The Kaira District Co-operative Milk Producers? Union Ltd. and GCMMF had filed trade mark infringement cases, against two local shop owners ? Amul Chasmaghar and its partners and Amul Cut Piece Stores in the District Court, Anand.

The District Court, Anand passed an order dated 25 April 2007, ruling that it was a clear case of infringement and restrained the two from using the Amul trademark.

Amul Chasmaghar had challenged this interim injunction in the Gujarat High Court. The Gujarat High Court ruled the decision in favor of Amul, terming the order passed by the trial court as true, correct, legal and in consonance with the facts of the case, as well as in accordance with the provisions of the Trade Marks Act 1999.

3. Trade Marks Disputes Involving Pharmaceuticals Industry in India-

A. Beecham Group Plc. vs. S.R.K. Pharmaceuticals 2004 (28) PTC391 (IPAB)

The appellant was using the mark ‘AMOXIL’ in India since 1990. This mark was registered in India in 1972 in Class 5 in respect of Pharmaceutical goods. The respondent started using the mark ‘LYMOXYL’ in India from 1985. The respondent filed the application for registration of the mark in 1987 in India in the same class with respect to similar goods.

The appellant brought an action against the respondent stating that the mark is deceptively similar. The only difference between the two marks is in the prefix ‘LY’ and ‘M’. The rival marks are phonetically and deceptively similar and the goods are pharmaceutical goods under Sec. 12(1) of the Act.

The Intellectual Property Appellate Board (IPAB) held that the respondent dishonestly adopted the mark by copying it from the appellant who had got the mark registered long ago. Hence the respondent cannot claim honest concurrent use, by virtue of earlier use. The Appellate Board delivered a judgment prohibiting registration of the Trade Mark ‘LYMOXYL’.

B. Ranbaxy Laboratories Limited vs. Anand Prasad & 4 Others 2004 (28) PTC 438 (IPAB)

The appellant was the registered proprietor of the mark ‘FORTWIN’ and had been using the mark since 1975. The respondent applied for registration of the mark ‘OSTWIN’. Both the marks related to pharmaceutical compositions in respect of treatment of bones.

The appellant brought an action against the respondent stating that the mark is deceptively similar. The IPAB held that the prefixes are ‘FORT’ and ‘OST’ while both the marks end with the suffix ‘WIN’. It was further held that since the rival goods are also pharmaceutical goods it might lead to serious consequences due to deception or confusion in the minds of the public. Hence on the possibility of harm being caused to common person the appeal was allowed.

C. Wyeth Holdings Corp. & Anr. vs. Sun Pharmaceuticals Industries Ltd. 2004 (28) PTC 423 (Bom)

In this case the plaintiff whose former name was American Cynamid Company and who was the proprietor of the trademark ‘PACITANE’ registered the mark in Class 5 of Pharma goods. The respondent was using the mark ‘PARKITANE’ with respect to similar goods. The plaintiffs filed a suit for infringement and passing off and sought various reliefs including interim injunction against the defendant for using the mark ‘PARKITANE’.

The Court held that in both the cases the goods are similar, being pharmaceutical preparations for treatment of Parkinson’s disease, the customers buying these goods are the same and the trade channels are the same. Since the defendants did not show any search of the Register before adopting the impugned mark, prima facie adoption of the mark was not honest. Further, the Court held that despite protests, if the defendants have chosen to continue to sell the products, it cannot be said to be acquiescence by the plaintiff. Therefore the Court held that injunction is to be granted in favour of the plaintiff.

The Court further held that in case of pharmaceutical products, the test is of possibility of confusion and not probability of confusion. The plaintiffs have been in the field since 1950 and as such the balance of convenience is in their favour. The Court granted injunction in favour of the plaintiffs.

D. Hoechst Aktiengesellschaft vs. Artee Minerals & Anr. 2004 (28) PTC 470 (IPAB)

The appellant was the registered proprietor of trademark ‘ARELON’. This mark was registered in class 5 with respect to pharmaceutical goods relating to preparation for killing weeds and destroying vermin. The respondent filed an application for registration of the mark ‘ARTEELON’ in the same class with respect to pharmaceutical goods.

The appellant opposed the application for registration of trade mark filed by the respondents on the ground that the registration of the impugned mark would be contrary to provisions of Sections 9, 11, 12(1) and 18 of the Trade and Merchandise Marks Act, 1958.

The IPAB held that the rival goods were same and the only difference was the letters ‘TE’. The Appellate Board further held that the possibility of confusion and deception is not ruled out and hence affirmed the order rejecting the application for registration filed by the respondent.

The IPAB further held that the benefit of use under Section 54 is given only in case of rectification proceedings when use of an associated trademark is deemed to be use of the registered trademark against which rectification proceedings are initiated for non-use of the mark.

Conclusion-

In conclusion it can be drawn that Indian Trade Mark Law must be updated on frequently keeping in pace with the dynamic and new methods of Trade Mark infringement. Both Courts and Enforcement authorities must be well equipped and be trained for efficient disposal of cases relating to Intellectual Property.

A trade mark may be a word signature, name, device, label, numerals or combination of colours used by an undertaking, on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking. Under the Trade Marks Act, 1999, goods and services are classified according to the International Classification of goods and services. Schedule IV of the Act provides a summary list of such goods and services falling in different classes: but this is merely indicative. The Registrar is the final authority in the determination of the class in which particular goods or services fall.   

The different types of trademarks available for adoption are:

• Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark.
• An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service.
• Letters or numerals or any combination thereof.
• The right to proprietorship of a trademark may be acquired by either registration under the Act or by use in relation to particular goods or service.
• Devices, including fancy devices or symbols
• Monograms.
• Combination of colours or even a single colour in combination with a word or device.
• Shape of goods or their packaging.
• Marks constituting a 3- dimensional sign.
• Sound marks when represented in conventional notation or described in words by being graphically represented.

The Trade Marks Act, 1999 replaced the Trade and Merchandise Marks Act 1958; comprehensively amending and consolidating the law relating to trade marks in India. The new Act was considered necessary in view of the developments in trading and commercial practices, increasing globalization of trade and industry, the need to encourage investment flows and transfer of technology, the need for simplification and harmonization of trade mark management systems and to give effect to some important judicial decisions. Non-conventional trademarks like combination of colours per se, three-dimensional marks, smells, sounds, and taste, were not capable of being registered under the Act of 1958.

The new Act specifically provides for the registration of the shape of goods, their packaging and combination of colours as trademarks. Although smells, sounds, taste and holograms are not specifically mentioned, the predominant legal opinion seems to suggest that the newly amended definition of trade mark is wide enough to include these non-conventional marks within its ambit. Since the definition of mark is inclusive in as much as it states specifically includes a device etc., it is submitted that the mark would also include smells, sounds, moving images and holograms.

With respect to colours, the definitions of trade mark and mark only refer to a combination of colours. The difficulty arises when an applicant chooses to make an application for a single colour only. My submission is that the definition of mark and trade mark does not exclude a single colour.

Sub Rules (3) and (4) of Rule 29 of the Trade Marks Rules, 2002 provide that where the mark is a three-dimensional mark, the reproduction of the mark must consist of a two dimensional graphic or photographic reproduction as follows, namely:

i) The reproduction furnished must consist of three different views of the trademark.

ii) Where, the Registrar considers that the reproduction of the mark furnished by the applicant does not sufficiently show the particulars of the three dimensional mark, he may call upon the applicant to furnish up to five further different views of the mark and a description by words of the mark.

iii) If the Registrar is still not satisfied, he may call upon the applicant to furnish a specimen of the trademark.

iv) Where the application for the registration of a trade mark consists of the shape of goods or its packaging, the reproduction furnished must consist of at least five different views of the trade mark and a description by word of the mark. If the registrar considers that these views do not sufficiently show the particulars of the shape of goods or its packaging, he may call upon the applicant to furnish a specimen of the goods or packaging as the case may be.

Smell or scent is not directly referred to in the definitions of mark or trade mark under the 1999 Act. However, the definitions do not exclude smell or scent. No smell or scent trademark has been advertised in the Trade Marks Journal since the Act and Rules framed there under came into force on 15th September 2003.

A precise written description can represent a scent. The application should include the trademark, which is represented graphically, for example, the scent of roses. It should be followed by a clear an accurate description, as for instance, the scent of roses applied to cycle tyres and this must be set out in the application for registration. Such a written description is the only practical way to describe a scent or smell and conveying an easier understood meaning to a person who wants to search the Register of Trade Marks.

There is nothing to prevent sounds from being registered as trademarks as well, even though sounds have not been specifically mentioned in the definitions of mark or trade mark. These sounds must be capable of graphical representation. A musical notation for instance, would be acceptable as graphical description of a sound mark. If the sound emanates from a musical instrument, then this should also be mentioned. Onomatopoeic words, sonograms or spectrograms may also be accepted as graphical representations.

Even holograms or moving images are not specifically included in the definition of mark or trade mark. However, there appears to be no reason why they may not be registered as trademarks. A portion of the sequence comprising the entire moving image, such as the first or last frame could be provided as long as the description of the mark clearly references the entire sequence. A single image may not adequately represent the mark, and it may be preferable to juxtapose several representative frames, to give a better sense of the overall sequence.

There is nothing to show in the Act or Rules there under to treat non-conventional trademarks different from traditional trademarks. In fact, the inclusion of shape of goods, packaging, or combination of colours in the definitions of mark and trade mark seems to show that there is no different treatment to accord to non-conventional trademarks. The test of registrability of the trademarks is whether the mark indicates a source or origin. Tests for deciding whether a trademark is inherently distinctive have been laid down in India, U.K. and Australia and would be applicable on a case-to-case basis since the Trade Marks Registry is yet to publish a Manual of Practice and Procedure.

Such a manual would considerably assist an applicant to lead proper evidence of distinctiveness. It will take considerable effort on part of Organizations such as AIPPI (Indian National Group) and IPLPA (Intellectual Property Law Practitioners Association), particularly in terms of capacity building. Officials of the Trade Marks Registry can be trained in the modern law of trademarks including the registration of non-conventional trademarks.

Trade Mark- A Fundamental Concept

A trademark or trade mark is one of the elements of Intellectual Property Right and is represented by the symbol ™ or ® or mark is a distinctive sign or indicator of some kind which is used by an individual, business organization or other legal entity to identify uniquely the source of its products and/or services to consumers, and to distinguish its products or services from those of other entities. A trademark is a type of intellectual property, and typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories.

The term trademark is also used informally to refer to any distinguishing attribute by which an individual is readily identified, such as the well known characteristics of celebrities. When a trademark is used in relation to services rather than products, it may sometimes be called a service mark, particularly in the United States.

Rights & Remedies of a Trade Mark Owner-

The owner of a registered trademark may commence legal proceedings for trademark infringement to prevent unauthorized use of that trademark. However, registration is not required. The owner of a common law trademark may also file suit, but an unregistered mark may be protectable only within the geographical area within which it has been used or in geographical areas into which it may be reasonably expected to expand.

Two types of remedies are available to the owner of a trademark for unauthorized use of his or her mark or its imitation by a third party. These remedies are:

• an action for infringement’ in case of a registered trademark; and




• an action for passing off’ in the case of an unregistered trademark

While former is a statutory remedy, the latter is a common law remedy. In an action involving infringement or passing off, a court may grant relief of injunction and/or monetary compensation for damages for loss of business and/or confiscation/destruction of infringing labels and tags etc.
Although registration of trademark is prima facie an evidence of validity of a trademark, yet the registration can not upstage a prior consistent user of trademark, for the rule is ‘priority in adoption prevails over priority in registration`.

Infringement of Trade Mark-

Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the license). Infringement may occur when one party, the “infringer”, uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers. An owner of a trademark may commence legal proceedings against a party which infringes its registration.

Trade mark Law in India-

The Indian law of trademarks is enshrined the new Trade Marks Act, 1999 came into force with effect from September 15, 2003. The old Trade and Merchandise Marks Act, 1958 was repealed at the same time. The new Trademarks Act of 1999 is in line with the WTO recommendations and is in conformity with the TRIPS Agreement to which India is a signatory.

India has declared certain countries as convention countries, which afford to citizens of India similar privileges as granted to its own citizens. A person or company from a convention country, may within six months of making an application in the home country, apply for registration of the trademark in India. If such a trademark is accepted for registration, such foreign national will be deemed to have registered his or her trademark in India, from the same date on which he or she made application in the home country.

Scope of Foreign Investors With Regard to the Registration of Trade Mark in India-

Registration of trademarks is one of the important protections that businesses should avail in India. Many foreign and domestic Applicants have been able to successfully register their marks in India. Indian courts have upheld many of those registrations and granted favorable decisions to rights holders.

In addition to the registering of their trademarks in India, businesses need to adopt other strategies for protecting their trademarks. Some of them are mentioned below:

• Get trademark searches conducted in the Indian Trade Marks Registry in the classes that are of interest to you including the ancillary classes.




• Get common law searches (this includes the internet, market surveys, yellow pages and directories) conducted to ascertain whether third parties are using your trademarks and if so, the extent of such use.




• Based on this information and after seeking the local counsel’s opinion decide if the trademark is available for use or not.




• Should the trademark be available for use, immediately apply for the registration.




• The rights holder should also consider hiring a watching service to monitor the trademark journals in order to alert them to any published, deceptively similar trademarks or descriptive trademarks that might be of concern.




• Should the rights holder own a trademark that has been used and has acquired goodwill and reputation, it is advisable that along with filing of the trademark application in India, they should also make press releases, publish cautionary notices and advertise the mark to ensure that the relevant section of the public is aware that they are entering the Indian market and are protecting their trademark from any kind of third party violation.




• The rights holder should also take immediate steps to register their domain names including country coded top level domain names in India, as there have been many instances of third parties registering domains for certain well known marks with the intention of extracting money by selling these domain names to the rights holders.




• Should the rights holder discover that their trademark is being infringed, they should take immediate steps to protect their trademark, either by the means of filing oppositions, cancellations, conducting investigations, sending cease and notices or initiating appropriate civil and criminal actions.

Cases of Trade Mark Violation in India-

Trade mark infringement especially among the corporate classes in India is rising on an alarming rate. Few of the notable cases have been described in brief.

1. Pantaloon dragged to court by Shoppers’ Stop and Lifestyle; Westside also contemplates similar action, (July 14th, 2008).

Shoppers’ Stop and Lifestyle have dragged their rival Pantaloon to court as they were miffed with an advertisement issued by the flagship company of Kishore Biyani owned Future Group that offered 10% extra discount to their loyal customers vide an advertisement issued in The Times of India, New Delhi, dated 28th June, 2008. The complainant retailers have accused Pantaloon of trademark violations and unfair business practices, says a Live Mint report. All the three parties operate department store format store chains in lifestyle segment.

Even Westside has taken objection to the ad saying, “We have sent a notice to them to which they have not responded,” said Smeeta Neogi, Head (Marketing) Westside.

Pantaloon’s ‘Central’ mall at Gurgaon had offered 30% discounts to its customers over the weekend. Loyalty card holders of competing retailers like Shopper’s Stop, Lifestyle and Westside, were lured by Pantaloon by offering an additional 10% discount on select brands of apparel. The advertisement asked such customers to: “Present your membership card to avail this offer.”

Loyalty cardholders are mainstay of business for most retailers. Shoppers’ Stop has a highly popular loyalty card programme branded “First Citizen.” According to analysts, more than two-thirds of Shoppers’ Stop’s apparel business is accounted for by its loyal customers.

“They (Pantaloon) are luring my customers by using my name in an unfair manner,” said Sandeep Mittal, the lawyer representing for both the petitioners.

The Honourable Delhi high court has issued an injunction restraining Pantaloon from using names of its rivals in the ads until the next hearing in the matter fixed for 31st July.

Taking potshots at these competitors is not new for Pantaloon. Last year, its Big Bazaar chain had put up hoardings, asking customers to “Keep West-aSide,” “Shoppers! Stop” and “Change Your Lifestyle. Make a Smart Choice.”

2. Amul wins trade mark case in Gujarat High Court, (Sep 24, 2007)

Amul has won the trade mark case in Gujarat High Court and no one else can use it.

The Kaira District Co-operative Milk Producers? Union Ltd. and GCMMF had filed trade mark infringement cases, against two local shop owners ? Amul Chasmaghar and its partners and Amul Cut Piece Stores in the District Court, Anand.

The District Court, Anand passed an order dated 25 April 2007, ruling that it was a clear case of infringement and restrained the two from using the Amul trademark.

Amul Chasmaghar had challenged this interim injunction in the Gujarat High Court. The Gujarat High Court ruled the decision in favor of Amul, terming the order passed by the trial court as true, correct, legal and in consonance with the facts of the case, as well as in accordance with the provisions of the Trade Marks Act 1999.

3. Trade Marks Disputes Involving Pharmaceuticals Industry in India-

A. Beecham Group Plc. vs. S.R.K. Pharmaceuticals 2004 (28) PTC391 (IPAB)

The appellant was using the mark ‘AMOXIL’ in India since 1990. This mark was registered in India in 1972 in Class 5 in respect of Pharmaceutical goods. The respondent started using the mark ‘LYMOXYL’ in India from 1985. The respondent filed the application for registration of the mark in 1987 in India in the same class with respect to similar goods.

The appellant brought an action against the respondent stating that the mark is deceptively similar. The only difference between the two marks is in the prefix ‘LY’ and ‘M’. The rival marks are phonetically and deceptively similar and the goods are pharmaceutical goods under Sec. 12(1) of the Act.

The Intellectual Property Appellate Board (IPAB) held that the respondent dishonestly adopted the mark by copying it from the appellant who had got the mark registered long ago. Hence the respondent cannot claim honest concurrent use, by virtue of earlier use. The Appellate Board delivered a judgment prohibiting registration of the Trade Mark ‘LYMOXYL’.

B. Ranbaxy Laboratories Limited vs. Anand Prasad & 4 Others 2004 (28) PTC 438 (IPAB)

The appellant was the registered proprietor of the mark ‘FORTWIN’ and had been using the mark since 1975. The respondent applied for registration of the mark ‘OSTWIN’. Both the marks related to pharmaceutical compositions in respect of treatment of bones.

The appellant brought an action against the respondent stating that the mark is deceptively similar. The IPAB held that the prefixes are ‘FORT’ and ‘OST’ while both the marks end with the suffix ‘WIN’. It was further held that since the rival goods are also pharmaceutical goods it might lead to serious consequences due to deception or confusion in the minds of the public. Hence on the possibility of harm being caused to common person the appeal was allowed.

C. Wyeth Holdings Corp. & Anr. vs. Sun Pharmaceuticals Industries Ltd. 2004 (28) PTC 423 (Bom)

In this case the plaintiff whose former name was American Cynamid Company and who was the proprietor of the trademark ‘PACITANE’ registered the mark in Class 5 of Pharma goods. The respondent was using the mark ‘PARKITANE’ with respect to similar goods. The plaintiffs filed a suit for infringement and passing off and sought various reliefs including interim injunction against the defendant for using the mark ‘PARKITANE’.

The Court held that in both the cases the goods are similar, being pharmaceutical preparations for treatment of Parkinson’s disease, the customers buying these goods are the same and the trade channels are the same. Since the defendants did not show any search of the Register before adopting the impugned mark, prima facie adoption of the mark was not honest. Further, the Court held that despite protests, if the defendants have chosen to continue to sell the products, it cannot be said to be acquiescence by the plaintiff. Therefore the Court held that injunction is to be granted in favour of the plaintiff.

The Court further held that in case of pharmaceutical products, the test is of possibility of confusion and not probability of confusion. The plaintiffs have been in the field since 1950 and as such the balance of convenience is in their favour. The Court granted injunction in favour of the plaintiffs.

D. Hoechst Aktiengesellschaft vs. Artee Minerals & Anr. 2004 (28) PTC 470 (IPAB)

The appellant was the registered proprietor of trademark ‘ARELON’. This mark was registered in class 5 with respect to pharmaceutical goods relating to preparation for killing weeds and destroying vermin. The respondent filed an application for registration of the mark ‘ARTEELON’ in the same class with respect to pharmaceutical goods.

The appellant opposed the application for registration of trade mark filed by the respondents on the ground that the registration of the impugned mark would be contrary to provisions of Sections 9, 11, 12(1) and 18 of the Trade and Merchandise Marks Act, 1958.

The IPAB held that the rival goods were same and the only difference was the letters ‘TE’. The Appellate Board further held that the possibility of confusion and deception is not ruled out and hence affirmed the order rejecting the application for registration filed by the respondent.

The IPAB further held that the benefit of use under Section 54 is given only in case of rectification proceedings when use of an associated trademark is deemed to be use of the registered trademark against which rectification proceedings are initiated for non-use of the mark.

Conclusion-

In conclusion it can be drawn that Indian Trade Mark Law must be updated on frequently keeping in pace with the dynamic and new methods of Trade Mark infringement. Both Courts and Enforcement authorities must be well equipped and be trained for efficient disposal of cases relating to Intellectual Property.

“In the material world, laws are geared to protect the right to equitable remuneration. But life is beyond the material. It is temporal as well. Many of us believe in the soul. Moral Rights of the author are the soul of his works. The author has a right to preserve, protect and nurture his creations through his moral rights”

Moral rights stand for what are termed as “Author’s Special Rights”. Founded on Article 6bis of the Berne Convention, moral rights protect attribution and integrity, stating:

Independently of the author’s economic rights, and even after the transfer of the said rights, the author shall have right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honour or reputation.

The legislation of different countries varies on author’s power to waive his moral rights. At one end, there are some civil law countries, like France, that impose a virtually absolute bar on transfer or the waiver of such rights. At the other end there are common law countries which freely allow the waiver of moral rights.

As a matter of practice, waiver of the moral rights is an inevitable element of the relationship between an author, his work and his publication. Since the production of a book, sound recording or motion picture will necessarily alter the author’s original work to some degree, and thus by entering into such a relationship, the author effectively waives the right of integrity and disclosure, at least to the extent reasonably dictated by the terms of the relationship.

In the United States, the term ‘moral rights’ typically refers to the right of an author to prevent revision, alteration, or distortion of his work, regardless of who owns the work. Moral rights as outlined in Visual Artists Rights Act, 1990 also allow an author of a visual work to avoid being associated with works that are not entirely his own, and to prevent defacements of his works. The Act provides for waiver of moral rights, but only by a signed, written agreement specifying the work and the precise uses to which a waiver applies. Section 106A of the American Copyright Act provides for waiver of moral rights.

It is also pertinent to note that the concept of moral rights is restricted by the Visual Artists Rights Act of 1990 and the Copyright Act to visual artists only.

Section 87, Copyrights, Designs, and Patents Act, 1988 of United Kingdom deals with the consent and waiver of moral rights. A waiver –

a)      May relate to a specific work, to works of a specified description or to works generally, and may relate to existing or future works, and

b)      May be conditional or unconditional and may be expressed to be subject of revocation;

And, if made in favour of the owner or prospective owner of the copyright in the work or works to which it relates, it shall be presumed to extend to his licensees and successors in title unless a contrary intention is expressed. Any of these rights may be waived by instrument in writing signed by the person giving up the right.

Relevant provisions of Indian Law

Section 57 of the Indian Copyright Act, 1957 provides for moral rights-

57. Author’s special rights. (1) Independently of the author’s copyright and even after the assignment either wholly or partially of the said copyright, the author of a work shall have the right

a.       To claim authorship of the work; and

b.      to restrain or claim damages in respect of any distortion, mutilation, modification or other act in relation to the said work which is done before the expiration of the term of copyright if such distortion, mutilation, modification or other act would be prejudicial to his honour or reputation:

Is Waiver Possible under Indian Law?

A case decided not too long ago by the Delhi High Court, Amar Nath Seghal v. Union of India discusses the issue of moral rights in substantial detail. In this case, the plaintiff/author assigned his copyright in a bronze mural, to the Union of India. The mural was placed in Vigyan Bhavan, but was later pulled down and dumped. The author, Amar Nath Seghal, sued for violation of his moral rights. 

The case was filed in the early 90’s and an interim injunction was passed in favour of the Plaintiff. In response, the defendants made an application under the Arbitration Act, 1940 seeking stay of proceedings in the suit claiming that the dispute ought to be referred to arbitration in the light of a term in the assignment requiring arbitration of all disputes.

The defendants further argued that “the plaintiff had assigned his copyrights to the defendants and having purchased the same, the defendants are under no fetters while dealing with the mural in question.”

The interim application was decided in 2002 and the case itself was finally decided in 2005. The court dismissed the claim under the Arbitration Act and further observed: “These [moral] rights are independent of the author’s copyright. They exist even after the assignment of the copyright, either wholly or partially.”

The court quoted from Smt. Mannu Bhandari v. Kala Vikash Pictures Pvt. Ltd. and Anr. (1986)

“Section 57 confers additional rights on the author of a literary work as compared to the owner of a general copyright. The special protection of the intellectual property is emphasised by the fact that the remedies of a restraint order or damages can be claimed “even after the assignment either wholly or partially of the said copyright…” Section 57 thus clearly overrides the terms of the Contract of assignment of the copyright. To put it differently, the contract of assignment would be read subject to the provisions of Section 57 and the terms of contract cannot negate the special rights and remedies guaranteed by Section 57. The Contract of Assignment will have to be so construed as to be consistent with Section 57. The assignee of a copyright cannot claim any rights or immunities based on the contract which are inconsistent with the provisions of Section 57.”

From the above wording, it could be argued that “moral rights” are akin to the Fundamental Rights guaranteed under the Constitution, in that they cannot be waived.

Interestingly, Article 27 (2) of the Universal Declaration of Human Rights provides:

(2) everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.

There is no express provision under Section 57 of the Indian Copyright Act, 1957 allowing authors to disclaim authorship. However, according to different statutes, the right to claim authorship also includes the right to disclaim authorship. Under the case Vishaka v. State of Rajasthan, the Supreme Court held that provisions of international conventions can be read into the Constitution where there is no contrary domestic law in the field.

Nations that are members of the Berne Convention for the Protection of Literary and artistic Works are required to meet a minimum level of protection, as set forth in the Berne convention’s Article 6bis. The multilateral treaty does not address waiver of moral rights; waiver is neither sanctioned nor prohibited, and individual member nations may implement the Berne Convention in their own ways.

In India, practice shows that moral rights cannot be bought or sold. However they can be waived and it will often be the case that as a condition to any contract which a performer may enter into that employers or production companies will seek a waiver of those rights. Indian law probably permits waiver of moral rights if it is in writing and meets the ‘reasonableness’ standard.  For example, a waiver is more likely to be upheld if it is revocable and applies to specific alterations or modifications of copyrighted work rather than an irrevocable blanket waiver, particularly if the author had no bargaining power when the waiver is granted.

References:

        i.            Sonia Baldia, Intellectual Property in Global Sourcing: The Art of Transfer.

      ii.            38 Georgetown Journal of International Law 499, spring 2007.

    iii.            Mira T Sundara Rajan, Moral Rights in the Public Domain, 2003.