Saturday, October 20, 2012

IPR, Infringement and Remedies: Review of Ananth Padmanabhan's book


A striking feature of Mr Ananth Padmanabhan’s recent book is the close attention it pays to concepts of intellectual property law. It is in the last decade or two that India has witnessed an explosion in intellectual property litigation; and it is generally the case that the shape of the law is formed by the answers the courts give, in the early years, to the conceptual questions that are at its heart. Ananth’s book opens with an analysis of the nature of injunctive relief, and contains a valuable account of the way in which American Cyanamid has been understood in the English and Indian courts (pp 29-31, especially the analysis of Cayne [1984] 1 All ER 225). The importance of this subject is heightened by the fact that the interlocutory battle is typically the end of the dispute in the Indian courts, especially in a field, such as intellectual property, in which a money award is often inadequate. The book’s title (Infringement and Remedies) reflects this fact.

The rest of the book is devoted the main types of IPRs – trademark, copyright, patent, design and common law rights. Each chapter contains a comprehensive account of the law on the subject, and especially valuable is the author’s analysis of the controversial questions. I highlight a few of these in the areas of trademark and copyright. In the chapter on trademark, the author considers whether the Madras High Court in Aravind Laboratories was correct to distinguish between the “classical trinity” test and other tests to establish passing off (pp 62-64). He rightly points out while it is common to pursue remedies for infringement and passing off in respect of the same act of the defendant, the focus of passing off is different, since it is a specialised form of the tort of deceit.

The chapter on copyright is undoubtedly the book’s tour de force. The author begins by rightly pointing out that the care with which Parliament has divided copyright into its constitutive categories in section 14 is no accident; the structure of the provision contains important clues as to the nature and width of each type of work (p 290). The chapter thereafter contains a deep and careful analysis of some of the most important questions in Indian copyright law today: copyrightability, in light of the Supreme Court’s decision in EBC v Modak (2008) 1 SCC 1 (p 291 et seq, see in particular the author’s analysis of the American and Canadian law at p 296); tests for determining infringement (p 307 et seq); the nature of a cinematograph film copyright (p 328) and the fair use defence. It is worth highlighting the author’s views on two of these issues: first, he rightly points out that an imitation of a cinematograph film (for example, a new Harry Potter film series with exactly the same actors) is not a “copy” of a film under section 14(d)(i) (as the Bombay High Court has pointed out in Leo Burnett 105(2) Bom LR 28, a “copy” is a duplicate, not an imitation); secondly, he argues that the Copyright (Amendment) Act, 2012 has “misfired”, because the legislature has failed to confer any positive right through the amendment, and has attempted to “save” rights which do not otherwise exist. It is no doubt tempting to conclude that Parliament would not legislate without purpose, but one hopes the courts resist this temptation: the author’s view that the amendment has misfired must stand or fall on the text of the amendment, properly construed, and not on the subjective aspirations of those who enacted it (pp 318-322).

It must also be said that the final chapter on common law rights is of invaluable assistance to any practitioner. In particular, the author’s analysis of the springboard doctrine, which has recently been the subject of litigation in the English courts, is a reminder that the Indian law on this point has some way to go to acquire a coherent shape.   

Ultimately, this is a book that is as useful for the practitioner as it is for the academic and the student; it offers, in equal measure, a fully comprehensive description of the law with a reference to virtually every important case on the point, and analysis of the conceptual questions that shed light on the nature of the question at issue. Published by LexisNexis, it is available here and here.