Appointing "Independent" High Court Judges

In a post on SpicyIP, I reviewed a big ticket compulsory licensing dispute involving the sound recording industry on the one hand, and radio stations on the other. I went on to reflect on the competence of the current Copyright Board that is adjudicating this highly complex dispute. And asked if the Chairman of the Copyright Board, Dr Raghbir Singh was sufficiently qualified to merit his post.



The Copyright Act requires that the post of Chairman be occupied by a person who is qualified to be a High Court judge. Preliminary investigation led me to Dr Singh's CV, which does not carry any prima facie evidence of him having been an advocate of the High Court for at least ten years.



As many of you know, Article 217 (2) of the Constitution requires that:



"A person shall not be qualified for appointment as a Judge of a High Court unless he is a a citizen of India and- (a) has for at least ten years held a judicial office in the territory of India; OR



(b) has for at least ten years been an advocate of a High Court or of two or more such Courts in succession;"



Dr Singh, a PhD in law has had a very distinguished legal career including the following appointments:



1. Indian Legal Service of the Government of India as Parliamentary Counsel/legislative draftsman (September, 1980 – March, 2000)



2. Joint Secretary & Legislative Counsel (21.08.1991 to 20.08.1996) and Additional Secretary (21.08.1991 to 31.12.1997) in the Indian Legal Service in the Legislative Department, Ministry of Law, Justice and Company Affairs, New Delhi.



3. Secretary , Legislative Department, Ministry of Law, Justice and Company Affairs, New Delhi (01.01.1998 – 31.03.2000). 4. Secretary, National Commission to Review, the Working of the Constitution, New Delhi (01.04.2000 to 30.04.2002).



Impressive though they may be, do the above appointments qualify as "judicial offices" within the meaning of the Constitution? No, says the Supreme Court of India in Sri Kumar Padma Prasad v Union of India : (1992) 2 SCC 428, an important case concerning the validity of appointment of a certain Mr Srivastava to the Gauhati High Court.



The court effectively ruled that any post that is effectively controlled by the Executive (such as the post of Legal Remembrancer-Cum-Secretary, Law & Judicial, held by Mr Srivastava) could never qualify as a "judicial office" within the meaning of Article 217. In pertinent part, the court also endorsed the ruling in Chandramohan that although our Constitution does not envisage a strict separation of powers doctrine, it clearly advocates an independent judiciary: in fact such independence forms part of the basic structure of the Constitution.



Meaning of "Judicial Office"



I reproduce some extracts from the court that may be of interest to our readers:



"We are of the view that holder of "judicial office" under Article 217(2)(a) means the person who exercises only judicial functions, determines causes inter-parts and renders decisions in a judicial capacity. He must belong to the judicial service which as a class is free form executive-control and is disciplined to uphold the dignity, integrity and independence of judiciary.



....It is clear that the expression "judicial office" under Article 217(2)(a) of the Constitution has to be interpreted in consonance with the scheme of Chapter V and VI of Part VI of the Constitution. We, therefore, hold that expression "judicial office" under Article 217(2)(a) of the Constitution means a "judicial office" which belongs to the judicial service as defined under Article 236(b) of the Constitution of India. In order to qualify for appointment as a Judge of a High Court under Article 217(2)(a) a person must hold a "judicial office" which must be a part of the judicial service of the State.

....It is for the first time in the post-independent era that this Court is seized of a situation where it has to perform the painful duty of determining the eligibility of a person who has been appointed a Judge of High Court by the President of India and who is awaiting to enter upon his office. We looked into the official record and permitted learned Counsel for the parties to examine the same. We are at a loss to understand as to how the bio-data of Srivastava escaped the scrutiny of the authorities during the process of consultation under Article 217(1) of the Constitution of India. A cursory look at the bio-data would have disclosed that Srivastava was not qualified for appointment as a Judge of the High Court on the admitted facts which have been on the official files all the time.



Needless to say that the independence, efficiency and integrity of the judiciary can only be maintained by selecting the best persons in accordance with the procedure provided under the Constitution. These objectives enshrined under the Constitution of India cannot be achieved unless the functionaries accountable for making appointments act with meticulous care and utmost responsibility.



The independence of judiciary is part of the basic structure of the Constitution. The Directive Principles give a mandate that the State shall take steps to separate the judiciary from the executive which means that there shall be a separate judicial service free from the executive control. The Constitution scheme, therefore, only permit members of the judicial service as constituted in terms of Article 236(b) of the Constitution to be considered for the post of district judge and that of the High Court Judge."



Applying Padma Prasad to the Copyright Board Case

Coming back to the Copyright Board matter, it is clear that Dr Singh has never held a "judicial office" for the purpose of Article 217(2), as almost all of his appointments were under the control of the Executive. He does not therefore qualify to be a High Court judge and thereby, is not fit to sit as Chairman of the Copyright Board. Of course, this takes his current bio-data at face value and assumes that he has never been an advocate for ten years or more.



If the above holds true, the government ought to immediately review the situation and take steps to replace Dr Singh as Chairman. Else, these compulsory licensing proceedings, which are the first of their kind in India are susceptible to vitiation at a later stage. Clearly, more billing hours for the lawyers. But a sheer drag on the justice machinery in our country and a tremendous waste of resources for litigants who continue to operate in a climate of legal uncertainty.

Creating "Informal" Intellectual Property Norms

In this Mint editorial, I've touched upon the need to reconceptualise existing intellectual property (IP) norms to suit the needs of our 'Informal Economy". The logic underlying such "Informal IP norms" could perhaps be transposed to other areas of law/regulation as well. As always, I welcome your comments/insights/critiques on this theme.

Creating ‘Informal’ IP Norms

Current intellectual property (IP) regimes are excessively formalistic in their orientation. Not too surprising, given that their creation and sustenance has largely been the preserve of lawyers trained in formal legal thought, with little input from other disciplines such as science, sociology or economics.

One watches with deep anguish as such regimes take on a life of their own, forgetting the simple yet hard truth that they are not ends unto themselves, but are mere means to help serve a greater end, i.e., fostering more innovation and creativity. In other words, patents are valuable to us only to the extent that they help engender more innovations for society.

Not only are IP rules excessively formalistic in their orientation, they also cater largely to what one might term as the “formal” economy. In other words, there is an assumption that innovation is the sole prerogative of a lone inventor who does her research within the closed walls of a formalistic entity that we call the “corporation”. Similarly, copyright norms are premised on the assumption that content creation is the preserve of artists and writers who tie up with big media giants and publishing houses.

A close look at the nature of our economy today, characterized by Web 2.0 and the vast social/ collaborative networks built on it leads one to seriously question the above assumptions.

Illustratively, the open-source movement has opened our eyes to the fact that an informal network of programmers can bring us highly innovative and free software products of a kind never thought possible under a proprietary model where coding was controlled by a single corporation and products placed on the market at monopoly prices. Such collaborative/democratic/user innovation models are now being attempted in other technology areas such as biotechnology and pharmaceuticals. And they are bound to succeed, given that innovation is not a formal or linear process directed by a lone inventor, but a social process involving a multitude of different actors.

Indeed, India’s very own Council of Scientific and Industrial Research (CSIR) is now attempting to leverage an online collaborative model to come up with a new drug for tuberculosis (TB). That the gold standard for TB is a drug from the 1960s and that we haven’t had any major breakthroughs since then leads one to seriously question the current IP model around drug innovation; a model that brings us fewer innovative drugs each year and more me-too versions.

In the context of copyright law, the rise of user-generated content has thrown archaic copyright norms into serious question. Content is being created and posted on social forums such as Facebook and YouTube at a pace that might soon rival the speed of light. Similarly, content is shared between millions of users through several online platforms such as BitTorrent and LimeWire.

In the specific context of India, where almost 90% of the economy comprises the “informal sector”, the above truths hold even greater sway. The National Innovation Foundation, run out of IIM Ahmedabad, has compiled more than 50,000 innovations belonging to the rural “informal” poor and virtually demolished the assumption that innovation is the preserve of the rich and the “formal”. But merely identifying such innovative potential in India’s villages, often referred to by Mahatma Gandhi as the “real India”, is not good enough. One has to do more in terms of coming up with norms that help these poor communities leverage their creativity.

Newer IP regimes in India, such as the protection of geographical indications and plant varieties, throw the relevance of “informal communities” into sharper focus, dealing as they do with communities of farmers and artisans. Similarly, as India moves to devise norms for protecting and leveraging its ancient “traditional” and indigenous knowledge, it will again have to cater predominantly to informal communities that live on the fringes of the existing IP regime.

This regime, largely a Western heritage gifted to us by our colonial masters, and further entrenched with the help of an inequitable international instrument called TRIPS, is very “individualistic” in tone and focuses specifically on identifiable inventors and authors. This sits in sharp contrast with the “community” focus in India, where things like traditional medicinal knowledge and folklore have no clearly identifiable authors or inventors, but have been preserved by indigenous communities over hundreds of years.

Let me end this note by highlighting a paradox that characterizes IP regimes. Since their inception, most such regimes have been fairly static in their orientation, and have failed to reflect any “innovation” and “creativity”, the very same values sought to be encouraged by such regimes.

India has demonstrated its potential for innovative IP norms by articulating section 3(d) in its patent regime, a section that helps balance pharmaceutical patent protection with the need to preserve access. Given the importance of our informal economy, can we take this opportunity to innovate within this space as well by conceptualizing a set of “informal” IP norms?

Indian Supreme Court on an "Intellectual Property" Roll

As temperatures continue to soar in New Delhi, the Supreme Court of India hands down three IP decisions—all in the month of May.

All three decisions were penned by Justice Sinha, one of the finer Supreme Court judges on the bench today. Constitutional law aficionados will remember his landmark judgment in a sex discrimination case, Anuj Garg v. Hotel Association of India. Commenting on this case, which pushed the frontiers of “equality” jurisprudence in India, Tarunabh Khaitan writes in an article (to be published): “The judgment, if it becomes an established precedent, has the potential to transform constitutional jurisprudence in India on a scale comparable to Kesavananda Bharati, Royappa and Maneka Gandhi”.

My special thanks to V. Venkatesan for pointing me to these decisions.

These decisions add to the repertoire of Indian trademark and copyright jurisprudence in significant ways. Below is a summary of the key issues raised in these cases.

1. Khoday Khoday India Limited vs The Scotch Whisky Association and others (Civil Appeal 4179 of 2008: decided on May 27, 2008)
In this case, the issue was whether or not the trademark "Peter Scot" ought to be deleted from the Register of Trademarks (under section 46 of the Trademarks Act, which provides for rectification of the register).

The brief facts, available in this Times of India report are:

“Khoday India Ltd (KIL) started producing 'Peter Scot' whisky in 1968 and got the trademark registered in 1974. After 13 years, the Scotch Whisky Distillers Association (SWDA), an industry body of distillers, blenders and exporters of Scotch whisky, moved the Assistant Registrar Trademarks for cancellation of the registered trademark 'Peter Scot' on the ground of its deceptive similarity to a foreign mark (Scotch whisky).”

The Supreme Court (Justice Sinha and Justice LS Panta) held in favour of KIL's right to continue being the registered proprietor of the "Peter Scot" mark. One of the factors that influenced the court to hold the way it did was the delay/acquiescence on the part of SWA i.e. although SWA had knowledge about registration of the 'Peter Scot' trademark as early as September 1974, it waited for more than 12 years to move the Registrar for deletion of the said mark. The judge held that “We, therefore, in the peculiar facts and circumstances of this case, are of the opinion that action of the respondents is barred under the principles of acquiescence and/ or waiver. "

I was amused to find this Mint report provocatively titled “Whisky win could be offset by potential losses in rice and tea”. The report then goes on to state:

“India can have its whisky, and drink it too, but it risks losing out in the global rice and tea market. A ruling by the Supreme Court on Tuesday ended the almost two-decades-long challenge by an association of Scotch whisky makers to Khoday India Ltd’s right to have a non-Scotch whisky brand called Peter Scot because of the similarity between the words “Scot” and “Scotch”.

But the ruling could result in global retaliation and affect Indian products such as basmati rice and Assam tea, say analysts. That’s because the Supreme Court ruled in favour of Khoday despite the geographical indication (GI) status enjoyed by Scotch. Unlike a trademark—a unique and distinctive sign to identify a product or service—a GI is a sign used on goods that have a specific place of origin and possess qualities or reputation that are due to that origin.”

I couldn’t stop laughing at this doomsday prediction. It appears that this reporter hadn’t read the judgment. Else she would have found out that this case turned more on the traditional law of “passing off”, and much less on the new law of Geographical Indications (the Indian Geographical Indications of Goods Act was passed in 1999, but came into force only in 2003).

In fact, she might have also uncovered that the “Scotch Whisky” wasn't even registered as a geographical indication (GI) in India. In fact, I am given to understand that no application for registration has been filed as yet in India! And yet, she presciently notes that India will face retaliation!

The only possible connection with GI law is the fact that the Indian GI Act specifically preserves the rights of existing trademark owners i.e. Section 26 of the Act protects trade marks which had been acquired through use in good faith prior to the coming into force of the GI Act or the date of filing of the GI application in question.

Luckily, her report goes on to quote one sensible source, Neel Mason, managing partner, Mason and Associates, a firm that specializes in intellectual property rights law who cautions that: “…every case is decided on specific facts. Issues of pricing, delay and nature of the labels or products are different and need to be seen on a case-to-case basis."

As Neel rightly states, one has to look specifically to the facts of this case. And if one did so, one would find that it was “delay” and consequent acquiescence/waiver that caused Justice Sinha to decide the way he did. And not any deep disrespect for this fine brand from Scotland--a brand that perhaps his Lordship indulges in occasionally.

In other words, the principle endorsed by Justice Sinha is that if you delay enforcing your rights, you run the risk of an assumption that you have either waived your rights or that you have acquiesced in the infringement. This principle is applied by most other sensible legal systems that I know of. Expecting some sort of foreign “retaliation” for adhering to such a well-established legal principle is amusing, to say the least.

2. M/s Entertainment Network (India) Ltd. Vs M/s Super Cassette Industries Ltd (Civil Appeal NO. 5114 of 2005, May 16, 2008).

This case involved challenging issues pertaining to the “scope” of compulsory licensing (CL) of sound recordings under Indian law. The case had its origins in complaints filed by several radio operators under Section 31 (1) (b) of the Copyright Act, 1957, before the Copyright Board praying for a compulsory license in relation to the “sound recordings” held by Phonographic Performance Ltd (PPL) as they were unable to negotiate a rate with PPL. PPL is one of the two collecting societies in India (the other is IPRS: Indian Performing Rights Society, which is mainly a collecting society for underlying works in sound recordings).

While PPL argued that a compulsory license could issue only if the ”work” had never been made available to the public earlier, the radio stations argued for an almost automatic CL ground i.e. it was to be granted upon request and the only point for consideration was a determination of “reasonable royalty”.

Justice Sinha (again sitting with Justice LS Panta) held in favour of the latter interpretation. A second issue pertained to whether the Act (section 31 (2)) restricted CL applications to only one party or whether multiple parties could apply. Here again, although a literal reading of the section made clear that there could only be one such applicant, Jusice Sinha adopted a “purposive” approach and held in favour of multiple applicants. He noted in particular that:

“Sub-section (2) of Section 31 would lead to an anomalous position if it is read literally. It would defeat the purport and object of the Act. It has, therefore, to be read down. Purposive construction therefore may be resorted to.”

Based on his interpretation of section 31 permitting an almost automatic compulsory license (subject to reasonable royalty) and multiple licensees, he refers the case back to the copyright board for determining "appropriate" royalties.

What is interesting in this case is that Justice Sinha equates an intellectual property right to a “property right” (under Article 300A of the Constitution of India) and even to a human right!
He states that:

“An owner of a copyright indisputably has a right akin to the right of property. It is also a human right. Now, human rights have starte gaining a multifaceted approach. Property rights vis-`-vis individuals are also incorporated within the `multiversity' of human rights.

However, he later goes on to suggest that such rights can be overridden for greater public good:
“…when a right to property creates a monopoly to which public must have access, withholding the same from public may amount to unfairtrade practice. In our constitutional Scheme…, monopoly is not encouraged. Knowledge must be allowed to be disseminated. An artistic work if made public should be made available subject of course to reasonable terms and grant of reasonable compensation to the public at large.”

The judge also makes very interesting statements regarding the applicability of international conventions in interpreting domestic issues (an issue that came up in the famous Novartis patent litigation in India, where it was alleged that section 3(d) contravened TRIPS).

Unfortunately, Justice Sinha falls prey to the verbal diarrhoea syndrome exhibited by many Indian judges (the most flamboyant of whom was Justice Krishna Iyer). In his 178 page judgment, the key part really begins only at page 138 or so.

For a more detailed analysis of this case, see this post at SpicyIP by Kruttika Vijay. Also, for a concise view of this ruling from an industry perspective, see here.

3. Kabushiki Kaisha Toshiba vs TOSIBA Appliances Co. & Ors: Civil Appeal No 3639 of 2008 (decided May 16, 2008)

The third Supreme Court decision to be handed down this month is a very complicated trademark case involving the famous mark “Toshiba”. Like the Scotch whisky case mentioned earlier, this one also involved an application (by an Indian entity, Tosiba Appliances Co) to rectify the register of trademarks under section 46. The key ground was that the mark “Toshiba” was never “used” in India (in relation to some goods such as washing machines and spin dryers) and that the proprietor of this mark indulged in “trademark trafficking”.

The court (Justice Sinha sitting with LS Panta) seemed to suggest that a mere use of the mark in relation to servicing centers (which serviced washing machines imported from abroad) could amount to “use”. And that a person such as Tosiba Appliances who never engaged with washing machines and dryers was not a “person aggrieved” under section 46 and did not have “locus standi” to challenge the mark.

Shwetasree Majumder, one of the counsels in this litigation quips: the court was attempting to prevent the challenger (Tosiba Appliances) from playing “dog in the manger”. Tosiba Appliances, the Indian company that challenged the mark was neither dealing with washing machines and spin dryers itself. Nor did it want the Japanese Corporation, Kabushiki Kaisha Toshiba, the proprietor of the mark to avail of it in relation to these goods!

For a more detailed analysis of this case, see this post at SpicyIP by Mrinalini Kochupillai.

The first 2 decisions commented upon above appear to be adverse to the rights owner---the first decision does not protect a world famous “Scotch Whisky” mark and the second one carves out very broad compulsory licensing norms in the context of copyright law, even at the cost of explicitly overriding the express terms of statute. The third one however supports the rights of a foreign trademark owner, even when the “use” is not really substantial or direct.

While these judgments may not be path-breaking in terms of pushing the frontiers of IP jurisprudence (barring perhaps the copyright judgment), they are nonetheless very significant contributions to the area from the apex court. In any case, for IP aficionados, three SC decisions in a single month is certainly an occasion to toast to!

Are Indian Court Judgments Copyrightable?

In a very interesting copyright case, the Supreme Court of India recently ruled that there can be no copyright in the raw text of court judgments/decisions. Well, we don't exactly need a court to tell us this, as section 52 (1) (q) of the Copyright Act makes this crystal clear. (Incidentally, Vikram posed this very query to me just a few days back).

The real issue before the court was: how much of work ought one to do to on such "raw" judgments to make them copyrightable? Will mere copy-editing (the mere correction of clerical errors or syntax) in the judgment suffice?

The facts of Eastern Book Company & Ors vs D.B. Modak & Anr (Civil Appeal No. 6472 of 2004) are as below:

Eastern Book Company (EBC) is a leading publisher of law reports/journals in India. One such publication is a law report titled “Supreme Court Cases” (“SCC”), containing all Supreme Court judgments. Raw judgments are copy-edited by a team of assistant staff and various inputs are put in the judgments and orders to make them user friendly. These include an addition of cross-references, standardization or formatting of the text, paragraph numbering, verification and by putting other inputs.

EBC also prepares the headnotes comprising of two portions, the short note consisting of catch/lead words written in bold; and the long note, which is comprised of a brief discussion of the facts and the relevant extracts from the judgments and orders of the Court. EBC argues that the preparation of the headnotes and putting the various inputs in the raw text of the judgments and orders received from the Supreme Court Registry require considerable amount of skill, labour and expertise and a lot of effort and expenditure.

Therefore, "SCC" constitutes an `original literary work’ of the appellants in which copyright subsists under Section 13 of the Copyright Act, 1957 and EBC alone has the exclusive right to make printed as well as electronic copies of the same under Section 14 of the Act. EBC alleges that two defendants (Spectrum Business Support Ltd and Regent Data Tech Pvt Ltd) market software packages that infringe EBC's copyright in SCC. Sprectrum markets “Grand Jurix” (published on CD-ROMs) and Regent Data Tech Pvt. Ltd markets “The Laws” (again on CD-ROMs).

As per EBC, all the modules in the defendants’ software packages have been lifted verbatim from the SCC. In particular, EBC alleged that the defendants' have copied EBC's sequencing, selection and arrangement of the cases coupled with the entire text of copy-edited judgments as published in SCC, along with and including the style and formatting, the copy-editing paragraph numbers, footnote numbers, cross-references, etc. Interestingly, the court adopted the "minimal degree of creativity" as the threshold for copyright protection.

Deploying such a standard, the court held that mere copy editing would not suffice, as this involved mere labour and nothing else. However, since there is some creativity involved in the making of headnotes, such headnotes would qualify for copyright protection. (Incidentally, Mr Surendra Malik, the owner of EBC writes the headnotes himself! I had the great pleasure of studying with his son, Sumeet Malik in law school. Sumeet joined his dad at the EBC, after a stint at the Franklin Pearce Law Center [FPLC], a school reputed for its IP program. Sumeet was the one who alerted me to this judgment).

Unsurprisingly, the judgment of the court rambles on for 100 odd pages, with the court religiously reproducing arguments of counsel and the various case law that they cite. The real crux of the decision is only about 4 pages!! This seems to have become a way of life for our judiciary, with none of them paying any heed to the great bard who pleaded that "brevity was the soul of wit".

I want to highlight one inconsistency in the court's judgment. The Court appears to endorse a standard enunciated in a recent Canadian Supreme Court case (CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 (1) SCR 339 (Canada). This case strikes a "middle path" between the two extreme doctrines enunciated by courts (in the US and elsewhere) to explain as to when a work can be considered "original" enough to merit copyright protection. At one extreme lies the "sweat of the brow" approach to originality, which the Canadian court held as too low a standard.

Such a standard (which entitles anyone expending "labour" and "capital" to claim copyright protection) shifts the balance of copyright protection too far in favour of the owner, and fails to allow copyright to protect the public’s interest in maximizing the production and dissemination of intellectual works. At the other extreme, we have the "creativity" standard, which implies that something must be novel or non-obvious - concepts more properly associated with patent law than copyright law. The court therefore adopted a "middle path" approach by enunciating an "excercise of skill and judgment" standard.

In essence, the court held that to claim copyright in a compilation, the author must produce a material with "exercise of his skill and judgment" which may not be creativity in the sense that it is not novel or non-obvious, but at the same time it is not the product of merely labour and capital. The Indian Supreme Court endorses the above standard of the Canadian Supreme Court (that the appropriate standard is neither one of "sweat of the brow" nor of "creativity") and holds that: "Creative works by definition are original and are protected by copyright, but creativity is not required in order to render a work original. The original work should be the product of an exercise of skill and judgment and it is a workable yet fair standard".

Yet, a few paragraphs later, the Indian Supreme Court notes:

“novelty or invention or innovative idea is not the requirement for protection of copyright but it does require minimal degree of creativity.”!!

Under such a standard, the court held that mere copy-editing (clerical corrections, syntax etc) wouldn't qualify as they did not involve "creativity", but skill expended in writing head-notes, footnotes and editorial notes would qualify. The Supreme Court therefore “restrained the respondents from copying head notes, footnotes and editorial notes appearing in their law journals.”