LINKING AND FRAMING
The threshold for establishing authorisation of infringement is high and is not satisfied by mere knowledge of infringement. Active participation, inducement or approval are necessary ingredients of authorisation. The jurisprudence in Australia, Canada and the UK suggests that the retention of control, profits made by the intermediary and the non–removal of infringing material on receipt of notice shall be relevant factors for determining the liability of an intermediary for authorising infringement.
Rights holders may seek to bring the acts of link providers under the ambit of ‘authorisation of infringement’. In this regard, reliance may be placed on Australian jurisprudence, especially the decision in Cooper v Universal Music Australia Pty Ltd, wherein the Full Federal Court held that websites which host hyperlinks to locations that host infringing material are liable for authorising copyright infringement. Similarly, websites containing frames which contain copyright- infringing material may be held liable where they specifically approve, or actively participate in, or induce the infringement. However, as mentioned above, the threshold for establishing authorisation of infringement is higher and requires proof of more than mere knowledge of the infringing activity.
Scope of liability under trademark law
Under Indian trademark law, a registered trademark is infringed where a person uses in the course of trade, a mark which is identical or deceptively similar to the trademark in relation to the goods and services for which the trademark is registered.
Liability under trademark law is particularly relevant in the context of framing, since frames generally appear as advertisements on the host website and may be indicative of a commercial link between the framer and the host. Te unauthorised use of a trademark in a frame on a website is likely to create confusion or a false impression of association between the trademark owner and the website host, thereby infringing the rights of the trademark owner.
Safe harbour for intermediaries
Te Information Technology Act, 2000 (IT Act) was amended in the year 2008 and through this amendment the scope of safe harbour provisions for intermediaries was substantially altered. Section 79 of the IT Act immunises intermediaries from liability under any law for any data, or communication link made available or hosted by it.
58
Section 79 imposes conditions for and exceptions to the safe harbour for intermediaries. Section 79 suggests that an intermediary may be held liable for infringement if it:
1. Initiates the transmission; or 2. Selects the receiver of transmission; or
3. Selects or modifies the information contained in the transmission; or
4. Does not observe due diligence while discharging its duties; or
5. Conspires or abets or aids or induces the infringement of the copyright; or
6. Upon receiving actual knowledge, or on being notified that any information, data or communication link residing in or connected to a computer resource and controlled by the intermediary is being used to commit the unlawful act, fails to expeditiously remove or disable access to that material on that resource without vitiating the evidence in any manner.
Te Information Technology (Intermediaries Guidelines) Rules, 2011 provide that an intermediary must observe due diligence in informing the users of a computer resource not to host, display, upload, modify, publish, transmit, update or share any information that infringes any patent, trademark, copyright or other proprietary rights. In the absence of this, the intermediary may be held liable for infringement along with the primary infringer. It is noteworthy that where the intermediary has been informed of the rights holder’s intellectual property, the intermediary must monitor the content hosted and, or, made available by it and cannot rely on post-infringement measures to claim immunity.
However, there is currently an embargo on the immunity available to an intermediary under Section 81 of the IT Act which specifically excludes application of Section 79 to copyright and patent infringement. Tough ambiguity existed regarding the interpretation of Section 79 and Section 81, the Delhi High Court in the Super Cassettes decision clarified that an intermediary cannot avail itself of immunity under Section 79 of the IT Act.
Conclusion
With the Delhi High Court decision in Super Cassettes, rights holders have greater clarity on the scope of intermediary liability in India, at least for hosting copyright-infringing content. It is noteworthy that even in the absence of a specific legislative mandate, the judiciary has interpreted statutory provisions expansively in order to account for technological advances and to ensure that
Trademarks Brands and the Internet Volume 1, Issue 1
Aditya Gupta has been with Anand and Anand since July 2010 and is a part of the litigation team. He graduated from National Law University, Jodhpur in 2010 with a Bachelor of Law degree and a Bachelor of Science degree, and is a member of the Bar Council of Delhi.
Nishchal Anand graduated with a BBA, LLB (Hons) degree from Symbiosis Law School, Pune in 2009 and has been with the firm since his graduation. His areas of practice include general IP litigation with particular emphasis on soſtware anti-piracy and enforcement and anti-counterfeiting actions. Further, besides general trademark and copyright law advice, he also advises various clients on issues pertaining to parallel importation, cyber laws, data privacy, advertising and packaging laws, publicity rights and prevention of corrupt practices.
rights holders are not rendered remediless against newer and previously unforeseeable modes of infringement. n
Nishchal Anand is an associate in Anand and Anand’s litigation department. He can be contacted at:
nishchal@anandandanand.com
Aditya Gupta is an associate in Anand and Anand’s litigation department. He can be contacted at:
aditya@anandandanand.com
www.worldipreview.com
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60