May 21

RKD NewsNet May 2021

From the desk of Dr. Mohan Dewan | Assisted by: Adv. Aboli Kherde, Adv. Sachi Kapoor & Adv. Shubham Borkar

General News

  • The conundrum of contract: MX Player v. TVF
  • International News

    The conundrum of contract: MX Player v. TVF

    In a recent case, the High Court of Delhi rejected the plea of a digital platform, namely 'MX Player', praying for restraining another popular digital platform/producer 'The Viral Fever', from selling, licensing, exploiting, or assigning the rights in relation to the Programs titled ‘Immature Season 2’, ‘Aspirants Season 1’ (title subsequently changed to ‘UPSC’), ‘Flames Season 3’ created, developed and/or produced by The Viral Fever.

    The entire case was based on the conclusiveness of an Agreement that was signed by only one of the parties to the Agreement.


    The petitioner, in this case, i.e. MX Media And Entertainment Pte. Ltd. is a Body Incorporate located in Singapore. It is engaged in the production, development, marketing, and distribution of media entertainment content through its Platform titled “MX Player” (hereinafter referred to as "MXP").

    The Respondent, M/S. Contagious Online Media Networks Pvt. Ltd. produces and develops audio-visual content under various brand names, the most popular being “The Viral Fever" (hereinafter referred to as "TVF").

    An agreement between the two parties was made regarding the delivery of the aforementioned three programmes of TVF for hosting on MXP's platform. The Agreement dated 18th March, 2020 was duly signed by TVF and was sent to MXP for signatures. However, due to the COVID pandemic, the head office of MXP, based in Singapore, was shut down and the Agreement remained unsigned by MXP but an advance consideration amount as per the agreement was paid by MXP to TVF.

    In between several amendments to the agreement were proposed by MXP and accordingly negotiations took place between both the parties. In January 2021 MXP wrote to TVF stating that the principal understanding of the agreement stands concluded and TVF is under obligation to deliver the programmes within the agreed timelines or else a legal action may follow. TVF denied the existence of any concluded contract with MXP as the same was still under negotiations due to the amendments proposed by MXP and was also not yet signed by MXP. TVF then took back the deal and refunded the amount to MXP.

    Contentions by the Parties:

    MXP thereafter approached the High Court of Delhi and alleged that despite the agreement between the parties granting exclusive rights over the said programmes TVF is trying to give the rights to a third party(ies). Thus, a plea of restraining TVF from granting rights to any third party over the said programmes was sought along with a refund of the amount paid with 18% interest.

    On the other side, TVF denied the existence of any finalized agreement between the parties. It was submitted by TVF that they had sent a signed agreement to MXP but MXP had not returned the agreement with their signatures despite several reminders. TVF also submitted that instead of signing the agreement, MXP continued proposing amendments, and no consensus was reached. Thus, in absence of any concluded contract, no obligation or injunction can follow.

    Court’s observations:

    The High Court observed that after going through various mail trails exchanged between the parties that MXP was unwilling to abide by the terms set out in the main agreement and went on to propose various amendments and despite several reminders, MXP did not sign the agreement.

    Justice Hari Shankar stated, "In my view, the petitioner (MXP) is, for reasons unknown, seeking to breathe life into a dead body." "As a general proposition of law, it cannot be gainsaid that a contract, even if not signed by both parties, maybe enforceable, provided consensus ad idem, regarding the terms of the contract, exists, and the parties have acted in accordance with the contract, thereby evincing the intent to be bound by the covenants thereof."

    The Court concluded that there was no consensus ad idem between the parties and none of the parties had acted based on the contract, thus the prayers sought by MXP could not be granted.

    The Court clarified that the parties would be at liberty to seek resolution of their disputes by arbitration and, in such event, the Arbitral Tribunal would not be bound by the findings, on merits, contained in its judgment.

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    Samsung to pay $62.7m for Patent Infringement

    Solas OLED Ltd. (hereinafter referred to as “Solas”), is an OLED technology licensing company, established in 2016 and is based in Dublin, Ireland. Solas happens to be a leading licensor in the OLED technology market. Solas boasts one of the most comprehensive OLED patent portfolios covering key areas of OLED structures namely display design, architecture & driver circuitry. However, the company operates by licensing its diverse portfolio of OLED patents to several leading manufacturers of electronics such as smartphones, tablets, wearables, computers & televisions.

    Solas OLED is backed up by Magnetar Capital & has a worldwide coverage of its patents in almost all the countries with major markets, in addition to having the licensees comprising of the major market leaders of the OLED markets.

    In March, 2021, Solas announced that Samsung Display Co. Ltd., Samsung Electronics Co. Ltd., and Samsung Electronics America, Inc. (collectively referred as “Samsung”) have been found liable for infringement of two patents, which belong to Solas, by a jury in the U.S. District Court for the Eastern District of Texas. The inventions claimed in these patents are required for the functioning of AMOLED displays and were said to be used copiously by Samsung in the OLED displays of Galaxy S & the Galaxy Note series smartphones.

    Following a five-day trial, on March 8, 2021 the ruling was delivered & Samsung was ordered to pay $62.7m in damages for infringement of the two patents.

    As of 2021, Solas has filed three suits against the tech giant. With the first being, over AMOLED panel displays which are incorporated into certain Apple products. Secondly, over the AMOLED panel displays incorporated into certain Dell, HP, and Google devices & finally, against a subsidiary of Samsung over the incorporation of touch-controller chips in certain Samsung laptop computers and Samsung Galaxy smartphones.

    Status as of 5th May, 2021

    Recently, Solas OLED has announced that it has filed yet another new patent infringement lawsuit against Samsung Electronics. However, Solas has not yet disclosed the exact patents which are involved in this lawsuit. According to the company statement their patent portfolio covers all critical areas of OLED structures & that Samsung is using the inventions of the company in its own devices without obtaining any prior permission. According to Solas, it has cases pending against Samsung before the International Trade Commission as well as in the Düsseldorf District Court in Germany.

    Solas has a history of filing lawsuits against several tech giants like LG, Motorola, Dell and Apple with regards to patent infringement in the recent years. A quality which every company must acquire in order to ensure & safeguard its IP and inventions.

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    License, or not to license....... that is the question!

    (with an apology to Shakespeare)

    A patentee enjoys the rights to its patent and can prevent others, who don’t have its consent, from making, using, selling or importing the patented product. In order to ensure that a patentee does not monopolize the technology, provisions of compulsory license have been incorporated in the patent law. Any person interested can apply for the grant of a compulsory license in respect of a patent if it is not available to the public in India at a reasonable cost 1.

    A compulsory license can also be granted in case there is a national emergency such as the current Covid-19 pandemic2 . Natco Pharma Limited (Natco) has used this provision under section 92 of The Patents Act 1970 to apply for a compulsory license for the drug Baricitinib which has been granted a patent under the number 270765. The patentee in this case is Incyte Corporation, USA.

    Baricitinib is a chemical compound and is an azetidine and cyclobutane derivative. The drug was officially approved for the treatment of rheumatoid arthritis. It acts as an inhibitor for Janus Kinase (JAK) blocking the sub-types JAK1 and JAK2, the former being a human tyrosine kinase protein essential for signalling certain type I and type II cytokine and the latter is a non-receptor tyrosine kinase and is also involved in signalling by the members of type II cytokine and many other receptors. The cytokines contribute to the induction and maintenance of inflammation and the drug Baricitinib disrupts their activation mechanism.

    In early 2020, with the help of AI, Baricitinib was identified as a drug which could block the Covid-19 virus infection process. Simulation studies predicted that Baricitinib could reduce the ability of the virus to infect the lungs in case of a person afflicted with Covid-19 infection. Anecdotal studies reported that a combination of Baricitinib and Remdesivir is more effective in the treatment of Covid -19 infection than Remdesivir alone. This was particularly true of the patients receiving high flow oxygen or non-invasive ventilation. It was also concluded that the combination drug of Baricitinib and Remdesivir is associated with fewer adverse effects, reduced recovery time and accelerated improvement in the clinical status of the patients. In November 2020, the US FDA approved the combination of Baricitinib and Remdesivir for the treatment of the Covid -19 infection. Natco referred to these developments and the US FDA's approval in its application for the grant of a compulsory license. Natco also observed that Eli Lilly and Company, licensee of the patent holder, imported 9000 tablets in 2019 and 2020 and sold the drug under the brand name of Olumiant at a retail price of Indian Rupees 3230 per tablet.

    Natco, in its compulsory license application, proposed to sell Baricitinib tablet at a retail price of Indian Rupees 15-30 and pay 7% royalty to the patent owner.

    Natco has requested the Controller to exercise powers under section 92(1) read with 92(3) of The Patents Act 1970 and grant a compulsory license for manufacturing and selilng Baricitinib. Natco has also obtained the approval of Drug Controller General of India. It has stated that the compulsory license will be with respect to the treatment for Covid-19 infection only, limited to the territory of India and till such time as the prevailing pandemic situation continues. It is hoped that the combination drug of Baricitinib and Remdesivir will help Covid-19 patients in India and save lives.

    1 Section 84 of The Patents Act 1970

    2Section 92 of The Patents Act 1970

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    Revital Vitalised

    Sun Pharmaceutical Industries (“Sun”) is the registered proprietor of the trademark REVITAL (registered TM Nos. 447372, 2090755, 2575070). Sun is using the mark REVITAL for its daily health supplement. Sun’s product is in use since 1988. REVITAL is sold in a stylised pack with the label displaying a human figure in a moving pose. It also displays the word REVITAL in a capsule shaped design and 3 circles of different sizes. The pack is generally coloured golden.

    A company Nukind Healthcare Pvt. Ltd (“Nukind”) adopted the mark NUVITAL and a pack design which was blatantly similar to the Sun’s pack design. The two packs are depicted here below. Also the two brands REVITAL and NUVITAL are magnified for better viewing of the reader.

    *We do not claim any copyright in the image used. It has been used for academic and representational purposes

    Sun approached3 the Delhi High Court to restrain Nukind from using the mark NUVITAL and the pack design.

    The Delhi High Court was pleased to grant an ex-parte injunction against Nukind and held that Sun has proved the three requisites for grant of an exparte interim injunction. The Court also remarked that Sun’s mark REVITAL was well known.

    In India manufacturers have to be particularly careful in respect of trade dress, especially when the brand name appears in English. Customers buy products based on the trade dress. Similar trade dresses are often frowned upon by the Courts.

    3Sun Pharmaceutical Industries vs Nukind Healthcare P. Ltd. & Anr - CS(COMM) 209/2021-28 April 2021

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    Copyright in Letters

    Copyright is one of the more ubiquitous rights amongst all Intellectual Property Rights. The law of Copyright in India protects an original work of authorship expressed in a tangible form. The definition of work includes literary, dramatic, musical, or artistic work, cinematograph film, and sound recording.

    A Letter is a Literary Work and ordinarily, the writer is the first owner of Copyright in the contents of such letter. However, the actual physical ownership of the letter belongs to the recipient. The owner of Copyright has certain exclusive rights such as the right to reproduce, copy or share the work to the exclusion of others. However, there are certain exceptions to this laid down in the Act.

    Term of protection of Copyright of a letter:-

    There is no pre-requisite of registration or publication to have Copyright in a work. Therefore, Copyright in a letter comes into existence as soon as it is written. Publication is not a criterion for the subsistence of Copyright, however, in order to calculate the term of Copyright its publication is important. As per the statute Copyright in a published letter subsists during the lifetime of its writer and sixty years thereafter.

    Does that imply that an unpublished letter is not protected under the Act?

    A Letter, published or unpublished, is always protected under the Copyright laws. Even if the Act does not specify the term of protection of an unpublished work, there are several provisions that recognize exclusive rights over unpublished works and protect the owner from unauthorized publication by a third party.

    Private Letters: Ownership and exceptions

    Private letters are different from the usual Literary works which are created. Private letters are works that are created without the intent of 'gain' and are only meant to be 'read' by the recipient. Such letters are written with no intention to be expressed publicly.

    Another question concerning private letters is their ownership rights. On receipt of the private letter, the recipient gets all the rights associated with the tangible property, including the paper of private letter. For example, the recipient receives the right to destroy, but the copyright over the contents of the letter remains with the writer. This is similar to a case that the buyer of a book is the owner of tangible property, i.e. the book but not the intangible property, i.e. contents of the book.

    The Indian Copyright law has laid down an exception of fair use, i.e. for the purposes of research, criticism, review, reporting, etc., where consent of the owner is not necessarily required. However, in case of a private letter the consent of its writer is always required for publication or exploitation of any rights which exclusively vests with the writer. The only possible exception in the case of a private letter is when the question of public interest arises.

    In the year 1928, Pandit Jawahar Lal Nehru had written over thirty letters to his ten-year-old daughter Indira Priyadarshini. These letters were later combined in a book format with the consent of Pandit Nehru and published by Allahabad Law Journal under the title "Letters from a Father to His Daughter".

    Ownership of Copyright in Letters: Work for hire/Ghostwriters

    Recently, Meghan Markle, formerly known as the Duchess of Sussex, sued a British newspaper for breach of privacy and Copyright infringement for publishing a handwritten private letter that she wrote to her father. The newspaper group took the defense that Meghan Markle did not fully own copyright in the letter as the members of the royal communications team helped her draft it. The UK Court however held the newspaper group liable for breach of her privacy and Copyright infringement.

    This case brings us to another interesting aspect of Copyright ownership of letters where writers are employed as work for hire or as ghostwriters. If a secretary writes a letter on behalf and upon instructions of his/ her employer, the ownership of Copyright of the letter will be with the employer. Such work is called as ‘work for hire’ where the employer is the owner of Copyright for the work created in the course of employment.

    Similarly, there are several freelance writers (ghostwriters) who are hired to write content for someone else in return of some consideration. In such case, the ownership of Copyright of the content written will be with the person who hired the ghostwriter(s).

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    Know the real India

    -Adv. Chinmay Pawar

    Continued: Haryanka dynasty

    Bimbisara laid strong foundations of an empire famously known as the ‘Magadha Empire'.

    His son, Ajatashatru, was ambitious. His ambitions to take over his father’s prosperous and expanding kingdom grew to a point where he staged a coup d’état. He threw Bimbisara into the prison and declared himself as a king. A few texts/accounts claim that Bimbisara was even executed by Ajatashatru.

    Nevertheless, he proved to be an able king- strengthening his father’s kingdom, expanding its boundaries and ruling it vigorously.

    Ajatashatru followed policies of conquest and expansion. His war against the kingdom of Vaishali lasted for 16 long years, after which he emerged victorious. It is notable that, many texts claim that his mother was a princess from the kingdom of Vaishali.

    He defeated his neighbours including the king of Kosala who was aided by Ajatashatru’s step brothers. In this war, Ajatashatru won Kashi- the most sacred city for Hindus. It is noteworthy that Kashi was given as a dowry to Bimbisara when he had married a Kosala princess. It is believed that Ajatashatru married one of the Kosala princesses post war.

    Ajatashatru also conquered smaller kingdoms and annexed them to his kingdom. Many texts claim that he invented two weapons known as Rathamusala (scythed chariot) and Mahashilakantaka (a type of catapult to eject large stones). Magadha, under Ajatashatru, became the most powerful kingdom of its time in North India.

    Both Buddhist and Jain religious texts contain many stories about Ajatashatru which in fact throw light on his stature in India at that point of time.

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    Hidden gems of India

    - Adv. Chinmay Pawar

    Borra caves: Andhra Pradesh

    India’s peninsular region, also known as ‘Deccan plateau’, is home to 7 states viz. Maharashtra, Goa, Karnataka, Kerala, Tamil Nadu, Telangana, and Andhra Pradesh. It is surrounded by the Arabian Sea in the west, the Bay of Bengal in the east, and the Indian ocean in the south.

    Andhra Pradesh’s coast line is formed by the Bay of Bengal. Located at about 100 kms from the state’s capital Visakhapatnam, are one of the largest caves of the country - Borra Caves.

    These caves were discovered by William King of the Geological Survey of India in 1807. Borra caves are naturally formed and believed to be 150 million years old. These caves are stalactite and stalagmite formations. They are formed as a result of the flow of Gosthani river on the limestone deposits in the area.


    We do not claim any copyright in the photographs. They have been used for academic and representational purposes only. (Images courtesy: https://vizagtourism.org.in/)

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    Hidden Meanings in Trademarks

    *We do not claim any rights over the trademark/brand name. It is being used for representational/educational purposes only.

    Is your mouth watering? Can you reminisce the taste of this super popular chocolate ‘After Eight’? Well, for all the non-chocoholics, After Eight is a very popular chocolate brand renowned for its unique blend of chocolate and mint! After Eight was launched in the year 1962 by a company called Rowntree. In 1988, Rowntree was bought by Nestle. Ever wondered why the chocolate was named ‘After Eight’ or what exactly does the clock like figure in the logo depict?

    The logo represents an antique clock, more particularly an antique baroque clock. This was adopted since an antique baroque silver clock would appear in the early After Eight television advertisements, in the 1960’s. It is believed that, the chocolate mint thins would be an ideal eat post dinner which would be any time After Eight O’clock! In fact, if you notice, the clock represented in the logo depicts the clock time just a few minutes after eight O’Clock! Simple yet marvelous, don’t you agree?

    Like we always say, once you see it you cannot unsee it!

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