Centre for Internet and Society

Analysing Alice Corporation Pty Ltd v CLS Bank International Et Al

sinha — 2014-08-01T19:09:05Z

The US Supreme Court delivered a unanimous decision in Alice Corporation Pty Ltd v CLS Bank International Et Al last month. The decision concerning software related inventions (with respect to carving an exception to “abstract ideas” patent eligibility category) was the most awaited and the final patent ruling of the US’ Supreme Court’s term. This post presents an analysis of the decision and a timeline of landmark US judicial decisions on software patents.

The Court declared Alice Corporation’s patent claims to be invalid by applying the tests and frameworks propounded in Mayo Collaborative Services v. Prometheus Laboratories Inc.(“Mayo”) and Bilski v. Kappos[1] (“Bilski”). You may read CIS’ analysis of the Bilski decision here and its impact here. A timeline of landmark decisions on software patents is inserted at the end of the analysis.

Background

Section 101 of 35 U. S. Code, 1952 (US Patent Act, 1952) provides that: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent thereof, subject to the conditions and requirements of this title.”

However, there exist certain judicially recognised exceptions to this section, namely, laws of nature, natural phenomena and abstract ideas.[2] Any claims wholly falling under any of these exceptions shall be ineligible for patent protection. [3]

Facts of the case

Alice Corporation’s software related inventions concerned a computer system which helped close financial transactions by avoiding a settlement risk. Specifically, the patent claims (granted by US Patents and Trademarks Office (“USPTO”)) involved, inter alia (1) a method for exchanging financial obligations, (2) a computer system as a third-party intermediary, and (3) a computer-readable medium (“CRM”) containing program code for performing the method of exchanging obligations.

CLS Bank filed for a declaratory judgment action seeking non-infringement, invalidity, and unenforceability of the patents. The district court granted a summary judgment[4] rendering the impugned patents invalid. Alice appealed in the Federal Circuit which reversed[5] the district court decision and found that the patent claims were not directed to an “abstract idea”, therefore were patent-eligible subject matter. Consequently CLS Bank appealed for an en banc hearing, which led to the Federal Circuit reversing its decision and ruling that the patents were indeed directed to patent-ineligible subject matter.[6] This decision was rather fragmented consisting of seven opinions without any clear majority[7], and did not address any of the unanswered issues pertaining to software patenting in wake of the Mayo and Bilski rulings.

Alice filed a certiorari writ at the Supreme Court which was granted in 2013, and the Court in the instant ruling affirmed the Federal Circuit’s decision by invalidating the patents. The opinion was authored by Justice Clarence Thomas. Relying on Bilski, the Court held that the claims were not patent eligible under section 101 since they were drawn to an “abstract idea”. It expressed the importance of pre-empting patenting of concepts fundamental to scientific and technological progress.

Determination of patent-worthiness of the subject matter

To ensure the openness of fundamental scientific concepts the Court highlighted the pressing need to “distinguish between patents that claim the ‘building blocks’ of human ingenuity and those that integrate the building blocks into something more.” The latter would qualify as a patent-eligible invention after the said transformation. However, instead of formulating a test to distinguish between the two kinds of claims, it went ahead and applied the framework devised in Mayo Collaborative Services v Prometheus. In the instant case, the Court elucidated on section 101, stating that:

“Section 101 framework has two parts: (1) determine if the claim at issue is directed towards an abstract idea; and (2) examine the elements of the claim to determine whether it contains an inventive “concept” sufficient to transform the abstract idea into a patent-eligible application.”

The Court applied the first part by turning to its recent decision in Bilski v. Kappos and held that the patent claims were indeed directed towards an abstract idea. The Court explained, illustratively, that in Bilski v. Kappos the claim consisted of a method for hedging against financial risk and in the instant case the claim consists of the concept of intermediated settlement. “Like the hedging risk in Bilski, the concept of intermediated settlement is “a fundamental economic practice long prevalent in our system of commerce.” The Court squarely rejected Alice’s argument that an “abstract idea” is merely confined to “pre-existing, fundamental truths which exist in principle apart from any human action.” It refrained from setting any definitive limitations on the “abstract idea” category.

Applying the second part of the framework, the Court concluded that Alice’s claims merely involved implementing a method on a generic computer which was insufficient to transform an abstract idea into a patent-eligible invention. The implementation of a method on a generic computer did not qualify as an “additional (inventive) element.” The Court reiterated Bilski v. Kappos at this point, stating (in the instant case) “..none of the hardware recited by the system claims "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers."

Observations and Implications

1. Reiterated focus on substance of claim - The Court concentrated on substance of the claim and not form thereof. It “warned” against interpretation of section 101 in ways that make patent eligibility depend simply on the draftsman’s art. The Court noted that the CRM and apparatus/system claims were only “transformed method claims”. This highlighted the prevalent style of drafting claim sets (CRM, apparatus/system, method) when the hardware/apparatus used was generic.

2. USPTO soon thereafter issued “Preliminary Examination Instructions [8]” – As per the memorandum, this decision "neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods." Further, examiners have been instructed to apply the framework set forth in the Mayo case, “to analyze all claims directed to laws of nature, natural phenomena, and abstract ideas for subject matter eligibility under 35 U.S.C. § 101.”

This instruction has had twofold implications –

The Bilski standard was followed to determine the eligibility of “abstract ideas”[9], and Mayo was applied in the “laws of nature” category[10]. Now Mayo shall be uniformly applicable to both categories, and also all statutory classes of claims, not just method claims.

The memorandum also has illustrated the theoretical exposition of the Court on “abstract ideas” by stating that abstract ideas include:

· Fundamental economic practices;

· Certain methods of organizing human activities;

· An idea of itself; and,

· Mathematical relationships / formulas.

It also exemplifies the limitations which may allow patent eligibility of an “abstract idea”:

· Improvements to another technology or technical fields;

· Improvements to the functioning of the computer itself; and

· Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.

What can you patent after Alice Corporation v CLS Bank?

Evidently, the Court did not seize the opportunity to plug gaps in the framework propounded by it in an earlier decision (Mayo Collaborative Services v. Prometheus Laboratories Inc.[11]]). It refrained from pronouncing a definitive test (to the extent avoided mentioning software patent in the judgment). Instead it relied on its recent decisions, inter alia, Mayo Collaborative Services v. Prometheus Laboratories Inc.(“Mayo”) and Bilski v. Kappos[12]. In consideration of the illustrative reasoning provided by the Court, and it declining from delving into setting of any parameters to define an “abstract idea” and to not clarify the second prong in the Mayo test; the decision completely deals with the rejection of Alice’s patents. A few aspects have emerged to be applicable precedents-wise. However, the decision is bound to limit poor quality software related inventions, at both appeals and prosecution stage. To conclude, the Supreme Court has narrowed the scope of software related inventions, without addressing pressing issues on the existing framework.

Timeline of US Court decisions on software patents

2014

Alice Corporation v CLS Bank [13]

SCOTUS declared Alice Corporation’s patent claims invalid by applying tests previously held in the cases of Mayo Medical Laboratories v Prometheus Laboratories [14] and Bilski v Kappos [15]. The principle question in the instant case was whether the claims spoke directly to an abstract idea- which would render the claims invalid on the basis of being patent ineligible subject matter.
The Court elucidated on section 101, stating that:

2012

Mayo Medical Laboratories v Prometheus Laboratories [16]

SCOTUS ruled that Prometheus Laboratories’ process patent which provided correlations between blood test results and the patient’s health in determining an appropriate dosage of a specific medication for the patient, was essentially a correlation of that of a law of nature, which was a judicially recognised exception to patentable subject matter.

2010

Bilski v Kappos [17]

SCOTUS upheld the U.S. Court of Appeals for the Federal Circuit decision in In re Bilski. It however, rejected the lower court’s holding that “machine-or-transformation test” was the sole test for patent subject matter eligibility.

2008

In re Bilski [18]

U.S. Court of Appeals for the Federal Circuit narrowed the scope for patenting software and business methods and declared the “machine-or-transformation test” as the sole determinative test to decide the patent eligibility of subject matter. The claim in question consisted of a method for hedging against financial risk.

1998

State Street Bank v. Signature Financial Group [19]

U.S. Court of Appeals for the Federal Circuit upheld a software patent granted to Signature Financial Group. The case is widely quoted as one of the first judicially recognised software patents- it set the stage for a deluge of software patent grants in the US.[20] The invention in question was a business method.
The Court held that an invention was patentable if it involved some practical application and produced a “useful, concrete and tangible result.”

1995

In Re Beauregard [21]

A claim which includes a manufactured article containing a Computer Readable Medium and instructions anointed as a “Beauregard claim”. Illustratively, floppy disks, CD-ROMS, etc would include a Beauregard claim.

1980s

Diamond v. Diehr [22] (1981)

SCOTUS held that a physical machine or a process making use of a mathematical algorithm which involves “transforming or reducing an article to a different state or thing” is patent eligible subject matter even if it includes a software component.

1970s

Parker v. Flook [23] (1978)

The Court held that unless the implementation of an algorithm was novel and non-obvious, the algorithm shall be regarded as prior-art, hence would be patent ineligible subject matter.

Gottschalk v. Benson [24] (1972)

SCOTUS addressed the patentability of software for the first time. The Court rejected a “process” patent for a method to convert binary-coded decimal numerals into pure binary numerals on a general purpose digital computer since it was solely directed to an algorithm (patent ineligible subject matter).

[1] 561 U.S. __, 130 S. Ct. 3218, 95 U.S.P.Q.2d 1001 (2010).

[2] Diamond v. Chakrabarty, 447 U.S. 303, 206 USPQ 193 (1980).

[3] ibid.

[4] 768 F.Supp.2d 221, 252 (D.D.C. 2011).

[5] 685 F.3d 1341 (Fed. Cir. 2012).

[6] 717 F.3d 1269 (Fed. Cir. 2013)

[7] ibid.

[8] USPTO, Memo to the Patent Examining Corps, “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Ply. Ltd. v. CLS Bank International, et al”, 2014.

[9] USPTO, “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos”, 2010.

[10] USPTO, Memo to the Patent Examining Corps,“2012 Interim Procedure for Subject Matter Eligibility of Process Claims Involving Laws of Nature”, 2012.

[11] 566 U.S. ___ ,132 S. Ct. 1289, 101 U.S.P.Q.2d 1961 (2012).

[12] 561 U.S. __, 130 S. Ct. 3218, 95 U.S.P.Q.2d 1001 (2010).

[13] 573 U.S. __ (2014); 110 U.S.P.Q.2d 1976, 2014 ILRC 2109 (U.S. 2014) [2014 BL 170103].

[14] 566 U.S. ___ ,132 S. Ct. 1289, 101 U.S.P.Q.2d 1961 (2012)

[15] 561 U. S. 593 (2010)

[16] 566 U.S. ___ ,132 S. Ct. 1289, 101 U.S.P.Q.2d 1961 (2012)

[17] 561 U. S. 593 (2010)

[18] 545 f.3d 943 (2008)

[19] 149 F.3d 1368; 47 U.S.P.Q.2D (BNA) 1596

[20] “1998 July The State Street software patents decision” available at <http://www.thomasalspaugh.org/pub/fnd/ipswd-timeline.html#y1998-StateStreet> (last accessed July 29, 2014)

[21] 53 F.3d 1583 (Fed. Cir. 1995)

[22] 450 U.S. 175 (1981)

[23] 437 U.S. 584 (1978)

[24] 409 U.S. 63 (1972)

For more details visit http://editors.cis-india.org/a2k/analysing-alice-corporation-pty-ltd-v-cls-bank-international-et-al

Global Congress on Intellectual Property and the Public Interest, 2015

sinha — 2015-06-24T16:45:21Z

We are pleased to announce that the Centre for Internet and Society will be hosting the fourth edition of the Global Congress on Intellectual Property and the Public Interest at New Delhi, India, tentatively in the first two weeks of December, 2015. This post seeks your participation and invites your queries and suggestions for the event.

The theme for this year’s Congress will be “Three Decades of Openness; Two Decades of TRIPS.” We are now inviting applications to participate in the Congress, including session participation and presentations. We are also welcoming proposals for panels and workshops.

The application form is available now at [http://form.jotformpro.com/form/50854976184973?] Please note that this form is for application purposes, and does not amount to confirmation of participation. The registrations for the plenary sessions, which are open to the public, will open closer to the date of the Global Congress.

Deadlines

August 1st: Priority Deadline for Applications- Applicants will be considered on a rolling basis, with applications made by August 1st being given first consideration. Applications after August 1st to receive travel assistance will be considered only under exceptional circumstances (these details will be collected in a subsequent form).

November 1st: All applications for session participation and paper submissions will close on November 1st.

Application Information

For applications to participate/host: Applications to present or host workshops shall be considered based on the proposals to be submitted in the form.

For applications to attend sessions: Applications to attend sessions as discussants will be considered based on the statement of purpose and/or any other relevant information provided by the applicant.

Limited travel grants to cover accommodation and/or travel to the Congress will be available, with priority to those from developing countries.

Background, Theme and Expected Outcomes

The Global Congress on Intellectual Property and the Public Interest is the most significant event on the calendar for scholars and policy advocates working on intellectual property from a public interest perspective. By sharing their research and strategies, the network of experts and activists supported by the Global Congress are empowered to put forward a positive agenda for policy reform. The Global Congress began in Washington D.C. in 2011, moved to Rio de Janeiro in 2012, and was held in Cape Town in 2013. The fourth Global Congress will now be held in New Delhi, in December 2015. The event would be the largest convening of public interest-oriented intellectual property practitioners ever held in Asia, and would help link in the world's most populous region to these global debates around how intellectual property policy can best serve the public interest.

The fourth edition of the Global Congress brings research, civil society, industry and regulatory and policy-making communities together for active, intense engagement on key public-interest intellectual property issues. Opportunities for these groups to interact are rare but valuable; and have been proven to lead to successful policy outcomes. The 4^th edition of the Congress, slated to be held in December, 2015 in New Delhi seeks to be one such opportunity.

The theme for the 2015 Congress is Three Decades of Openness; Two Decades of TRIPS-coming at a pivotal time for reflection, revision, and further strategizing. Specifically, the 2015 Congress seeks to produce three outcomes- first, the mobilization of existing scholarly research directly into the hands of civil society advocates, business leaders and policy makers, leading to evidence-based policies and practices; second, the collaborative identification of urgent, global and local research priorities and generation of a joint research/advocacy agenda; and third, the solidification of an inter-disciplinary, cross-sector and global networked community of experts focused on public interest aspects of IP policy and practice.

Participation Opportunities

Discussions at the Global Congress will be carried out in the form of plenary sessions, thematic tracks, cross-track sessions, and the room of scholars. Participation is invited for the thematic track sessions, cross-track sessions and the room of scholars.

The thematic tracks at the Global Congress are: 1) Openness, 2) Access to Medicines, 3) User Rights, 4) IP and Development. Cross-track sessions will feature research that cuts across tracks in order to facilitate engagement between tracks on themes of mutual interest.

The Room of Scholars will feature presentations of research outputs such as draft works or white papers that may not fit directly within the thematic tracks but fall within the overall theme of the Global Congress.

Participation could be in the form of presenting / discussing conference papers or policy briefs, or by conducting workshops where they may share their own work and solicit feedback from peers, during the aforementioned sessions.

The application form for participation is available now at http://form.jotformpro.com/form/50854976184973?. Please forward this invitation to interested lists and individuals. For more information or questions, you may contact global-congress@cis-india.org.

Organisation

The 4^th Global Congress on Intellectual Property and Public Interest, is being organised in cooperation with National Law University, Delhi, by the American Assembly at Columbia University, the Centre for Internet and Society, Open A.I.R., and the Program on Information Justice and Intellectual Property at American University Washington College of Law.

For any clarifications or queries, please contact:

Global Congress organising team: global-congress@cis-india.org

Swaraj Paul Barooah: swaraj.barooah@gmail.com
Shruthi Chandrasekaran: shruthi.chandrasekaran@gmail.com

The planning team also includes:

Anubha Sinha: anubha@cis-india.org
M.P. Nagaraj: nagaraj@cis-india.org
Maggie Huang: maggie@cis-india.org
Pranesh Prakash: pranesh@cis-india.org
Rohini Lakshane: rohini@cis-india.org
Sunil Abraham: sunil@cis-india.org
Nehaa Chaudhari: nehaa@cis-india.org

For more details visit http://editors.cis-india.org/a2k/2015-global-congress-on-intellectual-property-and-the-public-interest

Department of Biotechnology and Department of Science, Ministry of Science and Technology, Government of India, release first draft of Open Access Policy

sinha — 2014-12-26T11:20:59Z

The Department of Biotechnology and the Department of Science, Ministry of Science and Technology, Government of India, recently published a draft Open Access Policy in consultation with several open access experts, government officials and CIS. This post discusses open access and the exercise undertaken to draft this policy.

The Department of Biotechnology (“DBT”) and the Department of Science (“DST”), Ministry of Science and Technology, Government of India, released their draft Open Access Policy (“the Policy) on July 5, 2014 (the Policy may be accessed hereand comments may be sent to madhan@dbt.nic.in by July 25, 2014). This step by the Ministry of Science and Technology is laudable, especially from the view of increasing access to research undertaken at these institutions. DBT/DST’s endeavour to provide open access applies to scientific research directly (including ad-hoc) or indirectly funded by them. It also applies to scientific research which has received benefits, infrastructure or other support from the DBT/DST. Providing open access may also ensure percolation of cutting edge research at a rapid pace into higher education curriculum, thereby raising the standard of technical and scientific education.

The Council of Scientific and Industrial Research (“CSIR”), Indian Council of Agricultural Research (“ICAR”) and Institute of Mathematical Sciences (“IMSc”) are the few Indian government institutions to have implemented open access policies applicable to the research undertaken at their respective institutions. While the CSIR and ICAR present outlines of their open access policies, the IMSc provides access to a digital repository containing digital theses/dissertations, matscience reports and other publications of institute members. CIS had sent comments to the ICAR upon release of ICAR’s draft policy.

Open Access in Scientific Research

Presently two models of scientific research publications exist, namely, the commercial model and the open access model. The scientific research ecosystem traditionally functioned on the commercial model, until open access was embraced by a part of the scientific community. It is reported that presently, there exist approximately 25,000 journals in the areas of science, technology and medicine. The conventional model of communicating research is by publishing it in printed journals. These journals are usually subscription based, and demand hefty amounts from interested authors for publication. Further, research was only accessible to that select group of persons willing to pay a high monetary sum for the same. These industry practices led to restrictions on access to scholarly research, including restrictions on sharing and building further on work already created. . Over the past few years, this trend has witnessed a change, with research being increasingly published in online, open access journals.

Open Access is free, immediate, permanent online access to the full text of research articles for anyone, web-wide, without severe restrictions on use commonly imposed by publisher copyright agreements. Open access was first defined in 2002 at the Budapest Initiative. The Bethesda Statement (2003) provided:

An Open Access Publication is one that meets the following two conditions:

The author(s) and copyright holder(s) grant(s) to all users a free, irrevocable, worldwide, perpetual right of access to, and a license to copy, use, distribute, transmit and display the work publicly and to make and distribute derivative works, in any digital medium for any responsible purpose, subject to proper attribution of authorship[2], as well as the right to make small numbers of printed copies for their personal use.

A complete version of the work and all supplemental materials, including a copy of the permission as stated above, in a suitable standard electronic format is deposited immediately upon initial publication in at least one online repository that is supported by an academic institution, scholarly society, government agency, or other well-established organization that seeks to enable open access, unrestricted distribution, interoperability, and long-term archiving (for the biomedical sciences, PubMed Central is such a repository).

The Berlin Declaration on Open Access to Knowledge in the Sciences and Humanities is another significant milestone of the Open Access movement. Globally, USA and Europe have been instrumental in adopting open access policies across a wide range of institutions. Illustratively, the US’ National Institute of Health open access policy is a comprehensive document detailing every aspect of the policy and its implications. Several premier academic institutions (Harvard) under experts (Peter Suber) have drafted documents containing guidelines on drafting a suitable open access policy.

The advantages of adopting an open access policy are manifold- free access to scientific research irrespective of subscription affiliation, decrease in publishing and research costs for industry and academia; It has also been argued that restricting access to government funded research is unethical, since scientific research conducted by government agencies is partly, if not entirely, funded by the taxpayers’ money. Further, adoption of open access alone could improve visibility and impact of Indian science,

Open Access and Intellectual Property

Intellectual property is the essential instrument used to effect principles of open access. The extent of rights under copyright which the owner chooses to exercise over scholarly publication in question determines whether a publication may be openly accessed or not. Traditionally, journal publishers ran an inequitable policy which required all publication and reproduction rights (copyright) to be exclusively transferred by the author or institution to the publishers in consideration of publication in reputed journals. This practice created artificial and expensive barriers to scholarly research. Contrast this with open access principles wherein to provide open access- Generally, the author or the institution (depending on the jurisdictional copyright laws) retain certain rights in the publication, whilst permitting zero-barrier access to their research. This requires careful balancing and distribution of rights between three stakeholders- author, institution and the publisher.

About the DST/DBT’s Open Access Policy

The Open Access Policy Document for DBT/ DST was drafted by the Open Access Policy Committee on a specific request from Dr. VijayRaghavan, Secretary, DBT. The Policy was drafted after multiple rounds of consultation with Ministry officials, eminent academics and experts on open access, government officials with prior experience of set-up of institutional repositories and CIS. Prof Subbiah Arunachalam led the discussions along with the Open Access Policy Committee and brought different perspectives to the fore. The Policy may be accessed here. The Policy will be applicable to publications in peer reviewed journals, and aims to maximise the distribution of these publications by providing free online access by depositing them in a gratis open access repository (deemed mandatory). Authors can make their publications open access by publishing in an open access journal, or if they choose to publish in a subscription journal, by posting the final accepted manuscript to an online repository. The Policy suggests a maximum embargo period placed on authors by journals to not exceed one year. It also addresses the methodology of depositing in a repository and provides for a proposed copyright addendum between the author and publisher.

CIS’ Contribution

CIS participated in discussions along with experts brought on board by Prof. Subbiah Arunachalam to develop and review an open access policy for the purposes of DST and DBT. CIS, inter alia, commented on the legality of clauses in the policy pertaining to Indian copyright law and supplied a note on utilisation of ‘public domain’ in open access policies. Legally, a work is said to have entered the public domain when it is free from copyright protection. The note recommended usage of the phrase “made available to public” as opposed to “public domain” since the said policy permitted the institution and/or author to retain rights in the scientific paper. You may access the note here.

For more details visit http://editors.cis-india.org/openness/blog-old/department-of-biotechnology-and-department-of-science-ministry-of-science-and-technology-government-of-india-release-open-access-policy

Delhi High Court Orders Blocking of Websites after Sony Complains Infringement of 2014 FIFA World Cup Telecast Rights

sinha — 2014-07-08T07:02:16Z

Of late the Indian judiciary has been issuing John Doe orders to block websites, most recently in Multi Screen Media v. Sunit Singh and Others. The order mandated blocking of 472 websites, out of which approximately 267 websites were blocked as on July 7, 2014. This trend is an extremely dangerous one because it encourages flagrant censorship by intermediaries based on a judicial order which does not provide for specific blocking of a URL, instead provides for blocking of the entire website.

The High Court of Delhi on June 23, 2014 issued a John Doe injunction restraining more than 400 websites from broadcasting 2014 FIFA world cup matches. News reports indicate that the Single judge bench of Justice V. Kameswar Rao directed the Department of Telecom to issue appropriate directions to ISPs to block the websites that Multi Screen Media provided, as well as “any other website identified by the plaintiff” in the future. On July 4, Justice G. S. Sistani permitted reducing the list to 219 websites.

Background

Multi Screen Media (MSM) is the official broadcaster for the ongoing 2014 FIFA World Cup tournament. FIFA (the Governing body) had exclusively licensed rights to MSM which included live, delayed, highlights, on demand, and repeat broadcast of the FIFA matches. MSM complained that the defendants indulged in hosting, streaming, providing access to, etc, thereby infringing the exclusive rights and broadcast and reproduction rights of MSM.

The court in the instant order held that the defendants had prima facie infringed MSM’s broadcasting rights, which are guaranteed by section 37 of the Copyright Act, 1957. In an over-zealous attempt to pre-empt infringement the court called for a blanket ban on all websites identified by MSM. Further, the court directed the concerned authorities to ensure ISPs complied with this order and block the websites mentioned by MSM presently, and other websites which may be subsequently be notified by MSM.

Where the Court went Wrong

The court stated that MSM successfully established a prima facie case, and on its basis granted a sweeping injunction to MSM ordering blocking 471 second level domains. I’d like to point out numerous flaws with the order-

Dissatisfactory "Prima facie case"

In my opinion the court could have scrutinised the list of websites provided by MSM more carefully. There is nothing in the order to suggest that evidence was proffered by MSM in support of the list. The order reveals that the list was prepared by MarkScan, a “consulting boutique dedicated to (the client’s) IP requirements in the cyberspace and the Indian sub-continent.” The list throws up names such as docs.google.com, goo.gl & ad.ly (provide URL shortening service only), torrent indexing websites, IP addresses, online file streaming websites, etc., at a cursory glance. Evidently, perfectly legitimate websites have been targeted by an ill conducted search and shoddily prepared list which may lead to blocking of legitimate content on account of no verification by the court. 471 websites out of 472 mentioned in the first list are second level domains and 23 websites have been listed twice.

2. Generic order which abysmally fails to identify specific infringing URLS

Out of the 472 websites (list provided in the order by MarkScan)-

471 are file streaming websites, video sharing websites, file lockers, URL shorteners, file storage websites; only one is a specific URL [http://www.24livestreamtv.com/brazil-2014-fifa-world-cup-football-%20%C2%A0%C2%A0live-streaming-online-t ].

The order calls for blocking of complete websites. This is in complete contradiction to the 2012 Madras High Court’s order in R K Productions v BSNL which held that only a particular URL where the infringing content is kept should be blocked, rather than the entire website. The Madras High Court order had also made it mandatory for the complainants to provide exact URLs where they find illegal content, such that ISPs could block only that content and not the entire site. MSM did not adhere to this and I have serious doubts if the defendants brought the distinguishing Madras High Court judgment to the attention of the bench. The entire situation is akin to MarkScan scamming MSM by providing their clients a dodgy list, and MSM scamming the court and the public at large.

3. Lack of Transparency – Different blocking messages on different ISPs

The message displayed uniformly on blocked websites was:

"This website/URL has been blocked until further notice either pursuant to court orders or on the directions issued by the Department of Telecommunications."

I observed that a few websites showed the message “Error 404 – File or Directory not found” without the blocking message (above) on the network provider Reliance, and same Error 404 with the blocking message on the network provider Airtel highlighting the non-transparent manner of adherence to the order. Further, both the messages do not indicate the end period of the block.

Legality of John Doe orders in Website Blocking

It is pertinent to reiterate the ‘misuse’ of John Doe orders to block websites in India. The judiciary has erred in applying the John Doe order to protect copyrightable content on the internet. While the R K Productions v BSNL case appears reasonable in terms of permitting blocking of only URL specific content, the application of John Doe order to block websites remains unfounded in law. Ananth Padmanabhan in a three part study (Part I, II and III) had earlier analysed the improper use of John Doe injunctions to block websites in India. The John Doe order was conceived by US courts to pre-emptively remedy the irreparable damages suffered by copyright holders on account of unidentified/unnamed infringers. The interim injunction allowed collection of evidence from infringers, who were identified later as certain defendants and the final relief was accordingly granted. The courts routinely advocated judicious use of the order, and ensured that the identified defendants were provided and informed of their right to apply to the court within twenty four hours for a review of the order and a right to claim damages in an appropriate case. Therefore, the John Doe order applied against primary infringers per se.

On the other hand, whilst extending this remedy in India the courts have unfortunately placed onus on the conduit i.e. the ISP to block websites. This is tantamount to providing final relief at the interim stage, since all content definitely gets blocked; however, this hardly helps in identifying the actual infringer on the internet. The court is prematurely doling out blocking remedies to the complaining party, which, legally speaking should be meted out only during the final disposition of the case after careful examination of the evidence available. Thus, the intent of a John Doe order is miserably lost in such an application. Moreover, this lends an arbitrary amount of power in the hands of intermediaries since ISPs may or may not choose to approach the court for directions to specifically block URLs which provide access to infringing content only.

For more details visit http://editors.cis-india.org/internet-governance/blog/delhi-high-court-orders-blocking-of-websites-after-sony-complains-infringement-of-2014-fifa-world-cup-telecast-rights

Breakdown of the list in the July 23rd Order

sinha — 2014-07-08T05:35:42Z

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Data

sinha — 2017-12-13T10:25:12Z

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Data2

sinha — 2017-12-13T10:27:18Z

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Data2

sinha — 2017-12-13T10:25:47Z

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Breakdown of the list in the July 23rd Order

sinha — 2014-07-08T05:31:47Z

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WIPO SCCR 41: Statement by CIS on the Protection of Broadcasting Organisations Agenda Item

sinha — 2021-06-29T13:19:47Z

Anubha Sinha delivered a statement on behalf of CIS, on day 1 of the 41st WIPO SCCR session on the Protection of Broadcasting Organisations Agenda Item.

Thank you, Mr. Chair.

I'm speaking on behalf of the Centre for Internet and Society, India.

In the Asia-Pacific region, where there exists a deep digital divide in many countries, radio and TV broadcasting was instrumental in meeting quality education requirements during the pandemic. It would be invaluable and forward-looking for an international broadcasting treaty to have adequate limitations and exceptions for another emergency scenario such as COVID019. I urge the Committee to deliberate more deeply on this aspect.

Thank you.

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