Call for Papers: Indian Journal of International Economic Law [Deadline: 10th Feb, 2017]

The Board of Editors of the Indian Journal of International Economic Law (IJIEL) is pleased to invite original and unpublished manuscripts for publication in Volume 9.

About the Journal

The IJIEL is a student-edited and peer-reviewed law journal published annually by National Law School of India University, Bangalore (NLSIU). The previous volume of the journal featured contributions by Prof. Raj Bhala (Rice Distinguished Professor, Associate Dean for International and Comparative Law, Kansas School of Law) and Rodrigo Polanco (Researcher, Lecturer and SNIS/SECO Project Coordinator at World Trade Institute) among several others. We have also published articles by luminaries in the field such as Faizel Ismail, Enrico Baffi, Lotta Viikari, Rafiqul Islam, G.R. Bhatia, Michelle Sanson, Jason R. Bonin Dr. Rafael Arcas & Colin Picker; and forewords by Prof. Jagdish Bhagwati and Prof. Stephen Hobe in the past. Further information may be obtained here.

Mandate

The Journal is an endeavour to encourage scholarship in the field of international economic law. This includes (but is not necessarily limited to) research concerning the WTO, financial institutions, regulatory subjects such as taxation and competition policy, services sectors such as banking and brokerage and international commercial arbitration. Further, the Journal is oriented towards publishing academic work that considers the aforementioned issues from a comparative perspective and/or the perspective of the developing world.

Submission Categories

  1. Articles (5000 to 10000 words, exclusive of footnotes)- Papers that comprehensively analyse  a theme and engage with all the existing literature on it.
  2. Essays (3000 to 5000 words, exclusive of footnotes)- Papers that concisely analyse specific contemporary issues in international economic law.
  3. Case notes and/or Legislative Commentaries (2000 to 7000 words, exclusive of footnotes).

Guidelines for Submissions

  1. The Journal reviews submissions on a rolling basis. The deadline for sending submissions for the forthcoming volume is February 10, 2017.
  2. Submissions must be made in electronic form to ijiel.nls@gmail.com under the subject heading ‘IJIEL Vol. 9 Submission: .
  3. All submissions must be in MS Word format (.doc) or (.docx), with Times New Roman font (Main text: 12, footnotes: 10) and double-spaced.
  4. All manuscripts must be accompanied by:

(a) A covering letter with the name(s) of the author(s), institution/affiliation, the title of the manuscript and contact information should be provided.

(b) An abstract of not more than 200 words should be provided.

  1. Co-authorship (upto 3 authors) is permitted.
  2. No biographical information or references, including the name(s) of the author (s), affiliation(s) and acknowledgements should be included in the text of the manuscript, file name or document properties. All such information may be incorporated in the covering letter accompanying the manuscripts.
  3. The IJIEL uses only footnotes (and not end-notes) as a method of citation. Submissions must conform to the Bluebook.

For any clarifications, please contact us at ijiel@nls.ac.in.

Source: http://indiacorplaw.blogspot.in/2016/08/call-for-papers-indian-journal-of.html

To know more about the journal, visit this link.

Arbitrability Of IP Disputes: 50 Shades Of Grey?

Recently, Justice Gautam Patel of the Bombay High Court ruled on the issue of arbitrability of intellectual property disputes in Eros International Media Limited v. Telemax Links India Pvt. Ltd. (Suit No. 331 of 2013). The matter was filed under section 8 of the Arbitration & Conciliation Act, 1996 (section 8 refers to the Court’s power to refer parties to arbitration where a valid arbitration agreement exists between the parties). The Bombay HC in deciding the case made a distinction between actions in rem and actions in personam, holding that IP claims insofar as they are actions in personam are arbitrable.

In Eros International, Justice Patel affirmed the Indian Supreme Court decision in Booz Allen & Hamilton Inc. v. SBI Home Finance Limited wherein it was held that actions in rem are non-arbitrable and include “disputes relating to rights and liabilities that give rise to or arise from criminal offences; matrimonial disputes relating to divorce, judicial separation, restitution of conjugal rights; guardianship matters; insolvency and winding up matters; testamentary matters such as those for grant of probate, Letters of Administration and Succession Certificates; and eviction or tenancy matters governed by special statutes where jurisdiction is specifically conferred on designated Courts”.

Justice Patel further advised against the wisdom of ousting the arbitrability of all IP disputes as suggested by Eros’ counsel, I believe an acceptance of Mr. Dhond’s view must result in widespread confusion and mayhem in commercial transactions. We often have complex commercial documents and transactions that routinely deal with intellectual property rights of various descriptions as part of the overall transaction. This can be said of mergers, acquisitions, joint ventures, the setting up of special purpose vehicles, technology transfer and sharing agreements, technical tie-ups, licensing and so on. The range of fields of human activity that could possibly be covered by any one or more of these is limited by nothing but our own imagination: steel manufacturing, setting up of power plants, software, motor car manufacture, computer hardware, music, films, books and literature, performances and even services. If Mr. Dhond is correct, then in any of these cases, where intellectual property rights are transferred or, for that matter, in any way dealt with, no dispute arising from any such agreement or transactional document could ever be referred to arbitration, and every single arbitration clause in any such document would actually, in his formulation of it, be void and non-est ab initio…I do not think the world of domestic and international commerce is prepared for the apocalyptic legal thermonuclear devastation that will follow an acceptance of Mr. Dhond’s submission” (para 22).

The conclusion reached by the Bombay HC seems fairly straightforward given the commonly understood principle in arbitration that actions in rem are non-arbitrable, whereas, actions in personam can be arbitrated.  If an arbitral tribunal were to rule on a right in rem, it can never be enforced against the world at large because only parties to an arbitration agreement submit to the jurisdiction of the tribunal. However, the practice of bifurcating IP disputes into actions in personam and in rem is not harmonized worldwide, with certain countries like South Africa disallowing arbitrability of all IP disputes. Under the US law, any IP dispute can be arbitrated and the award is enforceable against the world at large. This can be contrasted with UK which like the US allows any IP dispute to be arbitrated but the award binds only the parties to the arbitration. Further, there are countries which bar arbitrability of certain kinds of IP disputes such as patent validity, while allowing patent infringement issues to be arbitrated. While India has not yet seen a patent infringement dispute go to arbitration, under Eros International, it seems that India falls in this last category.The 1996 Act as well as the various IP legislations in India are silent on the issue of arbitrability of IP disputes. Enforcement of domestic and foreign awards can be refused in India on the grounds of non-arbitrable subject-matter and public policy. An interesting issue that came up before the Court was whether the Copyright Act 1957 ousts the jurisdiction of arbitration tribunals. Section 62 of the Copyright Act confers jurisdiction on District Courts for cause of action arising under the Act. It was Eros’ argument that section 62 ousts the jurisdiction of arbitral tribunals. Justice Patel rejected this argument and ruled, “All that they mean is that such actions are not to be brought before the registrar or the board, viz., an authority set up by either of those statutes.”

Section 104 of the Indian Patents Act similarly confers jurisdiction on a District Court for patent infringement suits. Section 104 of the Indian Patents Act reads:

No suit for a declaration under section 105 or for any relief under section 106 or for infringement of a patent shall be instituted in any court inferior to a district court having jurisdiction to try the suit.

This can be contrasted with the language in section 18(1) of the Patents Act in South Africa:

[…] no tribunal other than the commissioner shall have jurisdiction in the first instance to hear and decide any proceedings…relating to any matter under this Act. [Emphasis supplied]

While South Africa explicitly excludes the jurisdiction of all tribunals (including an arbitral tribunal) from hearing patent suits, the Indian legislation contains no such exclusion. In fact, Justice Patel observes, “Unless specifically barred, what a Civil Court can do, an arbitrator can do… The relief that the Plaintiff seeks today, a decree in damages and injunction, are both reliefs that an arbitrator can well grant.”

Arbitration is routinely being preferred as a dispute resolution method in IP licensing contracts worldwide. Arbitration offers the distinct advantage that patent infringement claims can be decided by arbitrators who have domain expertise. Arbitration can also resolve cross-border claims since IP rights are territorial and therefore, multiple litigations need to be commenced simultaneously in different jurisdictions by a party enforcing a patent infringement claim through courts. Arbitration would also preclude the danger of contradictory rulings because of different approaches taken by courts in various jurisdictions.

Given the protracted nature of litigation in India, it is desirable that parties be allowed to arbitrate IP disputes. The 2015 amendments to the Arbitration Act inserted section 29A which provides that an arbitral award should be made within one and a half years. By allowing IP disputes to be arbitrated, there is hope yet for parties for swift resolution of their disputes in India.

Non-Arbitrability of IP disputes~ An Apocalypse in International Commerce

This is the conclusion which Justice Gautam Patel of the Bombay High Court recently drew in the case of Eros International Media Limited v. Telemax Links India Pvt. Ltd. (Suit No. 331 of 2013).

Eros, the plaintiff, owned copyright in several feature films and was engaged in the production and distribution of its content through various media. Telemax (the first defendant in the instant case) approached Eros for a licence for the distribution rights to Eros’ content. Accordingly, a Term Sheet was executed between Telemax and Eros.

The Term Sheet contemplated an exclusive licensing contract for various audio-visual materials and the execution of a ‘Long Form Agreement’ within ten days of execution of the Term Sheet which would supersede and override the terms of the Term Sheet. The Term Sheet also contained an arbitration clause to arbitrate the disputes “arising out of or in connection with the Term Sheet”.

Due to certain disagreements between Telemax and Eros, Eros filed a suit for copyright infringement against Telemax and Defendants no. 2 to 8 for injunction and damages.  Defendants no. 2 to 8 named in the suit claimed to use the copyrighted material in question under a sub-licence from Telemax.

Subsequently, Telemax filed a ‘Notice of Motion’ (interim application) before the High Court to refer the parties to arbitration under section 8 of the Arbitration and Conciliation Act, 1996 (under section 8, where an action is brought in a matter which is the subject of an arbitration agreement, the Court shall refer the parties to arbitration). Defendants no. 2 to 8 also submitted affidavits before the HC agreeing to have their disputes submitted to arbitration.

Eros argued that the present suit is a composite suit because Defendant no. 1 (Telemax) had created rights in favour of other parties (Defendants no. 2 to 8) through a sub-licence. Since the other parties are not parties to the Arbitration Agreement, the dispute cannot be referred to arbitration. Telemax counter-argued that by virtue of the 2015 amendments to the 1996 Act, the Court can exercise its power under section 8 on the action brought by a party to an arbitration agreement or person claiming through or under him and that Defendants no. 2-8 were parties claiming through Telemax.

Eros argued that all disputes in copyright and trademark infringement are inherently non-arbitrable and that the only remedy for parties is to approach the Court, notwithstanding a valid arbitration agreement. Eros submitted that the present dispute was not purely contractual because in deciding Eros’ claim for damages, the adjudicating authority must decide whether Telemax infringed Eros’ copyright. Since remedy for copyright infringement is a statutory remedy, the finding of copyright infringement can only be given by a Court and not an arbitrator.

Telemax argued that the action sought by Eros is not in rem but in personam between Eros and Telemax (and those claiming under Telemax). Telemax argued that Eros’ claim arose out of the Term Agreement and was not a case of ‘copyright infringement’ simpliciter. Telemax argued that all civil disputes are arbitrable unless specifically excluded. Telemax cited SC’s decision in Booz Allen & Hamilton Inc. v. SBI Home Finance Limited wherein it was held that non-arbitrable disputes include disputes relating to rights and liabilities that give rise to or arise from criminal offences; matrimonial disputes relating to divorce, judicial separation, restitution of conjugal rights; guardianship matters; insolvency and winding up matters; testamentary matters such as those for grant of probate, Letters of Administration and Succession Certificates; and eviction or tenancy matters governed by special statutes where jurisdiction is specifically conferred on designated Courts.

Rejecting Eros’ submission that a copyright infringement claim cannot be arbitrated, the Bombay HC reasoned that the statutory remedy against copyright infringement is not taken away by arbitration. In an arbitration agreement, the parties do not exclude the statutory remedy itself; the parties merely choose a particular forum (the arbitral tribunal) to seek that remedy. Further, the Court held that the present dispute arose out of a contract i.e. the Term Sheet and was a contractual dispute.

Rejecting Eros’ submission that IP laws provide for statutory remedies and therefore can only be brought before a Court, the Court held that the IP statutes do not oust the jurisdiction of the arbitral tribunal, “All that they mean is that such actions are not to be brought before the registrar or the board, viz., an authority set up by either of those statutes.”

The Bombay HC recognised that actions in IP law can be either in rem (opposition to the registration of a trademark) or in personam (copyright infringement and passing off).

The Court observed, “Unless specifically barred, what a Civil Court can do, an arbitrator can do… The relief that the Plaintiff seeks today, a decree in damages and injunction, are both reliefs that an arbitrator can well grant.”

Further, “Where there are matters of commercial disputes and parties have consciously decided to refer these disputes arising from that contract to a private forum, no question arises of those disputes being non-arbitrable. Such actions are always actions in personam, one party seeking a specific particularized relief against a particular defined party, not against the world at large.”

The Bombay HC rightly observed that Eros’ submission that all IP disputes are non-arbitrable would lead to widespread chaos in commercial transactions involving intellectual property. This is because in an earlier SC decision (‘Sukanya Holdings’ case) it was held that the cause of action in a suit cannot be bifurcated; this means that if one were to accept that all IP disputes are non-arbitrable, no commercial transaction involving intellectual property (including mergers, acquisitions, joint ventures, the setting up of special purpose vehicles, technology transfer and sharing agreements, technical tie-ups etc.) could ever be subjected to arbitration.

Finally, the Court held that Defendants no. 2 to 8 were covered under section 8 of the 2015 Act and accordingly referred the matter to arbitration.