WhiteHatJr’s Magical Rabbit: A Perverse Application of Trademark Law

WhiteHatJr’s issues began when Pradeep Poonia began posting tweets and videos on his YouTube channel criticizing both the teaching methods as well as the advertising claims made by WhiteHatJr as being misleading. Aniruddha Malpani posted tweets on similar grounds.

Prior to the institution of the cases and the grant of the ad-interim injunctions, WhiteHatJr targeted Pradeep Poonia’s videos on YouTube under his three accounts: WhiteHatSr, Safed Topi Sr 2 and Pradeep Poonia 3.0. WhiteHat even went after 12-year-old Jihan Haria’s video on YouTube roasting their advertisement, but this copyright “strike” was eventually reversed. Pradeep Poonia’s first two accounts however received multiple strikes, and the third account hangs on its last strike open.

Coming to the crux of the matter, the Delhi High Court however, in both cases, seems to have taken an overall view of the content posted by the defendants, and has evaluated its orders on the basis of the defamatory nature of the content to pass the interim injunctions. Independent IPR enthusiasts and observers therefore have little to peruse and abstract from these decisions as of now, especially since these cases involve the internet’s primary tenet of free speech and fair criticism and the use of Intellectual Property to shut down criticism.

At this stage, it would be prudent to examine the established strongholds of fair comment that IP already provides for, and in this case, what copyright and trademark allow for. Copyright law is fairly certain in its defense of fair comment, for Section 52 (1)(a) of the Copyright Act, 1957 explicitly allows for the reproduction of a work for the purposes of criticism or review. The author therefore fails to see any ground for the copyright strikes against both Pradeep Poonia’s videos as well as Jihan Haria’s videos, and YouTube India would do well to update their copyright infringement systems to sidestep such infructuous claims.

Moving further to trademark law, this is a concept that is fairly new to trademark law in India, witnessed specifically by the lack of a provision speaking to the issue in the Trademark Act, 1999 as well as noticeably few judicial precedents. However, while trademark law does place boundaries on what is considered infringement (under Section 30), it can be argued that it protects fair comment by way of normative fair use under Section 30 (2)(d). Nominative fair use basically allows the use of another’s trademark to refer to the owner’s goods and services. Such use however must comply with three conditions:

  1. The product or service in question is not readily identifiable without the use of the mark
  2. Only so much of the mark is used as is reasonably necessary to identify the product or service
  3. Using the mark does not create an inference of sponsorship or endorsement[1]

Regarding nominative fair use, the Delhi High Court initially dealt with the matter in Hawkins Cookers Ltd. v. Murugan Enterprises. The Single Judge Bench had held that as long as the use was bona fide, was reasonably necessary to show that the goods were adaptable to the proprietor’s products, and did not deceive the public as to the origin of the goods, there was no infringement of the proprietor’s mark. The Division Bench overruled the decision of the Single Judge Bench on merits, holding that the defendant’s use of the plaintiff’s mark was above what was necessary, given the emphasis on the use of the mark “Hawkins” in a red colour font. However, the Court did note that the Single Judge’s appreciation of the law was correct.

The Madras High Court also had the opportunity to deliberate on nominative fair use, in Consim Info Pvt Ltd. v. Google India Pvt. Ltd., and reaffirmed the three factors for nominative fair use stated above. The Court however noted that the respondent’s AdWords policy was discriminative towards the trademarks of the appellant, and therefore as such a policy would cause confusion in the mind of the public as to the appellant’s mark, the Court held such use to be infringing.

The Delhi High Court again, in the case of Prius Auto Industries Ltd. v. Toyota Jidosha Kabushiki Kaisha, dealt with nominative fair use, and while the Single Judge Bench had set aside the injunction restraining the defendants from using the plaintiff’s marks, the Division Bench had, with the parties’ consent, restrained the defendant from using the plaintiff’s marks except for identifying their compatibility with the plaintiff’s cars, that the words “TOYOTA” and “INNOVA” were not written in the same font, and that the words ‘Genuine Accessories’ were used only in relation to the defendant’s name. On a final appeal to the Supreme Court, however, no mention of the nominative fair use doctrine was made, and the issue was determined solely on the basis that the plaintiff (Toyota) had not evidenced sufficient proof of the existence of goodwill over the use of the mark “Prius” in India, and hence, by the territoriality principle, the defendants were not liable for infringement. The decision of the Division Bench regarding the use of the marks “TOYOTA” however were upheld.

Another question that arises is with regards to the manner of infringement. Section 29 of the Trademark Act, 1999 primarily deals with the infringement of the mark by usage in the course of trade, and to determine such usage, circumstances are listed under sub-section (6). The peculiarity here is that none of the circumstances mentioned under (6) provide that the mark is used for criticism. It is therefore hard to see suitable grounds for WhiteHatJr to sustain an action of trademark infringement on the grounds of criticism. The issue of disparagement does not arise, on the basis that neither of the defendants are making such criticism while simultaneously engaging in comparative advertisement. Although Aniruddha may be an investor in other edtech start-ups, she is not criticizing WhiteHatJr while also promoting any of her investments.

In conclusion, there does not appear to be satisfactory grounds for WhiteHatJr to have instituted an action of trademark infringement and disparagement against Pradeep Poonia and Aniruddha Malpani. These actions, quite literally, appear to be a rabbit pulled out of WhiteHatJr’s magician’s hat. The worrisome quandary we now find ourselves in is the overextended use of YouTube’s copyright infringement ‘three strikes’ policy. As on yesterday, December 13, 2020, YouTuber Samuel Miller posted a video wherein he described an instance where he was contacted via Instagram by a person claiming (very unsuccessfully) to be the CEO of WhiteHatJr and threatened to file a copyright infringement claim against Samuel’s video criticizing WhiteHatJr if he failed to transmit 1 bitcoin to the assailant’s address. WhiteHat’s actions to stifle criticism seem to have spurred a new form of ‘copyright trolls’ (the author has very liberally adapted the term ‘patent troll’ to the present context) who threaten to take down videos and ransom the creator’s content to avoid their channel being permanently blocked by YouTube.

It remains to be seen what the courts will tend to make of such criticism in the future. A rather foreboding indicator of what we may see in the future was witnessed in the Pradeep Poonia case, where the Court, in its injunction, prohibited the defendant from using the term WhiteHatSr and WhiteHatPoonia, on the grounds that such names were infringing and would lead to confusion in the minds of the public. What one may hope would constitute fair parody in the means towards criticism has been severely hampered by this decision, and it would appear that a rather unfair boundary has been placed on free speech and fair comment.

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