With IP infringers shifting pirated content to mirror websites following takedown orders, Delhi High Court has started allowing dynamic injunctions to block new means of broadcasting the material. Rebecca Abraham reports
Delhi High Court has long played a key role in defining the contours of India’s intellectual property (IP) rights regime. This is in no small measure on account of the wide variety of IP disputes that land on the court’s dockets.
In 1991, Delhi High Court gave its backing to IP rights derived from transborder reputation, which was then a somewhat novel idea. Later, while most often ruling for the IP rights holder, the court at times also saw fit to rule against them. In a 2016 case that pitted international publishers such as Oxford University Press and Cambridge University Press against a photocopying shop in Delhi University, the court ruled against the copyright holders, stating: “Copyright law is intended to increase, and not impede, knowledge.”
A new focus
While not causing as much controversy, Delhi High Court is once again at the forefront of expanding IP jurisprudence by allowing dynamic injunctions against so-called rogue websites in an attempt to rein in online infringement. Injunctions against online infringement have until recently been most often against specific web addresses or uniform resource locators (URLs), and blocking entire websites, some have argued, is overkill.
“The court was conscious of the risks of over-blocking,” says Hemant Singh, the New Delhi-based managing partner of IP firm Inttl Advocare. “It thus enjoined a standard of evidence to be given by a plaintiff, as well as further orders to be granted by a judicial authority. Thus, if properly applied and granted, the remedy of dynamic injunctions contains inherent safeguards against over-blocking.” Singh was amicus curiae (friend of the court) to Delhi High Court when it first granted a dynamic injunction in April 2019.
Such an injunction was granted on 23 September, to media company Star India, against 38 websites that were found to be infringing the worldwide and exclusive rights it currently owns for telecasting, broadcasting and re-broadcasting the Indian Premier League’s cricket matches.
While ordering internet service providers to block the rogue websites, Delhi High Court ruled that the website blocking order in Star India Pvt Ltd & Anr v Jackstreams.com & Ors can be extended to any other websites Star India comes across that similarly infringe its rights. To do so, Star India was required to file an affidavit before the court, and once that is done the directions issued in the 23 September ruling would apply to newly found rogue websites.
IP rights holders would have been re-assured, as the dynamic injunction obtained by Star India was the third handed down by Delhi High Court since July.
Infringements on the rise
Since the onset of the pandemic, while overall online activity has risen considerably, observers say IP infringement has similarly increased.
According to Shwetasree Majumder, the founding partner of IP firm Fidus Law Chambers in Noida and a veteran of several IP rights infringement battles, this is inevitable as “people have nothing to do in the offline space”.
On 20 July, in what was a first for trademark infringement, Majumder successfully obtained an injunction from Delhi High Court for Snapdeal against 50 rogue websites that were found to be infringing the e-commerce company’s registered trademark.
Snapdeal had alleged that the websites were “degrading its goodwill and infringing its registered trademark” by offering fraudulent prize schemes, lotteries and lucky draws in a manner that tended to portray that they either emanated from the e-commerce company or were connected with it.
Innovation at work
The ruling in Snapdeal Private Limited v Snapdeallucky-Draws.org.in & Ors, while injuncting rogue websites and ordering internet service providers to block them, can also crucially be extended to other websites.
As such, the ruling allows Snapdeal to “approach this court to array other rogue websites who carry on similar activities, albeit illegally, as and when the same comes to its notice”, and the company has been quick to do just that.
On 4 August, the court extended the injunction and blocking order to a further 40 rogue websites that were also added as defendants to the ongoing suit. Majumder says the plan is to extend the order to more such websites each month.
Accordingly, on 7 October, the court allowed the 20 July injunction to be extended to a further 125 websites that were also added to the ongoing suit. “I think the idea of these blocking orders is a good one for the simple reason that, realistically speaking, it’s not possible to keep going after every individual,” she says.
An imported remedy?
Dynamic injunctions as a breed are relatively new to India. One was first granted in an April 2019 ruling of Delhi High Court in UTV Software Communications and Ors v 1337X.TO and Ors – a prominent case where companies creating, producing and distributing films filed eight copyright infringement cases against 30 websites that allowed streaming and downloading of copyright content, and others including internet service providers.
The 99-page ruling in the case, which includes a detailed note on the law relating to website blocking in other jurisdictions, considers key issues such as what constitutes a rogue website, and whether seeking the blocking of a website dedicated to piracy makes one an opponent of a free and open internet.
In addition, the ruling considered the phenomenon of hydra-headed websites, which when blocked resurface as alphanumeric or mirror websites. Seeking a remedy for this problem the court turned to a 2018 ruling of the High Court of Singapore that had granted dynamic injunctions, which “blocks new means of accessing the same infringing websites, rather than blocking new infringing websites that have not been included in the main injunction”.
Crucially this ruling also provides a procedure for implementing a dynamic injunction in order to prevent its misuse. The court held that it is “desirable that [it be] freed from constantly monitoring and adjudicating the issue of mirror/redirect/alphanumeric websites, and also that the plaintiffs are not burdened with filing fresh suits”. It ruled that the rights holder file an affidavit with sufficient supporting evidence confirming that a website is an alphanumeric or mirror website, and the court’s joint registrar would then direct internet service providers to disable access in India to the website.
As the court in the UTV Software Communications case noted, while Indian law did not provide for such a remedy, it was granted “in order to meet the ends of justice and to address the menace of piracy”.
Saikrishna Rajagopal, managing partner of Saikrishna & Associates, represented UTV Software Communications and other copyright holders in the case, and was instrumental in persuading the court to go down this route.
Critics have argued that this kind of injunction against entire websites, as opposed to specific URLs, can result in legitimate content hosted on a website being taken offline.
As Prasanth Sugathan, the legal director at India’s New Delhi-based Software Freedom Law Centre, points out, there have been instances where websites such as video host Vimeo and digital library Internet Archive have been blocked as a result of interim injunctions allowed by courts following suits filed by film producers.
As such, Sugathan says: “It is necessary to ensure that dynamic orders do not result in legal content getting blocked.”
In addition, some have criticized the court allowing the extension of an injunction with only an affidavit being filed by the rights holder, as it runs the risk of situations where a rights holder becomes the complainant and the adjudicator in its own case.
Be that as it may, Singh, at Inttl Advocare, says the intent of the judgment was “to provide a remedy that protects right holders against those entities that have no regard for the law”.
Rajagopal and his team at Saikrishna & Associates also represented Disney Enterprises when, on 27 July, Delhi High Court granted the entertainment giant interim injunctions against 37 websites that Disney said were illegally enabling the streaming of its films and other programmes over which it held the copyright. As the matter is sub-judice lawyers at Saikrishna & Associates have as yet declined to comment on the case.
But the ruling in Disney Enterprises, Inc & Ors v Kimcartoon.to & Ors categorically states that it would also include any “mirror/redirect/alphanumeric websites” that are put in play by the defendants.
In addition, the court gave Disney the liberty to take action in future against other rogue websites, so as to enable the court to dynamically monitor such online copyright infringements.
Absent from the court were the owners of the 37 websites that were being restrained through the injunction, the nine internet service providers that were ordered to block access to the websites, and the Department of Telecommunications and Ministry of Electronics and Information Technology, which were both asked to direct internet service providers in general to block access to the websites.
A better solution?
The rulings in both Snapdeal and Disney followed court hearings that were held through video-conferencing on account of covid-19.
While the court, in the Star India and UTV Software cases, allowed an injunction to be extended on the basis of an affidavit submitted to the court, in Snapdeal and Disney it appears that the interim order is to be extended with judicial oversight.
While Delhi High Court has employed an innovative remedy to deal with online infringements, the situation is far from ideal as long as IP rights holders have to involve the courts in protecting their rights.
Delhi High Court, in the UTV Software Solutions case, had suggested the Ministry of Electronics and Information Technology and the Department of Telecommunications explore the possibility of framing a policy under which a warning is issued to viewers when infringing content is viewed or downloaded.
IP rights holders may prefer a more concrete solution. “We need to move towards the direction where, at the domain registrar level itself, we should be able to take an infringing website down,” says Majumder at Fidus Law Chambers.
Legal advisers in the cases
- For Star India: Saikrishna Rajagopal, managing partner of Saikrishna & Associates, with partner Sidharth Chopra, senior associate Yatinder Garg and associate Vivek Ayyagari.
- For Disney Enterprises: Rajagopal of Saikrishna & Associates, with partners Chopra and Sneha Jain, and associates Disha Sharma, Snehima Jauhari and Surabhi Pande.
- For Snapdeal: Swetashree Majumder, founding partner of Fidus Law Chambers, with partner Tanya Varma and senior associate Vasundhara Majithia.
- For UTV Software Communications: Rajagopal of Saikrishna & Associates, with Suhasini Raina, a former senior associate at the firm, and associates Gitanjali Mathew and Sharma.
- Amicus curiae to the court in UTV Software Communications: Hemant Singh, managing partner of Inttl Advocare, with partner Mamta Jha.