By Sudarshan Shekhawat
In a judgement [see endnote. 1] delivered on April 10, the Delhi High Court has granted a ‘dynamic’ blocking injunction against certain websites publishing pirated films whereby the list of blocked websites can be updated as and when mirror websites are brought to the notice of the Court by the right holder. Conventionally, any new website which was not part of an existing order, would constitute a new act of infringement and calls for a new suit or at least a new judicial finding before it can be blocked. However, as per the scheme devised by the Court, considering the flagrant and rapid piracy on these websites which can create mirror servers overnight, the right holders would not need judicial order by the Judge but they can approach the Joint Registrar (who are not judges but are judicial officers discharging procedural functions on behalf of the judges such as case management, extensions etc.) of the High Court to extend the injunction against a mirror or indirect replica of the blocked website publishing the same infringing content.
The order pertains to multiple suits involving plaintiffs that include UTV Software Communications Ltd. who are into creation, production, and distribution of copyrighted films in India and abroad. The defendants in these suits are websites, unknown website operators impleaded as John Doe defendants, the Ministry of Electronics and Information Technology, the Department of Telecom and various Internet Service Providers (ISPs).
The right holders alleged that the websites published the copyrighted films by streaming and/or enabling download which amounted to infringement under the Copyright Act, 1957. The governments bodies and the ISPs appeared before the Court but no relief was sought against them as they primarily were impleaded to assist the Court in identification of the main websites and their operators. The main defendants i.e. the websites and their operators did not appear before the Court after summons. However, the Court deemed the issues involved in the case to be ‘of general public importance’ and appointed an amicus curiae (friend of the court) to assist the court with the legal issues.
Whether an infringer of copyright on the internet is to be treated differently from an infringer in the physical world?
The Court held that there is no difference between an infringer in the physical word and the one in the online world nor such a distinction has been made by the Copyright law. The modern piracy is a multi-billion-dollar business and only a fraction of these sites are genuinely supported by ideologies of social good in piracy.
Whether seeking blocking of a website dedicated to piracy makes one an opponent of a free and open internet?
The issue pertains to an apparent conflict between the need for orders blocking websites and free and fair internet. The Court observed that issue is not whether internet should be completely free from government control and censorship but whether a balance can be drawn between freedom and statutory rights. Court held that putting appropriate limits on accessing content is not opposed to freedom of internet. Clearly, the Court has felt that protection of copyright (and by that logic other intellectual property rights) is a reasonable restriction on freedom of internet. Needless to say, in these cases whether a website or the any of its content is infringing any copyright would be a matter of proof.
What is a ‘Rogue Website’ and whether the test for determining a ‘Rogue Website‘ is a qualitative or a quantitative one?
Referring to a Singapore Supreme Court’s decision, the term “Flagrantly Infringing Online Locations (FIOL)” was discussed. It was observed that there are websites which primarily or predominantly share infringing content. The Court also provided some factors based on which a website can be said to be ‘FIOL’ or rogue, such as primary purpose being targeted to piracy, flagrancy of infringement or facilitation thereto, details of website owner or operator being masked, silence on take down notices, restraining orders from other Courts/jurisdictions, volume of traffic towards the website, how it presents its infringing content say, indexing, listing etc.
For determining whether a website is ‘rogue’, the Court considered the ‘quantitative’ approach for blocking injunctions while referring to the decision in Eros v. BSNL by the Bombay High Court (Single Bench) and the qualitative approach in the DEITY v. Star India case of the Delhi High Court (Division Bench). In the quantitative approach, John Doe blocking injunctions were not granted by Bombay High Court against entire websites because Court held that specific instances of infringement are to be proved because the website may have non-infringing content also.
This decision follows the ‘qualitative’ approach which favours blocking injunctions where the ‘rogue websites’ are ‘overwhelmingly infringing’. The Court held that these websites can change their URLs within seconds and considering they have large number of films uploaded, it would be too cumbersome and onerous for the rights holder to expect to provide URLs for all titles. Further, not all titles available on a website would belong to one right holder but other production houses. One cannot expect the plaintiff to seek declaration on infringement from owners of other content uploaded on the website before granting a blocking injunction. It would be an onerous task and the purpose of injunction would not be served as the rogue website would easily switch, mask, multiply and mirror its URLs while the plaintiff gets declaration from other owners. Court said that it cannot hold that a ‘rogue website’ is only that which entirely contains infringing content because this would prompt these websites to upload a small portion of legitimate content and escae injunction while predominantly containing pirated content.
Whether the defendant-websites fall in the category of ‘Rogue Websites‘ and whether this Court would be justified to pass directions to block the ‘Rogue Websites’ in their entirety?
The Court found that all the websites in the suit were satisfying the test factors, including orders in foreign countries and held all of them as rogue websites.
The Court said in a website blocking injunction order, it would have to also be considered whether disabling access to the online location is in the public interest and a proportionate response in the circumstances and the impact on any person or class of persons likely to be affected by the grant of injunction. The Court also said that the injunction must not create barriers to legitimate trade. The measures must also be fair and not excessively costly. However, noting the need for urgency and enormous difficulty in curbing piracy of foreign websites, the pace at which the single URLs for infringing titles can be changed and actions taken by various foreign countries, Court was of the view that in this case the balance tilts in favour of granting blocking injunction to entire website. Court also took note of the difficulty of right holders to repeatedly coming to Court in separate actions if the entire website is not blocked because a rogue website could easily wriggle out of a mere URL injunction by changing the same and continue its illegal business on the website.
How should the Court deal with the hydra headed ‘Rogue Websites‘ who on being blocked, actually multiply and resurface as redirect or mirror or alphanumeric websites?
While the discussion till the last issue was on blocking “URL” versus “entire website”, the Court also ventured into a significant area whereby even after a comprehensive ban on a website, while it cannot escape injunction by mere change of URL within the same website, the operators create ‘mirror websites’ or ‘alphanumeric variants of the same websites’ but publishing the same infringing content. In such a case, technically, the website is not the same. For such cases, the Court referred to the Singapore High Court’s decision in Disney v. M1, where the Court passed a blocking order which was a ‘dynamic injunction’. In this case, a plaintiff could, instead of filing a new case or motion, simply file an additional affidavit before the Court giving reasons for a new website falling within the purview of existing blocking order and the same can be sent to an ISP which was free to dispute the reasons for the blocking order. Court observed that this dynamic injunction originated from a specific provision but held that such powers are available under the Indian Code of Civil Procedure, 1908 under Section 151 which provides inherent powers to the Court to craft a similar relief. The Court held that in such cases, plaintiff could seek injunction by impleading additional websites under Order 1 Rule 10 of the CPC.
Interestingly, considering the rapidity with which rogue websites operate and large number of mirror/indirect rogue websites, the Court held that the Judges should not have to constantly monitor such affidavits and additional rogue websites. Therefore, the Court delegated the power to decide the issue of adding mirror/indirect websites to an existing blocking order to the Joint Registrar of the Delhi High Court. Joint Registrars are officers of the Court who largely decide procedural issues like case management hearings, extensions of time etc. In the present case, the Court delegated the power under Section 7 of the Delhi High Court Act, 1966 read with Chapter II, Rule 3(61) read with Rule 6 of the Delhi High Court (Original Side) Rules 2018. Any finding of a joint registrar under this provision whereby he/she decides addition of websites to an existing blocking order, is appealable.
The Court also gave directions to the government ministry and department, impleaded as defendants in this case, to consider the Court’s suggestion to come up with a policy for a graduated response scheme. The Court suggested that in this scheme individuals who access ‘pirated content’ can be warned by ISPs and if they do not cease from accessing pirated content, appropriate actions including fines can be considered.
This decision is important in at least three respects. Firstly, while blocking orders over entire website is not unknown, the fact that Court has allowed the plaintiffs to ‘update’ the list of blocked websites as and when a blocked website creates its illegal twin/mirror image, is novel. Secondly, delegating the power to Joint Registrar to effectively ‘update’ an existing injunction order is also not common because that is effectively a new website blocked and amounts to a judicial order. Thirdly, the Court’s sensitivity to rights holders is apparent when they consciously urge the government body to consider cautioning even individual users to refrain from using pirated content. It is clear that the Court has consciously pursued a pro-active approach to balance interests of rights holders against “free internet”. This is apparent because Court has discussed the large scale negative impact of piracy to not only the industry but also to economies. In India alone, it has been noted, that the film industry earns less in theatres, TV rights and home videos compared to the earnings of the piracy industry of the same movies. This order may raise lot of questions on either side of the spectrum and people may argue that this is excessive enforcement as the dynamic scheme may be subject to abuse. Nevertheless, it is surely a starting point for paving the way towards curbing piracy in a systematic way.
[The author is a Joint Partner in IPR Practice, Lakshmikumaran & Sridharan, New Delhi]
1. UTV Software Communication Ltd. v. 1337x.to – Judgement dated 10-4-2019 in CS(COMM) 724/2017 and Ors., Delhi High Court.