Remedy Against Online Piracy To Protect The Interest Of Copyright Owners – A Newer Approach By Way Of ‘Dynamic Injunction’

With the digital economy in play, online piracy has always been an incumbent issue amongst the copyright owners and the rights of the owners were often affected either due to the lack of sufficient remedy or sufficient guidelines. However, the Hon’ble Delhi High Court in its recent judgement dated 10th April, 2019 in UTV Software Communication Ltd. &Ors. vs. 1337X.TO &Ors., [1] has provided for a sufficient remedy to tackle the same with the concept of “Dynamic Injunction”.

UTV Software Communication Ltd. &Ors. vs. 1337X.TO &Ors.

Parties:

The Plaintiffs were companies who are engaged in the business of creating content, producing and distributing cinematographic films around the world including in India.

Four classes of defendants (who were proceeded ex-parte) were impleaded in the present case, namely:

(i) Certain identifiable websites that are unauthorizedly publishing and communicating the Plaintiffs’ copyrighted works.

(ii) John Doe Defendants who are hitherto unknown parties engaged in the unauthorized communication of the plaintiffs’ copyrighted works and include the registrants of the defendant-websites, uploaders, creators of the redirect / mirror / alphanumeric websites etc.

(iii) ISPs that provide internet access, enabling users to visit any website online, including the defendant websites

(iv) Government Department/Agency, namely Department of Telecommunication and Ministry of Electronics & Information Technology who have been impleaded to assist in notifying ISPs to disable access to defendant websites within India and implementing the orders passed by the Court.

Brief Facts:

Eight Suits had been filed by the plaintiffs primarily seeking injunction restraining infringement of copyright on account of defendants communicating to the public the plaintiff’s original content/cinematographic works without authorization.

Issues:

(A) Whether an infringer of copyright on the internet is to be treateddifferently from an infringer in the physical world?

(B) Whether seeking blocking of a website dedicated to piracy makesone an opponent of a free and open internet?

(C) What is a ‘Rogue Website’?

(D) Whether the test for determining a ‘Rogue Website’ is a qualitative ora quantitative one?

(E) Whether the defendant-websites fall in the category of ‘RogueWebsites’?

(F) Whether this Court would be justified to pass directions to block the ‘Rogue Websites’ in their entirety?

(G) How should the Court deal with the ‘hydra headed’‘RogueWebsites’ who on being blocked, actually multiply and resurface asredirect or mirror or alphanumeric websites?

Applicable rules:

The Indian Copyright Act, 1957

The Information Technology Act, 2000

The Civil Procedure Code, 1908

Arguments

Arguments by the Ld. Counsel for the Plaintiffs:The learned counsel for the plaintiffs contended that the substantial purpose of the defendant-websites is to infringe or facilitate the infringement of copyright of the plaintiffs.

The plaintiffs had engaged the services of an investigator and the investigator in his affidavit had stated that the defendant-websites acted in the following manner-

  • Allow direct download of the plaintiffs’ copyrighted content and they provide searchable indexes along with curated lists of top movies, television shows etc
  • The plaintiffs’ copyrighted content was available on the websites.
  • The dates of upload of the content were unknown.
  • Identities of the said websites were masked under the garb of privacy.
  • Indexes of hyperlinks redirect the end-user to the host site in order to facilitate streaming or downloading of copyrighted content of the plaintiffs

It was also contended that if one impugned website is blocked, several other mirror websites are created which contain the infringing content. The details of operators of these websites are unknown and were arrayed as ‘John Doe’ defendants.

The Counsel for the Plaintiffs further referred to the law relating to website blocking prevalent in foreign jurisdictions such as France, Germany, UK, Singapore, Australia and further referred to other countries that have adopted site blocking.

Most importantly, the Plaintiffs’ counsel extensively referred to an Article written “How Website Blocking is Curbing Digital Piracy Without “Breaking the Internet” published in Information Technology & Innovation Foundation (ITIF) in August, 2016 by Mr. Nigel Cory, Associate Director, Trade Policy, ITIF, [2].

Arguments by the Amicus Curiae: It was stated that the first and foremost issue before the court was to determine whether the websites complained of fell within the category of – Flagrantly Infringing Online Locations. It was contended that the Court should not pass any orders against a website containing legitimate content and thus, the onus was on the plaintiff who was seeking site-wide blocking injunction to produce such evidence before the Court, which confirmed that the website complained of was only operating for sharing / downloading infringing/ pirated content and was not limited to the plaintiffs’ contents but also third parties‘ content.

According to him, the FIOL would be only such website where there was no legitimate content and if the evidence produced before Court was not of such nature, then prayers of wide ramification,interfering with legitimate content should not be granted.

It was further stated that upon assessing the injuncted and blocked website www.bmovies.pro, he had been redirected to www4.fmovies.to, a mirror website, which showed that 29,485 movies/ TV series were arranged in an alphabetical manner and pointed out that there were at least 122 other movies of the plaintiffs on www4.fmovies.to. Learned Amicus Curiae stated that the plaintiffs had not fully checked their own movies on the said website, let alone third-party content. He contended that the least due diligence expected of the plaintiffs was to provide evidence of at least all of their own movies, if not of third parties (though expected) that were illegally available on the impugned websites.

Admitting that online piracy was a menace, he stated that the problem was compounded due to high end technology that was used by FIOL. He pointed out that certain FIOLs like Torrents do not have a centralized server whereupon files are stored. Instead, users download freely available specialized software, which once connected to the Internet, connects the user’s computer into a Peer to Peer (P2P) network of other computers using the same software. He stated that a torrent is a file that allows a user to download bits and pieces of the content from several sources at the same time, which is assembled into the final complete copy onto the user’s system. The content/data is stored on these systems (either completely or in bits or parts) and is made available for download through the specialized software. Given the scattered nature of the content as well as the inadvertent complicity of many persons, it becomes extremely difficult to pin-point the exact source of the content and for right-holders to take action.

The Ld. Amicus Curiae pointed out that the courts across the world have grappled with devising appropriate mechanisms such as DNS Name Blocking, IP Address Blocking, Deep Packet Inspection based Blocking, to prevent the menace of FIOL which largely included blocking of the specific URLs or the website in general.

It was further contended that if the obligation of an ISP is limited to particular domain names, it would make the whole issue of granting blocking injunctions pointless, since there exists high likelihood of the infringers operating under a different domain name as soon as or even during the time the injunction is granted. Further, reference to dynamic injunction was made by the Ld. Amicus Curiae.

Decision:

The Hon’ble Court answered the issues in the following manner-

(i) Whether an Infringer of Copyright on the Internet is to be treated differently from an infringer in the physical world?

The Hon’ble Court observed that the modern digital piracy is a multibillion-dollar international business and although the business models differ, but the majority of piracy sites make money via advertising, or to a lesser degree, through subscriptions that provide premium access to content without advertising.

The piracy sites take advantage e of the fact that the online economy has become more complex and easier to exploit. There are many intermediaries that aggregate ad space—known as an ad exchange—from a range of websites (both legitimate and illegitimate) for advertisers to use. This makes it easy for websites hosting illegal content to gain advertising revenue, including from legitimate brands and businesses, which may be several steps and organizations removed from the host site.

Answering the issue raised in negative, the Hon’ble Court observed that there is no logical reason why a crime in the physical world is not a crime in the digital world especially when the Copyright Act does not make any such distinction.

(ii) Whether seeking blocking of a website dedicated to piracy makes one an opponent of a free and open internet?

Answering the issue in negative, the Hon’ble Court observed that thekey issue about Internet freedom, therefore, is not whether the Internet is and should be completely free or whether Governments should have unlimited censorship authority, but rather where the appropriate lines should be drawn, how they are drawn and how they are implemented.

(iii) What is a ‘Rogue Website’?

According to the Hon’ble Court, some of the factors to be considered for determining whether the website complained of is a FIOL/Rogue Website are:

  • Whether primary purpose of the website is to commit or facilitate copyright infringement;
  • the flagrancy of the infringement, or the flagrancy of the facilitation of the infringement;
  • Whether the detail of the registrant is masked and no personal or traceable detail is available either of the Registrant or of the user.
  • Whether there is silence or inaction by such website after receipt of take down notices pertaining to copyright infringement.
  • Whether the online location makes available or contains directories,indexes or categories of the means to infringe, or facilitate an infringement of, copyright;
  • Whether the owner or operator of the online location demonstrates a disregard for copyright generally;
  • Whether access to the online location has been disabled by orders from any court of another country or territory on the ground of or related to copyright infringement;
  • Whether the website contains guides or instructions to circumvent measures, or any order of any court, that disables access to the website on the ground of or related to copyright infringement; and
  • The volume of traffic at or frequency of access to the website;
  • Any other relevant matter.

The Hon’ble Court further clarified that the aforementioned factors are illustrative and not exhaustive and do not apply to intermediaries as they are governed by IT Act, having statutory immunity and function in a wholly different matter.

(iv) Whether the test for determining a ‘Rogue Website’ is a qualitative or a quantitative one?

The Hon’ble Court was of the opinion that if the test to declare a website as a rogue website is that it should contain only illicit or infringing material, then each and every rogue website would add a small percentage of legitimate content and pray that it be not declared an infringing website. And consequently, the real test for examining whether a website is a Rogue Website is a qualitative approach and not a quantitative one.

(v) Whether the defendant-websites fall in the category of ‘Rogue Websites’?

The court observed that there is sufficient evidence on record to show that the  main purpose of each of the websites is to commit or facilitate copyright infringement and the defendant’s websites provide access to a large library of films, including films of the plaintiffs without their authorisation.

It was further observed that the infringing nature of the defendant’s website was apparent from the fact that their WHOIS detail is masked and no personal or traceable detail is available either of the Registrant or of the user and that DMCA (Digital Millennium Copyright Act) declaration being an eyewash as despite receipt of legal notice from plaintiffs, infringing content was still being played and access to online location had been disabled by orders of another country on the ground of copyright infringement.

The present case passing the ‘qualitative test’ was held to be rogue websites.

(vi) Whether this Court would be justified to pass directions to block the ‘Rogue Websites’ in their entirety?

The Hon’ble Court observed that website blocking has emerged as one of the most successful, cost effective and proportionate means to address this issue. As pointed out by the learned Amicus Curiae, website blocking can be of various kinds namely, Internet Protocol (IP) Address Blocking, Domain Name System (DNS) Blocking and Uniform Resource Locator (URL) Blocking.

Further, it was observed thata Court should pass a website blocking order only if it is satisfied that the same is ‘necessary’ and ‘proportionate’

‘Necessary’ means a particular measure is essential to achieve that aim, i.e. whether there are other less restrictive means capable of producing the same result; ‘proportionate’ means it must be established that the measures do not have an excessive effect on the defendant’s interest. The Hon’ble Court in Dr. Shashi Tharoor vs. Arnab Goswami &Anr., [3]held that in India, the courts have the power to pass the pre-publication or pre-broadcasting injunction, provided the two-pronged test of necessity and proportionality is satisfied.

The Court while referring to Loreal vs. Ebay,[4] further observed that while passing a website blocking injunction order, it would have to also consider whether disabling access to the online location is in public interest and a proportionate response in the circumstances and the impact on any person or class of persons is likely to be affected by the grant of injunction.

That in Cartier International AG vs. British Sky Broadcasting Limited[5],it has been held by the Hon’ble Mr Justice Arnold that alternate measures are not effective and not a complete answer to rampant piracy.

The Hon’ble High Court of Delhi observed that website blocking in the case of roque websites strikes a balance between preserving the benefits of free and open internet and efforts to stop crimes such as digital piracy.

(vii) 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?

According to Greek Mythology, Hydra is a nine-headed serpent like snake of which if you cut off one hydra head, two more would grow back.

Now, website blocking is an exercise in futility as website operators shift sites- the so called “whack-a-mole” effect. The Hon’ble Court observed the recent developments to deal with the aforesaid menace in the form of “Dynamic Injunction” though limited to mirror websites.

The High Court of Singapore in the case of Disney Enterprise vs. Ml Ltd. [6], had after discussing the cases of 20th Century Fox vs. British Telecommunication PLC [7], and Cartier International AG vs. British Sky Broadcasting, talking about the concept of dynamic injunction u/s 193 DDA of the Singapore Copyright Act, held that the applicant was not obliged to return to court for an order with respect to every single IP address of infringing URLs already determined by the Court.

The Hon’ble Delhi High Court in exercise of inherent power under Section 151 of CPC, 1908 permitted the plaintiffs to implead the mirror/redirect/alphanumeric websites under Order 1 Rule 10 CPC as these websites merely provided access to the same websites which are the subject matter of the main injunction.

Giving certain directions, court stated that on being satisfied that the impugned website is indeed a mirror/redirect/alphanumeric website of injuncted Rogue Website and merely provides new means of accessing the same primary infringing website, the Joint Registrar (who was delegated such 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) shall issue directions to ISPs to disable access to India to such mirror/redirect/alphanumeric websites in terms of the orders passed.

Relief:

(i)A decree of permanent injunction was passed restraining the defendant websites from, in any manner hosting, streaming, reproducing, distributing, making available to the public and/or communicating to the public, or facilitating the same, on their websites, through the internet in any manner whatsoever, any cinematograph work/content/programme/show in relation to which the plaintiffs have copyright.

(ii) A decree was also passed directing the ISPs to block access to the said defendant websites.

(iii) DoT and MEITY were directed to issue a notification calling upon the various internet and telecom service providers registered under it to block access to the said defendant-websites.

(iv) The plaintiffs were permitted to implead the mirror/redirect/alphanumeric websites under Order 1 Rule 10 CPC in the event they merely provide new means of accessing the same primary infringing websites that have been injuncted.

Author: Rajat Sabu, Senior Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at rajat@khuranaandkhurana.com.

References:

[1] CS (Comm) 724/2017

[2] “How Website Blocking is Curbing Digital Piracy Without “Breaking the Internet” published in Information Technology & Innovation Foundation (ITIF) in August, 2016 by Mr. Nigel Cory, Associate Director, Trade Policy, ITIF.

[3] 2017 SCC Online Del 12049

[4] Case C324/09

[5] [2014] EWHC 3354 (Ch)

[6] 2018 SGHC 206

[7] (2012) 1 All ER 869

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