Name of case : Utv Software Communication Ltd. & Ors. v. 1337x. To. & Ors.
Bench : Justice Manmohan
Court : High Court of Delhi
Judgement Date: 10-04-2019
Applicable Laws : Section 51(A) , Section 55 , Section 52 (1)(C) , Section 14 , Section 79 , Of Copyright Act
Citation: 2019 SCC OnLine Del 8002
The Court considered a batch of 8 suits filed by companies engaged in the business of creating content, producing and distributing cinematographic films around the world including India (“Plaintiffs”). The Plaintiffs sought injunction restraining the Defendants from infringing the Plaintiff’s copyrighted works in cinematograph films by communicating it to the public without any authorization. The defendants to the suits included certain identified websites, John Doe defendants (“Defendant Websites”) along with MeITY, DoT and multiple internet service providers (“ISP”) which were arrayed as non-contesting parties, against whom no relief was claimed.
The Plaintiffs produced samples of infringing content to support their one-point case that the infringing websites were primarily engaged in hosting pirated content and allowed streaming and downloading of Plaintiffs’ copyrighted works without any authorisation. The Court disposed of the matter ex-parte, with only the Plaintiffs present, as the contesting defendants failed to appear on being summoned. As the matter involved questions of law of general public importance, the Court appointed Mr.Hemant Singh, a regular practitioner in IPRs cases, as an Amicus Curiae to assist the court with its determination on the questions of .
The Plaintiffs argued that the Defendant Websites’ business models sustained on the revenue earned by allowing the unauthorised streaming and downloading of the copyright infringing content as well as from the advertisements which were displayed on their websites. These websites functioned under a garb of privacy and their indexes of hyperlinks redirected the end-user to host area in order to facilitate streaming or downloading of copyrighted content. The primary contention before the Court was that the Defendant Websites mirrored and multiplied on being blocked at one particular URL. It was the Plaintiff’s case that the Defendants’ substantial purpose was to infringe or facilitate infringement of copyright. The Plaintiff relied upon laws across multiple jurisdictions where courts in such circumstances have passed injunction orders blocking the primary website. In view of the international jurisprudence and the increasing need in a technology-driven era, the Plaintiff sought an effective remedy in the form an injunction by way of the present Suit.
The Amicus Curiae appointed by the Court submitted that the foremost issue requiring the Court’s consideration was whether the Defendant Websites could be categorised as ‘flagrantly infringing online locations.’ In a case where site wide ban is sought to be imposed, the burden of proof is on the Plaintiff to adduce evidence in support of the fact that the website complained of was sharing infringing or pirated content. Caution is required more specifically in cases where websites hosted both infringing and legitimate content of third parties. To buttress the submissions, the Amicus relied on the three-step verification test evolved by the Bombay High Court in Eros International Media v. BSNL Suit No. 751 of 2016, which has been enumerated in the later part of this analysis. Further, courts while granting blocking orders should be guided by principles of proportionality so that interference with rights to access the internet is justified. Lastly, the Amicus submitted that blocking by domain names would make the injunctions pointless as there was a high likelihood of the infringers operating from different domain names. It was the Amicus’ submissions that the Court could exercise powers of inherent jurisdiction under Section 151 of the Code of civil Procedure to issue dynamic injunctions against re-directed or mirror websites.
The Defendant Websites failed to appear and rebut any of the factual assertions made by the Plaintiff. No arguments were advanced by the ISPs, DoT nor MeITY who in fact unanimously stated that they would be bound by the order of the Court.
ARGUMENTS BY THE PLAINTIFF
Mr. Saikrishna Rajgopal, learned counsel for the plaintiffs stated that the infringing websitesnamed in the present batch of matters allow streaming’ and downloading’ of copyrighted content of the plaintiffs, enabling the users to watch, download as well as share copies of such works. According to him, the defendants’ business model is supported by revenue generated through advertisements, which are displayed on their websites.
Mr. Saikrishna Rajagopal, learned counsel for plaintiffs contended that the substantial purpose ofthe defendant-websites is to infringe or facilitate the infringement of copyright of the plaintiffs.
ARGUMENTS BY AMICUS CURIUE
He 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.
He stated that caution had to be undertaken as there could be a website which could have bothinfringing content of plaintiff and legitimate content of third parties.
He pointed out that there were at least 122 other movies of the plaintiffs on defendant’s website.
He submitted that the three-step verification test evolved by the Bombay High Court in ErosInternational Media Vs. BSNL, Suit No. 751 of 2016, which consisted of verification by an independent entity, extensive documents being placed on record and an affidavit on oath, was not satisfied in the present case.
However, Mr. Hemant Singh, learned Amicus Curiae admitted 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.
According to him, Courts all over the world have considered the effect of over-blocking and have held that in order to ensure proper balance between the implementation of blocking injunctions and rights of the third- parties, it is essential to make sure that these blocking injunctions are proportionate.
He admitted that the aforesaid measures of DNS, IPB and DPI blocking face challenges such as legitimate contents being blocked, invasion of privacy, high cost of deployment etc. He submitted that there was a serious concern associated with blocking orders that would prevent access to legitimate content in the cases of copyright.
The learned Amicus Curiae relied upon the following case law:-
• UPC Telekabel v. Constantin Film, [Case C-314/12]
• Germany (2015): GEMA v Deutsche Telekom, BGH, Urteile v. 26 (GEMA),November 2015
• Germany (2018): Constantin Film Verleih GmbH v. Vodafone Kabel Deutschland GmbH (2018)
Mr. Hemant Singh lastly contended that if the obligation of an ISP is limited to particulardomain 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.
Mr. Hemant Singh lastly 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.
Manmohan, J of the Delhi High Court delivered the judgment. The central issue for the Court’s determination was to establish an effective solution to combat rogue or hydra headed websites which multiply and resurface as redirect or mirror websites on being blocked.
The Court first delved into the issue of copyright infringement by the Defendant Websites. Under Section 51(a)(i) of the Copyright Act, copyright infringement occurs when any person without the authorisation of the copyright owner exercises any right which is in the owner’s exclusive domain. It was an established case that the Defendant Websites were hosting copyright infringing content. No exemptions of any kind were applicable in this case as the Defendant Websites were not intermediaries in view of the fact that they directly uploaded content.
Although the present matter required no further adjudication of facts. However, in consideration of the facts and the laws prevailing in different jurisdictions, the Court outlined several issues which required determination.
In doing so, the Court rejected the views of ‘internet exceptionalism’ i.e. ideologies which believes that the internet space should be left completely unrestricted was unacceptable. Even though the infringement benefitted the consumers, the benefit from such infringing acts directly accrued to the pirated websites which thrived and capitalised on advertisements that surfaced on such their websites, without having any motive of providing free content for social good.
Next, the Court considered whether blocking of a website dedicated to piracy was in opposition to a free and open internet. The Court held that just as constitutional freedoms are regulated under reasonable restrictions, appropriate lines may be drawn to restrict access to infringing websites by creating a fine balance between freedoms and rights of all stakeholders.
Next, the Court elaborated the concept of rogue website .Rogue websites are those which primarily or predominantly share infringing content. The Court noted that music and film piracy are primarily facilitated on the internet by rogue websites. For ascertaining a rogue website, the Court enlisted certain factors which include inter alia, whether the website primarily aims at copyright infringement, takes appropriate action after receiving takedown notice with regard to copyright infringing content, there is significant volume of traffic received by the website, and posts guidelines on the website to circumvent measures that disable access to the website on the grounds of related copyright infringement, etc.
The Court then delineated the test for determining a rogue website. Two contrasting tests that are globally recognised in the determination of a ‘rogue website’ are juxtaposed. The Court, in adopting a test befitting to the Indian context, has analysed two opposing views which have been adopted by the Indian courts on earlier occasions. The Bombay High Court in Eros International Media Ltd. & Anr. v. Bharat Sanchar Nigam Ltd. & Ors. Suit No. 751 of 2016, had held that blocking injunctions against entire websites could be passed only on the furnishing of proof by the Plaintiff demonstrating that the entire website contained only illicit content. The Bombay High Court formulated a three-pronged verification test which was to be followed by a court in matters where blocking orders were sought. Contrary to this, the decision of the division bench of the Delhi High Court in Department of Electronics and Information Technology v. Star India Pvt. Ltd. 2016 SCC OnLine Del 4160, which has been ultimately relied upon in the present decision, adopted a more practicable, qualitative approach in determining a rogue website as one which is overwhelmingly infringing. The Court held that the quantitative test in adopting a three-step verification standard is overtly onerous and burdensome on the copyright owners, primarily in cases where websites change the URLs on being blocked. In such a situation it would be a herculean and almost impossible task for the copyright owner in identifying each offending and infringing URL.
Accordingly, the Court concluded that the Defendant Websites were rogue websites.The Court held that a blocking injunction order against the entire website is permissible however, in doing so, courts must be guided by proportionality. The onus is on the right holders to prove to the Court’s satisfaction that each website which is sought to be blocked is a ‘rogue website’, primarily engaged in facilitating the widespread copyright infringement.
In the last segment, the Court, in exercise of its inherent power under Section 151 of the Code of Civil Procedure, 1908 has espoused the concept of dynamic injunction. Drawing its inspiration from the Singapore High Court’s decision in Disney Enterprise v. MI Ltd. (2018) SGHC 206 and international developments on the subject matter, the Court adopted the relief of dynamic injunction which essentially aims to block new means of accessing the same infringing website. A plaintiff can avail the blocking injunction against a new website by filing an additional affidavit, giving the court an explanation as to how a new website is within the purview of an existing blocking order.
The Court granted a permanent injunction in favour of the Plaintiff, along with awarding the cost of the litigation. The Court, therefore, recommended that DoT and MeITY should frame a policy to issue warnings to the consumers watching infringing content. In the event that viewers continue to watch the infringing content, then fines may be levied against such viewers.