Considerations in Dynamic Injunctions: Towards a proportional approach

28th February, 2024 - 7:22 am Categories: Judiciary News & Updates 0 Comments

Introduction

In the past, site-blocking has been thought to work by enabling rights holders to get internet service providers (ISPs) to restrict domestic access to websites that are known to house or disseminate copious quantities of illegal or infringing content. The reality of online behaviour, however, is that when infringing sites are banned or taken down, they try to evade the blocking orders by changing their domain names, rerouting traffic, or using dynamic IP addresses[1]. Thus, to ensure effective remedy against such flagrantly infringing online locations (“FIOL”) or hydra-headed websites (which redirect or mirror themselves through multiple locations), copyright regimes have devised the mechanism of issuing dynamic injunctions.  An injunction order that is dynamic rather than static is referred to as a “dynamic injunction.” Even though the first injunction order may only apply to one website, if mirror websites are made, the injunction would automatically apply to others as well. The injunction will automatically apply to the mirror or redirect website if the copyright owner just notifies the Registrar through an affidavit or application that a mirror website has been created.

Jurisdictions like Singapore[2], Australia[3], the EU,[4] and the UK[5] have provided for specific legislative instruments allowing for the passage of dynamic injunctions while in India, the courts have invoked their inherent powers under Sec. 151 of the Civil Procedure Code, which allows courts to pass “such orders as may be necessary for the ends of justice” to grant such dynamic injunctions requiring ISPs to block access to the infringing websites. It is useful to refer to the judgement of the UK Supreme Court in Cartier International AG v. British Sky Broadcasting Ltd.[6] (Cartier), wherein the court explained that this remedy (a dynamic injunction) enabled the right holders to respond to the attempts of circumvention by the wesbites by mirroring their Uniform Resource Locators (“URL”).

The first part of this essay attempts to unfold a jurisprudential ripple between the approaches followed by the prominent high courts in India, i.e., the Delhi High Court and the Bombay High Court, in granting such injunctions. It goes on to argue for the creation of an independent agency to verify the claims of the plaintiff before granting such relief. Furthermore, the author suggests a mechanism for cost appropriation between rights holders and ISPs in the implementation of such orders.

Jurisprudential Ripple: A Tale of Two High Courts

The Court in UTV Software Communication Ltd. v. 1337X. To[7] (“UTV”), undertook a comprehensive assessment of site blockage regimes internationally to devise non-exhaustive criteria to identify if a site is “rogue” or a FIOL. Some of the variables are the primary purpose of the website, facilitation of infringement, no verifiable personal information about the person who created the website, etc. The list provided an enumerative enumeration of such factors while ceding space for more inclusion with “any other relevant matter”. Though Manmohan J. drew insights from the Singapore High Court’s judgement in Disney Enterprises, Inc. v. M1 Limited[8] (“Disney”), wherein the Singapore Copyright Act (Article 193DDA) provided an exhaustive list of statutory factors for classification as rogue websites, the Delhi HC reasoned that dynamic injunctions were a logical consequence of the court’s qualitative assessment of “rogue websites”. When contemplating a blocking order regarding a website, the court evaluated the site’s fundamental purpose qualitatively to decide if the activities of the website were infringing.

[Image Sources: Shutterstock]

This qualitative assessment by the Delhi High Court of the rogue websites is different from the quantitative approach to evaluation followed by the Bombay HC. The Bombay HC in Eros International Media Limited v. Bharat Sanchar Nigam Limited[9] (“Eros International”) has held that for a complete website to be blocked (for it being a rogue website), the plaintiffs must prove that the entire content and material published and displayed on it is infringing. Thus, while the Delhi HC Court has adopted the test for identifying a “rogue” as “qualitative”, viz., examining “whether the primary purpose and effect of the website is to facilitate infringement”, as opposed to the Bombay HC, which has followed a “quantitative” test, viz., examining “purely the quantity of infringing content on the website”. The Bombay HC’s approach, as evident from Balaji Motion Pictures Ltd. v. BSNL[10], is on cautious lines, i.e., it has zealously guarded against blocking entire websites, for the same would reflect as ‘pre-censorship or gag orders’. On the other hand, the Delhi High Court has tried to comprehensively address the problem of piracy through its ‘qualitative’ test. In Department of Electronics and Information Technology v. Star India Private Limited[11] (“Star India”), the reasoning was that mere blocking of a URL is not a functional solution as creation of a mirror website or changing URLs is an easy escape, so any remedy by the court must be efficacious, and thus blocking an entire website is justified. Even in the UTV case, Manmohan J. relied on Star India to hold that the test for determining a rogue website is qualitative. The author supports the view propounded by the Delhi HC because a test based on quantitative parameters will restrict the court to considering particular individual URLs or domain names independently and in isolation, and blocking orders will lack the scope essential for combating the deceptive practises of “rogue websites”.

The void in Evidentiary requirements

The court in the UTV case created a unique procedure wherein the plaintiff might go to the Joint Registrar and submit an affidavit impleading the mirror websites with appropriate supporting evidence. Essentially, what has transpired in the aftermath of the UTV case, is the practise of placing sole reliance on the plaintiff’s evidence in disabling access to such websites. Even in Arha Media and Broadcasting Limited v. www.vcinema.com[12], the court passed an injunction order pulling down all infringing links as provided by the plaintiff. Perhaps, the Bombay High Court, which has followed a cautious approach in issuing such orders, can be seen as offering a solution here. The Court in Eros International directed the list of websites and URLs supplied by the plaintiff to be verified by an independent agency. This would allow an opportunity to test the veracity of the claims by the plaintiff and avoid any unjust consequences from website blocking injunctions. This solution has also been endorsed by other authors like Late Prof. Shamnad Basheer[13], who argued for the setting up of a neutral verification agency and ombudsman, and others who justified the existence of such an agency on the ground that since such orders can only be appealed within 15 days[14], granting relief solely on the plaintiff’s evidence without any requirement of establishing communication with the websites will be unfair. Further, it has also been argued that since the courts normally provide orders to block websites under the IT Act through the Computer Emergency Response Team of India and also implement the blocking order through the agency, they implicitly, to an extent, meet the requirement for an impartial and unbiased body to aid the court in site blocking orders[15]. Thus, the existence of an independent agency verifying the claims of infringement by the websites as supplied by the plaintiff would introduce an adjudicatory mechanism ensuring fairness and proportionality in the orders of a dynamic injunction.

Missed ‘cost’ Considerations

The developing jurisprudence in India relating to dynamic injunctions has left the question of the appropriation of costs open. Though, on the plaintiff’s supplying URLs of additional rogue websites, the ISP is bound to block access to them; however, it has not been answered yet as to how the costs for the implementation of dynamic injunctions will be shared between the plaintiff and ISPs. Lee J. in Disney tried justifying these orders through cost analysis and explained that such dynamic injunctions would not significantly increase the burden on the defendants from that already imposed under the injunction. If taken to its logical end, this would mean that there will be an appropriation of the costs of implementation by the plaintiff, and the whole incidence will be upon ISPs. However, reliance can be placed on the UK Supreme Court’s decision in Cartier where the court recognised the right of ISPs to get indemnified from Rights holders (the plaintiff) up to a reasonable compliance cost. Thus, in the absence of any specific directions on this issue, the Indian paradigm implicitly approves Lee J.’s reasoning, placing the whole incidence of such costs of implementation upon ISPs. However, the author submits that building an enforcement regime on the lines as devised by the UK SC is desirable as it leads to a proportional division of compliance and enforcement costs, fairly appropriated between the rights holder and the ISPS, without prejudicing any party.

Conclusion

The author is of the suggestive opinion that, on the lines of other advanced jurisdictions, the provisions governing dynamic injunctions must be codified through an amendment to the Indian Copyright Act. This would serve not only to settle the judicial ripple in the jurisprudence between two prominent high courts of the country but also put an end to subjective ‘qualitative’ assessment of a rogue website. Further, there is a pressing need for the introduction of an independent agency verifying the plaintiff’s claim for impleadment of a website as a rogue website to maintain the value of proportionality in the course of justice. On similar lines of proportionality, the author is also of the opinion that there needs to be a decisive authority on the appropriation of implementation costs of such injunctions between ISPs and the plaintiff. Thus, though dynamic injunctions have developed as a necessary remedy for online copyright infringement, the jurisprudence is far from settled, and there needs to be a conclusive call to the underlying nuances in the form of an amendment to the Copyright Act.

Author: Harshit Mishra, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

References

• Pratik P. Dixit, Dynamic Injunctions Against Internet Intermediaries: An Overview of Emerging Trends in India and Singapore, The Journal of World Intellectual Property (2019)
• Yin Harn Lee, United Kingdom Copyright Decisions 2013, IIC – International Review of Intellectual Property and Competition Law (2014).
• Shamnad Basheer, “In Bollywood’s Against Piracy, A Neutral Ombudsman Might Be the Answer,” The Wire (Aug. 23, 2016), available at https://thewire.in/film/of-bollywood-blocks-and-john-does-towards-a-neutral-ombudsman.
• Pranay Bali & Nayantara Malhotra, “To Block or Not to Block? : Analysing the Efficacy of Website Blocking Orders and Dynamic Injunctions in Combating Digital Piracy,” 11 IJIPL (2020) 179.

[1] See David Tan and Susanna HS Leong, “Intellectual Property Law”, (2018) 19 SALAnnRev 586; See Also Gururaj and Anjani, “A Critical Study on Liability of Intermediaries for Copyright Infringement- Analysis of Indian and German Position”, 24 J. Legal Ethical & Responsibilities 1 (2021); Justice Prathiba M. Singh, “Evolution of Copyright Law- The Indian Journey”, 16 Indian J. L. & Tech. 38, 39 (2020).

[2] Sec 193 DDA of the copyright Act

[3] Sec 115A, Australian Copyright Act

[4] Art 8(3), Information Society Directive, 2001

[5] Sec 97A, Copyright, Designs and Patents Act 1988

[6] [2018] UKSC 28.

[7] 2019 SCC OnLine Del 8002

[8] [2018] SGHC 206

[9] 2016 SCC OnLine 8199

[10] 2016 SCC OnLine 4636

[11] 2016 SCC OnLine 4160.

[12] CS (COMM) 925/2022

[13] Shamnad Basheer, “In Bollywood’s Against Piracy, A Neutral Ombudsman Might Be the Answer”, Aug 23, 2016, The Wire, available at https://thewire.in/film/of-bollywood-blocks-and-john-does-towards-a-neutral-ombudsman.

[14] Pranay Bali and Nayantara Malhotra,  “To Block or Not to Block? : Analysing the Efficacy of Website Blocking Orders and Dynamic Injunctions in Combating Digital Piracy”, 11 IJIPL (2020) 179.

[15] Pratik P. Dixit, “Dynamic Injunctions against Internet Intermediaries: An Overview of Emerging Trends in India and Singapore”, 23 J. WORLD Intell. Prop. 65(2020).