Technology Law Analysis
May 03, 2019
Rogue or Not? –Delhi High Court grants its first Dynamic Injunction to curb online piracy
UTV software Communications Limited and Twentieth Century Fox Film Corporation (collectively “Plaintiffs”) had filed this suit before the High Court of Delhi (“DHC”) against several infringing websites. The defendants in this suit were:
The Plaintiffs contention was that the Defendant Websites, were without their permission or authority hosting and providing access to their copyrighted works. This culminated into an infringement of their rights under the Copyright Act, 1957 (“Copyright Act”). The owners of the Defendant Websites, did not respond to any summons, presumably since they were hosted outside of India.
The reliefs sought by the plaintiffs were:
As detailed below, the DHC dealt with seven issues in this case:
Issue I: Whether an infringer of copyright on the internet is to be treated differently from an infringer in the physical world?
For the purpose of this issue, the DHC discussed
According to the Internet exectionalists, since the Internet is exceptional, most rules that apply to the offline space should not apply to the online space. Followers of this school believe that the Internet is the about individual freedom and not about collective responsibility. The followers of this school of thought acknowledge that online piracy comes at the cost of legal sales. They rationalize this loss by stating that it only hurts the profits of content firms implying that if the choice if between infringement that rewards consumers with free content versus legality that helps corporations, then the former is to be preferred.
The DHC recognized that the majority of piracy websites are not for any ideological reasons of providing free access to content but are present to make money. Such providers in addition to any infringing content also host several advertisements on their website which helps generate the revenue.
Upon an analysis of the above, the DHC concluded that online infringers should not be treated differently as 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 distinctions.
Issue II: Whether seeking blocking of a website dedicated to piracy makes one an opponent of a free and open internet?
The DHC opined that, advocating limits on accessing illegal content online does not violate open Internet principles.
The DHC further stated that, the key issue is about internet freedom, therefore, it is not whether the Internet is and should be completely free or whether the Governments should have unlimited censorship authority. The question should rather be where the appropriate lines should be drawn and how they are drawn and implemented.
Issue III: What is a “Rogue Website‘?
The DHC recognized that, one of the key issues around digital piracy is the importance of distinguishing between accidental and intentional piracy. The orders should not go too far whereby they also block sites which have any accidentally pirated content. Thus, the identification of what amounts to a Rogue Website or as Flagrantly Infringing Online Locations (FIOL) (a term borrowed from the Singapore Supreme Court) is the crux of this case. As per the DHC, Rogue Website/FIOLs are those which “primarily or predominantly share infringing content”.
The DHC provided the below non-exhaustive indicative list of factors which help determining if a website is a Rogue Website:
The DHC further clarified that the above list does not apply to intermediaries as they are governed by the Information Technology Act, 2000 which functions in a different manner.
Issue IV: Whether the test for determining a ‘Rogue Website’ is a qualitative or a quantitative one?
DHC referred to the division bench case of the DHC in the Department Of Electronics and Information Technology v. Star India Pvt. Ltd1 (“Star India Case”). In this case, it was held that, blocking the entire website is the best solution since continuously identifying each offending URL would be a gargantuan task and at the same time would be useless as the rogue website would just change the URL within seconds and again emerge. Further, the DHC in this case opined 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!
Consequently, the DHC in the present case held that the real test for examining whether a website is a Rogue Website is a qualitative approach and not a quantitative one.
Issue V: Whether the defendant-websites fall in the category of ‘Rogue Websites‘?
After looking into the various ‘factors’ listed above under Issue III, regarding when can a website be termed a Rogue Website, the DHC answers this question in the affirmative.
For this purpose, the DHC examined the facts of the Defendant Websites as a part of the “qualitative test” and noted that:
The DHC also recognised that it is getting difficult to curb online piracy initiated outside India and highlighted the need to work with Internet intermediaries to curb this menace like other countries do.
Issue VI: Whether this Court would be justified to pass directions to block the ‘Rogue Websites‘ in their entirety?
For this purpose, the DHC opined that the extent of website blocking should be proportionate and commensurate with the extent and nature of infringement. Thus, a court should pass a blocking order only if it is satisfied that the same is “Necessary” and “Proportionate”.
The DHC explained
Thus, the DHC concluded that while passing a website blocking injunction order, it would have to consider i) whether disabling access to the online location is in the public interest, ii) proportionate response in the circumstances; and iii) the impact on any person or class of persons likely to be affected by the grant of such injunction. Further the DHC also held that such an order must be effective, proportionate and dissuasive, but must not create any barriers to legitimate trade.
Consequently, while not discussing the exact facts and reasoning, the DHC concluded that the blocking of the Defendant Website strikes a balance between preserving the benefits of a free and open Internet and the efforts to stop crimes such as digital piracy.
The DHC also opined that, it has the power to order ISPs and the DoT as well as MEITY to take measures to stop current infringements as well as if justified by the circumstances prevent future ones.
The DHC has further also examined the approach adopted in 45 countries and noted that these countries have ISP blocking mechanism either through court order or administrative order; before such orders, courts and administrative agencies review the evidence to ensure that websites engaged in predominantly legal activities are not blocked.
These studies demonstrate that site-blocking in those countries greatly contributed to:
Issue 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?
The DHC observed that Rogue Websites on being blocked actually multiply and resurface as alphanumeric or mirror websites. To block such websites, another suit would need to be filed. The DHC recognized practical difficulty in implementing the recourse available to copyright owners (i.e. filing a suit), and stated that, the plaintiff should not be required to file multiple suits every time a new mirror/redirect/alphanumeric websites crops up.
Internationally, to curb this menace, a "Dynamic Injunction" has been granted to the mirror websites of Rogue Websites. While the Copyright Act does not have any provision to handle such dynamic injunctions, the relevant provisions of the Code of Civil Procedure, 1908 (“CPC”)2 has wide powers to permit the Plaintiffs to implead the mirror/redirect/alphanumeric websites as these websites merely provide access to the same websites which are the subject of the main injunction.
Reading into the provisions of the CPC, the DHC as a pleasant relief held that, in such situations of hydra headed Rough Websites emerging:
The DHC passed a decree:
Since website blocking is a cumbersome exercise and majority of the viewers / subscribers accessing such content are uninformed youngsters, the DHC recommended that DoT and MEITY should frame a policy to issue warnings to the consumers watching infringing content. In the event such warnings are not heeded to, and the viewers/subscribers continue to view/access such pirated/infringing content, then a fine maybe levied on such viewers/subscribers.
The copyright owners along with the governments and courts worldwide are trying to curb internet piracy. However, viewers continue to watch such content which encourages such sites to keep emerging. The suggestion by the court to penalize the viewer, however, may not practically work. The DHC observes that the most effective way to curb the internet piracy is by way of blocking.
This judgment provides a roadmap to determine which websites would be Rogue Websites and also offers a progressive step towards curbing internet piracy through Dynamic Injunctions. Whether other High Courts in India also will adopt the same approach or not will have to be tested with time.
In Maharashtra, the Maharashtra Cyber Digital Crime Unit was formed in 2017, which in association with industry through NIXI (being .in registrar) has been successful in blocking several pirated websites.
With the guidance provided in this judgment to identify rogue websites, a robust administrative mechanism could be established that is not cumbersome and time consuming to identify and block the rogue websites without every time approaching the court.
1 Suit No. FAO(OS) 57/2015
2 Section 151 (inherent power of court) read with Order 1 Rule 10 of CPC (addition of party in certain cases)
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