The present suits have been filed for seeking injunctions restraining infringement of copyright on account of defendants communicating to the public their original content/cinematographic works without authorization.
UTV Software Communication Ltd. (Plaintiff) are companies engaged in the business of creating content, producing and distributing cinematographic films around the world including India. In this suit, there are four (4) classes of defendants namely –
- Certain identifiable websites that are unauthorized publishing and communicating the plaintiffs’ copyrighted works.
- 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.
- ISPs that provide internet access, enabling users to visit any website online, including the defendant-website
- 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 this Court.
As mentioned by the plaintiffs, ISPs and Government Agencies are not involved in committing any infringement but have been impleaded for the purpose of evolving an effecting and balanced relief that adequately redresses the plaintiffs’ concerns and also protects the public interest.
In this suit plaintiffs have prayed for the following –
- Whether an infringer of copyright on the internet is to be treated differently from an infringer in the physical world?
- Whether seeking blocking of a website dedicated to piracy makes one an opponent of a free and open internet?
- What is a ‘Rogue Website’?
- Whether the test for determining a ‘Rogue Website’ is a qualitative or a quantitative one?
- Whether the defendant-websites fall in the category of ‘Rogue Websites’?
- Whether this Court would be justified to pass directions to block the ‘Rogue Websites’ in their entirety?
- How should the Court deal with the ‘hydra headed’ ‘Rogue Websites’ who on being blocked, actually multiple and resurface as redirect or mirror or alphanumeric websites?
Plaintiffs argued that the infringing websites named in these matters allow ‘streaming’ and ‘downloading’ of copyrighted content of the plaintiffs, allowing the users to watch, download as and share copies of such works. Defendants’ earns money through the advertisements, which are displayed on their websites.
Plaintiffs also mentioned that if one impugned websites is blocked several other mirror websites are created which contain the infringing content. In some cases, the names of these websites are very similar to the blocked websites, allowing and encouraging easy identification and access. Such websites have been mentioned as ‘John Doe’ defendants.
Plaintiff also mentioned the laws related to website blocking which are prevalent in foreign jurisdictions along with the number of websites blocked in different countries.
Plaintiff also referred an Article ‘How Website Blocking is Curbing Digital Piracy Without “Breaking the Internet”published in Information Technology & Innovation Foundation in August 2016 by Mr. Nigel Cory, Associate Director, Trade Policy, ITIF.
Mr. Hemant Singh, learned Amicus Curiae appointed by the Hon’ble Court, stated that the most important issue to be addressed by the Court is to determine whether the websites complained of fell within the category of “Flagrantly Infringing Online Locations”. He opined that the Court should not pass any orders against a website containing legitimate content. It is on the plaintiff to produce evidence before the Court to confirm 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.
Amicus Curies mentioned that the ‘Three-step verification’ test evolved by the Bombay High Court in Eros International Media v 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 this case.
He pointed out that the courts across the world have grappled with devising appropriate mechanisms to prevent the menace of “Flagrantly Infringing Online Locations” which largely included blocking of the specific URLs or the website in general. Some of the technical measures which had been employed to block are –
- DNS Name Blocking
- IP Address Blocking
- Deep Packet Inspection based Blocking
He submitted that courts across the globe 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. The proportionality principle is designed to ensure that interferences with rights is justified as being no more than necessary to protect the rights or to achieve other legitimate goals. Amicus Curiae relied on Scarlet Extended SA v Societe Belge des Auteurs Cornpositeurs et Editeurs SCRL (Case C 70/10) and UPC Telekabel v Constantin Film (Case C 314/12) among others.
The Court, after analyzing relevant sections of Copyright Act, observed that making any work available for being seen or heard by the public whether simultaneously or at places chosen individually, regardless of whether the public actually sees the film, will constitute communication of the film to the public. This shows that intent was to include digital copies of works, which would include within its scope digital copies of works being made available online. Court opined that making available of a film for streaming or downloads in the form of digital copies on the internet is within the scope of ‘communication to the public.’
Further, Court mentioned that ,
“Section 51(a)(i) of Copyright Act provides that copyright is infringed when any person, without authorization of the copyright owners, does anything of which the exclusive right lies with the owner of copyright. Thus, the defendants’ websites, which are communicating the films to the public by making the films available for being seen or heard or enjoyed through their websites, are infringing the plaintiffs’ copyrights in the film.
Further, 51(a)(ii) of Copyright Act also imposes liability on owner of a place when such owner permits his place to be used for communication of the film to the public for profit, without authorization of the copyright owner. Such liability can be avoided only if the owner of the place is able to establish that he was not aware and had reasonable grounds to believe that the communication of the work in is place was not an infringement.”
Court further elaborated that
“Section 52(1)(c) of the Copyright Act exempts from liability, any transient or incidental storage of a work for the purpose of providing access to content where such access has not been expressly prohibited by the copyright. Thus, ISPs are exempt from liability of copyright infringement under Section 52(1)(c) for any transient or incidental storage of a film. However, the proviso to this section mandates that if a complaint is received, an ISP shall restrain access to content for a period of twenty-one days or upon receiving a competent court order. Pertinently, of no such order is received by the ISP within twenty-one days, the proviso permits the ISP to reinstate access to the stored film.”
In the present cases, no defendants’ website has appeared before this Court or answered any notice claiming a limitation under any provision including Section 52(1)(c) of the Copyright Act.
Further, Court also relied on the judgment of Supreme Court in Shreya Singhal v Union of India ((2015) 5 SCC 1) where it was held that the requisite knowledge which obligates an intermediary to act is when it receives a Court order directing the blocking of access. Mere receipt of notice does not obligate the intermediaries to act and take down content.
Court observed that, “the defendant-websites are liable for copyright infringement under Section 51 of the Copyright Act. They cannot claim exemption of Section 52(1)(c) as they are not entities that transiently and incidentally store the plaintiffs’ films. Also, since they are not intermediaries and hence they cannot claim the exemption under Section 79 of the IT Act.”
Court while discussing whether an infringer of copyright on the internet is to be treated differently from an infringer in the physical world held 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.
Further, while discussing whether seeking blocking of a website dedicated to piracy makes one an opponent of a free and open internet, Court opined that advocating limits on accessing illegal content online does not violate open internet principles.
Court in order to determine whether the website complained of is a ‘Rogue Website’ are –
- whether the 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
Court mentioned that these factors are merely illustrative in nature and not exhaustive and do not apply to intermediaries as they are governed by IT Act.
Court while discussing whether the test for determining a rogue website is qualitative or a quantitative one relied on Eros International Media Ltd. v BSNL & Ors. (Suit No. 751/2016) and Department of Electronics and Information Technology v Star India Pvt. Ltd (FAO (OS) 57/2015 ) and observed that the test to determine whether a website is a Rogue Website should be a qualitative failing to which infringing websites can include a small percentage of legitimate content to not to be classified as Rogue Website.
Whether defendant-websites should be classified as Rogue Websites, Court observed that there are enough evidences to support the claim that the main purpose of each of these websites is to commit or facilitate copyright infringement. Further, aforesaid ‘qualitative test’ is satisfied as follows –
- The rogue websites do not provide any legitimate contact details, they hide behind veil of secrecy and are located in safe-havens and rarely comply with requests for takedown.
- The rogue websites facilitate infringement by providing features such as indexing, detailed search functions, categorization, etc. which make it very convenient for a user to search and download illegal content.
- The sample evidence filed by the plaintiffs is consistent with the criterion adopted globally by various courts to direct blocking of such websites, such as in Singapore and in Australia.
- The rogue websites encourage a user to circumvent detection or blocking orders by providing detailed instructions on how to avoid detection or access a blocked website.
- The rogue nature of these websites has already been accepted by courts in other jurisdictions such as in Australia and the Plaintiffs have duly filed such orders before this Court. Consequently, the question of whether these websites are indeed rogue websites and deserving a blocking order have already been dealt with by competent courts in other jurisdictions.
- Sample evidence has been filed considering the volumes of content of the website and in order to avoid making it an impractical, costly, ineffective, non-fruitful and time consuming exercise.
- The list of movies provided in the Plaint are admittedly an illustrative list and not an exhaustive one.
- The volume of traffic to these websites is also indicative of their rogue nature.
Hence, it was confirmed that these are rogue websites.
Court while discussing whether this court would be justified to pass directions to block the Rogue Websites in their entirety held that the extent of website blocking should be proportionate and commensurate with the extent and nature of the infringement and order to block website should only be passed only when it is ‘necessary’ and ‘proportionate’.
Here, ‘necessary’ means a particular measure is essential to achieve that aim and ‘proportionate’ means it must be established that the measures do not have an excessive effect on the defendant’s interest. ‘Proportionate’ requires that a ‘fair balance’ be struck between competing fundamental rights on the one hand, and the right to trade and freedom of expression on the other.
Court observed that although blocking a website is against the concept of ‘free and open’ internet but at the same time it is important to remove or limit access to some materials online. Court also relied on Dr. Shashi Tharoor v Arnab Goswami and Anr. (2017 SCC OnLine Del 12049). Where it was held that the Courts have power to pass the pre-publication or pre-broadcasting injunction, provided two-pronged test of necessity and proportionality is satisfied.
Court also held that website blocking can be one of the ways to reduce the digital piracy alongside other measures including partnering with internet ad companies, domain seizures, and other efforts to prosecute owners of pirate sites.
Court while considering how should courts deal with ‘hydra headed’ websites who on being blocked, actually multiply and resurface as alphanumeric or mirror websites, observed that Court has delegated its power to the learned Joint Registrar for passing of orders to disable access to mirror/redirect/alphanumeric websites 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. Further, any person aggrieved by such order can appeal under Rule 5 of Chapter II of the Delhi High Court (Original Side) Rules, 2018.
Court suggested that in order to curb digital piracy MEITY/DOT may look at exploring a possibility to fine the viewer/subscriber of such websites providing infringing/pirated content.
On the basis of findings, Court passed a decree of permanent injunction restraining the defendant-websites their owners and related parties to which plaintiffs have copyright.