This article is written by Sugyata Choudhary, pursuing a Diploma in Cyber Law, Fintech Regulations and Technology Contracts from Lawsikho.com.
The post-COVID world has seen an overwhelmingly significant amount of digital traffic. From education to businesses and governance to networking, a large number of activities have gone online. This has organically led to a large scale increase in digital piracy. A particularly important and concerning area has been the legal framework in India on the prevention of digital piracy. The Copyright Act, 1957 has provisions for civil and criminal remedies for infringement of copyright. Normally, the aggrieved party would file an infringement action in the civil court seeking an injunction to restrain the infringing website from accessing the internet. The injunction is usually granted against the infringing website. Until recently, this remedy was rampantly misused by the infringing party. To get around the injunction order, the infringing party would use the infringing material through other rogue/ mirror websites, or post the pirated content through another IP address or URL.
Are conventional injunction orders an effective remedy against digital piracy?
Conventional injunction orders restrain the infringing website from operating and order that the pirated content be immediately taken down or deleted. They also block the access to the website. These injunctions are worded in such a manner that they are only effective against the particular domain name that hosts the pirated content and technically do not apply to another website with the same pirated content from a different IP address or URL.
In Department of Electronics and Information Technology v. Star India Pvt. Ltd. it was observed that changing URL is similar to changing a password and is an easy circumventing measure. The court observed at para 11 :
“11. The steps to change a URL would require, to firstly access the source code of the infringing website and then change the alpha-numeric character string of the URL. This could be as easy as changing the password of one’s e-mail Id. This would mean that if the URL of a rogue website is blocked, the operator can simply log into the website source code and change the URL akin to a person changing one’s password. To give an example, a rogue website www.abc.com whose URL is www.abc.com/india-v-pakistan, can simply log into the website source code and insert the alphabet ‘s’ after the alphabet ‘v’ and change the URL to www.abc.com/india-vs-pakistan. Thus, if the URL www.abc.com/india-vpakistan is blocked, the infringer can start operating on the URL www.abc.com/india-vs-pakistan within a few seconds. But, if a domain name itself is blocked, to continue with the infringing activity becomes a cumbersome, time consuming and money spending exercise. A new domain name has to be created and purchased apart from purchase of a fresh hosting server space. The entire exercise of creating a website has to be undertaken.”
From the aforesaid it is quite clear that an injunction covering a specific URL would be rather useless as circumventing that would be an easy job. Further, websites like Youtube, provide an option to customise the URL which makes it further easy for infringing channels to circumvent injunction orders against specific URLs.
Another challenge faced by conventional injunctions are mirror websites. The defendant often uses a new domain name and hosts the same content on the new website. A conventional injunction order fails to injunct the new website since the order only operates against the website named in the order. Forwarding websites are also another tool often used by infringing parties to circumvent a conventional injunction order.
For the injunction to cover any other domain or website, a separate application has to be moved by the injunction holder to implead the infringing parties (with the new domain name) in the suit in which the injunction was granted. This not only causes distress to the Plaintiff but also leads to multiplicity of proceedings ultimately leading to injustice.
What are Dynamic Injunctions?
Dynamic Injunction is typically a type of injunction order that allows the beneficiary of the injunction order to approach the courts to extend the main injunction order against all mirror /rogue websites which are hosting the infringing content. These injunctions are often effective when the same website appears immediately with a different IP address or URL after issuing the injunction. Dynamic Injunctions therefore, can be said to be an improvement or modification of conventional injunction order.
The European Commission defines Dynamic Injunctions as: “injunctions which can be issued for instance in cases in which materially the same website becomes available immediately after issuing the injunction with a different IP address or URL and which is drafted in a way that allows to also cover the new IP address or URL without the need for a new judicial procedure to obtain a new injunction”.
It further refers that – “the possibility of issuing such injunctions exists, inter alia, in the United Kingdom and Ireland. This objective could also be pursued through intervention of a public authority or the police…”
Dynamic Injunctions have received express or implied recognition in various countries both within and outside the European Union.
What is the legal position on dynamic injunctions in the jurisdictions across the world?
The Singapore High Court, in the case of Disney Enterprises, Inc. v. M1 Ltd has exhaustively laid down the law relating to dynamic injunctions thereby giving it express recognition. The defendants (ISPs) in this case, were directed to take steps to block the identified Frequently Infringing Online Locations (FIOLs) i.e. the domain names, IP Addresses and URLs providing access to infringing content. The court, while stating the various benefits of dynamic injunction found that the same is in line with Section 193DDA of the Copyright Act in Singapore and there is no jurisdictional hurdle in Singapore that prevents the court from granting such an injunction.
Interestingly, to balance the scales of justice, and to prevent misuse of these injunctions, a proviso was inserted by the court in the order that Under the proviso, the defendants would not be required to block the additional FQDNs upon the request of the plaintiffs if they are of the view that the grounds for disabling access provided by the plaintiffs are insufficient. The court further provided that the defendants and owners of the online locations remain free to challenge the plaintiffs’ attempts to block additional FQDNs under the express terms of the order, and also pursuant to s 193DDC of the Copyright Act. The order in this case, also listed a detailed procedure for effective implementation of the dynamic injunctions, which essentially requires the Plaintiff to provide an affidavit along with evidence to the Defendant while informing them of the website to be blocked. The defendants are required to take steps within 15 days to disable access to the additional infringing websites.
In the UK, recognition to dynamic injunctions was given in the case of Cartier International AG v. British Sky Broadcasting Ltd.. In Australia, the Court in Roadshow Films Pty Limited v. Telstra Corporation Ltd. held that if Plaintiffs want to get additional domain names, URLs or IP addresses blocked on the ground that they are the same online locations against which injunction has been granted, they will be required to obtain an order from the Court.
In Milan, the Court of First Instance (Tribunale di Milano) granted a dynamic injunction against ISPs in a case filed by Mondadori Magazine on the ground of copyright infringement. In the opinion of the court if an injunction could not operate in the future and Court intervention is required again, it would render the injunction pointless and would be contrary to the purposes of injunction.
Position in India
In India, express dynamic injunctions were largely uncommon. In a 2016 decision of the Supreme Court in Tata Sky vs. Youtube LLC, although not expressed in nature, the court granted an implied dynamic injunction. The order held that Youtube LLC will not wait and immediately take down the infringing content when Plaintiff makes a complaint of a similar nature which is consistent with the injunction order. The order was made absolute against all ‘unknown defendants’. This was in its nature one of the first orders in the nature of a dynamic one. A similar order was also granted by the Supreme Court in Patanjali Ayurved Limited v. Google LLCwhereby the court gave indirect recognition dynamic injunction. The Supreme Court, in this judgment directed that the Plaintiff must approach the intermediary directly if the infringing content is found again on the platform and the defendant must take the necessary steps pursuant to the injunction already granted.
However more recently, the Delhi High Court has for the first time issued an express dynamic injunction in UTV vs. 1337x.to delivered on April 10, 2017, following cue from the Singaporean Law. The order in this case allowed the Plaintiffs to escape the cumbersome judicial procedure and approach the Joint Registrar of the Delhi High Court to extend and injunction order already granted against a website against a mirror / alphanumeric website which contains the same content as the original website. It also provides that the court has inherent powers under the Civil Procedure Code, 1908 to grant such an injunction. The court, in this judgment also answered some very important issues with respect to rogue websites and their operation under the law. This judgment set the precedent for dynamic injunctions in India.
Pursuant to the UTV judgment (supra), dozens of dynamic injunctions were granted by the Delhi High Court in suits instituted by Warner Bros Entertainment Inc.
However most recently, the decisions of the Delhi High Court in the case of Disney Enterprises, Inc. and Ors. vs. Kimcartoon.to and Ors., Delhi High Court and Snapdeal Private Limited versus Snapdeal lucky – Draws.org.in & Ors. have set the tone for awarding dynamic injunctions in cases of digital piracy on the internet. While unlike the previous judgments, the Snapdeal judgment stemmed from a trademark infringement, which further broadened the scope of dynamic injunctions in India. The Disney Enterprises judgment had followed the Singapore High Court Judgment in the same matter and applied its principles in the context of Indian laws.
It is therefore amply clear from the above that dynamic injunctions are proving to be effective and have now become an increasingly popular remedy against digital piracy in India. How far can its misuse be checked by the Courts is yet to be seen.
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