Expert opinion on Electronic Evidence

This article is written by Raunak Sood, a 4th year BBA LLB (Hons.) student studying at Bennett University, Greater Noida, pursuing a Diploma in Advanced Contract Drafting, Negotiation, and Dispute Resolution from LawSikho. The article has been edited by Ruchika Mohapatra (Associate, LawSikho).

Introduction

The IT Act has been successful in regulating cyberspace, but the IT Act has failed to award protection to one of the most important legal properties which arises out of the human intellect i.e., Intellectual Property (“IP”) which means knowledge and information which has been expressed in a tangible or an intangible manner and includes copyrights, patents, trademarks, geographical indications, and integrated circuits. The most challenging area within cyberspace is the infringement of IP and the inadequacy of the current legal framework (inclusive of Copyright Act 1957, IT Act and Trademark Act, 1999) 

The Information Technology Act, 2000 (“IT Act”) has three main objects: firstly, to comply and effectuate the United Nations (“UN”) call for uniformity within the domestic law of the international community in order to replace the pen-and-paper based transactions with electronic transactions, communication, and storage; secondly, to facilitate electronic commerce (“E-Commerce”) through easier data exchange and storage of huge amount of information on the internet; and lastly, to make government based processes and procedures efficient and reliable through e-filing. The IT Act was formed to make e-commerce safer, but it has failed to address concerns of cybersquatting, copyright, trademark, and domain name infringement within cyberspace.  

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Another issue of authority and enforcement arises as to whether in this borderless internet, a court of law situated in India can issue orders in the nature of a global injunction, direct global blocking or direct additions, substitution or removal of domain names, trademarks, etc. on a global scale. 

Since the internet is a superhighway of information where one of the main concerns surrounding cyberspace is the infringement of copyright, trademark, domain names, and piracy of other kinds of IP. The main problem is the lack of a sufficient legal framework since there is not much awareness about copyright issues, trademark issues, and other violations of IP rights taking place within the cyber domain. This article aims at listing out all the copyright issues, trademark issues, domain name issues, case laws, and further lists down the loopholes in the current legal framework. It also addresses some remedies existing in the current legal structure and the difficulty faced by courts in international enforcement of such remedies.

Infringement of copyright in cyberspace 

Copyright is to protect the creations of authors, performers, artists, and other people who create literary, drama, films (cinematographic), sounds (recorded sounds), pictorial, graphical, and other forms of literary and artistic audio-visual works. The main legislative intent behind the enactment of the copyright law was to reassure, encourage and inspire writers, music composers, drama artists, and directors to create original works of authorship hence the limited right to reproduce copies (in electronic or other formats), make derivative work out of their original works, perform the art in public, making translations and adaptations. Piracy of original copyrighted material is very easy because of the internet, as it is very easy to make copies (software like Microsoft Word, etc.), translate (applications like Google Translate can be easily used to translate works into any language), make adaptations (using software like adobe photoshop) and violate other rights as mentioned in Section 14 of the Copyright Act, 1957 (hereinafter Copyright Act, 1957 has been referred to as “CA 1957”) by using openly available technology. 

Infringement of copyright

A copyright is infringed where any non-licensed person (that person who has not been given a license or permission by the copyright holder) performs any act which contravenes the rights (enumerated in Section 14 of CA 1957) of the copyright holder. The copyright is said to be infringed whenever a sale, hire, exhibition, import of copies, and other infringing material which are prejudicial to the copyright holder are brought within the country. In the borderless internet, which is the superhighway of the information herein downloading, uploading, and just copy-pasting copyrighted information on a website is just a mouse click away. The current copyright law gives the copyright holder the special right to authorize the distribution of his own copyrighted work, but if such copyrighted material is on the internet then almost anybody can become a publisher because it is relatively easy to just download and save the work from a website (a website can be equated with a book or a magazine) without asking any form of license or consent from the copyright holder and reproduce the same on another website and claim credit for the handwork, skill, labor, and creativity put in by the copyright holder. Under Section 51 of the Copyright Act 1957, the burden of proof lies on the copyright holder to adduce evidence for proving the deceiving similarity and creating a prima facie case for the infringer. It is important to note that a website is liable to be given the same amount of protection as given to copyright infringement in the case of a book, magazine, or multimedia device. Copyrights cannot be vested in ideas, systems, and methods but most computers nowadays can reproduce pictures, illustrations, and graphics hence most of the copyrighted works can be easily infringed via the internet.

In the case of Religious Tech. Ctr. v. Netcom Online Communication Servers, the circuit court laid down the three main kinds of copyright infringement as follows:

  1. Direct – Where there is a direct nexus with the violation of the rights given under the Copyright Act by the infringer. In the case of online infringement, it is very difficult to track down the infringer.
  2. Contributory- Where internet service providers, website hosts, and other operators can be held liable for assisting other people in the infringement of copyright, herein the most essential ingredient which should be present is that the third party i.e., internet service provider or website host or the operator had constructive knowledge of the infringement taking place on their online platform or they have assisted, induced, caused or contributed towards that particular infringing activity to take place on their internet-based platform. 

Furthermore, the Supreme Court of California in the case of Sega Enterprises v. Maphia, where the defendant Maphia was a bulletin board service operator who would allow other people to upload and download games produced by Sega Enterprises on their platform, the court, in this case, held that there was no direct infringement of copyright by Maphia because he was merely an operator of the bulletin board service but instead Maphia was liable for the contributory infringement of Sega Enterprises copyright on the games produced on it because there was an active solicitation of people to download rightfully copyrighted works as Maphia earned profits out of the same through the subscription money which he charged to various subscribers of his channel. 

In the case of Fonovisa Incorporated v. Cherry Auction Incorporated, the court laid down the test for contributory infringement of copyright, the test states that whether the intermediary on the internet had “actual knowledge” of the infringements taking place on their platforms, and if the answer is in positive then yes there is a contributory infringement of copyrights. 

  1. Vicarious- Where the infringement is taking place over the internet platform/ website or the service provider and such infringement is giving a monetary benefit to the internet platform/ website or the service provider in such a case such third parties to the infringement are liable under the copyright law. 

Under the IT Act 2000, we have Section 79 which talks about the exemption of liability of intermediaries and gives them immunity for any third party information originating on their servers, but the immunity is subjected to certain conditions enumerated in sub-clause (2) and (3).  On a wholesome basis, the aspect of contributory copyright infringement has been covered in Section 79 of the IT Act, 2000, at the same time it has failed to recognise vicarious infringement of copyrights on the platforms of intermediaries. It is being argued by some people that “due diligence” under Section 79 covers vicarious copyright infringements, but this is an open-ended debate that should be subjected to a judicial review. 

Therefore, it is concluded that major legislations like Copyright Act 1957 and the IT Act 2000 are silent on online copyright infringements, and even though computer-based software and programs are protected under the Copyright Act 1957, the Act fails to protect against software piracy on the internet. 

Domain name and trademark infringement issues in cyberspace

A trademark is defined under Section 2(zb) of the Trademark Act, 1999 (hereinafter referred to as “TA 1999”) which states that it is a mark that can be represented in a graphical manner so that the goods and services integrated into that mark are easily distinguishable and differentiable in the eyes of the person who looks at that mark. The process and grounds for registration have been highlighted in great detail in Section 11 of the TA 1999 whereas the main function and importance associated with the trademark and its registration is to create assets, protect brand image, give a flavor of creativity towards the brand uniqueness and furthermore a trademark serves the purpose for customers, clients, partners, and operators to easily communicate, find and purchase the goods and services connected with that trademark.

A domain name is an ISP (Internet Service Protocol) that serves as an address of a particular website, in simpler words, a domain name consists of numbers like 425.236.856 similar to a mobile number where you can dial the number and get access to the website which the user wants to access. The simplicity and the advent of the letter-number tracking system on the internet have replaced the need to write and remember numbers with just simply writing words like “www.google.co.in”, “www.yahoo.com”, “www.gmail.com” etc. Hence such internet addresses are the domain names that make content on the internet easily accessible. 

Trademark v/s domain name problem

In the words of Hon’ble Minister of Commerce and Industry, Shri Murasoli Maran, the Trademark Bill was introduced for the purpose of registration, protection, and prevention of fraud when it comes to the usage and goods and services. It has always been the policy of most trademark holders to buy domain names which are resembling their trademarks, for example, a law firm with a registered trademark of “nippon cool” will rather prefer a domain like “www.nipponcool.com” rather than a domain name with “www.soodcool.com”. The main problem is that the domain names are assigned by the ICANN (Internet Corporation for Assigned Names and Numbers) on a “stand in line” basis which leads to a situation where “predatory domain names” are assigned which are abusive towards the registered trademarks. Therefore, there are domain names that are formed where the domain name is registered containing a registered trademark, but the owner of that domain name does not have any legal right, interest, or lawful authority over the name of the trademark it is carrying. 

Extension of the trademark v/s domain name problem to the cyberspace

  1. Cybersquatting:  Since domain names are assigned on a first come first serve basis by the ICANN, there are many instances where domain names are having the same name as that of a legitimate trademark as owned by another trademark holder causing prejudice to his brand image of the lawfully registered trademark herein this is called as cybersquatting. When trademarks and domain names share similarities then such domain name holders might sell out these domain names in the market to earn profits or jeopardize the brand and become abusive towards the brand image of a legitimate trademark holder. Domain names can help one establish an online identity but registering a wrong domain name can put a lawful trademark owner in an affray and he might be squandering about for his rights. Whenever a complaint about cybersquatting is to be filed then the complaint should contain three ingredients, firstly, the presence of malafide intention at the time the domain name was sought from the ICANN, secondly, lack of legal right of the domain name owner over the trademark being infringed and lastly, is the degree of similarity between the trademark and the domain name.
  2. Reverse domain name hijacking: In such cases, it is the trademark owner who threatens the domain name holder with a lot of litigation and suits over the domain name owned by him, herein the trademark and the domain name do not have any kind of similarity. The domain name holder under the threat of costly litigation expenses and legal action might surrender his ownership over the domain name to the trademark holder who has falsely implicated the domain name holder in the litigation process. Such reverse cybersquatting is done mostly by wealthy companies, organizations and the victims are the small-time business and individuals who do not have humongous war chests to fight the wealthy corporations.
  3. Meta tags: A meta tag is similar to a shoot tag on a shirt, T-shirt, or any accessory clothing item, whenever anybody looks at that tag, they get to know in small detail about the quality and the brand of that product. Similarly on the internet meta tags provide knowledge about the details, keywords, and other description about the website, these tags are used in Search Engine Optimization (“SEO”) because it describes in small detail thereto what content is there on the website to which the link is given therein. The original objective behind the creation of meta tags was to help search engines to place websites in an orderly manner concerning user queries received on the search engine. But now meta tags are used to make false rankings and abuse trademark and domain names connected with the trademarks of legitimate owners over the internet through false linking, titles, and descriptions.

Landmark judgments on trademark v/s domain name

Yahoo! Incorporated v. Akash Arora and Another

In the case of Yahoo! Incorporated v. Akash Arora and Another, Akash Arora had registered a website in the name of “www.YahoooIndia.com” and aggrieved by this action of Aakash Arora, Yahoo! filed a trademark infringement suit in the Delhi High Court, the Court ruled in Yahoo!’s favor citing that Aakash Arora had malafidely registered the domain name in his favor, to siphon off the profits from the abusive use of Yahoo!’s trademark. The court laid down that “mere registration of a domain name which is infringing the rights of a lawful trademark holder does not confer an absolute right. The defendant can be liable for trademark infringement because registration of domain name does not give him ownership over that domain name.”

Tata Sons Ltd. & Anr. v. Arno Palmen and Anr. 

The plaintiff instituted a suit for permanent injunction in the Delhi HC for infringement of trademark because the defendant had registered a domain name by name of “www.tatainfotech.in” which infringes the plaintiff’s trademark, the High Court ruling in favor of the plaintiff laid down that the domain name was created in bad faith to fleece money from the plaintiff because the plaintiff is a well-known company which sells distinguished goods and services all over India. Hence, the registration of the domain name was canceled as per the orders of the High Court.

Examining the competency of Indian Courts to pass injunctions and directions on a global scale

The most common remedies for copyright, trademark, and other IP infringement are injunction, damages, border enforcement, and criminal remedies. But the commonest of all the remedies is the remedy of injunction. Since the internet is a borderless world where any competent court in India grants relief in the nature of injunction and restrains the infringing content, such orders of blocking can be limited to within the territory of India but cannot be enforced on a global scale. Since injunction, blocking and other reliefs will be India specific then common people may resort to using Virtual Private Networks (VPNs) to access infringing content hereby making court orders as a dead letter of the law with no teeth. Therefore, in the public interest to set aside this common misunderstanding on geo-specific blocking or cross-border enforcement the researcher lays down the following arguments for global injunctions and global blocking of content regardless of jurisdiction:

Jurisdiction 

If any content on the internet which in infringing upon the copyrights of an Indian user, then the court has authority on a collective reading of Sections 2(1)- subclause (k), (l), (j), and (o) of the IT Act 2000 where the words “computer resource” “computer network which includes one or more computers” hereby it can be argued that a computer system can consist of a global system and the Indian court can direct removal or deletion on a global basis whereas “computer system” and “data” have no limitations placed onto them by the legislature moreover Section 2(2) and Section 75 of the IT Act 2000 uses the words “contravention committed outside India” and CA 1957 and Trademark Act 1999 does not limit the universal jurisdiction in any manner whatsoever.

 Furthermore, in the case of YouTube v. Geeta Shroff, Hon’ble single judge of the Delhi High Court held that any defamatory content which is uploaded from the territory of India if same was downloaded outside India, then there is nothing that stops the High Court from exercising its authority and the content can very well be blocked and deleted through the path by which it was uploaded. It is hereby argued that the person who downloaded the content abroad can be directed to delete the infringing content because the principle of “recognition of foreign judgment” should be followed in that country where the downloader resides. In the case of Modi Entertainment Network and Another v. WSG Cricket PTE Limited, The Hon’ble Court held that injunctions can have an impact abroad provided that the rights in the subject matter of the dispute are in personam rights and hence the courts of India can exercise in personam jurisdiction.

Global injunction 

After a prima facie case has been made out in the court for the grant of an injunction, an injunction on a global level is allowed because, under Section 79 of the IT Act, all the intermediaries are granted exemptions from liability where any kind of material or content is shared upon their platforms by third parties but the safe harbor immunity is subject to certain exemptions whereas it can be argued that an order passed by a competent court should have a full effect because it is unfair that a litigant travels to every country, initiates litigations and gets his copyright enforced in all countries across the globe. Chapter XII of the CA 1957 mentions injunctions but there is nothing there which limits the territoriality of an injunction. In the case of X v. Twitter Incorporated where the Supreme Court of new-south-wales held that global orders had to be passed against the defendant-twitter because companies owe a public duty where global orders seek to enforce public interest. 

Therefore, it is concluded that Indian courts have the jurisdiction and authority under the current legal framework to issue global injunctions and orders in the public interest against infringing works to protect the personam copyrights of the internet users.

Conclusion

Currently, in India, the law is lacking in the aspect of punishing cybersquatting. At best a competent court of law can direct that the domain name be taken back, in India any domain name with the IN extension, has its registration is in the hands of National-Internet-Exchange-Of-India (NIXI) which is an independent body. 

The IT Act 2000 lacks on the front of online piracy, and the copyright act and other IP related legislation have failed to clearly define the global injunction granting power of a court, hence a new domain name registration and jurisdiction related legislation should be passed for giving legal remedies against domain names, copyright infringement and other IP related concerns of performing abusive and bad faith activities on the internet. 

The United States has already passed the Anticybersquatting Consumer Protection Act, 1999, similar legislation on the same lines but a few modifications should be passed in India.

References

Acts/ Regulations/ Rules referred

1. Anti-Cybersquatting Consumer Protection Act, 1999 (United States)

2. Copyright Act, 1957

3. Trademark Act, 1999

4. Information Technology Act, 2000

Books

1. Law Relating to Intellectual Property Rights, VK Ahuja.  

Articles 

1. Indu Sharma & M. Afshar, Privacy and Freedom Issues in Cyberspace with Reference to Cyber Law, 145 International Journal of Computer Applications 11-18 (2016.

2. Atul Jayabhaye, Cyber Law and IPR Issues: The Indian Perspective, Bharati Law Review 1, 3, 5, 7, and 10 (2016). 

Websites referred

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