John Doe Orders and its use in India

In this blog post, Gourav Khatri, pursuing M.A. Business law from NUJS, Kolkata, talks about John Doe Orders and the situations when they are granted.

What Does John Doe Mean

The origin of ‘John Doe’ was from England’s King Edward III and the orders were issued to unidentifiable defendant. Oxford Dictionary defined John Doe as “Anonymous Party”.

In the wake of LPG i.e. Liberalisation, Privatisation and Globalisation, the intellectual property has been termed as the most important asset in today’s world.

Where there are several unknown parties involved in a case or dispute and whereas their identities are not traceable, they are collectively called as John Doe. In other words, Doe name is used to identify the anonymous or an unknown defendant.

What are John Doe Orders

When it comes to protect intellectual property rights against certain unknown person and when a person who can be a threat to a given task, project, work, where such person can’t be traced due to his identity being hidden under various layers of covers, to protect such situations a legal remedial course of action emerges and that is termed as John Doe orders.

The basic idea is to protect intellectual property rights where the persons are anonymous.

The person who is of the apprehension that there is the likelihood of having caused some harm, by copying by an unidentifiable person on his project, where the outcome of such project has become innovative or inventive, can approach the court to direct to issue John Doe order.

It is an interesting concept of law where a person who is a party to certain legal proceedings but his or her name is unknown. It may be anyone be it an individual, company, partnership, association of person, a body of individuals, trust, society, service providers, website owners, newspaper owners which infringe intellectual property rights by making certain steps with such intent.

Upon application by a person who is in apprehension of having his book, movie, television show, live sport event may approach to a court of applicable jurisdiction and seek to secure a John Doe order which is in most acceptable legal sense is termed as the cease and desist order to protect his probable loss due to copying and publishing without the author’s knowledge or prior information.

John Doe Order and Indian Courts

Under the Indian scenario, John Doe order is issued in the following areas:

  • Movies

Before release or even after release, the telecasting or copying and selling unauthorized copies of a movie. The producers can protect their rights by securing a John Doe order where the will file a petition/application to issue John Doe order in the name of so-called produced movie by them and the court may upon deciding the merits of the case may proceed to issue John Doe order.

  • Books

Author or the Publisher may approach the court and establish that the book authored by them is having a likely apprehension of copying without the permission of the author or the publisher and therefore, should be curbed by such unauthorized publication. The court may upon evaluation of the case grant the John Doe order.

  • Sports Events

Live telecast rights can be protected via John Doe order.

Legal Position of John Doe Orders in India

Order 30 Rule 1 of the Code of Civil Procedure entails that where a petitioner has likelihood of happening of some infringement of copyrights by using the information created by petitioner or has clues of having his works copied to achieve some financial gains may approach the court and seek John Doe order.

The court has been empowered under Order 39 Rule 1 and 2 of the Code of Civil Procedure, 1908 whereby the court can issue an injunction order to issue John Doe order.

John Doe order has been recognized worldwide and has been internally accepted in terms of implementation of rights relating to intellectual properties. Indian courts although have started issuing John Doe orders, however, the implementation and effectiveness are yet to be seen.

The scope of John Doe order has been extended to media but has touched to seize counterfeit goods in case of infringement of either trademark or copyright. This even extends to those unidentified people who have been indulged in manufacture and sale of counterfeit optical. Infringing labels, artistic work and packaging materials of Plaintiff have also got place in Indian legal system, so far John Doe order is concerned.

The basic idea is that as long as the litigating finger is pointed at a particular person then the misnomer is not fatal. Indian judicial system has from time to time realized the order of infringement should be even passed even prior to the event of infringement itself to restrain threatened or probable wrongful.

 3 Cases in India where John Doe Order has been Granted

  • E.S.P.N. Software India Pvt. Ltd. (Appellants) Vs. Tudu Enterprise and Ors. (CS/OS/384/2011)

Hon’ble Judge Smt. Gita Mittal, J.

Acts or Laws Applied –

Copyright Act, 1956 – Section 37(3), Cable Network (Regulation) Act, 1955, Code of Civil Procedure, 1908, Section 151, read with Order 26, Order 39 Rule 3.

Detailed Discussion –

The case was pertaining to Section 37(3) of the Copyright Act, 1957 whereas, the defendants had damaged the right of the plaintiff without entering into any proper contracts either with distributor or with plaintiff while using transmitting networks channels of plaintiff and showed events to their subscribers thereby, caused violations with respect to the reproduction laws of broadcasting. An appeal was preferred whether the acts done by the defendants were unauthorized while transmitting networks channels of the plaintiff.

It was held by the Hon’ble Delhi High Court that the channels belonging to the plaintiff were paid channels. These were viewed by those persons who were subscribed through a proper route of distributors.

Therefore, it could have been accessed through only authorized users.

The owners or the licensed who were having equipped with certain encryption could distribute these licensed channels. Decoder or decryption devices were being used while distributing the channels. Such devices were having a unique identification number to differentiate and identify the subscribers.

Unauthorized cable operators indulge in illegal capturing of sports related channels of the plaintiff were illegally transmitted and whilst they were not having neither the distribution rights nor were doing the legal authorized distribution.

While the defendants had not executed any licensed agreement with plaintiff’s distributors and were having no right to distribute channels over their cable operators therefore, it was in violation under Section 37(3) of the Copyright Act. Thus it was not justified and the appeal was disposed of.

The Hon’ble Delhi High Court in this matter held the following ratio decided in the case-

  • It was held that the defendants and their agents including the representatives, franchisees etc or anyone claiming under them were restrained from using and distributing, telecasting and broadcasting including re-broadcasting or in any sense communication with respect to the viewing public subscribers either by wireless or by wire or in any ways the upcoming World Cup ICC, 2011 being telecast on the STAR Cricket and ESPN and START Sports Channels in any manner where its rights were infringed by way of copyright/re-broadcast right of the plaintiff by making download from any other channels not registered under the relevant guidelines.
  • Delhi High Court further held and directed that the directions shall operate against the defendants unless the said order was vacated. Their representatives, agents, families, franchisees and sub-operators or any other person are liable under said injunction.
  • The injunction was passed against unknown and unidentifiable persons warning the unnamed persons in order to protect the rights of the trademark owners.
  • The SHO and concerned investigating staff of the police was directed to support the plaintiff and was stated to assist for the purpose of quick and swift enforcement of the present order as it was the obligation of the police authorities to ensure effective implementation of the injunction order passed by the Delhi High Court.
  • Further, the plaintiff was directed to comply with the provisions of Rule 3 of the Code of Civil Procedure.

Key principles established in the case of E.S.P.N. Software India Pvt. Ltd. (Appellants) Vs. Tudu Enterprise and Ors. (CS/OS/384/2011)

  • It was established that the court may issue suitable injunction order considering the volume of business, loss of opportunity and to ensure the effective implementation of the restriction of misusing the Intellectual Property Rights.
  • The court appreciated the legal privileges secured by the trademark owners who are the owners should be given adequate protection while ascertaining the requirement of safeguarding their interests.
  • Even unidentifiable and unknown person can be brought under the purview of John Doe orders.
  • Enforcement machinery like police can be used to bring implementation in place.
  • Viacom18

In India, the Indian judiciary has been actively accepting John Doe order as a principle to secure copyright issues from time to time. This has gain popularity in bollywood rapidly on account of prevention against unauthorized copying and piracy. Recently, Hon’ble Madras High Court has restricted on the application of Viacom18 1250 identified and all other unidentified websites which are under apprehension of hosting pirated content prior to the launch of their latest upcoming movie namely Force – 2.

Through this, John Doe order so issued by the above-referred court the Internet Service Providers will get power and shall remain under the obligation to block websites upon request from the content owners i.e. Viacom18. This is without the need to validate each block from the said court. This has also been directed to block entire websites instead of only blocking the URL. Quite interesting that how long this block will be valid.

Under this ruling the court has unlike the judgement issued by Hon’ble Bombay High Court in petition filed by EROS where it was issued to block website in the month of July, the High Court had ruled that John Doe orders apply only to specific URL or subsections of said website which might infringe or have infringed copyrights in any time earliest. It is important here to understand that while blocking specific URLs it does enhance chances of piracy copies emerging on the same website again and also it ensures that collateral damage would be left out very minimum.

Worth mention here is that the side effect of John Doe order is that it has many-a-times affected those who are not actually involved in piracy or copyright activities.

For example, there was a website namely Mad About Movies which was only a review provider, was even blocked. This website was carrying discussions on the reviews of the movies which were even blocked.

Internet Service Provider’s email id on blocked websites was prescribed by the Hon’ble Bombay High Court as mandatory while issuing the John Doe orders for the release of movies namely Dishoom.

In the recent past, Bollywood has been gaining added advantage of John Doe order as it has started taking benefit of John Doe order and treating it as a weapon of choice to curb piracy.

The trend of using and filing petitions to seek John Doe order started in July 2011 when various internet service providers had blocked access to stop sharing files vide an order passed by the Hon’ble Delhi High Court.

In India, John Doe Order is also termed as “Ashok Kumar order”.

Key Principles established under Viacom18 Case

  • The Internet Service Providers will get power and shall remain under the obligation to block websites upon the request from the content owners.
  • It is important here to understand that while blocking specific URLs it does enhance chances of piracy copies emerging on the same website again and also it ensures that collateral damage would be left out very minimum.
  • Tata Sky Ltd. (Appellants) Vs. Nible TV Inc. and Ors.

Hon’ble Judge Shri V. Kameswar Rao, J.

Laws Applied –

In relation to Code of Civil Procedure, 1908 (CPC) – Order II Rule, 2; read with Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 1, read with Code of Civil Procedure, 1908 (CPC) – Order XXXIV Rule, 2, and Rule 3

The area of judgment was to evaluate whether the plaintiff was entitled to a decree of injunction against defendants.

It was held that the plaintiff had been licensed by GOI to act as DTH operator and the condition stipulated was that neither set top box or dish antenna should be moved from the premises of the subscriber of such services. The plaintiff entered into several agreements which spread across broadcasters pan India. The channels were made available for subscription for the viewers on DTH platform of the plaintiff.

The defendant had a website namely www.watch.nimbletv.com through which defendant No. 1 and 2 were using the website of plaintiff company without the authorization of plaintiff.

By said website, a customer could gain access to plaintiff’s website and would be able to access to view subscribed channels using the internet.

This all act was done by the defendants without seeking any permission of the plaintiff. Thereby it had infringed trademark “Tata Sky” of which owners was said plaintiff.

The legal recourse taken by the plaintiff in the plaint was of passing off. It was filed against all persons who had indulged in illegal activity concerning whose identity was not known. It was held in the case of ESPN Software India Pvt. Ltd. Vs. Tudu Enterprise and Ors. wherein the Hon’ble Court had held that jurisdiction to pass an order in nature of a John Doe order against person unidentified was issued.

Accordingly, a decree was passed issued in the nature of permanent injunction against the defendants no. 1, 2 & 3.  Injunction was issued against the unidentifiable person against of whose apprehension who could damage the trademark rights of the plaintiff and thereby cause huge loss to the plaintiff business. The court held that the online tapping done by defendants was illegal and a serious threat to the DTH operations.

The ratio kept in mind while deciding the case was that a party who had chosen to not to participate in court proceedings and stay must afford to suffer the consequences of the injunction order.

In view of the hearings held in the said court of law it was adjudicated by Hon’ble judge that a decree of permanent injunction should be passed and the defendants no. 1, 2 & 3, their partners, directors, proprietors, shareholders and officers including their representatives, franchisees or nominees including their known or unknown related to the defendants should be restrained from the matter linked through all sort of technical ways including and not limited to internet available with the plaintiff and said people should refrain from using the illegal usage. It was further ordered by said Hon’ble Court that defendants no. 1 to 3 were directed not to use/refer to the trademarks owned by TATA SKY. It was not just limited to www.watch.nibletv.com in any manner.

Further, an injunction order was passed against unnamed and undisclosed people who might be in a position to infringe and commit the breach of the legitimate rights of plaintiff.

Key Legal Principles established under Tata Sky Ltd. (Appellants) Vs. Nible TV Inc. and Ors.

  • A party who had chosen to not to participate in court proceedings and stay must afford to suffer the consequences of the injunction order.
  • An injunction order can be passed against unnamed and undisclosed people who might be in a position to infringe and commit the breach of the legitimate rights of plaintiff.
  • Jurisdiction to pass an order in nature of a John Doe order against person unidentified was issued.

Conclusion

Although, from the protection perspective, the John Doe order seems to be in the right direction, however, the very purpose needs to be safeguarded. The very purpose should not be deviated by a vague injunction which can be an abuse of the process of court of law and this type of general and vague injunction of anticipatory shape should never be granted. To protect the interest, the scope and extent of such orders should be categorically stated to avoid any sort of misuse.

In Indian purview, the usages of John Doe orders have brought interestingly the awareness and feel of protected amongst the Intellectual Property owners. The main point of John Doe order before the court of law is that what if the unidentified defendants are (1) not aware about such orders or (2) not willing to follow such orders (3) avoids and prefers to continue with such infringement even after that then in that case what will be the purpose of having served such orders as it will go totally waste if the ultimate goal is not achieved of having intellectual property rights protection.

Piracy in India has been a huge problem. It is estimated that every year at least 650 million pirated DVDs are sold in comparison of 20 million original published which is 32.5 times. As per an estimate, piracy causes $2 Billion loss every year. Accordingly, the significance of John Doe order can be easily ascertained as the same is insurmountable. The right use and awareness campaign by government shall play a crucial role in an effective implementation of the order.

In a case where the injunction was supposed to be denied, the plaintiffs of the infringement is clear of his or her entitled proprietary usage. The court would require applying Law of Equity to analyze the remedial course available whether adequately safeguards the rights of the parties approach to it.

In the recent past, John Doe order has become a powerful tool in the hands of film-makers as in India piracy has been a perennial root cause of losses in the film industry. John Doe order has been a tool to avoid any such courses. It is imperative to bring effective implementation procedures in Indian context to utilize its maximum benefits.

To sum up, it can be inferred from the above discussion that the John Doe order usage has been growing gradually and it is at a nascent stage at present. It is extremely important to understand that the implementation of John Doe orders shall depend on the deeper understanding of the order and inherent legal applicability and will of the Indian Judicial Systems prevailing in India. The mechanism of application of John Doe order entirely depends on the way it is handled and enforced by Indian courts across India.

I hope now you know where to go in case you come across the copyright infringement, of your or any of your associates creative content. Do you have any questions to ask? Feel free to drop a comment below & share the article.

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