Dynamic injunction: Tool to combat Digital Piracy

Dynamic injunction is a new type of injunction that helps to combat digital piracy and provides effective remedies to IP right holders, shares Vikrant Rana, Managing Partner and Shilpi Saurav Sharan, Senior Associate of S. S. Rana & Co.

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The Indian Publishing Industry has been a burgeoning sector, recording a growth of INR 500 billion in 2019-20, which is estimated to grow to INR 800 billion by 2024. However, even this sector has been tremendously impacted by infringement, piracy and particularly by online or digital piracy owing to unprecedented technological advancements and seamless internet penetration even in the remotest areas of India and across the world.

Online piracy in India

In this context, it would be relevant to mention about the latest United States Trade Representative (USTR’s) Special 301 Report of 2022, which reports about notable levels of high online piracy in India due to illicit streaming devices as well as illicit Internet Protocol Television. The Report also remarks the Internet to be an extremely efficient vehicle for disseminating pirated content which gives a leeway to infringers and also competes unfairly with legitimate e-commerce and distribution services that copyright holders and online platforms use to deliver licensed content. Additionally, messaging apps like Telegram and WhatsApp have made it easier for the infringers to circulate pirated content including books, magazines, newspaper articles, movies, music, documents, videos, etc.

The circulation of pirated content through platforms like WhatsApp and Telegram was recently in news, when it was reported that piracy on Telegram steeply increased to 1092%.

Dynamic Injunction Saga in India

In order to combat the growing repercussions of digital piracy, the Indian Courts have recently granted ‘dynamic injunction’ against rouge websites and URLs. “Dynamic injunction” was defined by Hon’ble Ms. Justice Pratibha Singh in the case of UTV Software Communication Ltd. and ors v. 1337x.To and ors. as “an injunction order that is not static but dynamic. This means that, while the initial injunction order may only apply to one website, if mirror websites are created, the injunction will dynamically apply to those mirror websites as well.”

Thus, Dynamic injunctions enable the Courts to extend the original injunction order and include the new /additional mirror/fake websites that have the same content as the original one and are only registered under a different domain name and/or use a different IP address.

If a plaintiff obtains a dynamic injunction against certain rouge domain names and/or URLs, it implies that the Plaintiff will not have to approach the Court again if the same content appears on a different domain name or URL; the injunction order blocking the initial domain name or URL will also be applicable to the new domain name or URL.

The Timeline

The Indian Courts, particularly the Hon’ble Delhi High Court has played an instrumental role in developing the jurisprudence on real-life enforcement against digital piracy. In 2002, the Delhi High Court in the case of Taj Television Ltd. and ors. v. Rajan Mandal and ors.passed its very first ‘John Doe order’, commonly known in India as an ‘Ashok Kumar order’. As the name suggests, John Doe orders are ex-parte orders enforceable against an unknown party. These orders help prohibit any potential infringing activities by unidentified people.

However, these orders were becoming ineffective due to similar ‘mirror/redirect/alphanumeric’ websites that cropped up after the original website was taken down and that displayed the same infringing content as the original website. Taking a leap forward, the Delhi High Court on April 10, 2019, through its order in the case of UTV Software Communication Ltd. and ors v. 1337x.To and ors., set down a broad legal framework for blocking websites, by granting, for the first time, the remedy of a ‘dynamic injunction’. Borrowing from Singapore High Court’s decision in Disney Enterprise v. Ml Ltd., the Hon’ble Delhi High Court in the case allowed Plaintiffs to directly approach the Joint Registrar of the Delhi High Court, for extension of an existing injunction granted against a website, against mirror/redirect/alphanumeric websites which contain the same content as the injuncted website. This eliminated the need to obtain a judicial order against each and every one of these ‘hydra-headed’ or ‘rogue’ websites, thereby saving time and money of legitimate IP holders.

The aforementioned order by the Hon’ble Delhi High Court resulted in inter alia shutting down of approximately thirty (30) Torrent websites from hosting infringing content.

Recent Dynamic injunction orders passed by the Indian Judiciary

DB Corp Ltd vs WhatsApp LLC & Ors.- In 2021, DB Corp or Dainik Bhaskar Group began circulating its e-paper on a subscription-based model. Later, the Plaintiff discovered that the Defendants were illegally circulating their e-paper on various groups through WhatsApp. Thus, the Plaintiff sought for an ex-parte injunction restraining Defendants from infringing their paper. The Hon’ble Delhi High Court directed WhatsApp to take down/block all the groups which were illegally circulating the Plaintiff’s e-newspaper.

Bennett Coleman Co Ltd vs WhatsApp Inc & Ors.- In this case, the Plaintiff (Times of India) offered E-paper on their website on subscription basis. The Plaintiff later learnt that their e-paper was being illegally reproduced on the websites of various Defendants.

The Plaintiff immediately took legal action against the rouge Defendant websites. Defendant Nos. 4 to 9 in the present case were the admin of a WhatsApp group, namely, ‘Media Guru’. The Court in the case noted that Plaintiff’s various e-papers have been unauthorizedly and illegally uploaded in PDF form on daily basis and as the Plaintiff was exclusive owner of the copyright in the said literary work, it possessed all rights to it in any material forms.

Cases in which Court ordered Defendants to disclose the Identity of Imposters

Neetu Singh & ANR v Telegram FZ LLC & Ors.- In this case, the Plaintiff was an author of academic books and she later discovered that her copyrighted works were being disseminated through various Telegram channels.

In the facts and circumstances of the case, the Court directed Telegram to disclose the details of the channels/devices used in disseminating the infringing content, mobile numbers, IP addresses, email addresses, etc., used to upload the infringing material and communicate the same, as per the list of channels filed along with the present application.

The order also observed in the case that ‘Courts in India would be perfectly justified in directing Telegram, which runs its massive operations in India to adhere to Indian law and adhere to orders passed by Indian Courts for disclosure of relevant information relating to infringers. Infringers cannot be permitted to seek shelter under Telegram’s policies merely on the ground that its physical server is in Singapore’.

Jagran Prakashan Limited vs Telegram Fz LLC & Ors.- The Plaintiff, owner of newspaper, Dainik Jagran alleged that a user on Telegram was indulging in reproducing, distributing and disseminating e-newspapers of the Plaintiff. Thus, they filed the suit seeking for ad-interim injunction against the defendants. Telegram LLC was directed to block all the channels and they were directed to disclose all the information of the owner of those channels.

Conclusion

Even after issuing ‘dynamic injunctions’ against, rogue websites these websites continue to proliferate, making it impractical for the litigant to return to Court as these rouge website keeps mushrooming up.

As a result of the march of techno-legal complexities, dynamic injunctions have emerged. Orders of dynamic injunction provide a practical means of ensuring the original injunction’s continued effectiveness by expediting the blocking of additional domain names/URL/rouge websites that relates to the same cause of action.

Therefore, dynamic injunction is a new type of injunction that helps to combat digital piracy and provides effective remedies to IP right holders.

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