UTV SOFTWARE COMMUNICATION LTD. & ORS. VS. 1337X.TO AND ORS.

(Order dt.10.04.2019 CS(COMM) 724/2017)

FACTS:

The Plaintiff, including UTV Software Communications Ltd., are companies engaged in creating content, producing and distributing cinematographic films around the world including in India. The Defendants are thirty identified websites, along with John Doe Defendants, the Ministry of Electronics and Information Technology, the Department of Telecom and various other ISPs.

The  main contention of the Plaintiffs before the Court was that the Defendant websites host and provide access to their copyrighted works, in a manner which infringes their rights under the Indian Copyright Act. The Plaintiffs provided access to a sample of such infringing content as evidence that the websites were primarily engaging in online piracy.

The principal defendants (the websites) did not respond to the summons, presumably since they are hosted outside India. Deeming that the matter involved questions of law of general public importance the Court framed the following issues for consideration and adjudication:

a. Whether an infringer of copyright on the internet is to be treated differently from an infringer in the physical world?

The Court held that an infringer of the copyright on the Internet should not be treated differently from an infringer in the physical world. A world without law is a lawless world. The Court further went on to hold 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.

b. Whether seeking blocking of a website dedicated to piracy makes one an opponent of a free and open internet?

The court held that the key issue about Internet freedom, is not whether the Internet is and should be completely free or whether Governments should have unlimited censorship authority, but rather whether appropriate lines should be drawn, how they are drawn and how they are implemented. The Court was of the opinion that advocating limits on accessing illegal content online does not violate open Internet principles.

c. What is a Rogue Website’ ?

The Court was of the view that, music and film piracy are primarily facilitated on the net by FIOLs or Rogue Websites. They are those websites which primarily and predominantly share infringing/ pirated content or illegal work (. The Registrant details of these websites are unknown and any or all contact information is masked/blocked. Even the Ad Networks employed on these websites are not run-of-the-mill popular networks, but obscure Ad Networks, with equally anonymized credentials. These websites invite consumers for watching free movies/contents. Although, some of these websites feebly claim to only provide links to third- party websites and not host content on their servers, yet their entire module/interface is premised on allowing users to watch pirated releases/movies by way of links, and which account for all the content available on their sites.

The Court laid down some of the factors to be considered for determining the website complained of is a FIOL/ Rogue website:

1. Whether the primary purpose of the website is to commit or facilitate infringement;
2. The flagrancy of the infringement or the flagrancy of the facilitation of the infringement.
3. Whether the detail of the registrant is masked and no personal or traceable detail is available either of the Registrant or of the user.
4. Whether there is silence or inaction by such website after receipt of take down notices pertaining to copyright infringement.
5. Whether the online location makes available or contains directories, indexes or categories of the means to infringe, or facilitate an infringement of, copyright;
6. Whether the owner or operator of the online location demonstrates a disregard for copyright generally;
7. 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;
8. 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 i. the volume of traffic at or frequency of access to the website; j. Any other relevant matter.

d. Whether the test for determining a Rogue Website’ is a qualitative or a quantitative one?

The Court held that if the test to declare a website as a Rogue Website is that it should contain only illicit or infringing material, then each and every rogue website would add a small percentage of legitimate content and pray that it be not declared an infringing website.

Consequently, the real test for examining whether a website is a Rogue Website is a qualitative approach and not a quantitative one.

e. Whether the defendant-websites fall in the category of ‘Rogue Websites‘?

 The Court held that, there is sufficient evidence on record to show that the main purpose of each of the thirty websites (arrayed as defendants) is to commit or facilitate copyright infringement and the defendants’ websites provide access to a large library of films, including films of the plaintiffs without their authorisation.  The Court went on to hold that in the present case the qualitative test is satisfied and all of the defendant websites are rogue websites.

 f. Whether this Court would be justified to pass directions to block the ‘Rogue Websites’ in their entirety?

 Answering this question in affirmative the Court held that website blocking has emerged as one of the most successful, cost effective and proportionate means to address this issue. The extent of website blocking should be proportionate and commensurate with the extent and nature of the infringement. A Court should pass a blocking order only if it is satisfied that the same is necessary and proportionate. Website blocking in the case of rogue websites, like the defendant- website, strikes a balance between preserving the benefits of a free and open Internet and efforts to stop crimes such as digital piracy.

 g. How should the Court deal with the hydra headed ‘Rogue Websites‘ who on being blocked, actually multiply and resurface as redirect or mirror or alphanumeric websites?

The most significant aspect of this judgement is that it creates a new procedure to extend website blocking injunctions beyond those specified in the court order, to those websites which are ‘mirror/alphanumeric/redirect’ websites created after the injunction orders, known as a ‘dynamic injunction’. The Court referred to the Singapore High Court’s  decision in Disney v M1, wherein the Court, considered the issue of websites with different domain names or IP addresses providing access to a website which is the subject of an existing blocking order. The Singapore Court, in this case, crafted a ‘dynamic injunction’ whereby a plaintiff could file an additional affidavit stating to the court why a new website fell within the purview of an existing blocking order, and forwarding the same to an ISP, which could dispute the merits of the blocking order.

The Delhi High Court in this case notes that the ‘dynamic injunction’ stemmed from specific provisions of Singapore law. However, the Court held that it was within its inherent powers under Section 151 CPC to craft a solution of a similar nature, and that the plaintiffs could avail of a similar injunction by impleading additional websites under Order 1 Rule 10 of the CPC.

However, the court considers that the judiciary itself should not be burdened with constantly monitoring such affidavits and adjudicating upon their validity. The order therefore delegates the power to adjudicate upon the issue of additional websites being added to an existing blocking order to the joint-registrar of the Delhi High Court, who functions in an administrative capacity (mostly in dealing with matters of purely procedural importance). In this case, the power is delegated under very specific provisions of the law, namely 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. The same rules also allow an aggrieved party to appeal against the joint registrars’ orders.

Finally, the Court ‘directs’ the MeitY and the DoT, who are also defendants in this case, to consider a suggestion whereby they can come up with a policy for a graduated response scheme, where individuals who access ‘pirated content’ can be notified of the same by ISPs, and if they do not refrain from continuing such actions, they may be fined. The Court was of the view that this would go a long way in curbing the pirated content and the dark-net as well as in promoting the legal content and accelerating the pace of ‘Digital India.’

This directive by the Delhi High Court could prove to be immensely useful in identifying and penalising individuals accessing pirated content, thereby curbing the menace of piracy to some extent.