The Law Gazette
Dynamic Injunctions: A Novel Specie of Injunctions in the realm of Digital Piracy
The Cambridge Dictionary defines ‘digital piracy’ to mean “the practice of illegally copying and selling digital music, video, computer software, etc.”[i] Digital Piracy in laymen terms can be defined as the act of using, reproducing, hosting, disseminating any information or content in a digital format or through the use of online technologies as a medium for the same, without obtaining due authorization from the legal owners/licensees of the content in question.[ii] Digital piracy has been primarily witnessed in the copyright arena, most prominently in cases of cinematographic films. However, digital piracy has also pervaded the sphere of trademarks wherein fake websites are created for illegally using a proprietor’s trademark, or for unauthorized selling of trademarked products. The reasons for rampant digital piracy can be attributed to certain factors, like anonymity over the internet, the scope for misrepresenting one’s identity, and advanced technology that catalyses the process of creating illicit content, among others.
THE CONTOURS OF DIGITAL PIRACY AND RESULTING DILEMMA
The methods through which online piracy is facilitated are several in number. In this regard, the “regular blocking injunctions” have become orthodox when it comes to online IPR infringements. Some of the ways in which content can be replicated online are through creating mirror websites, changing online usernames or creating new URLs. A mirror website, as the name suggests, is a clone or a replica of a particular website. For example, a website with the domain name xxx.com hosts some infringing content, and is blocked by the way of an injunction order. The infringer creates another mirror website of the one that was blocked, which now has a different domain name zzz.com. In this manner, websites can be mirrored in a matter of few minutes, and the injunction order that was obtained for the former website would prove to be futile for the mirror website that was created, for the reason that the latter was not included in the original suit.
Generally, in cases of copyright or trademark infringement, the rightsholder may approach the court and seek an injunction to restrain the defendant from committing further acts of infringement. The same remedy may also be availed when the infringement is facilitated through online modes, whereby the particular website or the person responsible for creating pirated content is directed to take down the infringing material. But what happens when the same content is disseminated through another user name, domain name system or website operated by the same infringer? The initial blocking injunction[iii] does not have a parallel application to any subsequent infringements, and hence, the rightsholder would have to tediously obtain injunctions for every other infringement by the same mirror website, or through a different URL, that takes place in due course. This, is not only undesirable, but also unfeasible for the plaintiff who shall have to file numerous separate suits each time to obtain a remedy.
DYNAMIC INJUNCTIONS AS A REMEDY FOR DIGITAL PIRACY
Dynamic Injunctions as defined by the European Commission in the Intellectual Property Rights Enforcement Directive (referred to as “IPRED”) are “injunctions which can be issued, for example, in cases in which materially the same website becomes available immediately after issuing the injunction with a different IP address or URL, and which are drafted in a way that makes it possible to also cover the new IP address or URL, without the need for a new judicial procedure to obtain a new injunction.”[iv] As has been succinctly defined by the EU Commission, dynamic injunctions may be obtained to remedy infringements by mirrored or masked websites, or through different URLs and Domain Name Systems (“DNS”). The essence of passing such dynamic injunction orders is to curb the multiplicity of proceedings and provide an efficacious remedy to the plaintiff-rightsholder by extending the injunction order that was granted against a particular website, against all such similar mirror websites that host/provide the infringed content which was the subject matter of the original/initial website. Therefore, as can be understood, the subject matter of dynamic blocking injunctions are the rogue websites or the redirect/mirror/alphanumeric websites that provide illicit content.
Dynamic blocking injunctions have been issued by various courts in the UK, in many of the EU Member States like the Netherlands, Ireland and Denmark. It may be pertinent to bring to light that any grant of a website-blocking injunction in the UK is interpreted to be a dynamic injunction, as the order contains provisions that makes it obligatory for the Internet Service Providers (“ISPs”) to engage in active blocking of other additional IP addresses, DNS and URLs, that host infringing content to the subject-matter in question.[v] The UK therefore, is one of the few jurisdictions that has robust application of dynamic injunctions.
The author would like to illuminate the manner of application of dynamic injunctions in India by enunciating the judicial pronouncements in this regard. In the case of UTV Software Communications Ltd. v. 1337X.to & Ors.,[vi] whereby the plaintiff-companies were engaged in the creation and distribution of cinematographic films globally, including India, whereas the defendants included certain identifiable websites, John Doe websites, Internet Service Providers, the Ministry of Electronics and Information Technology and Department of Telecom. The defendant websites allegedly hosted the plaintiff’s copyrighted content on their website without due permission. The Delhi High Court after applying certain tests declared the defendant websites to be “rogue websites”, and held that the plaintiff could by notification to the ISPs extend the original blocking orders to such rogue websites, without approaching the court on every other occasion. The court delved into the issue of what are rogue websites, at length. Rogue websites, also known as Flagrantly Infringing Online Locations (“FIOLs”), are websites that predominantly operate to share illegal/pirated content either on their website, or by providing a redirect to third-party servers.[vii]
The factors for determining a FIOL includes inter alia, the masking of registrant details; the frequency of access to the website; general disregard for copyrighted content etc. Further, it is immaterial whether a FIOL hosts some legitimately created content, implying that a website does not need to contain illegal infringing material in its entirety- hence, the test for identifying a rogue website is a qualitative one,[viii] as opposed to a quantitative test. A contrary approach would only make it arduous on part of the rightsholder to discharge his burden of proof to safeguard his intellectual property. The court further discussed the possibility of blocking the entire website, instead of the infringing URLs, for the very reason that changing URLs is duck soup. If new URLs of a rogue website are created, this would negate the very process of seeking the dynamic injunction. However, the test of proportionality and necessity must be borne in mind in this regard to the balance the rights of the rightsholder and defendant.
As for the “hydra-headed websites”, that on being blocked multiply in number and resurface as mirror websites or alphanumeric websites, the court took an importance stance and held that dynamic injunctions may be a significant step towards countering the circumventive attempts by hydra-headed websites to provide pirated content. The court in this regard placed reliance on the Singapore High Court (“SGHC”) case, Disney Enterprise v. MI Ltd. (2018) SGHC 206,[ix] whereby the SGHC held that a rightsholder is not obliged to approach the court every time for seeking an injunction order against “the IP addresses of FIOLs that provide access to the same websites which were the subject matter of the main injunction.” In essence, a dynamic injunction does not block every other new infringing website, but only restricts the means of accessing those infringing websites (through different URLs) which were included in the main injunction suit.
The Delhi High Court has been the torchbearer when it comes to passing of dynamic injunction orders vis-à-vis safeguarding one’s intellectual property. In the case of Disney Enterprises, Inc. & Ors. versus Kimcartoon.to & Ors.,[x]the Delhi High Court granted an injunction against several rogue websites that illegally granted access to Disney’s copyrighted films, and the order was further made operative against all such alphanumeric/redirect/mirror websites which come into play to grant access to the main infringing websites in question. The court also held that “such cases of egregious illegality by rogue websites need to be dynamically monitored.”[xi]
The above two cases of dynamic injunction pertained to that of copyright infringement. However, the Snapdeal Inc. v. Snap case was one of trademark infringement, wherein the rogue defendant websites were engaged in fraudulent activities of prize schemes, lotteries, and lucky draws, which were being conducted under the trademark of Snapdeal Inc. The Delhi High Court permitted Snapdeal Inc. to extend the original injunction order without filing a fresh suit, to any other rogue websites which hereinafter engaged in the alleged activities. The Court however, did not delve into the procedure to be followed for arraying such websites.
ANALYSIS OF THE COURT ORDERS
In the above-mentioned cases, and several others that have taken dynamic injunctions a foot forward, there persist certain questions that remain unanswered. Firstly, the courts have permitted the plaintiff-rightsholder to extend the injunction orders to such FIOLs that disseminate only the “same” illegal content/material as was being produced by the websites in the original suit. If, the subject-matter of a rogue website is not the same as that of the blocked website, then there is high possibility that a dynamic injunction may not be applicable in such a case. However, if at all, the courts consider evading the condition of “same content”, then there arises an issue as to extent of dissimilarity that will be considered appropriate for arraying the subsequent rogue websites. This makes the application of dynamic injunctions far more ambiguous than it seems.
Secondly, in the absence of a statutorily-engrained provision for dynamic injunctions, there is huge scope for different standards for application. As much as the facts of one case differ from another, the manner in which dynamic injunctions are implemented also varies on a case-by-case basis. For example, the Delhi High Court in UTV Software case delegated the responsibility of determining whether a website is a mirror website or not, to the Joint Registrar. Whereas, in the Snapdeal Inc. case, a broadly-scripted order was passed whereby the words “to array any other rogue websites” were used, without any limitation as to manner or the authority who shall identify these rogue websites. Thus, there persist certain questions of administrative importance that have to determined when it comes to dynamic injunctions.
In the Disney Enterprise case of the SGHC, the dynamic injunction was passed under the provisions of Singapore Copyright Act. However, in India, the Delhi High Court invoked its inherent powers under Section 151 of Civil Procedure Code, 1906, to pass the dynamic injunction order, as there exists no explicit provision either in the Copyright Act, or any other law, to pass an order of dynamic-blocking injunction. Needless to say, the author is of the opinion that introducing Rules for dynamic injunctions under the requisite laws will only facilitate the smooth application and administration of such orders in their entirety.
Thirdly, the duration or the temporal scope of dynamic injunctions has not been stated in any of the judgements in which the order of dynamic website blocking was so passed. In other countries like France and Greece, there is an upper-limit of 18 months and 3 years,[xii] respectively, for which dynamic injunctions continue to remain operative. In Ireland, this duration is stipulated to be one year. Whereas, in the Netherlands, the courts have sought to supervise the continuance of blocking orders-although quite subjectively, till the time there continues to exist a fair balance between the fundamental rights of parties.[xiii]
On a comparative analysis with the jurisdictions that specifically define the time-period during which the blocking order will remain in operation, the author opines that it is only reasonable if the courts in our country adopted a uniformly-created skeletal structure for passing such orders- including inter alia the scope, time-period, territorial application, and the exceptions, for the application of dynamic blocking injunctions. This certainly calls for legislative amendments in the respective statutes.
To conclude, the author states that the passing of dynamic blocking injunctions orders in furtherance of the objective to circumvent and limit the piracy of intellectually-protected content/material, is indeed a stepping stone towards curbing online piracy. However, as discussed above, the present law is substantially insufficient to cater to the ambiguities that arise in this regard. As far as the court orders are concerned, the Delhi High Court in the UTV Software case did delve deep into the issue concerning online piracy and dynamic injunctions. Nevertheless, a uniform approach at the judicial level will most certainly alleviate the asymmetry in the judgements which is quintessential to safeguard the IP rights of the people at large.
ENDNOTES [i] Cambridge Dictionary, definition of digital piracy, https://dictionary.cambridge.org/dictionary/english/digital-piracy, (last visited May 27, 2021). [ii]See Paul Belleflamme & Martin Peitz, Encyclopedia of Law and Economics, “Digital Piracy”, (Jürgen Georg Backhaus eds, Springer), (Jan 2014). [iii] ‘Blocking Injunction’ can be defined as “an order requiring an internet intermediary to implement technical measures directed at preventing or disabling access to a specific internet location.”-See Jaani Riordan, The Liability of Internet Intermediaries, OUP, Oxford, UK, (2016), 461. [iv]Communication from the Commission to the European Parliament, the Council and the European Economic and Social Committee, Guidance on certain aspects of Directive 2004/48/EC of the European Parliament and of the Council on the enforcement of Intellectual Property Rights, COM (2017) 708 final (the ‘Guidance’), at 21. [v] European Union Intellectual Property Office, “Study on Dynamic Blocking Injunctions in the European Union: IPR Enforcement Case-Law Collection, (March 2021), 37-38. [vi] UTV Software Communication Ltd. & Ors. v. 1337X.to & Ors., CS(COMM) 724/2017. [vii] Id, ¶ 58, See also: ¶ 2 of Order dated 29.07.2016 in DEITY Vs. Star India Pvt. Ltd, FAO (OS) 57/2015. [viii] Department of Electronics and Information Technology v. Star India Pvt. Ltd., FAO(OS) 57/2015, ¶ 13-14. [ix] Disney Enterprise v. MI Ltd. (2018) SGHC 206, ¶ 38. [x] Disney Enterprises, Inc. & Ors. v. Kimcartoon.to & Ors, CS(COMM) 275/2020. [xi] Id, ¶ 11. [xii]Study on Dynamic Blocking Injunctions in the EU, supra note 4, at 45. [xiii] Id.
ABOUT THE AUTHOR
This blog has been authored by Radhika Maheshwari, who is a 5th Year B.B.A., LL.B. (Hons.) student at Bennett University, Greater Noida.
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