Delhi High Court grants First Ever Dynamic Injunction to Curb Online Piracy

UTV Software Communications Limited & Ors., being ‘owners’ of cinematographic films, filed eight copyright infringement suits against 30 known websites, certain unnamed defendants, Internet Service Providers (‘ISPs’), MEITY, and DoT for communicating their original content / cinematographic works to the public, without authorization.

At the very outset, the Delhi High Court by way of its order dated April 10, 2019 had held that online piracy ought not to be treated any differently than the infringement taking place in the physical world, especially as the Copyright Act does not make any such distinction. The Court, while analyzing the issue of rogue websites, observed that a qualitative approach should be adopted and also laid down factors to be considered before classifying a particular website as a ‘rogue’ website, key factors being: (i) whether the primary purpose of the website was to commit copyright infringement, (ii) whether details of the registrants were masked, (iii) whether there was ‘silence or inaction’ after receipt of copyright infringement notices from owners, and (iv) whether the website contains any instructions to circumvent measures that disable access to such websites. In view of the factors mentioned above, the Court found the defendant websites to be in fact ‘rogue’ websites.

The Court also considered the issue of ‘hydra headed’ websites, which on being blocked, multiply and resurface as alphanumeric or mirror websites. To overcome this problem, the Court referred to a judgment of the Singapore High Court in the case of Disney Enterprise v. Ml Limited,[1] and adopted the concept of dynamic injunction under its inherent and discretionary powers available under Section 151 of the Code of Civil Procedure, 1908 (‘CPC’), which would allow the plaintiffs to simply implead additional mirror websites to the original suit for injunction by way of an interlocutory application under the CPC, as opposed to filing a fresh suit. The plaintiffs were also directed to file an affidavit confirming that the newly impleaded website is a mirror / redirect / alphanumeric website (i.e., has the same content as an injuncted rogue website) with sufficient supporting evidence.

The Court thus passed a decree of permanent injunction against the defendant websites and further directed the ISPs to block all access to the defendant websites and further directed the DoT and MEITY to explore possibilities of framing a policy which will serve to caution and warn website users of the potential copyright infringement resulting from downloading and viewing pirated content and further fine them if they violate said warnings.

The present case is significant not only as it provides a guideline for identifying rogue websites, but also as it provides a roadmap for strategies that can be implemented to (i) reduce the burden of copyright owners who are aggrieved by such ‘hydra-headed’ infringing websites in the short term, and (ii) discourage access and use of pirated content by website users in the long term.

[1] Disney Enterprise v. Ml Limited, (2018) SGHC 206.

Published In:Inter Alia - Quarterly Edition - July 2019 [ English
Date: July 31, 2019