Dynamic injunction has been the newest device to curb the menace of resurfacing pirated websites. In a recent case, UTV & Ors. vs. 1337x.to & Ors., the Delhi High Court issued India’s first ever dynamic injunction, to put a leash or control the websites resurfacing with a different name, by extending the existing the injunction to the new websites which may erupt with a different name in the future. The objective being to assist the right holder in avoiding the cumbersome process of filing a fresh suit and simply approach the Joint Registrar of the Delhi High Court with appropriate evidentiary documents and extend the existing injunction to the website publishing the same infringing content. Until recently, the right holder had to file a fresh suit or possibly utilize John Doe order/injunction by adding the party to the existing suit. Dynamic injunction specifically helps in cases where an infringing website may resurface as redirect or mirror or alphanumeric website.

The plaintiffs, UTV Software and 20^th Century Fox (amongst others), are engaged in the business of creating content, producing and distributing cinematographic films round the globe including in India. On the other hand, the defendants are primarily, 1) certain identifiable websites, 2) unknown website operators impleaded as John Doe defendants, 3) Internet Service Providers and 4) Government Departments such as Telecom (“DoT”) and Ministry of Electronics and Information Technology (“MoE”). As per the plaintiff, the last two of the list of defendants have been impleaded for effective relief by bringing the balance between the right holders’ interest and public interest.

The right holders alleged infringing content being streamed or enabling download on the identified and unknown website operators which lead to violation of their copyright. The defendants No. 1 and 2 did not appear and the matter was dealt ex-parte. Further, the court had appointed amicus curiae to assist the court with legal issues as the matter pertained to issues of general public importance.

The court finally framed the following issues.

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

Internet exceptionalists believe that internet should be considered as free or unrestricted space. Thus, according to them, mostly rules that apply offline should not apply online. The said view emphasizes on individual freedom rather than collective responsibility. The follower of this school of thought believe, when it comes to online piracy, consumer reward with free content should be preferred over legal loss in sales. However, the court came to the conclusion that piracy websites are no longer about ideological reasons but profit making model through advertising. For an example, Pirate Bay were earning 3 million dollars per year. Likewise, Kickass Torrents was making $16 million dollar in advertising. Further, it was observed if the infringer of the copyright in the physical world would be treated differently from an infringer in the internet world, then all infringers would shift to the e-world. Thus, a crime in the internet world should be treated no different from the real world.

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

It does not make one an opponent of a free and open internet who seeks blocking of piracy websites. The court went on to observe that putting some restriction on accessing illegal content does not violate open internet principles. Thus, where the appropriate lines are to be drawn is the key issue between internet freedom and government censorship.

• What is a ‘Rogue Website’?

The court borrowed the term ‘Flagrantly Infringing Online Locations’ (FIOLs) from the High Court of Singapore for rogue websites. The court observed that these websites are the ones which predominantly share infringing content or illegal work. The registrant details of the said website are masked. Further, the ad-network is also anonymized as compared to regular ad networks. Furthermore, the court observed factors which would help in determining whether a website is FIOL would include – 1) primary purpose of the website is to commit infringement or not 2) flagrancy in infringement or flagrancy in facilitating infringement. 3) Registrant details masked or not 3) Inaction by such website on receipt of takedown notices 4) Whether the owner or operator shows disregard for the copyright generally.5) Any order from the foreign court that disabled access to such websites 6) Volume of traffic or frequency of access to such websites.

• Whether the test for determining a ‘Rogue Website’ is a qualitative or a quantitative one?

The court referred to Eros International Media Ltd. & Anr. v. Bharat Sanchar Nigam Ltd. & Ors., Suit No.751/2016, wherein the Bombay High Court held that it was the quantitative approach given preference in light of the presence of non-infringing or legitimate content on the website and hence the injunction order was not issued against the said website. On the other hand, in Department of Electronics and Information Technology v. Star India Pvt. Ltd., FAO(OS) 57/2015, the Delhi High Court preferred qualitative approach due to overwhelming nature of the infringing content and hence stringent measure to block the website as a whole was justified. The court observed if the qualitative test is adopted then the website owners will add a small fraction of non-infringing or legitimate content to avoid the clutches of blocking order. Thus, the real test should be qualitative one than quantitative one in order to avoid any injury to the right holders of the content illegitimately being hosted on such websites.

• Whether the defendant-websites fall in the category of ‘Rogue Websites’?

The court observed that there is ample of evidence to show that the main purpose of the defendants’ websites is to commit or facilitate copyright infringement. The websites are designed to grant access or facilitate infringement of copyrighted films. In addition, many of these websites had instructions to circumvent any disabling access orders. There have had been orders from the foreign courts disabling access to a number of these websites on account of copyright infringement. Further, the registrant details are masked and no traceable details are available to reach the registrant. Lastly, the volume of traffic to the websites is indicative of their rogue nature. All in all, it was held that the defendants’ websites are rogue websites.

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

Website blocking, as observed by the court, is one of the cost effective measures to redress the issue of flagrant violation or infringement. Further, the court observed that such orders should be passed by the court only when it is satisfied that such a measure is ‘necessary’ and ‘proportionate’. Thus, necessary means whether there are less restrictive means capable of producing the same result and proportionate would mean whether the blocking order does not have excessive effect on the defendants’ interest. Consequently, the onus is on the right holders to prove that the subject website is resulting in flagrant infringement of copyright. In the present case, the court observed that the position may have been different if the defendants’ website had substantial portion of non-infringing content, which is not the case. The court observed, at the same time, it has the duty not to create any barriers to a legitimate trade. However, in the present case, the defendants’ websites blocking order is a must to stop the crime of digital piracy rampant on such rogue websites.

• 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?

One of the apprehensions faced by the right holders in the modern day is the redirect or mirror or alphanumeric websites that resurface overnight. Typically, the existing injunction would generally be an order against the existing website. However, what about the websites which being blocked resurface as alphanumeric or mirror websites to circumvent the court orders? What could be done to go beyond whack-a-mole effect? To cure this menace, the Delhi High Court referred to the High Court of Singapore in the case of Disney Enterprise v. Ml Ltd., (2018) SGHC 206 wherein it was held that the applicant was not obligated to return to the court with respect to every single IP address of the infringing URLs already determined by the court. It was further observed by the Singapore court that the court has the jurisdiction to issue a dynamic injunction which does not require defendants to block additional or new FIOLs, but to block additional domain names, URLs and/or IP addresses that provide access to the same websites which are the subject of the main injunction. The Delhi High Court, in order to grant a dynamic injunction order, observed that the court has inherent powers under Section 151 CPC to implead the mirror/redirect/alphanumeric websites under Order I Rule 10 CPC as these websites merely provide access to the same websites which are the subject of the main injunction. This, in turn, would save the court time adjudicating the same infringing subject matter on a different URL which had been already granted injunction against. Thus, the plaintiffs shall file an affidavit to corroborate that the impleaded website is actually mirror/redirect/alphanumeric website with the sufficient supporting evidence and the Joint Registrar of the High Court will assess the evidence and upon being satisfied grant an injunction against the aforesaid hydra headed rogue websites.

Our comment:

It is without doubt that in the ever evolving digital world whack-a-mole solution will not work. The court realizing that applied the concept of ‘dynamic injunction” to control the “hydra headed” rogue websites. It is heartening to see the court stepping out to deploy modern jurisprudence to curb the growing menace of rogue websites.