The rapid growth in technology has created a unique landscape for creation, exchange and consumption of content. While it has made communication more amplified and convenient, it has also significantly compounded the existing issues faced by Intellectual Property (IP) holders with respect to piracy of their work. As opposed to physical piracy, digital piracy benefits from potential shields of anonymity, non-traceability and a quicker bounce-back ability. Even when websites hosting and sharing pirated content are blocked, they often resurface as mirror/alphanumeric websites having the same infringing content. The concept of dynamic injunctions has been developed with the aim of addressing this issue.

What are Dynamic Injunctions?

Dynamic Injunctions are those which enable the plaintiff(s) to use the original injunction order (granted against the primary infringing website) to block mirror/redirect sites providing the same infringing content.

The framework for dynamic injunctions was first devised comprehensively by the High Court of Singapore in Disney Enterprise v. M1 Ltd. [(2018) SGHC 206] to address the issue of flagrant infringement on digital platforms. The Court observed that it “…has the jurisdiction to issue a dynamic injunction given that such an injunction constitutes “reasonable steps to disable access to the flagrantly infringing online location”. This is because…the dynamic injunction merely blocks new means of accessing the same infringing websites, rather than blocking new infringing websites that have not been included in the main injunction.”

In India, a dynamic injunction was first granted in the case of UTV Software Communications Ltd. & Ors. v. 1337x.to and Ors. [2019 (78) PTC 375 (Del)]. The Plaintiffs had sought website blocking injunctions against the Defendant websites which were hosting infringing content. The Plaintiffs had also impleaded the relevant Internet Service Providers (ISPs) as Defendants to implement the blocking orders. The Delhi High Courtanalysed whether the Defendant websites were “rogue websites” such as would warrant website blocking injunctions.

Factors for Determining Rogue Websites

The Court laid down the following factors to be considered while determining whether a website is a rogue website:

“a. whether the primary purpose of the website is to commit or facilitate copyright infringement;

b. the flagrancy of the infringement, or the flagrancy of the facilitation of the infringement;

c. Whether the detail of the registrant is masked and no personal or traceable detail is available either of the Registrant or of the user.

d. Whether there is silence or inaction by such website after receipt of take down notices pertaining to copyright infringement.

e. Whether the online location makes available or contains directories, indexes or categories of the means to infringe, or facilitate an infringement of, copyright;

f. Whether the owner or operator of the online location demonstrates a disregard for copyright generally;

g. 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;

h. 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.”

Based on the above factors, the Court found the Defendant websites to be rogue and granted blocking injunctions against them. However, while evaluating how to effectively deal with the issue of the websites resurfacing as mirror/alphanumeric sites after being blocked, the Court relied on the Singapore HC’s Disney Enterprise judgment and granted a dynamic injunction.

The mechanism allows Plaintiffs to implead additional mirror/alphanumerical websites (through an application under Order I, Rule 10 of the CPC) with an Affidavit to the Joint Registrar of the Court proving that the impleaded websites are simply mirrors of the injuncted websites, providing the same content. The Joint Registrar may then order ISPs to block the impleaded websites.

Conclusion

The decision in UTV Software has introduced a strong online IP enforcement mechanism in India, in the form of dynamic injunctions and laid down comprehensive factors for determination of rogue websites. The above decision has been relied upon by the Delhi High Court in multiple copyright infringement suits, most recently in Disney Enterprises, Inc. & Ors. v. rlsbb.unblocked.ltda & Ors. [IA No. 14909/2019 in CS(COMM) 594/2019]where a dynamic injunction was granted against rogue websites, following the same framework as UTV Software. Since dynamic injunction is a new enforcement mechanism in Indian jurisprudence, its effectiveness and other implications in varying cases remain to be seen.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

In India, arbitration proceedings are regulated under the Arbitration and Conciliation Act, 1996 (“the Act”). While the Act does not exclude any category of disputes treating them as non-arbitrable, it is well-established that only those disputes are arbitrable which involve rights exercisable against specific individuals, viz. “rights in personam” and which do not arise out of special statutes conferring jurisdiction on specific courts [Booz Allen and Hamilton Inc. v. SBI Home Finance Ltd. and Ors., AIR 2011 SC 2507]. In case of disputes involving rights exercisable against the world at large, viz. “rights in rem”, the parties are ousted from choosing a private forum and must submit to the courts. However, in Booz Allen, the Supreme Court did clarify that this is not a rigid rule and that disputes relating to sub-ordinate rights in personam arising from rights in rem have always been considered to be arbitrable.

Judicial precedents on arbitrability of IP disputes

In A. Ayyasamy v. A. Paramasivam & Ors. [(2016) 10 SCC 386], the Supreme Court listed intellectual property disputes (“IP disputes”) in the list of non-arbitrable subject matter.

While the Supreme Court’s observation in Ayyasamy with respect to non-arbitrability of IP disputes was only obiter dictum, the Bombay High Court solidified this position in Steel Authority of India Ltd. v. SKS Ispat & Power Ltd. & Ors. [Notice of Motion (L) No. 2097 of 2014 in Suit No. 673 of 2014], holding that “…the rights to a trademark and remedies in connection therewith are matters in rem and by their very nature not amenable to the jurisdiction of a private forum chosen by the parties…”.

However, in Eros International Media Limited v. Telemax Links India Pvt. Limited [2016 (6) BomCR 321], the Bombay High Court, while discussing disputes pertaining to infringement and passing off actions, took a different view and observed that “As between two claimants to a copyright or a trade mark in either infringement or passing off action, that action and that remedy can only ever be an action in personam…In trade mark law it is true that the registration of a mark gives the registrant a right against the world at large. It is possible that an opposition to such an application (before the Registrar) would be an action in rem, for it would result in either the grant or non grant of the registration, good against the world at large. But an infringement or passing off action binds only the parties to it… this applies equally to copyright actions…”. Particularly, referring to the cases wherein IP disputes arise out of contracts, the Court held “Where there are matters of commercial disputes and parties have consciously decided to refer these disputes arising from that contract to a private forum, no question arises of those disputes being non-arbitrable. Such actions are always actions in personam, one party seeking a specific particularized relief against a particular defined party, not against the world at large”.

Thereafter, the Bombay High Court in Deepak Thorat S/o Dinkar Thorat v. Vidli Restaurant Ltd. [2017 SCC online Bom 7704] reiterated its observation in the Eros case and held that “…questions of deceptive similarity, etc. which are usually part of an infringement or passing of action…are pure findings of fact. There is no reason why an arbitrator cannot go into or consider those questions. After all, such consideration is for determining whether there is any breach of a negative covenant agreed to between the parties. Neither is an order that is passed on such consideration an order in rem nor is the right to claim such order sourced in a right in rem such as the one which a registered proprietor of a trade mark or an owner of a mark…has vis-a-vis the mark…”.

In the most recent judgment on this aspect, viz. M/S Sagar Ratna Restaurants Pvt. Ltd. v. M/S D S Foods and Ors. [C.S. Comm No. 40 of 2020], the Saket District Court held that all trademark and copyright disputes cannot be non-arbitrable, and that the dispute at hand was arbitrable as the relief sought was not an ‘action in rem’ but is an ‘action in personam’ solely against the Defendants.

Conclusion

As per the judicial precedents, it is evident that there is no absolute bar on arbitrability of IP disputes in India. While IP disputes pertaining to validity and ownership of the IP are considered to be non-arbitrable, IP disputes in the nature of infringement and passing off actions have been held to be arbitrable, especially when arising out of a contract between the parties which includes a clear arbitration clause. The position can be further clarified with legislative provisions and continued evolution of Indian jurisprudence on this aspect.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.