In a judgement delivered on April 10, the Delhi High Court has granted a 'dynamic' blocking injunction against certain websites publishing pirated films whereby the list of blocked websites can be updated as and when
mirror websites are brought to the notice of the
Court by the right holder. Conventionally, any
new website which was not part of an existing
order, would constitute a new act of infringement
and calls for a new suit or at least a new judicial
finding before it can be blocked. However, as per
the scheme devised by the Court, considering the
flagrant and rapid piracy on these websites which
can create mirror servers overnight, the right
holders would not need judicial order by the
Judge but they can approach the Joint Registrar
(who are not judges but are judicial officers
discharging procedural functions on behalf of the
judges such as case management, extensions
etc.) of the High Court to extend the injunction
against a mirror or indirect replica of the blocked
website publishing the same infringing content.
The order pertains to multiple suits involving
plaintiffs that include UTV Software
Communications Ltd. who are into creation,
production, and distribution of copyrighted films in
India and abroad. The defendants in these suits
are websites, unknown website operators
impleaded as John Doe defendants, the Ministry
of Electronics and Information Technology, the
Department of Telecom and various Internet
Service Providers (ISPs).
1 UTV Software Communication Ltd. v. 1337x.to – Judgement dated 10-4-2019 in CS(COMM) 724/2017 and Ors., Delhi High Court.
The right holders alleged that the websites
published the copyrighted films by streaming
and/or enabling download which amounted to
infringement under the Copyright Act, 1957. The
governments bodies and the ISPs appeared
before the Court but no relief was sought against
them as they primarily were impleaded to assist
the Court in identification of the main websites
and their operators. The main defendants i.e. the
websites and their operators did not appear
before the Court after summons. However, the
Court deemed the issues involved in the case to
be ‘of general public importance’ and appointed
an amicus curiae (friend of the court) to assist the
court with the legal issues.
Whether an infringer of copyright on the internet is to be treated differently from an infringer in the physical world?
The Court held that there is no difference
between an infringer in the physical world and the
one in the online world nor such a distinction has
been made by the Copyright law. The modern
piracy is a multi-billion-dollar business and only a
fraction of these sites are genuinely supported by
ideologies of social good in piracy.
Whether seeking blocking of a website dedicated to piracy makes one an opponent of a free and open internet?
The issue pertains to an apparent conflict
between the need for orders blocking websites
and free and fair internet. The Court observed
that issue is not whether internet should be
completely free from government control and
Article
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3
censorship but whether a balance can be drawn
between freedom and statutory rights. Court held
that putting appropriate limits on accessing
content is not opposed to freedom of internet.
Clearly, the Court has felt that protection of
copyright (and by that logic other intellectual
property rights) is a reasonable restriction on
freedom of internet. Needless to say, in these
cases whether a website or any of its content is
infringing any copyright would be a matter of
proof.
What is a ‘Rogue Website’ and whether the test for determining a ‘Rogue Website‘ is a qualitative or a quantitative one?
Referring to a Singapore Supreme Court’s
decision, the term “Flagrantly Infringing Online
Locations (FIOL)†was discussed. It was
observed that there are websites which primarily
or predominantly share infringing content. The
Court also provided some factors based on which
a website can be said to be ‘FIOL’ or rogue, such
as primary purpose being targeted to piracy,
flagrancy of infringement or facilitation thereto,
details of website owner or operator being
masked, silence on take down notices,
restraining orders from other Courts/jurisdictions,
volume of traffic towards the website, how it
presents its infringing content say, indexing,
listing etc.
For determining whether a website is ‘rogue’,
the Court considered the ‘quantitative’ approach
for blocking injunctions while referring to the
decision in Eros v. BSNL by the Bombay High
Court (Single Bench) and the qualitative
approach in the DEITY v. Star India case of the
Delhi High Court (Division Bench). In the
quantitative approach, John Doe blocking
injunctions were not granted by Bombay High
Court against entire websites because Court held
that specific instances of infringement are to be
proved because the website may have non-
infringing content also.
This decision follows the ‘qualitative’
approach which favours blocking injunctions
where the ‘rogue websites’ are ‘overwhelmingly
infringing’. The Court held that these websites
can change their URLs within seconds and
considering they have large number of films
uploaded, it would be too cumbersome and
onerous for the rights holder to expect to provide
URLs for all titles. Further, not all titles available
on a website would belong to one right holder but
other production houses. One cannot expect the
plaintiff to seek declaration on infringement from
owners of other content uploaded on the website
before granting a blocking injunction. It would be
an onerous task and the purpose of injunction
would not be served as the rogue website would
easily switch, mask, multiply and mirror its URLs
while the plaintiff gets declaration from other
owners. Court said that it cannot hold that a
‘rogue website’ is only that which entirely
contains infringing content because this would
prompt these websites to upload a small portion
of legitimate content and escape injunction while
predominantly containing pirated content.
Whether the defendant-websites fall in the category of ‘Rogue Websites‘ and whether this Court would be justified to pass directions to block the ‘Rogue Websites’ in their entirety?
The Court found that all the websites in the
suit were satisfying the test factors, including
orders in foreign countries and held all of them as
rogue websites.
The Court said in a website blocking
injunction order, it would have to also be
considered whether disabling access to the
online location is in the public interest and a
proportionate response in the circumstances and
the impact on any person or class of persons
likely to be affected by the grant of injunction.
The Court also said that the injunction must not
create barriers to legitimate trade. The measures
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4
must also be fair and not excessively costly.
However, noting the need for urgency and
enormous difficulty in curbing piracy of foreign
websites, the pace at which the single URLs for
infringing titles can be changed and actions taken
by various foreign countries, Court was of the
view that in this case the balance tilts in favour of
granting blocking injunction to entire website.
Court also took note of the difficulty of right
holders in repeatedly coming to Court in separate
actions if the entire website is not blocked
because a rogue website could easily wriggle out
of a mere URL injunction by changing the same
and continue its illegal business on the website.
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?
While the discussion till the last issue was on
blocking “URL†versus “entire websiteâ€, the Court
also ventured into a significant area whereby
even after a comprehensive ban on a website,
while it cannot escape injunction by mere change
of URL within the same website, the operators
create ‘mirror websites’ or ‘alphanumeric
variants of the same websites’ but publishing the
same infringing content. In such a case,
technically, the website is not the same. For such
cases, the Court referred to the Singapore High
Court’s decision in Disney v. M1, where the Court
passed a blocking order which was a ‘dynamic
injunction’. In this case, a plaintiff could, instead
of filing a new case or motion, simply file an
additional affidavit before the Court giving reasons
for a new website falling within the purview of
existing blocking order and the same can be sent
to an ISP which was free to dispute the reasons
for the blocking order. Court observed that this
dynamic injunction originated from a specific
provision but held that such powers are available
under the Indian Code of Civil Procedure,
1908 under Section 151 which provides inherent
powers to the Court to craft a similar relief. The
Court held that in such cases, plaintiff could seek
injunction by impleading additional websites
under Order 1 Rule 10 of the CPC.
Interestingly, considering the rapidity with
which rogue websites operate and large number
of mirror/indirect rogue websites, the Court held
that the Judges should not have to constantly
monitor such affidavits and additional rogue
websites. Therefore, the Court delegated the
power to decide the issue of adding
mirror/indirect websites to an existing blocking
order to the Joint Registrar of the Delhi High
Court. Joint Registrars are officers of the Court
who largely decide procedural issues like case
management hearings, extensions of time etc. In
the present case, the Court delegated the power
under 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. Any finding of a joint registrar under this
provision whereby he/she decides addition of
websites to an existing blocking order, is
appealable.
The Court also gave directions to the
government ministry and department, impleaded
as defendants in this case, to consider the
Court’s suggestion to come up with a policy for a
graduated response scheme. The Court
suggested that in this scheme individuals who
access ‘pirated content’ can be warned by ISPs
and if they do not cease from accessing pirated
content, appropriate actions including fines can
be considered.
Conclusion
This decision is important in at least three
respects. Firstly, while blocking orders over entire
website is not unknown, the fact that Court has
allowed the plaintiffs to ‘update’ the list of blocked
websites as and when a blocked website creates
its illegal twin/mirror image, is novel. Secondly,
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5
delegating the power to Joint Registrar to
effectively ‘update’ an existing injunction order is
also not common because that is effectively a new
website blocked and amounts to a judicial order.
Thirdly, the Court’s sensitivity to rights holders is
apparent when they consciously urge the
government body to consider cautioning even
individual users to refrain from using pirated
content. It is clear that the Court has consciously
pursued a pro-active approach to balance
interests of rights holders against “free internetâ€.
This is apparent because Court has discussed the
large scale negative impact of piracy to not only
the industry but also to economies. In India alone,
it has been noted, that the film industry earns less
in theatres, TV rights and home videos compared
to the earnings of the piracy industry of the same
movies. This order may raise lot of questions on
either side of the spectrum and people may argue
that this is excessive enforcement as the dynamic
scheme may be subject to abuse. Nevertheless, it
is surely a starting point for paving the way
towards curbing piracy in a systematic way.
[The author is a Joint Partner in IPR Practice,
Lakshmikumaran & Sridharan, New Delhi]
Patents – Exemption under Section 107A available to exports for clinical studies
A Division Bench of the Delhi High Court has
held that sale, use, construction of patented
products by persons who do not hold patents or
licenses from patentees, in terms of Section
107A of the Patents Act is correct, provided it is
reasonably related to research and development
of information in compliance with laws of India (or
the importing country). The Court hence allowed
the Bolar exemption to patented goods exported
by the person who was not the holder of the
patents for the product exported (though had
compulsory licence), to conduct clinical studies
and trials for development of information for
regulatory purposes.
The Court was of the view that it cannot be held
that the Parliament intended to per se exclude
“exports†from the sweep and width of the term
“sale†in Section 107A. It noticed that once it is
held that patented inventions can be sold for
carrying on research which fulfils the regulatory
requirements of India, there cannot be any bar or
an interpretation narrowing the scope of such
sale. It observed that if the purpose of the sale is
to ultimately exploit the patented invention and
either work upon it or “work around†or work it
through research to be prepared to apply for the
patent for approval to market it once the patent
tenure ends, there can be no impairment of the
patentee’s rights. It also rejected the contention
that Section 107A constitutes an exception and
must be read as subordinate to the main provision
of Section 48.
The Court in this regard also observed that the
course of the experimental exception- both before
and after the TRIPS has shown the adoption,
generally of a broad approach, to permit use of all
kinds, and that the courts approach has been not
to enjoin or prohibit purely experimental or
scientific activity, as long as it does not have any
primary commercial undertones. Provisions as
prevalent in USA, UK and Canada were relied
upon while also tracing the legislative history of
the Indian Section 107A. [Bayer Corporation v.
Union of India – Judgement dated 22-4-2019 in
LPA No.359/2017, Delhi High Court]
Ratio decidendi
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6
Trademarks – No suit for passing off maintainable if plaintiff’s use not honest
The Delhi High Court has held that plaintiff which
is a sister concern of and hired by Elder
Pharmaceuticals Ltd. (EPL), cannot claim latter’s
trademark and reputation on liquidation of EPL.
Holding that such use with the knowledge of
registration of trademark is not bona fide, the
court observed that post liquidation proceedings,
Plaintiffs started using the Elder trademarks in
relation to the goods manufactured and sold
under their own name without the permission or
consent of EPL and thus such use of the mark
cannot be characterized as “permitted use†and
would amount to infringement. It observed that
the official liquidator who is the custodian of
assets of liquidated company can claim benefits
of reputation and goodwill of its trademarks.
The High Court also held that for acquiescence
under Section 33 of the Trademark Act, use must
be for a continuous period of 5 years and hence
Plaintiff cannot claim acquiescence. Plaintiff’s
claim of shared reputation was also rejected by
the Court observing that both plaintiff and
defendant were infringers. It held that it was a
case of a senior infringer suing a junior infringer.
Dismissing the suit with costs, the court was of
the view that Plaintiff cannot succeed on the
claim of passing off because the use of the mark
was not honest or bona fide and was also
conflicting and infringing the registered marks of
EPL. [Elder Projects Ltd. v. Elder Pharmacia LLP
– Judgement dated 5-4-2019 in CS(COMM)
1313/2018, Delhi High Court]
Trademark registration confers rights on whole and not on individual parts
The Delhi High Court has reiterated that
registration of trademark under Section 17(1) of
the Trademarks Act confers exclusive rights to
use trademark as a whole and not a right of
registration to individual parts. Court held that
plaintiff can claim rights to use ‘Delhi International
School’ label as well as the DIS logo as a whole,
but not right to use words ‘Delhi International
School’ as registered mark. The Court prima
facie rejected the plea that words ‘Delhi
International School’ are a prominent part of the
plaintiff’s label and, therefore, use of the said
name would also amount to infringement of its
trademark. It observed that the specified words
were not the prominent part of the said logo.
The Court also prima facie rejected the plea of
passing-off based on the interactive website. The
plaintiff had claimed that the cause of action
regarding passing off arose in Delhi as the
defendants have an interactive domain names
through which the defendants are passing off
within the territorial jurisdiction of the Court. The
Court however observed that students in Delhi
would not seek admission elsewhere. It also
observed that no material was placed on record
to indicate that any of the defendants had
succeeded in deceiving any person to believe
that they are connected with the plaintiff or the
schools run by them are affiliated with the
plaintiff. However, relying on precedents, it also
held that the question of jurisdiction must be
considered on a demurer. [Nav Jagriti Niketan
Education Society v. Delhi International School –
Judgement dated 28-3-2019 in CS(COMM)
698/2018, Delhi High Court]
Exclusive jurisdiction of court by agreement not violate Copyright Section 62
The Delhi High Court has held that an agreement
conferring exclusive jurisdiction on a particular
Court is not in violation of Section 28 of the
Indian Contract Act, 1872 or Section 62 of the
Copyright Act, 1957. Court reiterated that where
more than one Court has jurisdiction, parties can
legally confer jurisdiction to any one Court to the
exclusion of others. It however observed that it is
to be seen whether such an agreement is clear
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7
and unambiguous and the intention of the parties
to submit to one Court having jurisdiction to
adjudicate the subject matter while excluding the
jurisdiction of another is clearly discernible from
the agreement itself. The High Court upheld the
order of the trial court by which plaint was
ordered to be presented before jurisdiction of
Courts at Mumbai as stipulated in clause 12 of
the agreement between the parties. [Achla
Sabharwal v. A. Saptarishi Films – Judgement
dated 25-3-2019 in FAO 40/2017 & CM No.
2669/2017, Delhi High Court]
Non-renewed trademark cannot be removed without complying with procedure
The Delhi High Court has held that though
plaintiff was not able to renew its trademark
registration, the trademark in question cannot be
removed by the Registrar without compliance
with the provisions of Trademark Section 25 and
Rule 67 of the Trademark Rules 1959 which is
akin to Rule 64 of the Trademark Rules 2002.
Court observed that denial of consideration of
application for renewal has the effect of removing
the Mark from the Register of the Trademarks,
i.e., something which is only permissible if a
notice is given to the petitioner as contemplated
under Section 25 of the Trademarks Act.
Observing absence of any third party applying for
registration of said mark, the Court directed the
Registrar to consider application of renewal of the
mark ‘Binaca’ subject to late fee. Judgement in
UOI v. Malhotra Book depot was relied on.
[Gopal Ji Gupta v. UOI – Decision dated 18-3-
2019 in W.P.(C) 7644/2017, Delhi High Court]
Overall look of the product enough to determine piracy of design under Section 22
The Delhi High Court has reiterated that overall
look of the product is to be judged with the naked
eye and that intricate examination of the design is
not to be done for determining piracy of design
under Section 22 of the Design Act. Court also
held that application for trademark registration did
not constitute prior publication as the same only
contained model names and not product
photographs. Plea of prior publication in
advertisement was also rejected by the Court
observing that the design was not identical to
designs contained in the advertisement.
[Symphony Ltd. v. Thermo King India Pvt. Ltd. –
Decision dated 28-2-2019 in CS (COMM)
321/2018, Delhi High Court]
Trademark - Permanent injunction from use of ‘TICER’, infringing ‘TIGER’
The Delhi High Court has reiterated that non-use
by the plaintiff cannot be a defence to an action
of infringement and that application for removal
was to be filed by defendant before the Registrar.
Defendant was held liable to permanent
injunction since they could not explain adoption
of the word TICER for shoes. Noting similarities,
court observed that defendants merely replaced
alphabet ‘G’ in the trademark TIGER with ‘C’ and
that the change is unlikely to be noticed.
The High Court was also of the view that verbal
request for summary judgement was
maintainable. It observed that the Court by its
Rules, is competent to, notwithstanding Order
XIIIA of the Civil Procedure Code, provide for
application to be filed for summary judgment.
However, even without such an application, the
Court is competent to pass summary judgment. It
also held that dehors Order XIIIA also, the
commercial suits can be disposed of under Order
XV Rule 1, if found to be applicable. [Mallcom
(India) Ltd. v. Rakesh Kumar – Decision dated
19-3-2019 in CS (COMM) 480/2016, Delhi High
Court]
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8
Union Cabinet approves accession to Nice, Vienna and Locarno Agreements
The Union Cabinet has approved proposal for
accession of India to the Nice Agreement
concerning the international classification of
goods and services for the purposes of
registration of marks, the Vienna Agreement
establishing an international classification of
figurative elements of the marks, and the
Locarno Agreement establishing an
international classification for industrial
designs. Accession to these Agreements will
help Intellectual Property Office in India to
harmonize the classification systems for
examination of trademark and design
applications.
GI certification for five varieties of Indian coffee
The Department for Promotion of Industry and
Internal Trade, Ministry of Commerce and
Industry has recently granted Geographical
Indication to 5 varieties of Indian coffee. They
are Coorg Arabica, Wayanaad Robusta,
Chikmagalur Arabica, Araku Valley Arabica
and Bababudangiris Arabica. Monsooned
Malabar Robusta coffee, was given GI
certification earlier. As per the press release
issued by the Ministry on 29-3-2019, India is
the only country in the world where the entire
coffee cultivation is grown under shade, hand-
picked and sun dried.
Broad claim in patent ineligible as it pre-empts use by entire industry
US Court of Appeals for the Federal Circuit
has reiterated that if claims are directed to a
broad law or an abstract idea, patent is
ineligible under U.S.C. § 101. Court in the
case ChargePoint v. SemaConnect affirmed
that the patent relating to network-controlled
charging stations for electric vehicles is
ineligible since claim involves an abstract idea
to which the claim is ‘directed to’. It held that
broad claim in patent would pre-empt entire
industry’s ability to use networked charging
station. Court observed that there was no
suggestion that charging stations were
improved from technical perspective.
Specific function using natural law is patentable
US Court of Appeals for the Federal Circuit
has held that a new treatment of an ailment
albeit using a natural law, is eligible for patent
claim as it is not same as claiming a natural
law. Court in the case Endo Pharmaceuticals
v. Teva Pharmaceuticals observed that claim
of 737 Patent is not ‘directed to’ a detection
method but to a treatment method and that
same is eligible since it is a specific treatment
directed to specific patients using specific
compounds at specific doses to achieve a
specific outcome. As per § 101, natural
phenomena are non-patentable.
Comparison of white salt to poison without proof is disparagement
Delhi High Court has in case of Tata
Chemicals v. Puro Wellness restrained the
defendant from televising or publishing any
commercial resulting in disparagement and
denigration of plaintiff’s product, Tata Salt. It
observed that defendant’s intention was not
merely to promote its product but to call white
salt in general and specifically Tata Salt,
dangerous. Court held that if a product is
manufactured as per prescribed regulations,
News Nuggets
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9
terming the same as poison is obviously to
slander that product. It also noted that even
limited circulation constitutes publication.
TV commercial making fun of men using women’s cream is not disparagement
Observing that plaintiff itself has a separate
cream for men and that it cannot be said
that prima facie the statement made in the
advertisement regarding use of women’s
cream by men is false, Delhi High Court has
dismissed a case of disparagement. Court in
HUL v. Emami Ltd. held that advertisement of
Fair & Handsome does not tantamount to
generic disparagement of Fair & Lovely, in
view of the literature on plaintiff’s website
which shows that latter had positive impact on
the lives of women. Plaintiff was held to be
oversensitive on story of the commercial.
IPR AMICUS / April 2019
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10
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