Can Judges Order ISPs to Block Websites for Copyright Infringement? (Part 1)
In a three-part study, Ananth Padmanabhan examines the "John Doe" orders that courts have passed against ISPs, which entertainment companies have used to block dozens, if not hundreds, of websites. In this part, he looks at the theory behind John Doe orders and finds that it would be wrong for Indian courts to grant "John Doe" orders against ISPs.
The Madras High Court, in its 2012 order in R.K.Productions v. B.S.N.L., has affirmed the possibility of a suit against internet service providers (ISPs) to block access to certain webpages upon notification by the copyright owner. Though this appears to be a reasonable order at first glance, keeping in mind the fact that access to identified copyrighted works alone is targeted and not websites in their entirety, the legal basis for the same is highly questionable. In this two-part study, Ananth Padmanabhan explores the legal sanctity of these orders, especially post the coming into force of the Copyright Amendment, 2012. The first part of this study explores the genesis of John Doe orders and proceeds to examine the conceptual problems arising from tagging along website blocking orders within the broad sweep of John Doe action. This part concludes that website blocking orders against ISPs stand separately from, and cannot be justified in the same manner as, John Doe orders.
. (2012) 5 LW 626. Hereinafter referred to as R.K. Productions.
John Doe Orders and their Conceptual Understanding
The concept of John Doe Orders in ex parte proceedings for copyright infringement came in due to the peculiar character of copyright piracy. Orders of this nature were being passed in jurisdictions across the world till they were, probably for the first time, passed in India in 2003. Since then, such orders have become a somewhat regular feature. In short, such orders permit the plaintiff to enforce an injunction order against unidentified / unnamed defendants, ‘John Doe’ being a generic name for such defendants. To understand the nature and mechanism of such enforcement and the various guidelines governing such orders, exploring the genesis of these orders is imperative.
In Billy Joel v Various John Does, one of the earliest instances of a John Doe order, the plaintiff who was a musician and a successful recording artist, found to his annoyance that his success had spawned an underground industry that capitalised on his popularity through the sale of merchandise, usually T-shirts bearing his picture and name. These sales were carried on by unauthorised persons who showed up at his concerts with the merchandise and sold them outside the concert halls where he was performing. The plaintiff had in fact granted his recording company the exclusive right to market such merchandise, and the company was doing so inside the concert halls. Obviously, the presence of the unauthorised vendors outside the concert halls hurt the company’s sales and the plaintiff’s revenue share. This compelled him to approach the district court in Wisconsin seeking injunctive relief against various "John Does" or unidentified defendants who were carrying on the unauthorised sale of merchandise. The order was specifically sought seeking an ex parte temporary restraining order prohibiting certain unnamed persons from selling merchandise bearing the plaintiff’s name or likeness outside the Milwaukee Arena where he was scheduled to perform on that day. Thus, the order sought was confined to one particular instance and the situation demanded expedient preventive action since the concert was on the very same day.
The district court, while finding the propriety of an order against unidentified defendants "troubling", still went ahead and passed the order sought for. The court felt that the problem of the defendants’ identities would be met if the copies of the summons, complaint, and restraining order itself were to be served on all persons from whom merchandise connected with the plaintiff was seized on the night of the concert. Additionally, the court clarified that all these parties would be entitled to have their names added as parties to the cause title and even otherwise, to contest the seizures. The plaintiff had also furnished a bond to cover damages that may arise due to the awarding of such relief. The court applied the principle of ubi jus ibi remedium – where there is a wrong done, there has to be a remedy in law – while granting this relief. This is clear from the last paragraph of the judgement where the Court says : "Were the injunction to be denied, plaintiffs would be without any legal means to prevent what is clearly a blatant infringement of their valid property rights. While the proposed remedy is novel, that in itself should not weigh against its adoption by this court. A court of equity is free to fashion whatever remedies will adequately protect the rights of the parties before it."
Subsequently, various courts in the United States have granted such relief. However, most such instances of judicial intervention in cases of piracy have confined themselves to specific instances of piracy as opposed to orders of wider applicability extending to more than one instance of apprehended or real piracy. For instance, in Brockum Intern., Inc. v Various John Does, the plaintiff sought a nation-wide order prohibiting the same activity in other cities visited by the popular rock band, The Who, on its national tour. The court declined to do so.
The Metallica Order
In New Zealand, the High Court has specifically applied the principle of ubi jus ibi remedium while justifying the issuance of John Doe Orders. In Tony Blain Pty.Limited v Splain and other Persons Unknown, the court likened this kind of relief sought against unidentified defendants, to an order in the nature of Anton Piller remedy. The court stated that both these orders involved a common feature, being an intrusion into the privacy of the defendants. However, such an intrusion would be justified applying the maxim of ubi jus ibi remedium. According to the court, "in circumstances where it is plain that persons are infringing proprietary interests which the law recognises, or deceiving the public by way of trade in a manner which may indirectly affect the commercial interests of others, the law should, if it reasonably can, provide a remedy". Emphasising on the conduct-centric nature of these reliefs, the court held that John and Jane Does will be known by their works.
However, in its attempt to bring in some safeguards before passing such an order, the court held that it would be better in the future to bring such applications a little in advance so that amicus curiae could be appointed to represent the view point of the John and Jane Does. Further, the court observed that it was important to build into the procedure appropriate protections, including means of informing persons served with orders for injunction in clear language and simple terms what their remedies were. These remedies, in turn, would include a right to apply to the court within twenty four hours for a review of the order and a right to claim damages in an appropriate case, not merely on the basis of the usual undertaking to be given by plaintiffs, but also on the basis of the tort of misfeasance of public office. It will also be necessary for the plaintiff to file before the court, a full report verified by affidavit, of the process of execution of the particular orders.
It is thus seen that the High Court, though keen to do justice by providing a remedy that is effective enough to protect the plaintiff’s rights, also tried to mitigate the harshness of the measures proposed by bringing in some safeguards. This decision gave birth to the Metallica Order in New Zealand, the New Zealander’s equivalent of a John Doe Order. It has to be added that the nature of the order passed by the High Court in this case is very detailed and can be used as precedent, even for the requisite format, by all courts that pass similar orders.
John Doe Orders in India
The decision in Tej Television Ltd. v Rajan Mandal, will have to find first mention since these kind of orders against unidentified defendants hit the shores of the Indian legal landscape through this decision. Here, the plaintiff owned the Ten Sports television channel and had procured the broadcasting rights to several important sporting events including the 2002 Football World Cup matches. Being a paid channel, the cable operators had to part with royalty to the plaintiff for airing the programs broadcasted on this channel. To the plaintiff’s consternation, many local cable operators were airing these sporting events without taking licenses from the plaintiff / its authorised marketing agency. This resulted in the channel approaching the Delhi High Court and seeking, for the first time, a John Doe order against unidentified defendants. The channel had some evidence of unauthorised broadcasting of the initial matches by certain cable operators and apprehended that this conduct by more operators would not only result in revenue loss but also cause the 1377 cable operators, who had taken licenses from the plaintiff, to re-think the very necessity of doing so when they could air the sporting events in an unauthorised manner without any fear of liability. Another concern was the ease with which those who carried on the practise of unauthorised transmission could destroy any evidence of such conduct. The prayer sought by the plaintiff was an ex parte order against six named cable operators and “John Doe” orders against a further fourteen unnamed persons who, the plaintiff claimed, were wrongfully transmitting the Ten Sports channel. The order against unidentified defendants was sought to be justified on two broad grounds: (i) Section 151 of the Code of Civil Procedure, 1908, which gives courts the inherent power to evolve a fair and reasonable procedure for meeting exigent situations, and (ii) international practise in the form of John Doe orders issued by courts in various countries including the United States, United Kingdom, Canada and Australia.
The High Court refused to grant a John Doe order on the facts and circumstances of this case but also clarified that in an appropriate situation, courts could well award a John Doe order even in India. The court granted relief to the plaintiff by appointing a Court Commissioner who was authorised to visit the premises of various cable operators, and search, make an inventory, and take into custody all equipment / wires used for the broadcast of the plaintiff’s channel. The court empowered the Commissioner to take the assistance of technical experts and police officials in carrying out this order, and directed him to prepare a report after gathering evidence of cable piracy in the form of video recordings and photographs. The court also considered itself at liberty, on the basis of this report, to issue notices to all alleged violators, and after the hearing, to initiate civil and criminal action against them in accordance with law. The Court Commissioner was also empowered to issue warnings to such prospective violators though there was no mention of any contempt proceedings against the violators for ignoring the warning given by the Commissioner. Upon close examination, this order was nothing but a mild modification of the power vested in the court under Order XXVI, Rule 9 of the CPC.
Final and Interim John Doe Orders
The Delhi High Court has, in some subsequent decisions, considered the possibility of a John Doe order without expressly granting the same. In Ardath Tobacco Co. Ltd. v Munna Bhai & Ors., the plaintiff was the proprietor of a tobacco brand, “State Express 555”. Aggrieved by the conduct of the defendants who were distributing "Peacock" cigarettes in packaging and trade dress that bore deceptive similarity to that of the plaintiff’s brand, the plaintiff sought a John Doe order against all such distributors including unidentified ones. From the report, it appears that an ex parte order appointing Court Commissioners, similar to the order in Tej Television, was awarded by the High Court initially. In the final order, the court was constrained to confine the order of permanent injunction to the named defendants since the plaintiff had failed to identify any John Does and add them to the array of parties for the purpose of securing injunctive relief. The same was again found to be the case in 3M Company v A. Patel, where the final order of injunction was granted only against the 2 identified defendants.
Thus, in these cases, a distinction seems to be made between the interim orders that may be passed against the unidentified defendants, and the final relief granted by the court. The principle that emerges from these decisions is that orders against unidentified defendants can only go to the extent of collecting evidence against them through search of their premises by the Court Commissioner, or with the assistance of the Station House Officer (S.H.O) as was directed in ESPN Software India Private Ltd. v Tudu Enterprises. No final relief can be granted against any person who is unnamed in the array of parties as a defendant. The purpose of an Ashok Kumar order (as such orders are branded in India) is only to bring such persons on record.
John Doe Orders – Procedure and Guidelines
Recently, the Delhi High Court has enunciated, with sufficient clarity, the procedure to be followed while granting interim orders against unidentified defendants. In Luxottica S.R.L v Mr. Munny & Ors., the plaintiff which owned the popular trade mark "Ray Ban" in respect of sunglasses, sought John Doe orders from the Delhi High Court with the aim of tacking rampant piracy and counterfeiting of its products. Surprisingly, there was no exigent necessity cited by the plaintiff for justifying the grant of such an order, unlike in Billy Joel, Metallica, Brockum, or Tej Television. Piracy had been going on in the past, and it continues to occur – that was broadly the case of the plaintiff here. Despite this, the Delhi High Court went on to issue an order of ex parte injunction restraining third parties from carrying on such counterfeiting activities. Extending the powers of the Court Commissioner, the High Court held:
The Commissioners are also authorized to visit any other premises/warehouse/store where they may have reason to suspect and/or information be received that counterfeit optical sunglasses bearing the Plaintiffs trademark RAY BAN are being stored/sold/offered for sale and thereafter. In respect of such Ashok Kumar Defendants, upon the seizure of any infringing/counterfeit products, the Commissioners shall forthwith serve such Ashok Kumar Defendants with a complete set of papers and a copy of the notice and summons. The Commissioners will seize and make an inventory of all the infringing goods including packaging material, cartons, stationery, literature, dyes, blocks, moulds, etc. bearing the impugned RAY BAN trademark and sign all books of accounts including ledgers, cash books, purchase and sale records etc., and return the seized goods on suprdari to such Ashok Kumar defendants and obtain undertakings from each of them that they will produce the seized goods as and when directed by the court.
The object behind this order seems to be the prevention of any destruction of the evidence. In consonance with this object, the High Court has even made provision for return of the seized material to the unnamed defendants during the pendency of this order, and given them the option of approaching the court and vacating the ex parte order of injunction issued against them. This Luxottica decision can be considered as India’s equivalent of the Metallica Order, as it gives a clear roadmap for courts that pass such orders in the future. Considering that John Doe orders have attracted criticism on the ground that they make serious inroads into the rights of the defendant, these safeguards specifically articulated by the Court do go some way in addressing these concerns and mitigating the hardship caused to the defendants.
Website Blocking Orders
An extension of the John Doe orders discussed above is the recent spate of decisions from various High Courts blocking access to certain websites that upload, or permit the uploading of, copyrighted content such as sound recordings and cinematograph films, without authorisation from the copyright owner. The relief granted is either movie-specific but against unknown persons, or website-specific.
To give a sample of the movie-specific relief: For the foregoing reasons, defendants and other unnamed and undisclosed persons, are restrained from copying, recording or allowing camcording or communicating or making available or distributing, or duplicating, or displaying, or releasing, or showing, or uploading, or downloading, or exhibiting, or playing, and/or defraying the movie ‘DON2’ in any manner without a proper license from the plaintiff or in any other manner which would violate/infringe the plaintiff?s copyright in the said cinematograph film ‘DON2’ through different mediums like CD, DVD, Blue- ray disc, VCD, Cable TV, DTH, Internet services, MMS, Pen drives, Hard drives, Tapes, CAS or in any other like manner.
Similarly, in R.K.Productions Pvt. Ltd. v B.S.N.L. & Ors.an order of the above nature has been passed in respect of the Tamil film "3". There are a few more that have already been passed by the Delhi and Madras High Courts, indicating that these kind of protective orders under Or.XXXIX R.1 and 2, read with Section 151 of the Code of Civil Procedure, 1908 are well going to be the order of the day, especially when it comes to online piracy of copyrighted content.
The Indian Music Industry and a sound recording label have also approached the Calcutta High Court and obtained an order of the second kind, ie. a direction to the known defendants who are Internet Service Providers (ISPs), to block access to various websites listed in the Schedule to the Plaint, which are used exclusively for providing unauthorised access to copyrighted sound and video recordings. The order is extracted below:
This is an application by the plaintiffs in aid of a suit complaining of copyright infringement. The plaintiff no. 1 and the members of the plaintiff no. 2 are the copyright owners of Hindi film songs. It is argued that the website mentioned in the prayers are posting and playing the songs, without any copyright or licence. This application is made ex parte on the apprehension that if notice of this application was served on the website they would shift their service to a different website.
In those circumstances, I pass an order of injunction in terms of prayer (a) of the Notice of Motion till further orders. I direct the respondent ISPs to indicate to the plaintiff the address of the website owner/operator referred to in the prayers.
I also make it clear that the above order of blocking should be confined to the above website only and should not otherwise interfere with internet service.
The last part of the last sentence extracted above has been emphasised as this is precisely what is happening as a consequence of the dual kind of orders discussed in this section. Though the first kind of order is, on its own terms, confined to only the film that is the subject matter of the suit, ISPs have used it to block access to entire websites in contravention of all recognised principles of network neutrality. Even in the case of the second kind of orders, there is absolutely no transparency as to how ISPs have been interpreting the order, and what websites are being targeted by them under the garb of such an order. It is a well-established maxim that courts and judicial orders cannot be used as a vehicle for oppression, harassment, or to perpetrate abuse of power. This is precisely what has been witnessed since the last year in relation to the website blocking, and film-access blocking, orders passed by different courts. It is felt that legislative intervention is absolutely necessary in this field without any further delay to lay down parameters for exercise of judicial power under Section 151 of the Code of Civil Procedure, which power can otherwise be construed in any manner by any Court with little checks and balances on the possibility of such exercise of power.
Conceptual Differences between John Doe and Website Blocking Orders
The most crucial point of distinction between these two types of orders is that while John Doe orders speak to the primary infringer, website blocking orders impose onerous responsibility on the ISP. John Doe orders as used in India thus far have served the purpose of a blanket search and seize mandate to gather evidence of direct infringement. As seen above, the final relief in the suit is granted only against those John Does who are subsequently identified and arrayed as parties to the main suit. Website blocking orders, on the other hand, amount to granting the final relief at the interim stage itself, as access is blocked to web links hosted by unknown persons by taking recourse to the ISP.
Moreover, there is a vital difference between holding primary infringers liable and making mere conduits, such as ISPs. parties to a civil suit. The maxim ubi jus ibi remedium is clearly applicable in the former case, because the remedy is fashioned to bring on board the primary infringer and then afford him an opportunity of hearing before confirming the ex parte order against him. In the case of website blocking orders, the court straightaway directs the ISP to block access to the content, and the third party infringer is really a non-entity in the whole process as the attempt is not to bring him on board or to gather evidence. Hence, it is impermissible for an Indian court to grant an ex parte order directing the denial of access to a website or webpage by taking umbrage under its power to grant a John Doe order. However, Indian courts have done so, and the recent decision of the Madras High Court in R.K.Productions v. B.S.N.L. has also affirmed the legality of such action. The court has judicially created a responsibility on ISPs that is akin to the take-down requirements thrust upon file-sharing websites, and which kicks in upon notice of infringing content given to the ISP by the copyright owner. This decision deserves serious critical evaluation, and an understanding of the different types of liability for copyright infringement is material for the same.
. 499 F.Supp. 791 (1980). Hereinafter referred to as Billy Joel.
. 551 F.Supp. 1054 (D.C.Wis.,1982). Hereinafter referred to as Brockum.
.  F.S.R. 497. Hereinafter referred to as Metallica. The plaintiff here was the exclusive authorised merchandiser for Metallica and Sir Paul McCartney, and the piracy alleged was similar to the one in Billy Joel’s case. Here too, the order was sought in respect of a specific concert to be held in Auckland within the next few days. The plaintiff innovatively sought an order by virtue of which certain solicitors named in the plaintiff’s application would, due to their status as officers of the court, be authorised to accost bootleggers at the concert venues and require them to provide their current addresses and evidence of identity, and these bootleggers would have to surrender up to these named solicitors all merchandise including T-shirts, head-bands, badges, or programmes in their possession or control.
. See Bloomsbury Publishing Group Limited v News Group Newspapers Ltd.  3 All E.R. 736.
.  F.S.R. 22. Hereinafter referred to as Tej Television.
. 2009 (39) PTC 208 (Del).
. Order dated 15.01.2009 in C.S. (O.S.) 1771 / 2006, reported as MANU/DE/1991/2009.
. Order dated 25.09.2009 in C.S. (O.S.) 1846 / 2009, available at http://courtnic.nic.in/dhcorder/dhcqrydisp_o.asp?pn=173895&yr=2009 (last accessed on 24.03.2013)
. Order of the Delhi High Court dated 19.12.2011 in I.A. No.20510/2011 in C.S.(O.S.) No. 3207/2011 (Reliance Big Entertainment Pvt Ltd v Multivision Network & Ors.), available at http://delhihighcourt.nic.in/dhcqrydisp_o.asp?pn=269404&yr=2011 (last accessed on 24.03.2013)
. Order of the Madras High Court dated 29.03.2012 in O.A.No. 230 of 2012 in C.S.No. 208 of 2012, the link to which is provided at http://spicyipindia.blogspot.in/search?q=madras+high+court+first+john+doe (last accessed on 24.03.2013)
. Order of the Calcutta High Court dated 27.01.2012 in GA No. 187 of 2012 in CS No. 23 of 2012 (Sagarika Music Pvt. Ltd. & Ors. v Dishnet Wireless Ltd. & Ors.), available at http://www.indiankanoon.org/doc/147345981/ (last accessed on 24.03.2013)
. The prayers sought in some of these civil suits are in complete contravention of the salutary principle in Or.VII, R.7 of the Code of Civil Procedure, 1908, that “every plaint shall state specifically the relief which the plaintiff claims”.
. The website blocking order dated 29.01.2013 passed by a District Court in Dabra near Gwalior in respect of websites that posted content related to the Indian Institute of Planning and Management, a Business School, and the subsequent unblocking order by the same Court dated 28.02.2013 have again brought back the spotlight on the legality of such orders passed by the judiciary. See http://economictimes.indiatimes.com/tech/internet/unblock-urls-about-iipm-court/articleshow/18743461.cms (last accessed on 24.03.2013).
. Ardath Tobacco Co. Ltd. v Munna Bhai & Ors., 2009 (39) PTC 208 (Del); 3M Company v A. Patel, MANU/DE/1991/2009.
. (2012) 5 LW 626. Hereinafter referred to as R.K.Productions.