John Doe order in UTV Software Communications Limited vs. Home Cable Network Ltd. and Ors. (movie 7 Khoon Maaf)

IN THE HIGH COURT OF DELHI AT NEW DELHI
 
CS(OS) No. 821/2011
 
UTV SOFTWARE COMMUNICATIONS LIMITED ..... Plaintiff
Through Mr. Vikas Singh, Sr. Adv. with Mr. Ravi
Prakash, Mr. Varun Pathak, Adv. ,
Ms. Avni Singh, Adv.
 
versus

HOME CABLE NETWORK LTD and ORS ..... Defendants
Through
 
CORAM:
HON'BLE MS. JUSTICE GITA MITTAL
 
O R D E R
04.04.2011
 
IA No.5384/2011

1. Exemption allowed subject to just exceptions.
   CS(OS) No.821/2011
2. Subject to the plaintiff taking steps within one week, issue summons in the suit to the defendants by ordinary process, registered cover and through approved courier, returnable on 14th July, 2011 before the Joint Registrar.
3. The summons to the defendants shall indicate that a written statement to the plaint shall be positively filed within four weeks of the receipt of the summons. Liberty is given to the plaintiff to file replicationand rejoinder within two weeks of the receipt of the advance copy of the written statement and reply.
4. In case the written statement is not filed within the time stipulated above, the same shall be taken on record only subject to imposition of heavy costs.
5. The parties shall file all original documents in support of their respective claims alongwith their respective pleadings. In case parties are placing reliance on a document which is not in their power and possession, its details and source shall be mentioned in the list of reliance which shall be also filed within the pleadings.
6. Admission/denial of documents shall be filed on affidavit by the parties within two weeks of the completion of the pleadings. The affidavit shall include the list of the documents of the other party. The deponent shall indicate its position with regard to the documents against the particulars of each document.
7. Learned counsel for the plaintiff submits that without prejudice to its rights, contentions and claims in the suit, his client would be willing to explore the possibility of settlement by recourse to mediation.
8. The summons shall indicate that it is open to the parties to access the facility of negotiating a settlement with the other side before the Delhi High Court Mediation and Conciliation Centre in the court complex. In case the defendants are so desirous of pursuing negotiations, it shall be open to them to do so. Such participation in the mediation shall be without prejudice to their rights and contentions in the suit.
9. In such eventuality, the defendant shall inform the plaintiff as well as his counsel of the same by a written notice. Such written notices shall be treated as consent of the parties to the mediation process.
10. The plaintiff and/or defendants may then approach the Delhi High Court Mediation and Conciliation Centre for facilitating mediation in the matter. Any or both of the parties shall place the copy of this order as well as the written notice before the Delhi High Court Mediation and Conciliation Centre which shall proceed in accordance with the rules of the Centre.
11. During the course of mediation, it shall be open to the mediator to join any other person(s) considered necessary for effective mediation and dispute resolution.
12. The Registry shall enclose the information brochure published by Samadhan the Delhi High Court Mediation and Conciliation Centre with the summons.
13. The parties shall appear before the Joint Registrar for marking of exhibits on 14th July, 2011.
14. The matter shall be fixed before the court for reporting outcome of the mediation/framing of issues on 15th September, 2011.
15. The schedule fixed by this order shall not be interdicted by the pendency of the matter in mediation. IA No. 5383/2011 (Under Order 39 Rule 1 and 2 CPC).
16. Issue notice, returnable on 15th September, 2011.
17. The plaintiff is the producer/co-producer/distributor of several movies detailed in the plaint including the film "7 Khoon Maaf" which has been recently released. It is asserted that the latest film produced by the plaintiff titled "Thank you" is to be released on 8th April, 2011.
18. The suit has been necessitated for the reason that the plaintiff has experienced large scale violation of its copyright in earlier films produced by it by several known and unknown cable operators who telecast pirated version of the films of the plaintiff on cable networks, violating rights of the plaintiff and causing irreparable loss and damage. A single telecast by the defendants and other operators would simultaneously reach several hundred thousand homes. As a result, the loss which results to the plaintiff is irreparable and cannot be computed in terms of money.
19. The plaintiff also complains that additionally the quality of the film which is telecast by these cable operators is inferior and impacts its reputation. Loss to the exchequer by way of collection of entertainment tax, etc. has been also pointed out.
20. Based on its past experience, it is urged by Mr. Vikas Singh, learned senior counsel for the plaintiff that an investigation was undertaken into the business being run by the defendant no.1 and extensive positive information with regard to the violation of the plaintiff?s copyright in the plaintiff's film "7 Khoon Maaf", has been received. The investigation report obtained by the plaintiff has been placed on record.
21. It has also been urged at great length that apart from the cable operators who have been arrayed as defendants, there are several other cable operators in the field who operate in an identical manner to cause violation of the plaintiff?s copyright. The plaintiff is not able to establish the full particulars of these persons which have consequently not been placed in the plaint. Such persons have been collectively arrayed as defendant nos.19 to 50 named as ?Mr. Ashok Kumar?. The plaintiff urges that these defendants are unknown identities who would also telecast the unauthorizedly and illegally telecast pirated version of the plaintiff's films by their network without any licence.
22. The plaintiff invokes the inherent power of this court under Section 151 of the CPC to evolve a fair and reasonable procedure to address the peculiar facts and circumstances over the pleaded violations by the defendants including defendant nos.19 to 50. In this regard, reliance is placed on the internationally adopted "John Doe" practice obtaining in USA, Canada, UK, Australia and other jurisdictions as well as this country's obligation under the TRIPPS agreement to effectively enforce IPR rights of parties including those as in the present one. It is urged that a similar order deserves to be passed in the present case.
23. In support of this submission, my attention has been drawn to a judgment dated 14th June, 2002 passed in CS(OS) No. 1072/2002 Taj Television Ltd. and Ors. vs. Rajan Mandal and Ors. reported at 2003 FSR 22 on similar facts, this court had noticed the following submissions of counsel for the plaintiff seeking a John Doe order:- 11. Mr. Anand submitted that conduct of various unscrupulous cable channel companies/distributors such as the defendants is well known. The aspect of channel is being illegally aired on the local cable networks has almost taken on a regular feature. He prayed that in the facts and circumstances apart from giving necessary directions be also given for defendant Nos. 7 to 20, in other words, the court may pass "John Doe" orders.
    
    Mr. Anand placed reliance on Trade Marks Law of Canada in which it is mentioned that John Doe? orders enabling the order to be served upon persons whose identity is unknown to the plaintiff at the time the action was commenced, but whose activity falls within the scope of the action. This form of naming a party is considered a mere "misnomer", and as long as the "litigating finger" is pointed at such person then the misnomer is not fatal. This proposition has been taken from Jackson v/s Bubels (1972) 28 DLT. (3d) 500 (B.C.C.A.) and Dukoff vs.Teronto General Hospital (1986),54,O.R.(2d) 50(H.C.).
    
    Mr. Anand submitted that ?John Doe? orders are passed by American, English, Canadian and Australian Courts frequently. He further submitted that this court also possesses enormous inherent powers to formulate the orders which are necessary to meet the peculiar facts and peculiar situations., In the first U.S. Federal "John Doe" order, Shaw vs Various John Does, No 80 Civ,722 (S.D.N.Y.Fe,6,1980) the court held that a court of equity was always free to fashion a decree in keeping with the needs of the litigants. Similarly, in Billy Joel vs. Various John Does, 1980 U.S. Dist LEXIS 12841 the Court held:
    
    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 for the parties before it.
    
    Mr. Anand placed reliance on the judgment of the Supreme Court in Manohar Lal Chopra vs. Rai Bahadur Rao Raja Seth Hiralal, AIR 1962 SC 527. The Court held that the inherent powers of the Court are in addition to the powers specifically conferred on the Court by the Code. They are complementary to those powers and therefore, it must be held that the court is free to exercise them for the purposes mentioned in Section 151 of the Code when the exercise of those powers is not in any way in conflict with what has been expressly provided in the Code or against the intentions of the legislature. Mr. Anand placed reliance on EMI Records Ltd . v. Kudhail and others (1985) FSR 36, (1983) Com LR 280.
    
    Mr. Anand , Learned counsel for the plaintiffs, has made references to a large number of Canadian, Australian, English and American cases but I would not like to burden this order with all the judgments on which reliance has been placed at this stage. Since ?John Doe? orders are passed in the court of Canada, America, England, Australia and in some other countries. The judicial systems of all these countries have basic similarity with our judicial system. Therefore, looking to the extra ordinary facts and circumstances of the case, in the interest of justice the courts in India would also be justified in passing "John Doe" orders. It is noteworthy that after such finding keeping in view the peculiar facts of the CS(OS) No. 1072/2002, a John Doe order was not passed.
24. My attention has also been drawn to an order dated 24th November, 2006 in CS(OS) No. 2189/2006 wherein the court has granted an injunction order in terms of the above observations. This court as such has the jurisdiction to pass an order in the nature of a John Doe order injunction unknown persons in circumstances as have been pleaded by the plaintiff in the present case. Mr. Vikas Singh, learned senior counsel for the plaintiff has placed reliance on the following observations of the court in Tej Television (Supra) in the context of cable operators:-
25. I have carefully considered the relevant documents, averments of the application and judgments of various courts. Undoubtedly, the cable operators in India have a long history of violating copyrights. A very large number of court orders are testimony to this. The cable operators are encouraged owning to the unique nature of cable piracy and the unstructured nature of the cable industry, the speed with which any trace of infringement can be erased by the cable operators, enforcement of rights in conservative nature is unlikely to effectively redress the plaintiffs' grievance.
26. The plaintiff has approached this court seeking protection of its valuable rights against such unwarranted, unauthorized and illegal actions of the defendants nos. 1 to 18 as well as the Mr. Ashok Kumars arrayed as defendant nos. 19 to 50 which have violated and diluted the exclusive copyright vested with the plaintiff in respect of the films "7 Khoon Maaf". The plaintiff has expressed apprehensions that the defendants would violate the plaintiff's rights in its film "Thank You".
27. The plaintiff has asserted violation of its rights and violations of the Copyright Act, 1957, the Cable Network (Regulation) Act, 1995 before this court. The material placed before this court would show that the plaintiff has copyright in the films produced by it and only authorized licensees can telecast the films.
28. The plaintiff has specifically averred that the defendants in the suit have not signed any agreement with regard to the film. As such telecast of these films is violative of section 14(1)(d) and 16 of the Copyright Act.
29. It is urged that unauthorized cable transmission of the plaintiff's films shall result in irreparable loss and damage to the plaintiff. It would also encourage other cable operators who have currently procured licenses/entered into agreements with the plaintiff and possess valid license/agreements, to also telecast the films without making necessary payments. In support of the grievance that the damage would be irreparable, it is pointed out that the cable industry has an unstructured composition and it would be impossible to assess the damages which may result on account of  unauthorized telecast/broadcast/distribution.
30. The modus operandi adopted by unauthorized cable operators is to prepare poor copies of the films when they are being screened in the picture hall and telecast the same on their network to cable homes attached to them. It would appear that public interest would also suffer on account of poor programme quality. There is prima facie substance in the plaintiff's contention that the same would impact the plaintiffs reputation as well.
31. In view of the foregoing, it would prima facie appear that unlicensed broadcast of the reproduction rights vested in the plaintiff by telecasting the plaintiff's films "7 Khoon Maaf" and the forthcoming film "Thank You" in the foregoing manner is illegal, unfair and deserves to be prohibited. Consequently, unless injunction as prayed for is granted by this court, the business of the plaintiff herein would be irreparably impacted. Balance of convenience and interest of justice are in favour of the plaintiff and against the defendants.
32. It is accordingly directed as follows :-
    (i) that the defendants/their agents, representatives, franchisees, sub-operators, head ends and/or anyone claiming under them are hereby restrained from telecasting or in any other manner communicating to the viewing pubic/subscribers either by means of wireless diffusion or by wire a pirated version of the films "7 Khoon Maaf" and "Thank You" and/or in any other manner infringing the copyright of the plaintiff therein.
    (ii) It is further directed that till the present order is vacated or modified, the direction shall operate against the defendants, their agents,representatives, franchises, sub-operators or any person claiming under them an injunction.
    (iii) Further injunction in terms of serial no. (i) above is passed against un-named and undisclosed persons who may be likewise committing breach of the rights of the plaintiff in a similar manner.
    (iv) The SHO/Superintendent of the concerned police station(s) are directed to render assistance to the plaintiff should any be required for purposes of enforcement of the present order as it is the obligation of the police authorities and the State to enforce judicial orders passed.
    (v) The plaintiff is permitted to publish the John Doe injunction order issued today in local newspapers in all states where it has expressed apprehensions of violation of its rights. Consequences in accordance with law would thereafter follow.
    (vi) The plaintiff shall comply with the provisions of the proviso to rule 3 of order 39 of the CPC within a period of ten days from today.
    

Copy of this order be given dasti as well as dasti under the signatures of the court master of this court.
 
GITA MITTAL, J
APRIL 04, 2011