By now, everyone must have heard of the order passed by the Delhi High Court regarding the blocking of websites for allegedly infringing FIFA World Cup content. For those of you who haven’t, Multi Screen Media (MSM) Satellite recently sued in the Delhi High Court alleging that numerous websites have been infringing their exclusive broadcast rights in the FIFA World Cup 2014, and the Delhi High Court through J. Kameswar Rao granted ex parte relief. This post looks to analyse the order and point out some questionable issues with it.(Long post to follow)
The order notes that MSM had obtained the exclusive broadcast (including mobile transmission and internet transmission) rights from FIFA by means of a contract and had invested considerable sums of money in the broadcast. It also notes that MSM was the sole and exclusive owner of the broadcast as per S.37 of the Copyright Act, 1957. The court holds that the activity of the websites (the suit names 400+ websites, including Google Docs, later shortened to 219 websites) in providing access to the content of the World Cup was an “act of piracy” (It is interesting to note the court used the word ‘piracy’ rather than ‘copyright infringement’). The orders that the court passed in the ex-parte injunction were:
- Restrained certain defendants from engaging in conduct that would infringe the Plaintiff’s broadcast reproduction rights.
- Restrained defendants from conduct amounting to amounting to unfair competition and commercial misappropriation of the Plaintiff’s rights.
- Directed certain defendants to ensure and secure compliance of this order.
- Directed certain defendants (presumably ISPs) to “ensure and secure compliance of this order” by blocking access to websites that are “identified by the Plaintiff in the instant suit or such other websites that may subsequently be notified by the Plaintiff to be infringing of its exclusive rights.”
It’s not quite clear who the defendants are in the suit, and the order goes on to mention that the Plaintiffs have made out a case for the passing of a John Doe order. The court goes on to mention that many of these websites are hard to track and therefore such an order is necessary. This aspect aside, in my opinion, the order suffers from a number of problems.
1. The lack of a cause of action for certain defendants: The order notes that, “….the cause of action arises against the defendants as they are likely to host, stream, broadcast, retransmit, exhibit, make available for viewing and download, provide access to and communicate to the public..” The court goes on to hold that any such activity, “would constitute an act of piracy.” Considering that this is a case involving an alleged breach of broadcast rights and considering that S.37 of the Copyright Act is very clear as to what constitutes a breach of broadcast rights (none of these grounds are anticipatory in nature), the court ought to have entered into an analysis of these grounds and seen if a cause of action has been made out by the plaintiffs. Instead what the court has relied on, is an argument made by the counsel for the Plaintiffs wherein they say that these unnamed defendants might infringe upon their exclusive rights. As far as I am aware, no claim of anticipatory infringement is recognised under Indian Law. Essentially the order was granted as some form of preventive mechanism to stop the infringement of the “exclusive rights” of the Plaintiffs. Such claims would open to doors to mass scale abuses of the power granted under copyright law as it takes the determination of whether or not copyright infringement has in fact occurred into the hands of non-judicial entities. This sort of thing seems to have been done in the past though.
At another portion in the order the court notes that “it is imperative for the Plaintiff to ensure that its exclusive and statutory rights are not infringed by websites which have not made any investments in acquisition of such rights.” There is absolutely no mention of this infringement on the part of the Defendants. The only mention or reference to infringement if at all, are by the websites mentioned in the suit. Considering that the court is passing an ex parte injunction and also considering that the blocking orders would take down entire websites, even seemingly benign ones like Google Docs, the court at least should have at least referred to some evidence in the order, to prevent irreparable harm from occurring to these websites.
This argument is notwithstanding the clear injury that would be caused to the websites by blocking them in their entirety for some amount of infringing content that is present on a few pages of theirs. As our co-blogger Anubha notes in her post on the CIS website, that as per the orders of the Madras High Court in R K Productions v BSNL only the particular URL on which the infringing content is present can be taken down and not the entirety of the website.
The nature of these websites was also not considered by the court in ascertaining whether there was a cause of action at all. Some of these websites could be (and are) intermediaries under the IT Act, which the court ought to have taken cognisance of.
There has been a clarification however on the 1st of July in which the Delhi Court passed an order narrowing down the list of websites to 219 which actually contained infringing content. Thankfully, the court notes that not all the websites on the original list contained such content. However, even here the court hands an ISP the authority to scrutinise for infringement. There is still a substantial number of websites involved and the court ought to be the authority to scrutinise for infringement especially since no clarification has been made regarding how much of the website has to be taken down and this could potentially lead to a mass scale censorship/takedown. Also this clarification seems to have arisen by means of an agreement between the ISPs and the Plaintiffs, whereas the websites, whose real interests are being affected were not heard at all. The order notes, “”It is agreed that defendant no.40 would scrutinise the list forthwith and in case as per their knowledge and information any of the website so mentioned in the list includes a legitimate website the defendant will inform the plaintiff and barring such website all other websites as per the list provided by the plaintiff today shall be injuncted as per the order dated 23.6.2014”
2. Common Law remedies were granted when there is an express statutory bar: Justice Bhat’s opinion in Akuate v. Star clearly clarifies that in the absence of an express statutory bar under S.16 of the Copyright Act, no common law remedies can be read into the Copyright Act, unless certain narrow tests are fulfilled. The court completely omitted to consider or to analyse these factors in its order and proceeded to restrain the defendants from engaging in conduct that would amount to unfair competition and commercial misappropriation. For an analysis of these claims in copyright and related cases read here.
3. Lack of an enforcement mechanism would lead to private policing: Conventionally, when the court passes a John Doe order, it usually appoints a Commissioner or some official to oversee the execution of the order in order to prevent abuse. The merits or demerits of this practice aside, it does ensure at least a modicum of accountability in the entire process when guidelines are laid down for the functioning of these authorities.
The court has not made any such provisions in the present instance. Interestingly the court in this instance leaves the modalities of the execution and the list of websites that are to be blocked/monitored in the hands of the ISPs and funnily enough, the Plaintiffs. It notes in the order however that the ISPs DoT and the DEIT were directed to oversee the process and to ensure that the ISPs, “block access to the various websites identified by the Plaintiff in the instant suit or such other websites that may subsequently be notified by the Plaintiff to be infringing of its exclusive rights.” No further details were provided and neither were any guidelines provided as to how this interaction between the DoT/DEIT and the Plaintiffs was to operate and as to what level of involvement they were to have in the process and whether or not they could check for actual infringement. (Edited)
I cannot stress enough on the danger that such an order poses. It encourages the policing of websites by private parties and takes the crucial determination of whether or not infringement has taken place out of the hands of the courts and places it into the hands of private entities. The court has not even laid down a framework under which “powers” may be exercised by these entities or as to what level of blocking is required. An example of the difficulties that this can cause was highlighted in Anubha’s post, which notes how different websites displayed different messages for the blocking implying differential forms of implementation. In most places, no reasons were given on the website for the blocking and neither was an end date mentioned.
There are clear issues with this order and the potential for misuse is extremely grave. Meanwhile, Airtel has blocked all 219 websites on the amended list submitted to the court on the 1st of July. Anonymous, has had something to say about this form of censorship in the past, maybe it will this time too.
Many thanks to Swaraj for his help on this.