2.00 am. 3rd June, 2002. Nizamuddin East, New Delhi.
3 sleepless nights in a row and my body was beginning to give way. No food…no sleep…and the intellectual excitement around IP was beginning to wane.
I dreamt of greener pastures. For I’d just been admitted to the University of Oxford for my masters. And couldn’t stop thinking of the better life that waited on yonder shore. After the slavish rigours of law firm life, what a refreshing change this would be!
But for now, I was stuck. Yet another IP law suit. And yet another application for the appointment of a lousy local commissioner. One who’d throw his weight around at the drop of a hat…. demanding joy rides at Essel-World and expensive meals at restaurants. Very often the sons/daughters or nephews/nieces or friends of judges. The local commissioner business was bad enough then. I shudder to think what it must be like now. Yet another legal cabal in an already long list of cosy cabals that I had taken issue with this in this piece here?
But little did I know that this wouldn’t be just another law suit! But one that would go on to make history. As I yawningly churned out yet another standard suit late into the night, my then boss, Pravin Anand, arguably one of the finest IP lawyers called to ask: “How many defendants have we arraigned?”.
“Three”, I said. “We’ve received tip offs for only three cable operators, and I’ve got all of them in.”.
“But what of the others?”, he asked.
“What of the others?”, I shot back angrily, rubbing my eyelids hard to stay awake. “These are the only ones our investigators came up with”.
“But there will be others”, he said. As he sensed my gnawing sense of impatience and irritability, he said: “Bete (son).. Come home. Let’s discuss.”
Later, donning his professorial robes, he patiently explained:
“This is the world cup after all. Every cable operator will want to screen these matches. Very few of them have taken licenses, is that not so?”. I mumbled a faint “yes”.
“All the others clearly want a free ride”, he continued. “But we can’t keep tracking each one and taking them to court one by one. The world cup would have long gone by then! We need a clever strategy. And one before we get to the semis and finals, when there is maximum viewership!”.
“So what do we do?”, I asked, now all wide eyed and curious.
The Dawning of the Idea
Twitching his moustache (as he is wont to do when deep in thought), he said: “Find me case law that gives me the leeway to arraign all defendants at one go, even cable operators whose name and identity we do not know at this stage! Get me some literature that shows us that intellectual property with a short shelf live (such as the right to broadcast football matches that don’t last beyond a month) can be treated differently. You’re not likely to find anything in India. Look elsewhere. Other common law countries perhaps. Let’s create some new jurisprudence. Mazaa Aayega (will be great fun!)”.
Energised and enthused, I went back to the office and looked. Long and hard through the night. Wading through reams of legal databases and books in a fairly extensive library that the firm (Anand & Anand) boasted.
And sure enough, I found a couple of cases from the US, Canada, UK, Australia and New Zealand that permitted John Doe defendants (unnamed defendants) and supported special procedural shortcuts for IP with short lives.
Taj Television vs Rajan Mandal: India’s First (IP) John Doe
Within the next few days, we filed Taj Television Ltd. & Anr. vs Rajan Mandal & Ashok Kumar. The matter came up before Justice Dalveer Bhandari, now a judge at the International Court of Justice. In a characteristically compelling narrative, Pravin Anand walked the court through the John Doe jurisprudence in other countries. Midway through, the judge exclaimed: Mr Anand, you’ve already taken me around half the world! I’m exhausted!”.
Exhaustion notwithstanding, our well researched brief articulated with adroit advocacy got us the order; and a path breaking one that it. One that drew on the comparative jurisprudence we cited, but was also uniquely fashioned to suit the Indian situation (including the recasting of “John Doe” as “Ashok Kumar”).
Adventures in IP Enforcement: Rajni Style Cops and Plush Hotels
An intensive enforcement campaign followed, where we went after major cable operators and raided their premises, often with police support. Within weeks, a number of cable operators fell in line and asked for licenses. The client raked in some serious moolah and gushed with gratitude!
But it wasn’t all easy! In fact, we got off to a rather bad start. Two of the initial cable operators that we raided were crafty enough to keep us waiting at the door, even as their backdoor boys yanked out the damning wires! And when we entered, lo and behold! No sign of any infringing transmission!
We then hatched a plan to go after more “plush” establishments that would be less crafty and care more about their reputation. We identified a top star hotel in Bangalore and took the cops with us, arguing that if the hotel transmitted matches to the rooms of its viewers, it was infringing the exclusive copyright of the plaintiff; and that this fell within the scope of the restraining order passed by the judge.
The chief cop who accompanied our merry troop was a sight to behold, a dashing Rajnikanth (southern cine star) look alike; with moustache and mannerism to match! Fortunately for us, and unfortunately for the hotel, the moment we entered and stated our mission, thrusting a copy of the court order into the face of the manager in charge, he demanded to see our ID cards. Our star cop didn’t take too kindly to this demand and immediately barged in, turning on the TV in the hotel lobby. Upon finding the infringing channel, he ordered that the TVs in all guest rooms be confiscated! Fortunately, he mellowed down after a while, but the damage had been done. The press soon followed, and reported the raid with much gusto!
A fear psychosis set in and within days, a number of cable operators signed up. This was followed up with shock raids in other cities as well, some successful and some not so successful. But John Doe offered us a wide canvass to simply go where we felt like and raid anyone we suspected of infringing.
A hugely successful IP campaign by any standard! And yet one that could never have come to fruition, had a lawyer not thought outside the standard legal box. A lawyer who was feted last year as the “Most Innovative Lawyer” by the Financial Times.
And deservedly so, given the range of creative outpourings that he’s unleashed so far. Both within the strict contours of his legal practice and without (“extra-curricular activities” as we tend to call them in college).
Notably, he’s credited with bringing Anton Piller and Mareva injunction orders to India. And for pushing the frontiers of IP jurisprudence in cases such as Amaranth Sehgal case where he persuaded the Delhi High Court to expand the notion of a moral right to include even a claim against destruction (a first for India, and indeed the world!).
One may well say that his idea for a John Doe order was not really creative, given that there was already a well-established line of precedent in foreign countries. But then to think up the possibility of such a John Doe suit (without knowing of its existence in advance) would itself rate as creative. Or in the words of noted AI (Artificial Intelligence) and creativity scholar, Margaret Boden, this would count as P-creativity (coming up with a new idea that is new to the person who conceives of it, whether or not it is new to the world).
Also, this was not just a wholesale replication of an existing idea, but a clever tweaking of it to account for local milieu.
Patel’s Balance: Lord of the Springs?
Unfortunately, the excesses of John Doe jurisprudence in later years left me dejected and I wallowed in self-pity for having played some role in bringing this Frankenstein-ine figure to life.
But as the Poetic Percy once asked of the wind: “If winter comes, can spring be far behind?”. Spring did come, though many years later. In the form of Gautam Patel. A juggernaut of a judge who wielded his creative scalpel to temper the tempestuousness of the John Doe construct. In a range of orders that exemplifies the spirit of judicial dialogue (a thesis that he outlined in this piece here), Justice Patel infused the John Doe frame with sound safeguards, ending with a grand finale in the Dishoom case. Where he noted that a future solution may well have to be found outside the strict confines of judicial ordering…in the form of an ombudsman perhaps.
Has the John Doe chapter come to a close? Clearly not, IP attorneys will continue to creatively stretch at the bounds. Yet others will try and rein in the enforcement excesses. And wiser ones like Patel J will be left with the enviable task of mediating competing concerns in this John Doe joust.
But, all of this also raises a definitional issue: what precisely is a John Doe order? Has it not gone way beyond its traditional moorings of simply being about unnamed defendants! And come to encompass a fused legal hybrid of sorts, comprising a representative action, an Anton Piller order, a Mareva injunction etc? And now with the latest orders demanding that all infringing web links be listed out specifically and authenticated, has John Doe (un-named or un-identified parties) become no more? The answer may well be blowing in the wind; perhaps the same wind that brought us the spring. But we’ll save this definitional dialogue for another day.
For now, let’s relish the fact that there is some sanity at long last. Some melody in the John Doe jingle, Delhi delights notwithstanding. Which is why I thought this story needs telling! Even at the cost of resurrecting an old ghost. The ghost of India’s first John Doe. Or Ashok Kumar for those that prefer a desi touch!
Ps: “Anand” translates to joy, which explains the title. In fact, “Anandamide” is a chemical known to trigger bliss in the brain. Funnily enough, I conjured up this term in a hypothetical example for Prof. Lionel Bently for his chapter on the overlaps between patents and trade secret (in a book edited by the ever insightful Neil Wilkof and me). Not knowing that it actually meant what I’d conjured it up to mean. It was only later that I found the link between Anandamide, the brain and chocolate. Truth is indeed stranger than fiction!
Pps: Many thanks to Pankhuri for prompting me to do more posts on the puzzle that is John Doe, and all her wonderful assistance with this piece. We plan to co-author a piece soon putting together all of this interesting history, along with raising some fundamental jurisprudential questions on the future of IP enforcement. Strangely enough, despite our best efforts, we couldn’t locate a good open access version of this landmark order. It was to be only found in proprietary databases. And mind you, even the Delhi high court website which carried every other order pertaining to this case did not carry the most important order granting the John Doe order. What a shame for access to law to India! Anyway, the risk of law suits notwithstanding, we’ve now made this available on our SpicyIP resource page. So read away and ruminate on a case that went on to make history and now constitutes one of the landmarks in Indian IP!