We’re pleased to bring to you a guest post by Eashan Ghosh, sharing some thoughts on where our law is headed with dynamic IP injunctions following the Delhi High Court’s Snapdeal order from a few weeks ago. Eashan has been practicing as an intellectual property advocate and consultant in New Delhi since 2011, and teaches a seminar on intellectual property law at National Law University, Delhi. Eashan writes about Indian intellectual property law, including a monthly review of Delhi High Court judgments, on his Medium page. He’s also the author of the recently released book ‘Imperfect Recollections: The Indian Supreme Court on Trade Mark Law’. Eashan has written several guest posts for us in the past as well, which can be viewed here, here, here, here, here, here, here, here and here).
What We Understand and Imagine Dynamic IP Injunctions To Be
The coverage of ‘dynamic injunctions’ on these pages has doubtless been of interest to several readers. An order for UTV by the Delhi High Court last April raised some good questions on the subject. Orders for Warner Bros in July-August last year prompted several more. An order for Disney three weeks ago saw the trend follow into 2020.
Yet another Delhi High Court order, won by Snapdeal last month, also merits inclusion in this conversation.
The Snapdeal Claim
Snapdeal arrived just a week prior to Disney and, in Mr Justice Shakdher, the orders have a common author. As such, the stylistic and framing similarities in the two orders – injuncting a host of rogue websites, with liberty to the Claimants to add to their number – is unsurprising.
There are, however, two key differences.
First, Snapdeal is a trade mark infringement claim, not a copyright claim. To the theory of dynamic injunctions this means little, but the technical shift is a perceptible one: from hosting content (where the conceptual gap between infringer and infringing material is prominent) to use in titles and promotions (where this gap is not quite so clear-cut).
Second, Snapdeal succeeds in setting up a case for fraudulent use. The object of its claim is fraudulent promotions and contests run by the Defendants allied to Snapdeal’s trade marks. Taken together, they create the impression of being suggestive and proximate to the manner in which the Claimant might run such schemes themselves. This, too, is distinct from copyright claims where Defendants run the risk of infringement but little else.
(To be clear, the overlay with copyright claims is far from perfect. This is perhaps to be expected when the claim seeks an injunction on the basis of a smelted version of infringing use instead of pirated content.)
The arguments against a liberal approach to dynamic injunctions are strong, and have been addressed at length on these pages previously. I do not propose to examine them here. Instead, I will focus on some characteristics of such claims that have, so far, escaped judicial attention.
The Mechanics of Dynamic Injunctions
The first observation is simply to do with the classification of these claims. They are, for the most part, exceptional cases in the sense that the mechanics of infringement are rarely contested. The natural parallel here is to pure counterfeit actions, and a casual classification of such cases in the same category would not be far wrong.
The upshot of this is significant. The mechanics of the infringing use are such that they inject explosive potential into the amount of damage they can do to intellectual property held online. To rightsholders who hold the majority of their intellectual property online, this potential for damage is unique and considerable. However, this remains a fact that Indian courts have acknowledged only adjacently so far.
Dynamic Injunctions as Long Range Tools
The second point that requires engagement from Indian courts is what they understand dynamic injunctions to be. In UTV, Warner Bros, Disney and now Snapdeal, courts have shown that they understand very well what dynamic injunctions do. However, they are less clear on what dynamic injunctions actually are.
From the manner in which they have been deployed in India so far, dynamic injunctions are long range tools. They are a modification to traditional injunctions that are uniquely effective at a range in which a class of target Defendants (usually located abroad, with nominally zero fear of Indian courts) operate. Shorter ranges, of course, permit the exercise of other remedial tools. However, in this specific slice of range, the appeal of dynamic injunctions is sizeable. (I have stumbled upon it incidentally here, but there is a serious discussion to be had on whether dynamic injunction Claimants should be asked to show that, on balance, no other tools are likely to be effective against the Defendants they are pursuing.)
A couple of markers are baked into this characterization.
The most important is that dynamic injunctions are a variation of the standard-form injunction. They are not, importantly, a category of relief in themselves. At a minimum, this means that the procedures they exercise must permit the same access to rights and opportunities that litigants would be entitled to in standard injunction proceedings.
Similarly, they are an improvement on the standard-form injunction, and not a fix for all its limitations. The central assumption of dynamic injunctions is that the target class of Defendants will get tired of playing a game of dodge and eventually stop committing infringement. The ease of circumvention of the initial injunction and the minimal cost of doing so, though, make this far from certain. Dynamic injunctions will always be incomplete solutions.
The New Normal
The third thing Indian courts must recognize is that the fear of dynamic injunctions being normalized is a valid one. Just one misapplied instance in a case unsuited to such relief will expose every harm of dynamic injunctions. Equally, the more such orders are issued, the easier it will inevitably be for judges to glaze over individual instances where dynamic injunctions may be a poor fit. As the recent Indian history of domain name claims suggests, the shift from variation to default often occurs furtively.
There is a further wrinkle here. The 2019 dynamic injunctions set up an enforcement mechanism through Registrar courts to avoid clogging up judicial time. The issue in 2020, best illustrated by the continuing Snapdeal case, is of where the value of these post-injunction proceedings truly lies. Does it lie in feeding the same infringement claim new Defendants who commit fresh acts of infringement? Or does it, instead, lie in adding phases of infringing actions to budget for circumvention? Here, too, there are important judicial choices to be made.
Dynamic Injunctions beyond Courts
The heavy duty of vigilance cast by dynamic injunctions has one final effect.
It ensures that the possibility of detaching these disputes from the court system remains a perpetually attractive one. That, of course, is a conversation we have seen on these pages, from the judiciary taking off from these pages, and well beyond these pages. This is not the time or place to venture into that debate.
There may, nevertheless, be value in framing the conversation in a different way. Perhaps the real question to be asked – and one that Indian observers have so far overlooked – is whether these cases are adjudications at all.
I frame it so because, upto this point, dynamic injunctions in India have broadly shadowed a fairly predictable legislative arc of dynamic injunctions abroad. The Snapdeal route, however, hints at a different model of management altogether. Under its terms, there is little to hold back rights holders from setting up master litigations on online infringement management and adding species to them, like chapters in a book. Should this be the shape of the future, there is every possibility that enforcing courts will fail to vigorously assess the characteristics, structure and function of Defendant use on an ongoing basis.
More likely than not, the end-game of dynamic injunctions will require courts to eventually step aside. What fills the breach will depend on the extent to which rightsholders and executing agencies can arrive at a mutually beneficial middle ground. This is the transition that Indian courts are currently stuck mediating. Naturally, the role of individual judges in maintaining what remains, for the moment, a nervous equilibrium can hardly be overstated.
However, it is now amply clear that keeping this balance will be beyond us unless we apply some serious thought to what we understand and imagine dynamic injunctions to be.
That, surely, is something gained.