[S]hould an infringer of the copyright on the internet be treated differently from an infringer in the physical world? If [this] view … is accepted, then all infringers would shift to the e-world and claim immunity!
– Justice Manmohan, Delhi High Court
Background
Bollywood has entertained Indians for decades. It has given us stories and stars.
Behind these stories are the artists and creators, both the struggling as well as the rich and famous who create content, the technicians-sound engineers, editors, set designers, software and game designers, the marketers, distributors, and end salesmen.
Copyright laws have long protected innovators and artists, securing to them the fruits of their inventive labor. The copyright system gave us great stories ranging from Sholay to Bahubali.
However, pirates on the internet – like on the high seas – continue to steal the original works created by these artists and deprive them of the fruits of their hard work.
India is one of the top five countries with the highest number of illegal downloads.
It is estimated that while the film industry earns around $2 billion from legitimate sources such as screening at theatres and TV rights, etc, piracy earns 35 percent more at $2.7 billion.
In this backdrop, UTV Software Communication Pvt. Ltd. (“UTV”) filed suits in the Delhi High Court against several defendants seeking an injunction to prevent infringers from making UTV’s content/cinematograph works available online without its authorization.
The Delhi High Court’s decision is historic for several reasons: it undertook an extensive survey of international laws on the subject, laid down new standards to determine if a website infringes copyright and importantly, provides for dynamic injunctions.
The Parties
UTV Software Communication Pvt. Ltd. (“UTV”) filed suits against several defendants seeking an injunction restraining several infringers from making UTV’s content/cinematograph works available online without its authorization.
These suit was filed against four classes of entities/people:
1. Identifiable websites/pirates that are publishing and communicating UTV’s copyrighted content to the public without UTV’s authorization;
2. Unidentifiable websites/pirates who are publishing and communicating UTV’s copyrighted content to the public without UTV’s authorization;
3. ISPs that provide internet access, enabling users to visit any website online, including the websites of the pirates;
4. Government departments and agencies to assist in notifying the ISPs to disable access to the defendant-websites within Indian and implementing the orders passed by the Delhi High Court.
Independent Verification
In most of these cases, the pirates don’t show up to contest the case. Without any agreements in place with the content owners, there is little to say in their defence.
Since there is no contest, Courts require an independent third-party to verify the claims of the content owners to see if the websites that are complained of in fact violate copyright. This is done to ensure that there is no impact on non-infringing legitimate websites.
UTV sought assistance of an investigator who works as a manager of Content Protection at Motion Pictures Distributors Association, Mumbai to independently verify its claims. He filed affidavits verifying the claims of UTV that these pirates were indeed pirating content of UTV and had filed several screenshots in terms of Section 65B of the Indian Evidence Act, 1872.
The Delhi High Court elaborately discussed the laws prevalent in foreign jurisdictions such as the EU, UK, Singapore and Australia. The Court also extensively relied on an article written by Mr. Nigel Cory Associate Director, Trade Policy, ITIF titled, “How Website Blocking Is Curbing Digital Piracy Without “Breaking the Internet”.
Types of Website Blocks
In the article Mr. Cory states that are 3 forms of website blocking:
1. IP Blocking
Advantages: Every computer has an IP address similar to a street address or telephone number and since ISPs act as a central clearing house, they can modify their networks settings and discard user requests to access the IP addresses for blocked sites. The costs of this process are low as this list of IP addresses are maintained centrally by the ISPs.
There are a few ways ot circumvent IP blocking but the average Joe would not have the technical knowledge and motivation to sidestep blocking. While pirates can obtain new addresses by reconfiguring their domains, this is also cumbersome especially if they have to keep redirecting users from one website to another.
Disadvantages: However, disadvantages remain. IP addresses can be quickly changed and IP blocking can also impact non-infringing legitimate websites as a single IP can host multiple websites.
2. DNS Blocking
DNS blocking targets the process that converts website domain names into a corresponding IP address which is then used to communicate with other servers.
Advantages: When a user wishes to access thepiratebay.org, an ISP recognizes the domain as a blocked site and does not allow it be translated into an IP address and tells the user that the website does not exist or redirects them to an informational page.
Disadvantages: Critics point that it may cause collateral damage due to the risk of over-blocking, as a single domain can host many websites thorough website extensions. For example (drive.google.com/piratebay or drive.google.com/ramanareddy).
However, some of this risk can be mitigated by implementing the block at the sub-domain level. Also, a pirate that hosts infringing content on its domain may be able to redirect its users but this may become cumbersome.
3. URL Blocking
URL blocking requires ISPs to examine both the headers of IP packets (which contain the source and destination of IP addresses) and the contents of the IP packet. “Shallow” and “Deep Packet Inspection” examine the contents of the packet in transit, rather than simply the addresses and tech specifications.
Advantages: Given this capability, URL blocking is the most precise method thereby avoiding over blocking. It can target specific types of network traffic whether the site in question relates to child pornography or copyright infringement.
Disadvantages: Since URL blocking puts the onus on the ISP to inspect each packet that goes through its network, it is costlier than the other two options
Since different types of blocks can be implemented, it is surprising that ISPs refrained from making any arguments before the Court. Given their role as the gatekeepers to provide access to the internet, ISPs have contested blocking orders tooth and nail in several jurisdictions since they will have to foot the costs of internet blocking. For example, if the Court directed ISPs to engage in URL blocking, it would prove to be a costly affair to the ISPs to comply with the orders of the Court.
Standard of Review
How do we decide if a website infringes copyright? What are the tests and factors that are to be taken into account to declare a website as a rogue website?
The Court surveyed standards that are applied across the globe and in India.
Under Indian law, the Copyright Act, 1957 protects the rights of content owners.
Section 2(f) of the Copyright Act defines a “cinematograph film” as any work of visual and sound recording including video films. Section 14 provides exclusive rights to the cinematograph film to the owners.
Importantly, Section 14(d) states that “communication to the public” of a cinematograph film is an exclusive right conferred upon the owner of the copyright.
What constitutes “communication to the public”? Making any work available for being seen or heard by the public regardless of whether the public actually sees the film.
Therefore, even merely making it available will constitute communication to the public.
Importantly, the Court took note of Section 51(a) of the Copyright Act which provides for situations under which copyright is infringed.
Copyright is said to be infringed when a person, without the authorization of the copyright owner does anything of which the exclusive right lies with the owner.
Therefore, if a pirate website makes available a film to the public (“communication to the public”) without the authorization of the producer (“copyright owner”), the pirate will be infringing copyright.
The Bombay High Court Decision: The “Quantitative Test”
The Delhi High Court noted the decision of the Bombay High Court in Eros International Media vs. BSNL (Suit No. 751 of 2016).
Crucially, the Bombay High Court held that no injunction shall be granted “unless it is demonstrated that the entirety of the website contains, and contains only, illicit material. Without that being attested to and established on Affidavit, I will not consider an order that results in the blocking of an entire website.”
In other words, if a pirate website hosted a tiny portion of legitimate content, it could not be taken down as the entirety of the website does not contain only illicit material. So for example, a pirate could have 99% of its website dedicated to pirated content, but could host only 1% of legitimate content – and would thus be exempt from blocking if this standard were to apply.
The Delhi High Court referred to this as the “quantitative test.”
While distinguishing the Bombay High Court’s decision on facts, the Court disagreed with the standard laid down by the Bombay High Court.
The Court famously noted that if the test to declare a website as a rogue website is that it should contain only infringing material, “then each and every rogue website would add a small percentage of legitimate content and pray that it be not declared an infringing website!”
Factors
After disagreeing with the Bombay High Court’s view, the Court identified several factors to determine whether the website complained of is a rogue website:
- whether the primary purpose of the website is to commit or facilitate copyright infringement;
- the flagrancy of the infringement, or the flagrancy of the facilitation of the infringement;
- Whether the detail of the registrant is masked and no personal or traceable detail is available either of the Registrant or of the user.
- Whether there is silence or inaction by such website after receipt of take down notices pertaining to copyright infringement.
- Whether the online location makes available or contains directories, indexes or categories of the means to infringe, or facilitate an infringement of, copyright;
- Whether the owner or operator of the online location demonstrates a disregard for copyright generally;
- Whether access to the online location has been disabled by orders from any court of another country or territory on the ground of or related to copyright infringement;
- Whether the website contains guides or instructions to circumvent measures, or any order of any court, that disables access to the website on the ground of or related to copyright infringement; and
- The volume of traffic at or frequency of access to the website;
- Any other relevant matter.
Proportionality and Necessity
Apart from these factors, the Court also laid down a twin-test of “proportionality” and “necessity”.
The proportionality principle requires the Court to ensure a fair balance to be struck between the right to intellectual property on one hand and the right to trade and freedom on the other hand.
On the other hand, the necessity principle requires that a particular measure is essential to achieve that aim i.e. whether there are other lesser restrictive means available to achieve the same outcome.
Globally, both these factors seem to play a big role in Court’s consideration. For example, in the UK, in Cartier International AG, the Chancery Court took into account both these factors before while considering a case for blocking pirated content on the web.
The Court also noted that the website blocking injunction cannot be excessively costly and ISPs cannot be forced to undertake expensive monitoring of the web.
For example, URL blocking is not only expensive but also ineffective as if the URL www.abc.com/india-vs-pakistan is blocked, the infringer can start operating on the URL www.abc.com/india-v-pakistan within a few seconds but if a domain is blocked, creating and purchasing a new domain is time consuming and costly.
Holding/Ratio
The Court finally held that:
“Consequently, website blocking in the case of rogue website, like the defendant-websites, strikes a balance between preserving the benefits of a free and open Internet and efforts to stop crimes such as digital piracy.”
The Court held that there should be a “website block.”
However, after undertaking an extensive review of the facts and the law in various countries, the Court does not provide which form of blocking it to be adopted.
Should it be a domain block, an IP block or a URL block?
We could possibly infer that the Court does not mean a URL block given the Court’s example with India vs. Pakistan. However, it is unclear which mode of blocking is to be adopted as the Court uses the generic words “website blocking”.
Dynamic Injunctions vs. Static Injunctions
The Court noted that there was a high likelihood that pirates would start operating under a different domain name as soon as the injunction is passed.
Critics of website blocking claim that such blocking is an exercise in futility as website operators shift the website as soon as they have knowledge that a Court may block their website.
To avoid constant adjudication of mirror/redirect/alphanumeric website and also to ensure that copyright owners are not burdened with filing fresh suits, the Court took a cue from the Singapore High Court to apply a dynamic injunction.
A dynamic injunction blocks new means of accessing the same infringing website rather than blocking new infringing websites that have not been included in the main injunction.
The Court delegated it power to the Joint Registrar to pass such orders and if any person is aggrieved by order passed by the Registrar and complains of over blocking, such a person may appeal such an order to the Judge in Chambers.
Suggestion
The Court noted that since website blocking is a cumbersome process and a majority of viewers/subscribers who access, view and download infringing content are youngsters, a direction was issued to the Government to explore the possibility under which a warning would be issued to viewers of infringing content in the form of emails, pop-ups or such other modes cautioning them to stop viewing such content or face heavy fines.
Conclusion
This decision of the Delhi High Court is historic for several reasons. It lays down several standards of review that copyright owners must establish in seeking a blocking order, provides for a dynamic injunction and departs from the quantitative test laid down by the Bombay High Court.
By protecting property rights on the web and promoting legal content, this decision will help in accelerating the pace of “Digital India”.
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