Injunctions are the first resort for parties seeking to stop websites from infringing trademarks or hosting copyright-infringing data. But injunctions do not always work the way they're expected to in these cases. Often, the infringing content is merely moved to a different server or is re-uploaded or re-hosted on a different platform. In order to circumvent the technicalities of the internet and in order to strengthen the armoury of trademark and copyright holders to counter digital piracy, a new type of injunction has come into vogue to better enforce digital rights - dynamic injunctions.
What Are Dynamic Injunctions?
The modus operandi followed in most digital piracy cases is fairly template-driven. A judicial authority grants an injunction with regard to certain specific domain names that are guilty of hosting infringing content. Even as the original websites are taken down, mirror websites quickly and easily appear under other domain names and thus remain unaffected by the original injunction order. Some judicial creativity has become necessary to counter these actions, as regular website blocking injunctions have clearly proven inefficient.
A dynamic injunction allows a right-holder to approach the courts to extend the main injunction order against all mirror websites providing access to the same infringing online locations that were the subject of the main injunction. These injunctions can be issued when the same website becomes available immediately after issuing the injunction with a different IP address or URL.
Origins of Dynamic Injunctions
Dynamic Injunctions as a remedy available to right holders are relatively recent. They were devised because conventional injunctions that blocked websites could not provide adequate relief. The particular problem law in future undefined domain names and web addresses whose main purpose is to provide access to the same illegal file-sharing sites that were covered by the original injunction.
The European Commission, in its communication to the European Parliament dated 29.11.2017 providing guidance on Directive 2004/48/EC, defines dynamic blocking injunctions as follows:
"injunctions which can be issued for instance in cases in which materially the same website becomes available immediately after issuing the injunction with a different IP address or URL and which is drafted in a way that allows to also cover the new IP address or URL without the need for a new judicial procedure to obtain a new injunction."
On the basis of this, various national courts in Europe have issued dynamic blocking injunctions.
Elsewhere, the High Court of Singapore in Disney Enterprise v. Ml Ltd., (2018) SGHC 206, while granting a dynamic injunction, held that the applicant was not obligated to return to court for an order with respect to every single IP address of the infringing URLs already determined by the Court.
Dynamic Injunctions in India
Dynamic injunctions as a judicial remedy have found their way into India as well. Most recently, in August 2020, the Delhi High Court granted an ex-parte ad interim injunction in favour of Disney Enterprises, Inc.1 against multiple rogue websites which were enabling the down-streaming of Disney's copyrighted films and entertainment programmes without requisite licences.
These websites were restrained from hosting, streamlining, reproducing, distributing, or making available to the public or communicating to the public, any Disney content on their websites. This injunction was also made operable in respect of mirror/redirect/alphanumeric websites which were placed by the Defendants to grant access to the infringing websites. The relevant government Ministry and Department (Telecom) were also asked to issue directions to the concerned Internet Service Providers (ISPs) to block access to such rogue websites and mirror/redirect/alphanumeric websites of such rogue websites.
However, dynamic injunctions have an older history in India. The relief was first granted in India in 2017 by the Delhi High Court in a plea by UTV Software Communication Ltd.2 seeking to restrain the Defendant-websites from sharing its original content without authorization, and to direct ISPs to block access to these websites. Citing the Singapore decision, the dynamic injunction was granted. The applicant was allowed to approach the Joint Registrar of the Court to extend the already-granted injunction order to similar 'mirror/redirect/alphanumeric' websites containing the same content as the original website.
In the UTV case, the Court laid down certain criteria to identify sites as "rogue websites" for the purpose of extending the injunction. These include, whether the website primarily aims at copyright infringement; whether the website hides the details of the registrant; and whether there is inaction after receiving a takedown notice with regard to copyright infringing content.
Similar orders were again passed by the Delhi High Court in batch petitions filed by Warner Bros. Entertainment Inc.,3 and Snapdeal Private Limited.4
These cases clearly show that the Delhi High Court has been leading the charge amongst Indian courts in granting dynamic injunctions. But not all courts have taken the same position. The Bombay High Court took a divergent view in a matter involving Eros International Media Ltd.5 The Court said that for a blocking order to be passed against an entire website, the applicant must show that the entire website contains only illicit and infringing material with no legitimate content whatsoever. The Court also called for a three-step verification process which included the verification and assessment by an external agency of the infringement.
The Bombay High Court also considered the need to appoint an ombudsman to whom all such grievances and complaints relating to infringement could be routed. On this point, there was some agreement with the Delhi High Court, which had also, in a matter involving Tata Sky Limited,6 mooted the possibility of appointing a Grievance Officer to whom grievances of registration of objectionable domain names could be addressed, and who could deal with the same, unless they entailed a complex question of law or fact, when the option could be to approach the Civil Court.
As such, dynamic injunctions appear to offer an effective mechanism against rogue websites and their mirror websites. But a balance needs to be struck to ensure that such injunctions do not come in the way of free dissemination of non-infringing information. The idea of an ombudsman is one way to tackle this challenge, but brings with it other concerns relating to non-judicial authorities potentially exercising adjudicatory powers.
With two differing views expressed by the two most active IP High Courts in the country, there is clearly room for more interpretation and clarification. As the nature of the beast that is digital piracy evolves, and as the internet itself transforms, surely, there will be greater demands for more judicial innovation from Indian courts.
1 Disney Enterprises, Inc. & Ors. versus Kimcartoon.to & Ors., CS(COMM) 275/2020
2 UTV Software Communication Ltd. and Ors. Versus 1337x.to and Ors., CS(COMM) 724/2017
3 Warner Bros. Entertainment Inc. versus http.//tamilrockers.ws & Ors., CS(COMM) 369/2019
4 Snapdeal Private Limited versus Snapdeallucky - Draws.org.in & Ors., CS (COMM) No.264/2020
5 Eros International Media Ltd. & Anr. v. Bharat Sanchar Nigam Ltd. & Ors., Suit No.751/2016
6 Tata Sky Limited versus National Internet Exchange of India (Nixi) and Ors CS(COMM) 1202/2016
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