By Priya Adlakha and Shilpi Sinha
Dynamic injunctions have been the latest maneuver to restraint the nuisance of resurfacing bootlegged websites. Hon’ble Mr. Justice Suresh Kumar Kait of the Delhi High Court in Living Media India Limited & Anr. vs www.news-aajtak.co.in & Ors.[1], passed an order directing intermediaries and other Domain Name Registrars to block websites infringing the “Aaj Tak” trademark of the Plaintiff. Living Media India Limited is the parent company of the famous Hindi news channel “Aaj Tak”.The website www.news-aajtak.co.in and other websites bearing the word ‘Aaj Tak’ as part of their domain name (commonly referred to as “rogue websites”) infringe upon the “Aaj Tak” trademark. The Hon’ble Court earlier granted ad-interim injunction and directed the Domain Name Registrars (DNRs) to block the rogue websites, but with time, several mirror websites turn up after the rogue websites are blocked. The Hon’ble Delhi High Court, decided upon the application for the impleadment of third parties in its order dated September 6, 2021.
Facts:
The plaintiff had submitted that they own several “Aaj Tak” trademarks (with device as well as composite marks) which are given below.
On 24th September, 2020, the Hon’ble Court had passed an interim injunction order against four (4) defendants. In the present application, the plaintiff had prayed for impleading several other defendants (9-36) and had also prayed for suspension of the domain name registrations of the proposed defendants’ website Nos. 9, 10, 11, 12, 14, 15 and 17 and web/-platforms under proposed defendants No. 18 to 26 and 27 to 36. The Hon’ble Court concurred with the plaintiff and noted that the proposed defendant nos. 9 to 12, 14, 15, 17 to 25 and 27 to 36 as well as proposed defendant nos. 13, 16 and 26 are also necessary party for adjudication of this case, and if they are not impleaded, prima facie it shall amount to immense loss of goodwill and reputation on account of the unlawful activities of the proposed defendants. Thus, the interim application was allowed by the Hon’ble Court and the proposed defendants (no. 9-36) were impleaded in the present case.
Notice of the said application was then issued to the aforementioned proposed defendants, and till the next date of hearing, the Court held that the interim injunction granted vide order dated 24.09.2020 shall also imply upon defendant nos. 9 to 36. Necessary directions were also given by the Hon’ble Court to block/suspend the infringing websites /domain names/ web platforms pertaining to the newly impleaded defendants.
DYNAMIC INJUNCTIONS IN INDIAN CONTEXT
Since the beginning of the Covid-19 pandemic, the nation has faced a new challenge of rise of numbers of intellectual property rights violation /infringement cases, especially digital piracy cases. The IP right owners have knocked the doors of the appropriate Courts to seek appropriate remedies. In several cases, the Hon’ble Courts have granted interim injunctions in favour of the IP right owners to protect their respective rights; however, the culprits sometimes go beyond control. Once an injunction or direction is granted by the Hon’ble Court for blocking of the specified fake website/domain name, mirror websites (being hosted under slightly modified / different domain names) take their place.
In Indian context, Dynamic injunctions are the need of the hour, since regular injunctions wherein multiple fake websites are introduced/launched by the fraudsters it becomes cumbersome for the Plaintiff to monitor all the illegal activities. Dynamic injunctions further enable the courts to extend the original injunction order and include the new /additional mirror/fake websites that have the same content as the original one and are only registered under a different domain name and/or use a different IP address.
In India, there are previous instances where the Hon’ble Courts have granted dynamic injunction in order to protect the IP right owners. The Hon’ble Delhi High Court granted an ex parte ad interim injunction against 118 websites in Disney Enterprises v. KimCartoon.to & Ors[2], for infringement of Disney’s copyrights. UTV Software Communication Ltd.[3] was the first case wherein the dynamic injunction citing the Singapore decision, restraining the Defendants websites from sharing its original content without authorization, and to direct ISPs to block access to these websites. More recently, another dynamic injunction was granted in Snapdeal Private Limited vs Snapdealluckydraws.org.in[4] and 50 infringing websites violating Snapdeal’s trademark were taken down.
It is pertinent to mention that prior to this, the courts in India had started to resort to Dynamic Injunctions as a tool to deal with such issues at hand, but most of those cases were limited to copyright infringement. Snapdeal’s case was the first one wherein such a resolution was provided for in the case of a trademark infringement.
CONCLUSION
Adoption of dynamic injunctions, as a tool to deal with such copycats, has been proven to be an efficient and effective remedy to tackle with digital piracy. Despite several criticisms, its efficiency and effectiveness in the current digital age has been appreciated, especially when such acts of digital piracy and trademark infringement may mislead the general public causing damage to the repute of the original IP right owner. It is clear that these recent adjudications only pave the path towards a more efficient system of dealing with digital piracy and infringement.
[1] CS(COMM) 395/2020
[2] CS(COMM) 275/2020
[3] CS(COMM) 724/2017
[4] CS(COMM) 264/2020