India: Intermediary’s Liability for Infringing Content

October 16, 2019
Social Media & Cyber Defamation

By Pranit Biswas and Isheta Srivastava

Recently, the Delhi High Court adjudicated upon a case of trademark infringement in the case of Surrendra Malik v. Facebook Inc & Ors., where Surrendra Malik (hereinafter referred to as the ‘Plaintiff’) was seeking removal of infringing content by intermediaries including Facebook and Instagram (hereinafter referred to as the ‘Defendant’) from their platform. The Delhi High Court relied upon the case of Shreya Singhal v. Union of India[1] to decide the present suit filed by Surrendra Malik who is the owner of the trademark ‘DA MILANO.’

Brief Facts

  • The suit was filed for permanent injunction against infringement of trademark and passing off, and under Section 74 of the Information Technology Act, 2000 seeking protection of the registered trademark ‘DA MILANO’.
  • The Plaintiff is the owner of the mark ‘DAMILANO’ in various forms which also include logo and label forms.
  • The alleged infringers have uploaded posts on social media platforms like Facebook and Instagram advertising and offering to sell products that bear the mark ‘DA MILANO’.

Contentions of the Plaintiffs

  • The Plaintiff sought permanent injunction against the alleged infringers and also pleaded that directions should be issued against Facebook and Instagram to ensure that such posts that contain the infringing marks are removed.
  • The Plaintiff also seeks direction for the personal presence of the Defendants.
  • It was also contended that the Plaintiff would like to inform the Defendants as and when an infringing post comes to their knowledge and accordingly the Defendants shall take down such posts.

Contention of the Defendants

  • Facebook and Instagram acknowledged the rights of the Plaintiff on the mark ‘DA MILANO’ but contend that they are exempted from liability under Section 79 of the IT Act, as they are merely intermediaries.
  • The Counsel for the Defendants claimed that they are not challenging the matter on merits against the Plaintiff but they are mere intermediaries and their personal presence is not necessary.

Court Decision and Analysis

  • The Court borrowed the interpretation in Shreya Singhal v. Union of India and stated, “Considering the provisions of the IT Act and Information Technology (Intermediaries Guidelines) Rules, 2011, platforms such as Facebook and Instagram, which claim to be intermediaries not performing any active role in the posting of such information by third party alleged infringers, have a duty only to take down the posts which are brought to their notice by the Plaintiff in terms of Section 79(3), by following due diligence.
  • The Court after clarifying the stance on Section 79 of the IT Act, acknowledged the Defendant’s submission that so long as the infringing mark is identical and the Plaintiff notifies the platforms, they are willing to remove the posts.
  • The Court said, “The legal position is thus settled insofar as Section 79 is concerned. The Plaintiff does not allege that the said two platforms have any active role. Ld. Counsel for the Plaintiff has shown to the Court illustrative printouts of the posts which were using the mark DA MILANO. There is no doubt that such posts which use the mark DA MILANO in any form, when brought to the notice of the platforms, have to be removed.”
  • The Court decided that the Plaintiff shall inform the platforms when they see the use of the mark ‘DA MILANO’ in any form and upon receiving such information, as per Rule 3(4) of the 2011 Guidelines, the said post shall be taken down, within the time period prescribed. The Court further added, “If the platforms have any doubt as to the violative or offending nature of the post (s), they shall intimate the Plaintiff, within the time prescribed, who shall avail of its remedies in accordance with law;”

[1] (2015) 5 SCC 1

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