John Doe or Ashok Kumar Order in IP rights Infringement
This article was written by Dibyadarshini Nanda, she is currently an advocate.
Generally, a person approaching a Court of law can only claim relief against known defendants. It is imperative to give name, details and address of all the defendants in a civil suit. This established principle of law, may work well in disputes between private parties, but there are circumstances where it is almost impossible to identify all the defendants. One such scenario arises in the disputes relating to piracy and infringement of works protected by IPR.
With the growth of technology and internet, it has become very easier to download, copy and distribute the protected works through the web. Every other day, we come across news of version of movies getting leaked online before its release like Udta Punjab, Great Grand Masti etc. These versions get copied, circulated and downloaded innumerable times, causing huge and irreparable law to the film makers. In such circumstances, the aggrieved filmmakers cannot wait to identify the defendants and has to take some swift action to prevent such loss. Not to mention the fact, it would be almost impossible to identify all the persons who have downloaded or copied the content, as the number range from hundreds to thousands. Therefore, to protect the rights of film makers and producers, a special breed of relief known as John Doe or Ashok Kumar orders are granted by the Courts against the unknown perpetrators of copy right infringement.
John Doe Orders- Meaning
John Doe orders or Ashok Kumar orders are ex parte injunctions against unknown or anonymous offenders. In India, these orders are most probably passed in proceedings relating to copy right and trademark infringement, online piracy, personal privacy and confidential information. [1] These are special orders passed by the Court to overcome the hardships faced by the Plaintiffs in ascertaining the name of specific defendants, who are hidden behind the veil of numbers and different identities. John Doe orders provide expeditious preventive relief to the victims and grant timely protection of their rights by avoiding the delay and difficulties in seeking relief due to anonymity of the offenders.
John Doe orders are passed according to Order 30 Rule 1 of the Code of Civil Procedure, 1908, when the petitioners establish a prima facie case that there is a valid threat of their copyrighted work being infringed and hence irreparable loss of money will be caused. [2]
Evolution of John Doe orders in relation to IP rights infringement
John Doe orders have their origin in the 14th Century English Courts and can be found in various jurisprudence, across the world. A well established legal principle in UK, USA and Canada, John Doe orders were first applied in India in Tej Television Limited vs Rajan Mandal[3]. In this case, the Plaintiff was the official registered broadcaster of the Soccer World Cup, 2002. He suffered loss due to unauthorized transmission of its Channel ‘Ten Sports’ by some unlicensed cable operators. The Court accepted the futility of trying to identify the particular cable operators among the numerous cable operators functioning in India and the financial loss the plaintiff would face in the process and exercised its inherent power under Section 151 of the Code of Civil Procedure, 1908 to pass a John Doe order against unnamed cable operators.
In ESPN Software vs. Tudu Enterprises[4], the Plaintiff, the sole and exclusive distributor of three sports channel, ESPN, Star Sports and Star Cricket and having exclusive rights to broadcast the ICC events in India, brought an action against unidentified cable operators transmitting the matches illegally. The Court passed a John Doe orders restraining the unauthorized operators from broadcasting the matches.
In Luxottixa Group Limited[5] vs. Ashok Kumar and Ardath Tobacco Company vs. Mr. Munna Bhai & ors.,[6] the Court passed John Doe orders restraining some unidentified persons from selling counterfeit optical and cigarettes, respectively under the trademark of petitioners.
The rampant piracy and short life-span of movie makes the film makers and producers approach the Court for seeking John Doe orders against the infringers. The producers of 7 Khoon Maaf and Thank You got a John Doe order from the Court against unnamed cable operators who violated Plaintiff’s copyright. In the case of Reliance Big Entertainment Private Limited v Jyoti Cable Networks and Ors,[7] a John Doe order was passed by the Court in favor of makers of movie ‘Singham’ and for the first time the term ‘internet’ was used and order was passed directing ISPs to block infringing websites.
Basing on the Singham case, John Doe order is passed for movies like Bodyguard, Speedy Singhs, Don 2, Dammu, Loot, Players, Kahaani, Blood Money, OMG, Aiyya, Gangs of Wasseypur 1 & 2, Special 26, The Hobbit-an Unexpected Journey, 3, Dhoom 3, Udta Punjab, Sultan, Kabali etc. [8]
Conclusion
John Doe orders were introduced as shields for the victims of copyright infringement to safeguard them from unknown and anonymous offences establishing whose identities will waste money and time of the plaintiffs. But over the time, John Doe orders have lost their purpose and have been used as swords against the websites and other media. Film makers are approaching Court with lists of websites and URLs, alleged to have infringed their copy right and the Courts are granting them injunction without verifying if the URLs are actually infringing in nature or not. This position of the Court is criticized by activists who see this as a violation of internet freedom.
Recently, Bombay High Court refused to grant injunction on the basis of unproven list of websites and URLs presented by the Plaintiff and agreed to grant John Doe order only if the veracity of the statement is established. [9]
This is a welcome step and Courts should follow the guidelines established in this case to create a balance between Plaintiff’s intellectual property rights and internet freedom of general public. In a quest to block infringing sites, the authentic and genuine sites having legal contents should not be blocked. A John Doe should be passes keeping in view the interests of film makers, website owners and general public, John Doe order is a shield and should never be treated as a sword.
[1] “‘What’s in a name’… John Doe arrives in India” by Payel Chatterjee, accessed at http://www.nishithdesai.com/fileadmin/user_upload/pdfs/-What-s_in_a_name-_-_John_Doe_arrives_in_India.pdf
[2] “Recent Inclination of Indian Judiciary to Pass “John Doe” Orders – A Critical Analysis on the Perspective of Copyright Infringement of Film Productions” by Aditya Mishra, accessed at http://lawmantra.co.in/recent-inclination-of-indian-judiciary-to-pass-john-doe-orders-a-critical-analysis-on-the-perspective-of-copyright-infringement-of-film-productions/
[3][2003] F.S.R 24
[4] MANU/DE/1061/2011
[5] 16th April, 2010
[6] 2009(39)PTC208(Del)
[7] CS (OS) No. 1724 of 2011 decided on 20th July, 2011.
[8] http://naiknaik.com/john-doe-orders/
[9] ‘Bombay HC Effectively Transforms John Does from Swords to Shields – Delineates Most Robust Safeguards to Date’ by Rahul Bajaj accessed at http://spicyip.com/2016/07/bombay-hc-effectively-transforms-john-does-from-swords-to-shields-delineates-most-robust-safeguards-to-date.html
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