Delhi High Court
Warner Bros. Entertainment Inc. vs Http://Www.Onlinewatchmovies.Com.Pk/ ... on 10 October, 2022
Author: Navin Chawla
Bench: Navin Chawla
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 19.09.2022
Date of decision: 10.10.2022
+ CS(COMM) 403/2019 & IA 13802/2022
WARNER BROS. ENTERTAINMENT INC. ..... Plaintiff
Through: Ms.Suhasini Raina, Ms.R.Ramya,
Ms.Mehr Sidhu, Advs.
versus
HTTP://WWW.ONLINEWATCHMOVIES.COM.PK/ & ORS.
..... Defendants
Through: Mr.Kirtiman Singh, CGSC with
Ms.Vidhi Jain, Advs. for D-26 &
D-27.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
1. The plaintiff has filed the present suit inter-alia praying for the
following reliefs:
"51. In light of the foregoing, it is most
respectfully prayed that this Hon'ble Court may
be pleased to:
i. Issue an order and decree of permanent
injunction restraining the Defendant No. 1 (and
such other mirror/redirect/alphanumeric websites
discovered to provide additional means of
accessing the Defendant Websites, and other
domains/domain owners/website
operators/entities which are discovered to have
been engaging in infringing the Plaintiff's
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exclusive rights), its owners, partners,
proprietors, officers, servants, employees, and all
others in capacity of principal or agent acting for
and on their behalf, or anyone claiming through,
by or under it, from, in any manner hosting,
streaming, reproducing, distributing, making
available to the public and/or communicating to
the public, or facilitating the same, on their
websites, through the internet in any manner
whatsoever, any cinematograph
work/content/programme/ show in relation to
which Plaintiff has copyright,
ii. Issue an order and decree directing the
Defendant Nos. 2-10, their directors, partners,
proprietors, officers, affiliates, servants,
employees, and all others in capacity of principal
or agent acting for and on their behalf, or anyone
claiming through, by or under it, to block access
to the Defendant No. 1 website identified by the
Plaintiff in the instant suit (and such other
mirror/redirect/alphanumeric websites discovered
to provide additional means of accessing the
Defendant Website, and other domains/domain
owners/website operators/entities which are
discovered to have been engaging in infringing
the Plaintiff's exclusive rights)
iii. Issue an order directing the Defendant Nos. 11
and 12, to issue a notification calling upon the
various internet and telecom service providers
registered under it to block access to the
Defendant No. 1 websites identified by the
Plaintiff in the instant suit (and such other
mirror/redirect/alphanumeric websites discovered
to provide additional means of accessing the
Defendant Website, and other domains/domain
owners/website operators/entities which are
discovered to have been engaging in infringing
the Plaintiff's exclusive rights);
iv. Issue an order directing the Domain Name
Registrars of the Defendant Website identified by
the Plaintiff in the Plaint to disclose the contact
details and other details about the owner of the
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said websites, and other such relief as this
Hon'ble Court may deem fit and proper:"
2. The plaintiff claims itself to be a global entertainment company
under the laws of the State of Delaware, the United States of America,
and as being engaged in the business of creation, production and
distribution of motion pictures. The plaintiff has also received certain
reputed awards, such as the Academy Award for 'Best Picture' for the
motion picture 'Argo' in 2012.
3. It is the contention of the plaintiff that the motion
pictures produced by the plaintiff, being works of visual recording and
which include sound recordings accompanying such visual recordings,
qualify to be a 'cinematograph film' under Section 2(f) of the Copyright
Act, 1957 (in short, 'the Act'). The plaintiff claims that this Court has
jurisdiction by virtue of Section 13(1) read with Sections 13(2) and 5 of
the Act. Since the plaintiff's cinematograph films are released in India,
the cinematograph films of the plaintiff would be entitled to all the rights
and protections granted under the provisions of the Act.
4. The claim of the plaintiff is premised on the allegation of illegal
and unauthorized distribution, transmission and streaming of the
plaintiff's original content by the defendant nos. 1 and 14(hereinafter
referred to as the 'rogue websites'). It is the case of the plaintiff that as a
result of the unauthorized transmission of their content, the rogue
websites infringe the copyright of the plaintiff in the original works
produced by it, which have been granted protection under the provisions
of the Act.
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5. The plaintiff has impleaded various Internet Service Providers
(in short, 'ISPs') as the defendant nos. 2 to 10 and the concerned
departments of the Government of India as the defendant nos. 11 and 12.
The ISPs and the concerned departments have been impleaded for the
limited relief of compliance with any directions of this Court granted in
favour of the plaintiff.
6. The plaintiff, vide an investigation conducted by an independent
investigator, learnt of the extent of the infringing activity of the rogue
websites, in as much as the rogue websites have infringed the plaintiff's
copyright under the provisions of the Act in the original content by
streaming or hosting and/or by facilitating the use of the rogue websites,
inter alia by downloading and streaming the plaintiff's original
cinematograph films in which copyright vests.
7. It is also the case of the plaintiff that a cease-and-desist notice
was served on the rogue websites calling upon them to cease from
engaging in their infringing activities. Despite the cease-and-desist
notice, the rogue websites continue to infringe the copyright of the
plaintiff in its original content.
8. The learned counsel for the plaintiff presses only for prayers given
in paragraph no. 51(i), (ii) and (iii), as noted hereinabove, of the plaint.
The other reliefs as made in the plaint are not pressed.
9. The learned counsel for the plaintiff relies upon the judgment dated
10.04.2019 passed by this Court in a batch of suits, including UTV
Software Communication Ltd. & Ors. v. 1337X.to & Ors., 2019 SCC
OnLine Del 8002, which dealt with the determination of rogue websites.
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10. The plaintiff has filed I.A. 13802 of 2022 under Order XIIIA of the
Code of Civil Procedure, 1908 (in short, 'CPC'), as applicable
to commercial disputes, seeking a Summary Judgment.
11. The grounds for filing the above application, as enumerated by the
plaintiff in the same, are as follows:
a. That all the defendants have been duly served by the plaintiff,
however, only the defendant nos. 2, 7, 9, 11 and 12 have
entered appearance before this Court.
b. That the defendant nos. 1 and 14 being the rogue websites,
against whom the plaintiff is seeking primary relief, are
illegally streaming the plaintiff's content on their websites and
even after being duly served by the plaintiff, have decided not
to contest the present suit.
c. That the rogue websites impleaded as the defendant nos. 1 and
14 have no real prospect of successfully defending the claim of
copyright infringement under Section 51 of the Act and have
further not chosen to contest the said claim.
d. Additionally, there is no other compelling reason why the
present suit should not be disposed of before recording of oral
evidence particularly in view of the fact that there is no dispute
regarding the illegal activities of the defendant nos. 1 and 14
and in any event, in the absence of any challenge or opposition
to the factual allegations made in the plaint, in view of the
provisions of Order VIII Rule 5 of the CPC, there is no
occasion for recording of oral evidence in the present matter.
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12. The learned counsel for the plaintiff has relied upon Clause 3
of Chapter XA of the Delhi High Court (Original Side) Rules, 2018
which states the grounds under which a Court can pass a Summary
Judgment.
13. The learned counsel for the plaintiff has drawn my attention to the
affidavits filed by Mr. Manish Vaishampayan, who conducted
the investigation with regard to the aforesaid websites at the instance
of the plaintiff, to contend that the said websites need to be treated
as rogue websites. With respect to this contention, reliance is placed on
the following documentary evidence in support of each of the
aforesaid websites:
S.NO. Particulars Court File
Pagination along
with Volume
Number
1. Print of Contact Details of various websites as available on
WHOIS (Primary domains):
a) OnlineWatchMovies.com.pk Pg 288-289
(Defendant No. 1)
Folder IV, Vol 2
b) WatchOnlineMovies.com.pk Pg 339-344
(Defendant No. 1)
Folder IV, Vol 2
c) WatchOnlineMovies.com.pk I.A. No. 8951/2020
(Defendant No. 1)
Pg 95-96
2. Screenshots of Homepage of various websites (primary
domains):
a) WatchOnlineMovies.com.pk Pg 242-263
(Defendant No. 1)
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Folder IV, Vol 2
b) WatchOnlineMovies.com.pk I.A. No. 8951/2020
(Defendant No. 1)
Pg 35-39
3. Print out of content playing of various websites (primary
documents):
a) WatchOnlineMovies.com.pk Pg 264-287
(Defendant No. 1)
Folder IV, Vol 2
14. I have heard the learned counsel for the plaintiff.
15. In UTV Software (supra), this Court, as far as rogue websites are
concerned, identified the following illustrative factors to be considered in
determining whether a particular website falls within that class:
"59. In the opinion of this Court, some of the factors to
be considered for determining whether the website
complained of is a FIOL/Rogue Website are:-
a. whether the primary purpose of the website is to
commit or facilitate copyright infringement;
b. the flagrancy of the infringement, or the flagrancy of
the facilitation of the infringement;
c. Whether the detail of the registrant is masked and
no personal or traceable detail is available either of
the Registrant or of the user.
d. Whether there is silence or inaction by such website
after receipt of take down notices pertaining to
copyright infringement.
e. Whether the online location makes available or
contains directories, indexes or categories of the
means to infringe, or facilitate an infringement of,
copyright;
f. Whether the owner or operator of the online location
demonstrates a disregard for copyright generally;
g. 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;
h. 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
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or related to copyright infringement; and i. the
volume of traffic at or frequency of access to the
website;
j. Any other relevant matter.
60. This Court clarifies that the aforementioned factors
are illustrative and not exhaustive and do not apply
to intermediaries as they are governed by IT Act,
having statutory immunity and function in a wholly
different manner.
xxxxx
69. Consequently, the real test for examining whether
a website is a Rogue Website is a qualitative
approach and not a quantitative one."
16. This Court, in UTV Software (supra) further held as under:
"29. It is important to realise that piracy reduces jobs,
exports and overall competitiveness in addition to
standards of living for a nation and its citizens. More
directly, online piracy harms the artists and creators,
both the struggling as well as the rich and famous,
who create content, as well as the technicians-sound
engineers, editors, set designers, software and game
designers-who produce it and those who support its
marketing, distribution and end sales. Consequently,
online piracy has had a very real and tangible impact
on the film industry and rights of the owners.
30. The Indian Copyright Act, 1957 ("the Copyright
Act") confers a bundle of exclusive rights on the owner
of a "work" and provides for remedies in case the
copyright is infringed.
xxxxx
34. The above definitions make it clear that making
any work available for being seen or heard by the
public whether simultaneously or at places chosen
individually, regardless of whether the public actually
sees the film, will constitute communication of the film
to the public. The intent was to include digital copies
of works, which would include within its scope digital
copies of works being made available online (as
opposed to the physical world). Communication can be
by various means such as directly or by display
or diffusion. In this context, definition of "broadcast"
is also relevant which identifies communication to
public by wireless diffusion or by wire. Thus, making
available of a film for streaming or downloads in the
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form of digital copies on the internet is within the
scope of "communication to the public".
35. It is pertinent to note that the definition of
"communication to the public" was first added in the
Copyright Act by the 1983 Amendment and was as
follows:-
"Communication to the public" means communication
to the public in whatever manner, including
communication though satellite".
xxxxx
53. Also should an infringer of the copyright on the
Internet be treated differently from an infringer in the
physical world? If the view of the aforesaid Internet
exceptionalists school of thought is accepted, then all
infringers would shift to the e-world and claim
immunity!
54. A world without law is a lawless world. In fact, this
Court is of the view that there is no logical reason why
a crime in the physical world is not a crime in the
digital world especially when the Copyright Act does
not make any such distinction.
xxxxx
80. In the opinion of this Court, while blocking
is antithetical to efforts to preserve a "free and open"
Internet, it does not mean that every website should be
freely accessible. Even the most vocal supporters of
Internet freedom recognize that it is legitimate to
remove or limit access to some materials online, such
as sites that facilitate child pornography and
terrorism. Undoubtedly, there is a serious concern
associated with blocking orders that it may prevent
access to legitimate content. There is need for a
balance in approach and policies to avoid unnecessary
cost or impact on other interests and rights.
Consequently, the onus is on the right holders to prove
to the satisfaction of the Court that each website they
want to block is primarily facilitating wide spread
copyright infringement.
xxxxxx
82. One can easily see the appeal in passing a URL
blocking order, which adequately addresses over-
blocking. A URL specific order need not affect the
remainder of the website. However, right-holders
claim that approaching the Court or the ISPs again
and again is cumbersome, particularly in the case of
websites promoting rampant piracy.
83. This Court is of the view that to ask the plaintiffs to
identify individual infringing URLs would not be
proportionate or practicable as it would require the
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plaintiffs to expend considerable effort and cost in
notifying long lists of URLs to ISPs on a daily basis.
The position might have been different if defendants'
websites had a substantial proportion of non-
infringing content, but that is not the case.
84. This Court is of the view that while passing
a website blocking injunction order, it would have to
also consider whether disabling access to the online
location is in the public interest and a proportionate
response in the circumstances and the impact on any
person or class of persons likely to be affected by the
grant of injunction. The Court order must be effective,
proportionate and dissuasive, but must not create
barriers to legitimate trade. The measures must also
be fair and not excessively costly (See: Loreal v. Ebay,
[Case C 324/09]).
xxxxxx
86. Consequently, website blocking in the case of
rogue websites, 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.
87. This Court is also of the opinion that it has the
power to order ISPs and the DoT as well as MEITY to
take measures to stop current infringements as well as
if justified by the circumstances prevent future ones."
17. It is notable that the plaintiff, in a similar batch of suits, including
Warner Bros. Entertainment Inc. v. Otorrents.Com &Ors., 2022 SCC
OnLine Del 1738, wherein judgment was pronounced on 08.09.2022 ,
had filed an application under Order XIII-A of the CPC, as applicable to
commercial disputes, wherein this Court relying on the judgment in UTV
Software (supra) has passed a Summary Judgment and decreed the suits
in favour of the plaintiff.
18. In the present Suit as well, vide order dated 05.08.2019, this Court
had granted an ex-parte ad-interim injunction against the defendant no. 1
(and such other domains/domain owners/website operators/entities which
are discovered during the course of the proceedings to have been
engaging in infringing the plaintiff's exclusive rights), their owners,
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partners, proprietors, officers, servants, employees, and all others in
capacity of principal or agent acting for and on their behalf, or anyone
claiming through, by or under it, restraining them from, hosting,
streaming, reproducing, distributing, making available to the public
and/or communicating to the public, or facilitating the same, in any
manner, on their websites, through the internet, any cinematograph
work/content/programme/ show in relation to which plaintiff has
copyright.
19. This Court had further directed the defendant nos. 2 to 10 to block
the domain name 'onlinewatchmovies' and its URLs as mentioned in the
table below-
Domain URLs IP Addresses
https://www.onlinewatchmovies.com.pk/ 64.20.43.211
Onlinewatchmovies https://www.onlinewatchmovies.com.pk 104.24.2.3
104.24.3.3
20. This Court further directed the defendant nos. 11 and 12 to
suspend the above-mentioned domain name registration of the defendant
no. 1 and to issue requisite notifications calling upon various ISPs and
telecom service providers registered under them to block the
aforementioned website identified by the plaintiff within five working
days.
21. The learned counsel for the plaintiff submits that pursuant to
the ex-parte ad-interim order dated 05.08.2019, the defendant no. 11 has
issued the requisite notification. The learned counsel for the plaintiff
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further states that the defendant nos. 2 to 10 have blocked the defendant
no.1's rogue website.
22. This Court had also passed the following direction in its order
dated 05.08.2019:
21. Further, as held by this court in UTV
Software Communication Ltd. (supra), in order
for this court to be freed from constant monitoring
and adjudicating the issues of
mirror/redirect/alphanumeric websites it is
directed that as and when Plaintiff file an
application under Order I Rule 10 for
impleadment of such websites, Plaintiff shall file
an affidavit confirming that the newly impleaded
website is mirror/redirect/alphanumeric website
with sufficient supporting evidence. Such
application shall be listed before the Joint
Registrar, who on being satisfied with the material
placed on record, shall issue directions to the
ISPs to disable access in India to such
mirror/redirect/alphanumeric websites".
23. In light of the aforesaid direction, the plaintiff filed the subsequent
application under Order I Rule 10 of CPC for the impleadment of the
defendant no.14, that is, I.A 8950 of 2020, in the present suit
proceedings, which was allowed by the Court and the ex-parte ad-
interim order dated 05.08.2019 was thereby extended to the defendant
no. 14, vide order dated 08.10.2020.
24. Thereafter, on 06.05.2022, the learned Joint Registrar (Judicial),
passed the following order in regard to rogue websites, that is, the
defendant nos.1 and 14:-
"...All of the contesting defendants against whom
substantial relief has been sought by the plaintiff
have been served, however they have not
preferred to appear to contest this case or to file
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written statement and affidavit of
admission/denial of documents. In this regard law
shall take its own course.
Learned counsel for plaintiff submits that there is
no document for admission/denial of documents.
Hence, pleadings stand complete.
Other defendants who were supposed to comply
with interim directions have already complied
with.
At request, let the matter be placed before the
Hon'ble Court for further directions on
13.07.2022."
25. Thereafter on 13.07.2022, the Court allowed the defendant no. 12's
application, being I.A. 15809 of 2019, seeking deletion from the array of
parties, as the plaintiff has not prayed for any relief against the defendant
no.12 in the present Suit.
26. Since the defendant nos. 1 and 14 are not appearing, despite
service of notice, in my opinion, the suit can be heard and decided
summarily. The defendant nos. 1 and 14 have no real prospect of
successfully defending the claim of copyright infringement and have
further chosen to not contest the said claim. The present matter is mainly
concerned with enforcement of the injunction orders which are passed
against the rogue websites who do not have any defence to the claim of
copyright infringement but use the anonymity offered by the internet to
engage in illegal activities, such as copyright infringement in the present
case. This is a fit case for passing a Summary Judgment invoking the
provisions of Order XIII-A of the CPC, as applicable to the commercial
disputes, read with Rule 27 of the Delhi High Court Intellectual Property
Rights Division Rules, 2022.
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27. In the present case, applying the test as laid down in UTV
Software (supra), and considering the documents filed and the
averments made in the plaint, which remained uncontroverted, it has to
be held that the defendant no. 1 and 14 are 'rogue websites', with their
primary purpose being to commit and facilitate infringement of the
copyright of the plaintiff. The plaintiff is therefore, held entitled to a
decree in terms of prayers made in paragraph no. 51(i), (ii) and (iii) of
the plaint.
28. In UTV Software (supra), the Court also examined the issue
of grant of dynamic injunctions and permitted subsequent
impleadment of mirror/redirect/alphanumeric websites which provide
access to the rogue websites, by filing an application under Order I Rule
10 of the CPC before the learned Joint Registrar (Judicial) along with an
affidavit with supporting evidence, confirming that the proposed website
is mirror/redirect/alphanumeric website of the injuncted defendant
websites. At the request of the counsel for the plaintiff, the same
directions are liable to be made in this case also.
29. Accordingly, I.A. No. 13802 of 2022 under Order XIII-A of the
CPC, as applicable to commercial disputes, seeking a Summary
Judgment is allowed. All the pending applications are also disposed of.
30. The suit is decreed in terms of prayers mentioned in paragraph no.
51(i), (ii) and (iii) of the plaint. Pursuant to deletion of the defendant no.
12, the prayer in terms of paragraph no. 51(iii) of the plaint is being
decreed in favour of the plaintiff and against only the defendant no. 11.
The plaintiff is also permitted to implead
any mirror/redirect/alphanumeric websites which provide access to
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the defendants nos. 1 and 14 websites by filing an appropriate
application under Order I Rule 10 of the CPC, supported by affidavits
and evidence as directed in UTV Software (supra). Any website
impleaded as a result of such application will be subject to the same
decree.
31. Let a decree sheet be drawn up accordingly.
NAVIN CHAWLA, J.
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