Delhi High Court
Kent Ro Systems Ltd & Anr vs Amit Kotak & Ors on 18 January, 2017
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 18th January, 2017.
+ CS(COMM) 1655/2016 & IA No.15914/2016 (u/O XXXIX R-1&2
CPC)
KENT RO SYSTEMS LTD & ANR ..... Plaintiffs
Through: Ms. Rajeshwari H. and Mr. Tahir
A.J., Advs.
Versus
AMIT KOTAK & ORS ..... Defendants
Through: D-1 in person.
Mr. Nitin Sharma, Mr. Avijit Sharma
and Mr. Dhavish Chitkara, Advs. for
D-2.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. Though the report of service is awaited but the counsel for the
plaintiffs has filed affidavit of service of both the defendants.
2. One gentleman disclosing himself to be Mr. Amit Shabhulal Kotak
appears and the counsel for the plaintiffs states that she identifies him as
defendant No.1. The said Mr. Amit Shabhulal Kotak has also handed over
his Driving Licence and a self attested photocopy of the same be kept by the
Court Master on the file.
3. The defendant No.1 states that he has no objection to the suit, insofar
as for the relief of permanent injunction, being decreed against him subject
to the plaintiffs giving up their claim for damages and accounts.
4. The counsel for the plaintiffs is agreeable thereto.
CS(COMM) No.1655/2016 Page 1 of 19
5. I have ensured by speaking to Mr. Amit Shabhulal Kotak in
vernacular language that he understands the consequences.
6. Accordingly, a decree is passed in favour of the plaintiff and against
the defendant No.1 in terms of prayer paragraph 51(a), (b) & (c) of the
plaint, leaving the plaintiffs and the defendant No.1 to bear their own costs.
7. Decree sheet be drawn up.
8. The counsel for the defendant No.2 eBay India Private Limited
(eBay) also appears. The defendant No.2 has also filed documents.
9. The plaintiffs (and of which plaintiff No.2 Mr. Mahesh Gupta is the
Chairman and Managing Director of the plaintiff No.1) have instituted this
suit pleading (i) that it is a manufacturer of water purifiers and has sought
protection by obtaining design registrations under the Designs Act, 2000 in
respect of the aesthetic appearance of its water purifier systems; (ii) that the
products covered by the plaintiffs registered designs are being marketed and
sold by the plaintiffs; (iii) that making, using or sale of any water purifier
using the shape and design as registered by the plaintiffs constitutes piracy
under the Designs Act; (iv) that the plaintiffs have a huge presence in the
online market place with e-commerce websites including the defendant
No.2; (v) that the defendant No.2 eBay is an e-commerce platform / portal
through which sellers of various products showcase, sell their products and
carrying on business; (vi) that the defendant No.2 eBay is also responsible
for addressing the grievances of sellers including the claims of infringement
through the website; (vii) that the defendant No.2 eBay acts as an
„intermediary‟, facilitating the transaction between a seller and buyers of
various goods; (viii) that the defendant No.1 is a manufacturer and/or trader
CS(COMM) No.1655/2016 Page 2 of 19
of water purifier systems whose shape, look and appearance are deceptively
similar and infringe the water purifiers of the plaintiffs for which the
plaintiffs have been granted registrations; (ix) that the defendant No.1 sells
its goods to various customers through the website of the defendant No.2;
(x) that the action of the defendant No.2 eBay of permitting the defendant
No.1 to advertise, offer for sale and sell its water purifiers through the portal
of the defendant No.2 amounts to infringement of the plaintiffs rights under
Section 19 of the Designs Act; (xi) that as per the guidelines formulated
under the Information Technology Act, 2000 (IT Act), intermediaries such
as the defendant No.2 are expected to observe certain due diligence while
discharging their duties including an obligation to inform users not to host,
display, upload, modify, publish, transmit, update or share information that
infringes the intellectual property rights of any party as well as to take steps
to avoid sale of such infringing products; (xii) that when one brings to the
attention of the intermediary such violations, the intermediary is required to
take down all such offending content; (xiii) that the plaintiffs drew the
attention of the defendant No.2 eBay to the infringement by the defendant
No.1 as well as by the defendant No.2; (xiv) that the plaintiff also brought to
the notice of the defendant No.2 eBay that several others who were similarly
offering for sale and selling water purifier systems infringing the intellectual
property rights of the plaintiffs had been injuncted by the Courts; (xv) that
though the defendant No.2 eBay in its response stated that it had removed all
the products complained of and also undertook to in future remove all the
infringing products complained of by the plaintiffs but the plaintiffs found
that a large number of other infringing products were being offered for sale /
sold on the portal of the defendant No.2; and, (xvi) that the defendant No.2
CS(COMM) No.1655/2016 Page 3 of 19
eBay has not taken steps for removal of the other infringing products.
10. The plaintiffs, in the suit have sought the relief against the defendant
No.2 of (i) direction to take down, remove, delist all products infringing the
registered designs of the plaintiffs; (ii) prohibitory injunction from allowing
products infringing the registered designs of the plaintiffs being offered for
sale and sold from the portal of the defendant No.2 eBay; and, (iii) for
account of profits made.
11. The suit came up before this Court first on 21st December, 2016 when
it was enquired from the counsel for the plaintiffs as to how the relief of
rendition of accounts and recovery of damages were sought against the
defendant No.2. It was further enquired, whether not the defendant No.2 is
but a medium through which the defendant No.1 and others were claimed to
be selling the infringing products and how the plaintiffs, against the
defendant No.2 eBay, could claim reliefs of rendition of accounts and
recovery of damages. It was further enquired, whether not the position of
the defendant No.2 eBay was the same as that of a newspaper containing
advertisement of infringing products and whether not the commission
charged by the defendant No.2 eBay was at par by the advertising charges of
a newspaper.
12. Be that as it may, summons of the suit were issued and by way of ex-
parte order, the defendant No.2 eBay directed to block the access to the
Universal Resource Locators (URLs) from which the infringing products
were claimed to be sold. The defendant No.2 eBay was also directed to, on
the next date of hearing, disclose in a sealed cover the particulars and details
of the owners/manufacturers/sellers of the infringing products as registered
CS(COMM) No.1655/2016 Page 4 of 19
and recorded with the defendant No.2 eBay.
13. The counsel for the defendant No.2 eBay states that the defendant
No.2, in accordance with law, immediately on receipt of complaints from
the plaintiffs has from time to time been removing the offending products
from its website and the documents filed by the defendant No.2 eBay in this
Court support the said plea. The counsel for defendant No.2, on behalf of
defendant no.2, also makes a statement before the Court that the defendant
No.2, on receipt of any complaint in future also from the plaintiffs shall, in
accordance with law, remove the offending products from its websites.
14. The counsel for the defendant No.2 eBay further states that in
compliance with para 17 of the earlier order dated 21st December, 2016, the
details of the owners/manufacturers/sellers of the offending products
recorded with it, have been brought to this Court in a sealed cover.
15. The counsel for the defendant No.2 has handed over the sealed
envelope.
16. The same has been opened and the contents thereof have been
perused. The same contains the names and addresses of sixteen persons who
had earlier posted their products on the websites of the defendant No.2 and
which products the defendant No.2 removed on receipt of complaint of the
plaintiffs.
17. I have enquired from the counsel for the defendant No.2, whether the
defendant No.2 has any objection to the said particulars being furnished to
the plaintiffs.
18. The counsel for the defendant No.2 states that the defendant No.2
CS(COMM) No.1655/2016 Page 5 of 19
would be bound by the orders of the Court.
19. Since the particulars are of the persons whose products were removed
from the websites of the defendant No.2 on the complaint of the plaintiffs
and who have not protested against the same, I see no reason to not share the
said particulars with the plaintiffs, inasmuch as without the same, the
plaintiffs would be unable to take legal action, if any required to be taken,
against the said persons.
20. The counsel for the defendant No.2 has, on asking, handed over a
copy of the said particulars to the counsel for the plaintiffs.
21. The counsel for the plaintiffs states that the plaintiffs in the
documents filed with the plaint, have referred to over 100 infringing
products and the particulars given are of 16 only.
22. For the reason aforesaid, the defendant No.2 is also directed to
provide to the plaintiffs the particulars of the others as listed in the
documents filed by the plaintiffs.
23. The counsel for the plaintiffs contends that "there is a larger question
at issue". It is argued that the statement aforesaid of the counsel for the
defendant No.2 eBay to, in future also on receipt of complaints from the
plaintiffs remove the offending products from its website, does not serve the
purpose of the plaintiffs. It is contended that once the plaintiffs have lodged
a complaint with the defendant No.2 with respect to the offending product of
one of the sellers / retailers, the defendant No.2 eBay on its own, before
hosting a product of any other sellers / retailers, should verify, whether the
same also infringes the registered design of the plaintiffs. It is contended that
the defendant No.2 is an „intermediary‟ within the meaning of the IT Act and is
CS(COMM) No.1655/2016 Page 6 of 19
required to devise a mechanism to, before hosting any product for sale on its
system/website, verify whether the same infringes the intellectual property
rights of any other person.
24. The counsel for the plaintiffs in this regard has drawn attention to
Rules 3(1), 3(2)(d), 3(3) & 3(4) of the Information Technology
(Intermediaries Guidelines) Rules, 2011 (IT Rules) and which along with
Rules 3(5), 3(6), 3(7), 3(8) & 3(11), also found to be relevant, are as under:
"3. Due diligence to be observed by intermediary--The
intermediary shall observe following due diligence while
discharging his duties, namely:--
(1) The intermediary shall publish the rules and regulations,
privacy policy and user agreement for access or usage of the
intermediary's computer resource by any person.
(2) Such rules and regulations, terms and conditions or user
agreement shall inform the users of computer resource not to
host, display, upload, modify, publish, transmit, update or share
any information that -
(a) .....
(b) .....
(c) .....
(d) infringes any patent, trademark, copyright or other
proprietary rights;
(3) The intermediary shall not knowingly host or publish any
information or shall not initiate the transmission, select the
receiver of transmission, and select or modify the information
contained in the transmission as specified in sub-rule (2):
Provided that the following actions by an intermediary
shall not amount to hosting, publishing, editing or storing of
any such information as specified in sub-rule(2)--
(a) temporary or transient or intermediate storage of
information automatically within the computer
CS(COMM) No.1655/2016 Page 7 of 19
resource as an intrinsic feature of such computer
resource, involving no exercise of any human
editorial control, for onward transmission or
communication to anther computer resource;
(b) removal of access to any information, data or
communication link by an intermediary after such
information, data or communication link comes to
the actual knowledge of a person authorised by the
intermediary pursuant to any order or direction as
per the provisions of the Act;
(4) The intermediary, on whose computer system the
information is stored or hosted or published, upon obtaining
knowledge by itself or been brought to actual knowledge by an
affected person in writing or through email signed with
electronic signature about any such information as mentioned
in sub-rule (2) above, shall act within thirty-six hours and
where applicable, work with user or owner of such information
to disable such information that is in contravention of sub-rule
(2). Further the intermediary shall preserve such information
and associated records for at least ninety days for investigation
purposes.
(5) The Intermediary shall inform its users that in case of
non-compliance with rules and regulations, user agreement and
privacy policy for access or usage of intermediary computer
resource, the Intermediary has the right to immediately
terminate the access or usage rights of the users to the
computer resource of Intermediary and remove non-compliant
information.
(6) The intermediary shall strictly follow the provisions of
the Act or any other laws for the time being in force.
(7) When required by lawful order, the intermediary shall
provide information or any such assistance to Government
Agencies who are lawfully authorised for investigative,
protective, cyber security activity. The information or any such
assistance shall be provided for the purpose of verification of
identity, or for prevention, detection, investigation, prosecution,
cyber security incidents and punishment of offences under any
CS(COMM) No.1655/2016 Page 8 of 19
law for the time being in force, on a request in writing stating
clearly the purpose of seeking such information or any such
assistance.
(8) The intermediary shall take all reasonable measures to
secure its computer resource and information contained therein
following the reasonable security practices and procedures as
prescribed in the Information Technology (Reasonable Security
Practices and Procedures and Sensitive Personal Information)
Rules, 2011.
(9) .....
(10) ......
(11) The intermediary shall publish on its website the name of
the Grievance Officer and his contact details as well as
mechanism by which users or any victim who suffers as a result
of access or usage of computer resource by any person in
violation of rule 3 can notify their complaints against such
access or usage of computer resource of the intermediary or
other matters pertaining to the computer resources made
available by it. The Grievance Officer shall redress the
complaints within one month from the date of receipt of
complaint."
25. The counsel for the plaintiffs has also drawn attention to Section
22(1)(c) of the Designs Act to contend that even a person who, knowing that
the design or any fraudulent or obvious imitation thereof has been applied to
any article in any class of articles in which the design is registered, without
the consent of the registered proprietor, publishes or exposes or causes to be
published or exposed for sale that article, is guilty of piracy of registered
design.
26. The counsel for the defendant No.2 eBay has referred to Section 79 of
the IT Act providing that an intermediary shall not be liable for any third
party information, data, or communication link made available or hosted by
CS(COMM) No.1655/2016 Page 9 of 19
him as long as the function of the intermediary is limited to providing access
to a communication system over which information made available by third
parties is transmitted or temporarily stored or hosted and does not initiate the
transmission, select the receiver of the transmission or modify the
information contained in the transmission and so long as observes due
diligence while discharging his duties under the Act and also observes such
other guidelines as the Central Government may prescribe in this behalf.
27. The counsel for the plaintiffs refers to Section 79(3) of the Act and
contends that the exemption from liability of intermediary does not apply if
the intermediary has conspired or abetted or aided or induced commission of
unlawful act or where the intermediary, upon receiving actual knowledge, or
on being notified by the appropriate Government or its agency that any
information, data or communication link residing in or connected to a
computer resource, controlled by the intermediary is being used to commit
the unlawful act, fails to expeditiously remove or disable access to that
material on that resource without vitiating the evidence in any manner. It is
argued that once the plaintiffs have intimated the defendant No.2 eBay of
their registered design and pointed out the URLs indulging in piracy, the
obligation of the defendant No.2 eBay as intermediary extends not only to
removing the said URLs but to ensuring that on no other URL/s also an
infringing product is hosted. It is argued that if inspite of such intimation by
the plaintiffs any other infringing product is hosted by any other person or
on any other URL of the defendant No.2, the defendant No.2 eBay is
deemed to be in conspiracy and having abetted and aided the infringement
CS(COMM) No.1655/2016 Page 10 of 19
within the meaning of Section 79(3) of the Act.
28. I have enquired from the counsel for the plaintiffs, as to how under
the aforesaid IT Rules, obligations as sought to be imposed, can be imposed
on the defendant No.2 eBay as an intermediary. The aforesaid IT Rules only
require the intermediary to publish the rules and regulations and privacy
policy and to inform the users of its computer resources not to host, display,
uphold or publish any information that infringes any patent, trademark,
copyright or other proprietary rights. It is not the contention of the plaintiffs
that the defendant No.2 eBay has not published its rules and regulations or
privacy policy or has not informed users of its computer resources so. The
IT Rules further require the defendant no.2 eBay as an intermediary to, upon
any person as the plaintiffs approaching it in writing, of products infringing
that person‟s patent, trademark or copyright rights to within 36 hours disable
the infringing information. It is not the contention of the plaintiffs that the
defendant no.2, inspite of receipt of complaints of the plaintiffs has not
disabled the infringing information.
29. What the plaintiffs seek is that the plaintiffs having once informed the
defendant no.2 eBay of water purifiers infringing its design having been
hosted on the platform of the defendant no.2, the defendant no.2 before
hosting any other water purifier of any other person on its portal should
screen the same to verify (even before the plaintiffs have complained with
respect thereto), whether the same infringes the design of the plaintiffs. To
put in another words, the counsel for the plaintiffs reads into the IT Rules
aforesaid an obligation on the intermediary to, after having been once
informed by any person of any content hosted on the portal of the defendant
CS(COMM) No.1655/2016 Page 11 of 19
no.2 eBay infringing the intellectual property rights of that person, not only
remove the said contents but in future also screen other contents being
hosted on its portal for such infringement.
30. To hold that an intermediary, before posting any information on its
computer resources is required to satisfy itself that the same does not
infringe the intellectual property rights of any person, would amount to
converting the intermediary into a body to determine whether there is any
infringement of intellectual property rights or not. All persons claiming any
intellectual property rights will then, intimate the intermediaries of their
claims and the intermediaries then, before hosting any material on their
computer resources would be required to test the material vis-a-vis all such
claims lodged with them, else would be liable for infringement.
31. My reading of the IT Rules aforesaid obliges the intermediary to
remove/disable the information hosted on the portal only on receipt of
complaint. The IT Rules, according to me do not oblige the intermediary to,
of its own, screen all information being hosted on its portal for infringement
of the rights of all those persons who have at any point of time complained
to the intermediary.
32. I have enquired from the counsel for the plaintiffs whether not the
hosting of information on the portal of the defendant no.2 eBay is automatic,
without any human intervention and have further enquired that if it is so,
how can an intermediary as the defendant no.2 be directed to screen all
information being hosted on its portal for violation of rights of all those who
may have lodged complaints with the defendant no.2. It has also been
enquired, whether not such a direction would bring the business of
CS(COMM) No.1655/2016 Page 12 of 19
intermediaries as the defendant no.2 eBay to a halt. It has yet further been
enquired whether not to direct so would require the intermediary as the
defendant no.2 to become a Judge of what is infringing and what is not
infringing. The provision in the Rules requiring the intermediary to on
receipt of complaints take action is different from requiring an intermediary
to of its own take a call as to what is infringing and what is not.
33. The counsel for the plaintiffs though does not dispute that hosting of
information on the portal of the intermediary as the defendant no.2 is
automatic, without human intervention, but contends that the defendant no.2
as an intermediary can also devise programmes to detect infringement and
piracy. Reference is made to Rule 3(8) and it is argued that requiring
intermediary to do so would be a reasonable measure and following
reasonable security practices. It is contended that infringing goods at a
different URL/s prop up on the portal of the defendant no.2 almost
immediately after the plaintiffs complain against one and the defendant no.2
removing/disabling the same. It is argued that the plaintiffs cannot be
expected to be vigilant so as to keep on looking for infringing products on
the portal of the defendant no.2 and on other such similar portals. It is yet
further argued that without the same, the defendant no.2, by allowing
infringing products to be sold from newly appearing URL/s would be
abetting and aiding infringement within the meaning of Section 79(3) of the
Act.
34. I am unable to agree. For a case to be made out under Section 79(3),
making the provision of Section 79(1) exempting an intermediary from
liability to be inapplicable, the plaintiffs have to plead and prove conspiracy
CS(COMM) No.1655/2016 Page 13 of 19
or abetment or aiding or inducing within the meaning of Section 79(3) of the
IT Act. The words „conspired‟, „abetted‟, „aiding‟ and „inducing‟ are legal
terms meaning whereof has been settled for long. They require pleading and
proof of common intention. That is not the case pleaded by the plaintiffs.
35. Just like the counsel for the plaintiffs states that the plaintiffs cannot
be vigilant at all time, similarly the defendant no.2 intermediary cannot be
expected to exercise such vigilance. Moreover the question, whether a
intellectual property right has been infringed or not is more often than not a
technical question with which the Courts steeped in law also struggle and
nothing in the IT Act and the IT Rules requires an intermediary, after having
been once notified of the Intellectual Property Rights, not allow anyone else
to host on its portal infringing goods/matter. The intermediaries are not
possessed of the prowess in this respect. As aforesaid, it is a different matter,
when attention of the intermediary is invited to infringing product and
complaint made with respect thereto. Merely because intermediary has been
obliged under the IT Rules to remove the infringing content on receipt of
complaint cannot be read as vesting in the intermediary suo motu powers to
detect and refuse hosting of infringing contents.
36. The counsel for the plaintiffs has drawn attention to the judgment of
the United States Court of Appeals, Second Circuit in Tiffany (NJ) Inc. and
Tiffany and Company Vs. eBay Inc. 600 F. 3d 93 (2nd Cir. 2010)
particularly to paras 5,7 & 8 thereof.
37. I am unable to read the judgment aforesaid as laying down that
intermediaries are required to conduct such self determination. The charge
of Tiffany in that case against eBay Inc. was of continuing to supply its
CS(COMM) No.1655/2016 Page 14 of 19
services to the sellers of counterfeit Tiffany goods while knowing or having
reason to know that such sellers were infringing Tiffany‟s mark. All that the
Court held was that if eBay Inc. had reasons to suspect that counterfeit
Tiffany goods were being sold through its website and intentionally shielded
itself from discovering the offending listings or the identity of the sellers
behind them, it could be charged with knowledge of those sales. It was held
that a service provider is not permitted wilful blindness and when it has
reason to suspect that users of its services are infringing a protected mark, it
may not shield itself from learning of the particular infringing transactions
by looking the other way. However the said observations are followed by
"eBay did not ignore the information it was given about counterfeits sales on
its website". Thus what has been held is that an intermediary would be
considered as acting wilfully blind and looking the other way only when has
been given information of infringement and ignores the same.
38. The counsel for the defendant no.2 relied on Myspace Inc. Vs. Super
Cassettes Industries Ltd. 2016 SCC OnLine 6382. The Division Bench of
this Court therein was concerned with the claim of Myspace as an
intermediary having refused to take down the infringing contents from its
website resulting in continued infringement and the claim of damages
therefor. It was held (i) that Section 79(3) read with Rule 3(4) supra posit an
intermediary, on receiving "actual knowledge" or upon obtaining knowledge
from the affected person in writing or through email, to within 36 hours of
receiving such information disable access to such information; (ii) that if
copyright owners inform the intermediary specifically about infringing
works and despite such notice the intermediary does not take down the
CS(COMM) No.1655/2016 Page 15 of 19
content, then alone is the intermediary denied safe harbour; (iii) it is for the
plaintiff to show that despite giving specific information the intermediary
did not comply therewith; (iv) that Section 51(a)(ii) of the IT Act, in the case
of internet intermediaries, contemplates actual knowledge and not general
awareness; and, (v) to impose liability on an intermediary, conditions
under Section 79 of the IT Act have to be fulfilled. The counsel for the
plaintiffs drew attention to para 64 of the judgment where the Division
Bench has noticed the draft report "The role of intermediaries in Advancing
Public Policy Objective" of Organisation for Economic Co-operation and
Development inter alia requiring an intermediary to introduce "filtering"
where tools are used to identify and remove infringing content
automatically. However the Division Bench has not held that the IT Act and
the Rules aforesaid require the intermediary to provide filtering. Rather, I
have enquired from the counsel for the plaintiffs whether not the Division
Bench has ultimately directed the intermediary Myspace in that case to
remove the infringing content only on receipt of notice from the Super
Cassettes Industries Ltd. in that regard and that if what the counsel for the
plaintiffs herein is contending were to be accepted, the Division Bench
would have directed Myspace to ensure that no information infringing the
copyright of Super Cassettes Industries Ltd. in its entire repertoire shall be
hosted on its portal.
39. The counsel for the defendants has also referred to (i) Order dated 3rd
April, 2013 of Supreme Court in CA No.5168/2000 titled Sanchayani
Savings Investment (I) Ltd. Vs. State of West Bengal; (ii) Order dated 9th
July, 2014 of this Court in CS(OS) No.1402/2014 titled Bayrische Motoren
CS(COMM) No.1655/2016 Page 16 of 19
Werk G (BMW Group) Vs. Jagdishlal Batra; (iii) Order dated 2nd and 3rd
September, 2015 of High Court of Bombay in Suit (L) No.696/2015 titled
Faber-Castell Aktiengesellschaft Vs. Cello Pens Pvt. Ltd.; (iv) Order dated
of 15th January, 2015 of High Court of Madras in C.S. No.540/2014 titled
MRF Limited Vs. Chandan Sood; (v) Order dated 18th November, 2015 of
this Court in CS(OS) 2998/2015 titled Eicher Motors Limited Vs.
WWW.Ebay.in; (vi) Order dated 24th August, 2016 of this Court in
CS(COMM) No.957/2016 titled Eicher Motors Limited Vs. Saurabh Katar
(vii) Myspace Inc. Vs. Super Cassettes Industries Ltd. supra; and, (viii)
Order dated 28th June, 2016 of High Court of Bombay in Suit No.1014/2015
titled Siddhi Vinayak Knots & Prints Private Limited Vs. E-Bay India
Private Limited but need to discuss the same in detail is not felt. Suffice it is
to state that the question as has been raised by the counsel for the plaintiffs
herein was not raised expressly in any of the judgments aforesaid.
40. I am further of the view that had the intention of the Legislature been
to require the intermediaries as the defendant no.2 eBay herein to be vigilant
as the plaintiff reads the IT Act and the Rules to require it to be, the
Legislature would have merely observed that the intermediary will not
permit to be hosted on its website any information infringing intellectual
property rights of any other person if such person had informed the
intermediary of the same. However the Legislature has not done so and has
required the intermediaries as the defendant no.2 to only declare to all its
users its policy in this regard and advise them not to host any infringing
information on the website of the intermediary and to on receipt of
complaint remove the same within 36 hours.
CS(COMM) No.1655/2016 Page 17 of 19
41. During the hearing I had also enquired from the counsel for the
plaintiffs whether not the position of an intermediary is the same as the
position of an owner of immoveable property or of publisher of a newspaper
or magazine in physical form and that whether an owner of immoveable
property can be required to keep vigilance that the person allowed by him to
use the property does not while so using infringes the intellectual property
rights of any other person or to while allowing advertisements to be
published in its newspaper and magazine keep vigilance that the contents of
the advertisement do not infringe the intellectual property rights of any
person. No provision of law requiring owners of immoveable property or
publishers of newspapers and magazines to maintain such vigilance was
shown.
42. I am of the view that to require an intermediary to do such screening
would be an unreasonable interference with the rights of the intermediary to
carry on its business.
43. It is not thus deemed expedient to issue any such direction to the
defendant No.2.
44. The suit, insofar as against the defendant No.2, is disposed of binding
the defendant No.2 to its statements aforesaid and to the directions issued to
the defendant No.2 in this order and leaving the plaintiffs and the defendant
No.2 to bear their own costs.
Decree sheet be drawn up.
Post Script: Before this order has been corrected and released,
Supreme Court has vide Order dated 16th February, 2017
in WP(Civil) No.341/2008 titled Sabu Mathew George
Vs. Union of India referred to the principle/doctrine of
CS(COMM) No.1655/2016 Page 18 of 19
"auto block" and constitution by Google India, Microsoft
Corporation (I) Pvt. Ltd. and Yahoo India of an "In
House Expert Body" to detect violation on their
respective platforms of the provisions of The Pre-
conception and Pre-natal Diagnostic Techniques
(Prohibition of Sex Selection) Act, 1994 (PNDT Act), as
the counsel for the plaintiffs herein has been contending,
in the context of enforcement of the PNDT Act, 1994.
However that was under Section 22 of PNDT Act and
not under the IT Act or Rules.
RAJIV SAHAI ENDLAW, J.
JANUARY 18, 2017 Bs/pp..
(Corrected and released on 22nd February, 2017).
CS(COMM) No.1655/2016 Page 19 of 19