Abhishek Iyer

 

An Analysis of the Delhi High Court’s recent judgement in Jagran Prakashan Limited v. Telegram FZ LLC and the surrounding jurisprudence.

Background

The modern age of internet and online content has left many newspaper publishers devoid of their physical business. To overcome financial hurdles, news publishers have started operating E-papers on a subscription basis. In a peculiar issue before the Hon’ble Delhi High Court, popular news publisher JAGRAN PRAKASHAN LIMITED [Hereinafter ‘Plaintiff’], found their E-paper being widely circulated online, through messaging platform TELEGRAM [Hereinafter ‘Defendant’]. In the present case, PDF copies of the Plaintiff’s e-paper were made freely available through chat/channel groups on defendant’s messaging platform, which was otherwise accessible only to the plaintiff’s website subscribers. Despite serving multiple notices and a plaint highlighting this violation, the defendant failed to curb this illegal circulation on its messaging platform.

To have a holistic understanding of intermediary liability in India and the build up to this court order, there are two important aspects, Firstly, absolving the intermediary of all liabilities and, holding the chat administrators individually liable for the violation of IPR. In this scenario, we have to note how encryption of data provides a safe environment for third party to chat/share and, the privacy aspect of such third party if at all the chats are openly traced. Further, in a situation where the alleged violators are anonymous, the John Doe Order method of injunction is relevant to be understood. Lastly, the current situation of intermediary liability in India does not exhaustively mention about the consequences for violations caused by a third party when the intermediary is openly promoting his platform without any filter or check on the type of content being shared. Hence, it is relevant to understand the concept of Inducing Infringement and the concept of Contributory/Vicarious Liability on the intermediary which has evolved from the United States as a leading example to safeguard IPR owners.

Intermediary Liability or duty to conduct due diligence?

Intermediary liability for violation of any IPR by circulation of third party content was dealt in Shree Krishna International v. Google, whereby the defendants were held liable on the ground that, despite having ‘specific knowledge’ of the existence of such copyrighted content owned by the petitioner, defendants did not take down the content. This precedent is relevant only when the intermediary is having the knowledge of such content, probably through a notice being sent or otherwise. In the present scenario, Telegram did not respond to the notices sent by Jagran, nor did they act in a manner to be construed as equal to them having knowledge. So, Shree Krishna is helpful only after ‘specific knowledge’ exists with the intermediary, and does not directly aid the present case. 

It can be argued that ‘Wilful disobedience’ can amount to knowledge but, perhaps that doesn’t fit in too well here since the notices sent were not physical and were the ones through emails. In SBI Cards & Payments Services Pvt. Ltd. v. Rohidas Jadhav, Bombay High Court had ruled that a notice sent via Whatsapp can be considered as ‘duly served’ on the ground that such notice message was ‘delivered and opened’ by the respondent. Court emphasized on the ‘opening’ of such message which is usually signified by a Blue Tick on WhatsApp. Court deemed it reasonable to hold the respondents liable only after such opening of the message was proved by the plaintiff, who first sent the message. Putting this observation in our present case, Plaintiff i.e. Dainik Jagran, has to prove that the notices sent via. email was duly delivered and opened by the defendant. There has been no such evidence put on record as of now, which is why it will be fair to assume that the defendant never received the emails or the plaintiff probably did not have sufficient tools to prove that such email was both ‘delivered and opened’.

Further, the plaintiff here sought to establish intermediary liability by proving that the defendant failed to conduct necessary due diligence. Plaintiff’s E-paper available on their official website is on a subscription basis and is protected by a security feature which disallows online downloads. Further, the website disclaimer clearly informs about their policy of circulation and strongly forbids any attempt to circulate without permission. Plaintiff relied on Section 79 of the Information Technology Act, 2000. It was argued that the defendant could not absolve any liability on the mere ground of being an intermediary, for the defendant itself was required to conduct due diligence in terms of Rule 3 sub-rule 4 of the Information Technology (Intermediaries Guidelines) Rules, 2011. When the misuse was informed, the defendant is bound by an obligation to pull down the said channels within 36 hours. The plaint initially had the defendant’s Dubai office made as a party, the court later sought to implead the defendant’s suitable representative in India, also send them notice and a copy of the order, so as to take necessary action.

Court’s observation

Hon’ble Delhi High Court ruled that, the plaintiff has made out a prima facie case in its favour and in case no ad-interim injunction is granted, the plaintiff would suffer irreparable loss. Further, Balance of convenience also lies in favour of the plaintiff. While passing an ad-interim injunction, court directed that the defendant should disclose the names of such group/channel operators and remove such groups from its platform within 48 hours.

Encryption and De-Encryption: the balancing way forward

Since, Right to Privacy is at the forefront under Right to Life after K.S. Puttaswamy Judgment, social media platforms have rallied on the idea of strict data encryption to ensure privacy and smooth operation. Recently, Whatsapp had asserted before the Hon’ble Madras High Court that, “it is impossible to track the sender of a message when such messages are end-to-end encrypted.” While highlighting the value of encryption, Hon’ble Supreme Court in Facebook v. Union of India had stated that, “de-encryption, if available easily, could defeat the fundamental right of privacy.”  Moreover, the Hon’ble Supreme Court had observed that, “A balance is to be maintained between reputation of an individual and making such information public for purposes of detection, prevention and investigation of certain criminal activities.” Government has been deliberating on reforms to strike a balance, owing which several meetings have already taken place.

It will be interesting to see how social media portals will overcome this blurred line of facilitating chat tracing for investigation and upholding user chat privacy through encryption. Another balancing alternative to stop preliminary damage through an injunction, can be the John Doe order method against individuals without revealing their identity or tracing chats.

John Doe injunction order method?:

John Doe order evolved in the 2003 Taj Television Case. To understand, a John Doe order is an injunction sought against a person whose identity is not known at the time of the issuance of the order. It enables the right holders to serve notice and take action against anyone who is found to be infringing their IP rights. The plaintiff through this order is also allowed to search the premises and seize evidence of infringement of its rights by unknown defendants. To successfully obtain a John Doe order, the plaintiff needs to establish (1) a prima facie case, (2) likelihood of irreparable damage if the order is refused, and lastly, (3) balance of convenience in favour of the plaintiff. 

If a copyright infringement is reported on a social media platform in which the intermediary has no control over such content shared by third party, the only way to track down such violators is by a two fold method: Firstly, it has to be done by effective tracing of such chats, and second, if the plaintiff is suffering from any losses, a John Doe order against such unknown defendant can be a guiding path. To prove this two fold method, ultimately holding an unknown defendant liable, the balance towards plaintiff must be proved apart from respecting the right to privacy of the defendant. Applying John Doe method to this case, it is noted that the relevant groups on Telegram have been identified, and the only part remaining is to track its unknown administrators. A John Doe order in the present situation should help because, future activities of those groups will be subjected to the injunction as passed, even though it is against unknown persons, being the administrators. Identifying every administrator on the other hand can only be done by the defendant, who has to track down and remove such content, but for the plaintiff’s respite a John Doe injunction order will help till the time such content is removed and the violators are held liable.

In a situation where it is practically impossible to catch hold of each and every violator due to the massive numbers, the United States has lead by example through the Doctrine of Inducement and, the concept of Contributory/vicarious liability rendered on the intermediary.

Intermediary inducing infringement – An Inspiration from the United States

Courts in the United States have time and again relied on the ‘Doctrine of Inducement’ to determine whether the distributor (intermediary) by any means promotes using its device/platform to infringe copyrighted material. The U.S. Supreme Court in MGM Studios v. Grokster Ltd., through an unanimous decision held that the defendant, a company facilitating peer-to-peer file sharing, could be sued for IPR infringement on the ground that, it used to affirmatively promote file sharing, thereby encouraging direct infringement, also vicariously profiting from such direct infringement done by third party. 

Further, the United States District Court for the Southern District of New York in Arista Records LLC v. Lime Group LLC, while granting a permanent injunction to shut down the file sharing facility offered by the defendant, held that, “Because all persons and corporations who participate in, exercise control over or benefit from an infringement are jointly and severally liable as copyright infringer, all claims of copyright infringement were equally applicable against Lime Group LLC.” This decision was also broadly based on the doctrine of inducement whereby the intermediary used to promote infringement and vicariously contribute in a bid to earn profits. 

In the instant case, Telegram (defendant) is a cloud-based, free-to-access distribution tool which enables safe and private transmission of messages, files, and data. There is no evidence of a reasonable check put in place by the defendant to screen or filter any files being shared by third party using its distribution platform. In Grokster, court had raised this concern of a filter or a reasonable check being put in by the intermediary to control the content being shared by third party. It is hereby argued that, the defendant fulfils the criteria laid down in the U.S. jurisprudence of inducing copyright infringement. Further, the defendant actively promotes use of its platform to transmit/share files easily in a secured manner. Looking at the defendant’s website, it is clear that files could be coordinated with as much as 200,000 members at a time, in a closed group, despite the absence of any check whether such content shared by a third party violates IPR ownership. Hence it is argued that, by aggressive promotion of file sharing and downloads in the absence of any check of possible IPR violations clearly show the intent of the intermediary to indirectly help in infringement, for the sake of profit.

Apart from inducing infringement, Telegram can be held liable for Contributory/Vicarious infringement as envisaged by the U.S. District Court for the Northern District of Illinois in In re Aimster Copyright Litigation. The court imposed indirect liability on the intermediary on the ground that, it would be impossible to enforce rights against all infringers severally, owing to the volume and massive numbers of chat/file sharing. The court further opined that, the only practical alternative would be to enforce against the distributor i.e. intermediary for secondary liability on a theory of contributory or vicarious infringement. In the present case, Dainik Jagran (Plaintiff) has highlighted that the illegal chat groups on the defendant’s platform had a subscriber base of about more than 40,000 active users which was increasing on a regular basis. Further, these groups continued to be active, sharing plaintiff’s copyrighted material despite the removal notices being sent. Given the massive numbers to be reached out individually, the Aimster Rule of imposing indirect liability on the intermediary makes more sense practically. Hence, it is argued that rather than following the longer route of individual liability, the defendants should be made liable for being indirect contributors and infringing the IPR owned by the plaintiff.

Thus, in the light of the Grokster principles and the Aimster Copyright Rules in the United States, India should seek inspiration to achieve such intermediary governing standards in order to curb the indirect infringement and, control all possible IPR violations.

Telegram’s Past Troubles

Telegram has been under the scanner in the past too for alleged circulation of messages containing child abuse and obscenity. The Kerala High Court had asked for Centre’s views on banning the defendant from having its application accessible in India. Globally, it was reported that terrorist organisations have exploited Telegram as a platform to spread propaganda. Russia and Iran have already banned Telegram. As argued earlier, in the absence of any content filter put in place by the intermediary, their platform has been exploited in an unlawful manner owing to which countries have banned the use of Telegram.

Conclusion:

‘Traceability’ has been a pertinent issue in India because if companies wish to seek cover under Section 79 of IT Act, they have to give up on data encryption. This will essentially mean, the sender of any such message can be tracked and the chat platform per say is free of any liability, being an intermediary. Going by balance of convenience, this order by Delhi High Court is surely a step forward to help genuine media houses overcome this free distribution headache. This will also force intermediaries to rethink their role in promoting transparency & privacy over usage of their platforms. However, we are still far from being adequately equipped to fight this anonymous piracy on social media platforms where these free-to-access platforms escape any liability on the ground that they are intermediaries having no control over user content. 

Given the rise in circulation of questionable content freely on social media, it will be highly unjust to absolve the intermediaries of any copyright/trademark liability, which ofcourse causes monetary damage to the owner of such rights. Deriving inspiration from the different doctrines laid down in the United States, this is an opportunity for the Delhi High Court to further upon and lead as a guiding light so that, owners of IPR are out of harm’s way in this time of easily accessible piracy and unfiltered sharing. Maybe a policy highlighting intermediary liability, safeguards, and certain operating procedures, when it comes to the violation of IPR by unknown third parties can help get rid of this untoward menace.

The author is a penultimate year student at Gujarat National Law University, Gandhinagar.