It is indeed a matter of pride to present excerpts of our conversation with Hon’ble Justice Manmohan, Delhi High Court. Additionally, some observations of a webinar discussion that His Lordship presided as the Chief Guest. Titled Through the Lens, the discussion focused on Piracy & Copyright Issues. The webinar was organized by Lex Witness in association with K&S Partners, The Motion Pictures Association – India, CreativeFirst, and The Producers Guild of India.

A Bit About The Judge

An alumnus of Modern School, Hindu College and Campus Law Centre, Justice Manmohan was enrolled as an Advocate with the Bar Council of Delhi in 1987. He practiced in the Supreme Court of India and High Court of Delhi in various Civil, Criminal, Constitutional, Taxation, Arbitration and Trademark litigations.

Designated as a Senior Advocate in 2003- he appeared in various important cases including Dabhol Power Company, Hyderabad Nizam’s Jewellery Trust matter, Claridges Hotel dispute and has also participated in various Seminars and Conferences of National and International repute.

His judgements on dynamic injunction (UTV Software Communication Ltd. and Ors. Vs. 1337X.TO and Ors., 2019 SCC OnLine Del 8002); formula to compute damages in trademark matters (Koninlijke Philips N.V. & Anr. Vs. Amazestore & Ors., 2019 SCC OnLine Del 8198); test of copyright in films (MRF Limited Vs. Metro Tyres Limited, 2019 SCC OnLine 8973); and regarding international treaties like Bilateral Investment Promotion and Protection Agreement (Union of India Vs. Vodafone Group PLC United Kingdom & Anr., 2018 SCC OnLine Del 8842) are considered pioneering precedents.

In Conversation With The Judge

Please share with us your journey as a legal professional up until foraying into the Judicial environment.

Today when I retrospect, I must say it has been a very challenging and a very interesting journey. I am a first-generation lawyer. In fact, the first in my family to join the legal profession. Initially I worked in J.B. Dadachandji and Co., a corporate law firm, primarily with Mr. O.C. Mathur and Mr. J.B. Dadachandji. Both were great mentors and very caring. Mr. O.C. Mathur made me prepare fifteen drafts for the first Special Leave Petition that I drafted. At the end, he asked his clients to pay a special fee to me for drafting. Mr. J.B. Dadachandji taught me to draft a Special Leave Petition in ‘reverse gear’ in half an hour’s time in case of an emergency. He also taught me importance of wit, humour and humility. Mr. Kapil Sibal, whose chamber I joined later on, taught me the importance of ‘not how much one reads but what one understands and how much one can convey to the Court’. More than anything else all the three taught me how to enjoy the profession and how not to get stressed about matters.

What have been your most exciting and challenging moments during your private practice.

There have been many such moments, but what comes to my mind off hand are Nizam Jewellery Trust matter, Gujarat Ambuja Cement’s Sales Tax matter, Sanjay Dutt’s bail in TADA case, Dabhol Power Company’s oppression and mis-management case.

What do you think have been the top 3 judgments delivered by you that added great value to the IP world in terms of setting new benchmarks?

That is for others to judge, but in my view UTV Software Communication Ltd. & Ors. vs. 1337X.TO & Ors. 2019 SCC OnLine Del 8002 which deals with the concept of the dynamic injunction, MRF vs. Metro Tyres as well as Yash Raj Films vs. Sri Sai Ganesh Productions wherein it was held that cinematographic film is not only infringed by making physical copies of the same, but also when another film substantially, fundamentally, essentially and materially resembles/reproduces the original film and Koninklijke Philips N.V. & Ors. vs. Amazestore & Ors., 2019 SCC OnLine Del 8198 wherein a rough and ready formula for computation of damages in an infringement matter was laid down.

What are your views on the abolishment of the IPAB, what guiding light would you like to share with the community as a transition towards special IP courts etc?

The abolishment of IPAB has revived the debate with regard to Tribunalisation of Justice. There are many in the fraternity who think that creating a specialised jurisdiction within the High Court is a better idea as the infrastructure as well as facilities in the Court are better and of permanent nature. However, this experiment will only work if the High Court is adequately manned and that too by specialists in the IP field. Considering several dynamic injunctions have since been passed by the Delhi High Court against rogue websites, it would be interesting to explore the possibilities and challenges of extending this concept to other associated areas of IP rights. In that context the following questions;

Can dynamic/prospective injunctions be passed against intermediaries whose platforms are misused by end users? And more particularly in view of safe harbour provisions for intermediaries under Section 79 of the IT Act.

The UTV judgment clarifies that it does not apply to intermediaries that are governed by Section79 of the Information Technology Act, 2000. Section 79 incorporates the safe harbour principle. It has been held to be ‘a shield and not a sword’. However, this defence is not available if intermediaries do not act on reactive basis. Section 79(3)(b) was read down in the UTV judgment to mean that the intermediary upon receiving actual knowledge of a court order has to expeditiously remove or disable access and has to act. Shreya Singhal and My Space judgments state intermediaries will not act as a Judge, but will act only on receipt of a Court order. Intermediaries have a neutral and passive role to play. All that Section 79 does is to regulate the liability in respect of intermediaries, while the Copyright Act grants and controls rights of a copyright owner. The UTV judgment was passed with a view to provide a remedy that protects right-holders against “hydra-headed” entities that violate the law and Court orders and chose not to appear in court proceedings, and deliberately persist with infringement of copyright, by creating mirror/proxy websites to circumvent technological and legal measures. In such cases, a progressive remedy of dynamic injunctionwas designed to block new means of accessing the same infringing websites and to ensure that the injunction order continues against such mirror websites, after submitting evidence to the satisfaction of Joint Registrar.

How about registrars of domain names?

The Bombay High Court in “Hindustan Unilever Limited Vs. Endurance Domains Technology LLP & Ors” where the plaintiff HUL sought a dynamic injunction against the defendant Registrar “from registering or allowing the continued registration of any domain names/websites which contain the names…”, declined to pass “an order granting an injunction operating either dynamically or otherwise in future in this fashion.” The facts of the Bombay High Court case primarily pertained to registering domain names using trade mark, i.e., HUL, as part of various domain names, thus causing confusion and deception and misrepresentation to public at large. A prayer was made by the Plaintiff to pass order of suspension of such website as well as blocking access thereof in future.The judgment of Bombay High Court notes that the manner of functioning of Domain Name Registrars is machine-led and automated. More importantly, the Bombay High Court held that registration of the domain name does not ipso facto imply a functioning website, as there can be a dormant domain name (Domain Name Squatters) and the registration of a domain name vis-à-vis use of such domain name for committing piracy, are distinct issues involving different processes and mechanisms involving different agencies. It also held that a Domain Name Registrar can be asked to suspend the registration. Accordingly, in the facts of the case, a direction was passed, by which the Plaintiff could approach the Domain Registrars to suspend the registration of the domain name complained of, and if there was any doubt, the Plaintiff-HUL was given liberty to file appropriate application for suspending additional domain names.The judgment of Bombay High Court is incomparable to the UTV judgment of Delhi High Court, where the piracy was being committed through mirror website, and the issue was not pertaining to registration of domain name, but based on sufficient evidence that mirror websites were being created by the previously injuncted website in order to continue with piracy. The remedy of dynamic injunctions is required to be granted when there is no other remedy available to combat the rogue website from uploading, sharing, streaming the pirated content and which mushroom through mirror websites in order to frustrate a conventional order of injunction.

While a dynamic injunction is a much-needed remedy against rogue websites, what about a situation where the concerned website contains both infringing and legitimate content of third parties, for example, content not owned by the plaintiff or fair use or legitimate content posted by a user on a website. How it will be ensured that such injunction is not applied to defeat fair use exceptions?

There is a clear distinction between ‘Flagrantly Infringing Online Locations’ (FIOLs) and other platforms which contain largely legitimate content, but incidentally are being misused by third parties. The standard of evidence for a dynamic injunction is qualitative and not quantitative.In the UTV judgment, it has been mentioned that some of the factors, to be considered for determining whether the website complained of is a FIOL/Rogue Website, are;

whether the primary purpose of the website is to commit or facilitate copyright infringement;
the extent of infringement;
Whether the detail of the registrant is masked and no personal or traceable detail is available either of the Registrant or of the user
Whether there is silence or inaction by such website after receipt of take down notices pertaining to copyright infringement.
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 or related to copyright infringement
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
Whether the owner or operator of the online location demonstrates a disregard for copyright generally; Needless to state, the aforementioned factors are illustrative and not exhaustive and do not apply to intermediaries.

What are your views on the inclusion of IP matters as commercial disputes in the context of commercial courts act, how much do you think have we progressed and what all needs further working?

Inclusion of IP matters as commercial disputes is a step in the right direction. For instance in Su-Kam Power Systems Ltd. Vs. Kunwer Sachdev and Anr., 2019 SCC OnLine Del 10764, it was held that a summary judgment can be passed, without recording any evidence, under Rule 3 of Order XIII-A CPC of the Commercial Courts Act when there is ‘no real prospect of successfully defending the claim’ and when the Court is able to make the necessary finding of fact, apply the law to the facts, and the same is a proportionate, more expeditious and less expensive means to achieve a fair and just result.

However, it is a case of ‘work in progress’ and a lot remains to be done.

As far as the IP professional’s community is concerned, what is your message/advice to specialist lawyers who consider elevation as one of their career milestones?

In my view, they must seriously consider this option. I must tell you that it is intellectually a very satisfying exercise as Delhi High Court is attracting very good litigation and IP bar in this High Court is one of the best in the world.

Rendezvous with Hon’ble Mr. Justice Manmohan Delhi High Court : A First - Generation Lawyer, Career, Cases & Charisma of The Judge

Continue Reading

ABOUT AUTHORS

LEX WITNESS BUREAU