History And Development Of John Doe Orders In India

A John Doe order is an order passed by a Court against the world at large. A John Doe order is a type of legal order that allows a person or entity to take legal action against an unknown party or parties. This type of order is often used when the identity of the person or entity being sued is not known at the time when the legal action is being taken. John Doe orders are commonly used in cases involving anonymous internet users, or when a company is seeking to identify individuals who have engaged in illegal activity using its services. The need for a John Doe order, also known as an Ashok Kumar (in India) or an Anton Pillar order, arises when there is rampant infringement or unlawful exploitation such that it is practically impossible for a rights owner to identify all infringing parties. These orders are only passed in specific instances, where the court deems it necessary that it is the only effective measure for a rights owner to enforce their rights against unknown parties.

Given the ambiguous nature of the defendants, and in most cases, the urgency of the matter, these proceedings have generally taken place ex-parte and orders are passed for a limited period of time. Accordingly, these orders have to be renewed / extended periodically. Further, the plaintiff has to consciously implement the order by taking action and ensuring compliance with the directions therein.

John Doe Orders in India

John Doe orders was first introduced to India via the case of Taj Television vs Rajan Mandal^[1] where the Delhi High Court restrained unlicensed cable operators from unlawfully broadcasting the 2002 FIFA World Cup, who were alleged to be illegally transmitting the plaintiff’s channel, and thereby infringing on their rights.

The concept was further utilised in the case of E.S.P.N. Software India Pvt. Ltd. Vs. Tudu Enterprise and Ors^[2], in which the Plaintiff, who had the exclusive right from the International Cricket Council to broadcast all their events till 2015, sought to restrain the defendants from transmitting the 2011 ICC Cricket World Cup without permission in a quia timet action. This action was prefaced on several instances of illegal transmission of the practice matches, which the Plaintiff used to successfully prove valid apprehension of piracy of the tournament matches, when the matches would inevitably be aired.

In order to obtain a John Doe order, the plaintiff must satisfy the following ingredients, as laid down in several judgements:

1. The Plaintiff has to make complete disclosure of all information pertaining to their right in respect of the work sought to be protected, how they obtained such right, previous instances of breach, actions taken in furtherance of the same, and success thereof.
2. The Plaintiff must show proof of rampant infringement, or reasonable apprehension of the same
3. The Plaintiff must establish a prima facie case in their favour
4. The Plaintiff has to prove to the court that if the infringement is allowed, it will cause irreparable harm and damage to the plaintiff.

Upon satisfaction of all of the above, the court may grant a plaintiff a favourable order. However, it is significant to note that in quia timet actions, the plaintiff has a higher burden to prove that there is a reasonable probability that third parties, i.e. John Does, are going to unlawfully exploit rights that are exclusively vested with the plaintiff. Thus, the burden of proof required is substantially higher in a quia timet John Doe suit.

Controversy Surrounding John Doe orders

There is much disagreement in India about the use of John Doe orders. These orders allow authorities to take action against individuals or entities involved in illegal activity, even if their identities are not known. However, they are controversial because they bypass a provision in the Civil Procedure Code, 1908 requiring identification of defendants and have been criticized for their vague nature and potential to infringe on free speech. Additionally, there is no standardized legal framework for Internet Service Providers (ISPs) to follow when blocking websites based on John Doe orders, leading to potential abuse of discretion by authorities. Some argue that these orders should only be used in exceptional circumstances where the harm to intellectual property holders outweighs the potential impact on internet freedom and the constitutional rights of ISPs.

One major area of controversy surrounding John Doe orders in India is their use in relation to online piracy. In cases involving the illegal downloading of movies or music, rights holders may seek a John Doe order to block access to websites that facilitate such activities. While these orders may be effective in shutting down such websites, they have also been criticized for their broad scope, which can result in the blocking of legitimate websites that may be used for non-infringing purposes. Such was the case in Star India v Sujit Jha and Ors (CS (OS) 3702/2014), where the Delhi High Court passed a pre-emptive order to block 73 websites in their entirety by holding “Thus, unless access to the entire website of the named and unnamed defendants is blocked, there is no alternate and efficient remedy that is open to the plaintiff”. On appeal, the Divisional Bench of the Delhi High Court narrowed the scope of the order by restricting the blocking of certain URL links rather than the entire websites. However, the said relief came a bit too later only after conclusion of the relevant sports series.

In UTV Software Communication Ltd. & Ors. vs 1337X.To. & Ors.^[3] the Delhi High Court discussed in detail the test to be adopted by courts when issuing John Doe orders, whether URLs, or websites at large should be blocked, manner of enforcement by ISPs and debated whether a qualitative or quantitative test should be adopted. The Delhi High Court in the said case discussed the Bombay High Court judgement in Eros International Media Ltd. v. Bharat Sanchar Nigam Ltd.^[4] wherein the court opted for a quantitative approach towards blocking of websites, i.e. the website would only be blocked if all content on the website is illegitimate / infringing. In reference to the case of Department of Electronics and Information Technology v. Star India Pvt. Ltd.,^[5] the court noted that the division bench of the Delhi High Court had stated that it is impractical to block only URLs, owing to the ease with which a URL may be changed. The division bench had laid down a qualitative test with respect to the blocking of websites, whereby the court stated the following:

“12. Suffice it to state that where infringement on the internet is not in dispute, a judicial response must factor in the comparative importance of the rights that are engaged because the very act of infringement is the justification for interfering with those rights. Therefore, the availability of alternative measures which are less onerous need to be considered. The cost associated with the measures which would include the cost of implementing the measures, also has to be taken into account. The efficacy of the measures which are ordered to be adopted by the ISPs have also to be kept in mind.

13. Now, an ISP could argue that the lesser measure to block the URL would suffice. This argument stands to logic and reason, but would have no content where the offending activity by the rogue website is to carrying on hardly any lawful business and in its entirety or to a large extent, piracy is being resorted to.”

In accordance with the above, the Delhi High Court ruled that courts should adopt a qualitative test to determine whether a website should be blocked or not. Through this order the Delhi High Court had also introduced the concept of a “dynamic injunction” which allows rights holders to approach the Joint Registrar of the Delhi High Court directly to extend an injunction against a website to similar “mirror/redirect/alphanumeric” websites that contain the same content as the original. This approach was based on the Singapore High Court’s 2018 decision in Disney Enterprises v. Ml Ltd., which introduced the concept of a dynamic injunction for the first time.

Having said that, at an interim or ad-interim stage, courts generally do not look beyond a prima facie case. Thus, judicial tests only come into the picture at the stage of main hearing of the suit. Further, the proceedings are generally ex-parte due to the unknown nature of the defendants. This can result in legitimate websites being blocked, which severely impacts their business. Such a situation arose in the case Reliance Big Entertainment Pvt. Ltd. Vs Jyoti Cable Network & Ors.^[6] In relation to the film, ‘Singham’. Pursuant to the order of the court, various websites, including sites that simply review movies, were blocked, thus establishing that the burden of proof was higher on the Plaintiff to prove its case when seeking John Doe Orders against the world at large.

In fact, in Eros vs. BSNL^[7] the Bombay High Court had referred to an article authored by Prof. Shamnad Basheer, endorsing the idea of a neutral ombudsman who can serve to provide a first level of checking of the Plaintiffs' claim. However, so far, courts have not implemented any such system till date.

The scope of John Doe orders

The media industry has utilized John Doe orders to curb film piracy in several cases. Makers of the films Happy New Year, Bodyguard, Raaz 3, etc. have all initiated actions for takedown of unlawful exploitation of their works. However, John Doe orders are not limited to piracy of cinematograph content alone.

In Sandisk Corporation vs. Ramjee & Ors^[8] the Delhi High Court granted relief to the Plaintiff, who had filed a suit due to the widespread sale of counterfeit products, which included the exact logo and packaging used by the plaintiff. Similarly, in Luxottica Group Limited vs. Mr Munny^[9] the Delhi High Court injuncted unknown defendants from selling counterfeit ‘Ray Ban’ products, and in Ardath Tobacco Company Ltd. vs. Mr. Munna Bhai^[10], the defendants were injuncted from selling counterfeit cigarettes using the plaintiff’s trademark.

The landmark case of Amitabh Bachchan vs Rajat Negi & Ors.^[11] in the Delhi High Court further widened the scope of John Doe orders to protect personality rights for the first time. In this case the court injuncted the known defendants and other John Does from illegally exploiting Amitabh Bachchan’s rights, including his right to personality, right to publicity, rights under the Copyright Act 1957 and other common law rights, including passing off whether via standard means and modes and including on future mediums inclusive of NFT (Non Fungible Token) the Metaverse.

It can be concluded that the nature of John Doe orders are expanding with the development in law and technology, wherein the order was first used to address cases involving copyright infringement, counterfeiting, piracy, but have now have also been extended to include personality rights. While they have been effective in some cases in protecting the rights of intellectual property holders, they have also been the subject of much controversy and criticism. Some argue that John Doe Orders are prone to abuse and can be used to censor free speech, while others claim that they are necessary to prevent the proliferation of illegal activities.

It is clear that the use of John Doe orders in India is a complex and controversial issue that will likely continue to be the subject of debate and legal challenges. Ultimately, it will be important for the courts to carefully consider the potential impact of these orders on the rights of all parties involved, including intellectual property holders, ISPs, and the general public. This is especially paramount considering that recent orders have extended the ambit of John Doe orders to future works, and exploitation of a work in the metaverse.