PROTECTING IP RIGHTS WITH JOHN DOE ORDERS: CASE STUDIES AND LEGAL INSIGHTS

 INTRODUCTION

In today's globalized and highly digitized world, protecting intellectual property (I.P.) has become increasingly complex. With the proliferation of the internet, online platforms, e-commerce, and O.T.T. platforms, I.P. owners face unprecedented challenges in enforcing their rights against infringers who often operate under the cover of anonymity. Whether counterfeit goods sold on online marketplaces, pirated films distributed through illegal websites, or trademark violations by unknown entities, I.P. holders frequently encounter situations where the infringer's identity is unknown or difficult to ascertain.

The traditional legal approach of suing a named defendant becomes ineffective in such scenarios, creating a need for a more flexible solution. This is where the concept of John Doe orders (also known as Ashok Kumar orders in India) comes into play. These orders are issued by courts to prevent unknown defendants from committing further infringements of intellectual property, particularly when the plaintiff cannot identify the wrongdoer when filing the suit. Once the defendant's identity is revealed, they can be added to the lawsuit and held accountable. The order is named after the generic term "John Doe," used in legal parlance to refer to anonymous or unidentified parties. The mystery of the defendant's identity should not become a roadblock in administering justice to the rights holders[i].

From high-profile movie studios to global brands, many industries have benefited from John Doe's orders to halt infringing activities before they cause irreparable damage. This blog will explore the legislative provisions, John Doe orders' role in trademark and copyright protection, and notable Indian case laws that have shaped its application.

 LEGISLATIVE PROVISIONS GOVERNING JOHN DEO ORDERS

A John Doe order (or Ashok Kumar order in India) is essentially an injunction issued against unknown defendants whose identities are unknown or cannot be ascertained when the lawsuit is filed. The concept of a John Doe order is not codified in any specific statute, but its usage draws from broader principles of injunctions in civil law. The Indian legal system follows the Civil Procedure Code (C.P.C.), 1908, which provides mechanisms for injunctive relief.

Section 151 of the C.P.C., which confers inherent powers to the court, allows courts to issue orders necessary to ensure justice, including John Doe's orders. It provides for a permanent injunction. Further, under Order XXXIX, rules 1 and 2 of the C.P.C., courts are empowered to grant temporary injunctions, including orders against anonymous parties, if there is a prima facie case of violation. Lastly, parts III and VII of the S.R.A., 1963 also contain provisions about a permanent injunction; Indian courts have creatively used this provision to extend relief to I.P. rights holders when the infringers cannot be identified when filing the suit. Additionally, the Copyright Act of 1957(section 55) and the Trademarks Act of 1999 (section 135) empower I.P. holders to seek protection through civil remedies.

JOHN DOE ORDERS IN COPYRIGHT

The entertainment industry, particularly the film and music sectors, has faced significant challenges with online piracy, especially with the rise of torrent websites, streaming services, and illegal downloads. As copyright holders struggle to identify and act against anonymous infringers, John Doe's orders have become a powerful tool in preventing the unauthorized distribution of copyrighted content. India ranks fifth for accessing and viewing pirated content. Indians constitute to be the largest shareholders of torrent website users[ii]. A large population, through camera recording in theatres, leaks the movies. The data presented by Irdeto shows that even though people know that watching pirated content is felonious, 66% of them continue to watch it[iii].

A John Doe order allows copyright holders to target unidentified infringers responsible for uploading or distributing pirated content. Once the court issues the order, the rights holder can serve it to intermediaries, such as internet service providers (I.S.P.s), directing them to block access to specific websites that host or distribute pirated content. This helps in curbing piracy even before the actual offenders are tracked down.

For instance, in the film industry, producers frequently seek John Doe's orders to block websites or torrents that might release pirated versions of films ahead of their official release. These orders are often granted in anticipation of large-scale piracy. Such orders can also be issued to stop live telecasts of sports events by unlicensed cable operators who do not have broadcasting rights[iv]. Authors or book publishers may also seek issuance of such order in cases where there is the apprehension of "copying without permission."

In recent years, Quia Timet injunctions have been increasingly granted ahead of the release of new movies to preempt the illegal sale, copying, and distribution of pirated content. These orders aim to stop unauthorized cable operators and other parties from broadcasting or distributing films and songs without permission, safeguarding the creators' rights before any infringement occurs. Delhi High Court has passed orders in movies such as Singham, Bodyguard, Don 2, and Speedy Singhs. In the Singham case[v], interim applications were submitted to secure an injunction to prevent piracy and revenue loss for the plaintiff, even before any infringement occurred. The Delhi High Court issued a John Doe order, barring all identified defendants and unknown individuals within the same category from "distributing, displaying, copying, uploading, downloading, or showcasing" the movie in any form. As a result, numerous Indian I.S.P.s were approached to "block access" to "various file-sharing websites." The whole website cannot be blocked. It has to be proved that the entire website was full of only and only pirated/ infringing content[vi].

Interestingly, though not explicitly referenced in the judgment, the doctrine was implicitly embraced in Jawahar Engineering Co. v. Jawahar Engineering Pvt. Ltd[vii]. in 1984—well before the Kuldip Singh case. In this instance, the Delhi High Court's division bench noted that the threat doesn't need to have already occurred when seeking an injunction. Given the preventive nature of injunctive relief, the court observed that such orders could be granted to avert potential harm that is "likely to happen."

To obtain such relief, it is essential to demonstrate imminent danger and the likelihood of significant losses if the threat materializes. The anticipated harm must be irreparable and so immediate that, should it occur, the affected party cannot safeguard its interests without the remedy provided in a quia timet action[viii].

JOHN DOE ORDERS IN TRADEMARK

Identifying the violators can be difficult when counterfeit goods are sold online or through unauthorized distributors. A John Doe order allows trademark holders to seek legal relief against these unidentified parties, even before their identities are discovered. Courts can instruct intermediaries like internet service providers, online marketplaces, or even payment gateways to take down counterfeit listings or block access to infringing products by issuing such an order. This pre-emptive approach prevents further damage to the brand's reputation and helps curb the circulation of counterfeit goods, even in cases where the infringer's identity remains unknown.

A trademark owner might encounter instances where a third party is advertising products or services using their trademark, even before launching those products. This misuse can also arise when a third party applies to register a trademark identical to the owner's. In such cases, the proprietor doesn't have to wait for the actual use of the infringing trademark to act. Instead, they can promptly seek an injunction under quia timet relief to prevent the impending violation of their trademark rights.

In the case of Ardath Tobacco Company Ltd. v. Mr. Munna Bhai and Ors.[ix], the court issued an order against several unknown defendants, referred to as Defendants No. 7 to 23 under the name "Ashok Kumar." These individuals were prohibited from "manufacturing, selling, or dealing" in cigarettes that used "labels, cartons, or packaging materials deceptively similar" to those of the plaintiff's STATE EXPRESS 555 brand.

[Image Sources:Shutterstock]

Similarly, in M/s Sandisk Corporation v. John Doe[x], the plaintiff argued that certain unidentified individuals were selling counterfeit products under the SanDisk name, using identical "packaging, logos, and branding". Since the sellers couldn't be identified, the court issued a John Doe order, restraining these unnamed individuals from "manufacturing, selling, or advertising counterfeit products" that mirrored the plaintiff's trademarks, including the SanDisk and logo and the Red Frame logo, and the "packaging design, color scheme, and overall look" associated with the brand.

Living Media India Limited, the company behind the famous Aaj Tak brand, brought a suit against Aabtak Channel.com and others for infringing on their trademarks and copyrights. The case stemmed from the unauthorized use of the Aaj Tak trademark and the "TAK" suffix by unknown entities on platforms like Facebook and Instagram. The plaintiffs contended that Aaj Tak is a common Hindi phrase; therefore, no one can claim it exclusively. In response, the Delhi High Court sided with Living Media, issuing a temporary injunction requiring the infringing parties to remove the offending content within 36 hours. Social media platforms were also instructed to remove any logos or marks closely resembling Aaj Tak or the "TAK" branding[xi].

RECENT RULINGS OF DELHI HC

The Delhi High Court has issued a significant John Doe order in favor of The Indian Hotels Company Limited (TATA Group) to prevent the unauthorized use of its registered trademark "Ginger" by fraudulent websites offering hotel bookings. An ex-parte ad interim injunction was granted, recognizing the deceptive actions of the defendants, which aimed to mislead customers and harm the plaintiff's reputation. These websites misled customers by providing fake accommodation booking services. Justice Narula ruled in favor of the plaintiff, ordering the blocking of the fraudulent websites and the suspension of their domain names. Banks, including Axis, Yes, and I.C.I.C.I., were also directed to freeze accounts linked to the fraudulent activities[xii].

In yet another case, the Delhi High Court in August issued an ex-parte ad-interim injunction in Neela Film Productions Private Limited v. Taarakmehtakaooltahchashmah.Com & Ors.[xiii], "restraining websites, e-commerce platforms, YouTube channels, and 'John Doe' parties" from infringing the "copyright and trademark" of the television show "Taarak Mehta Ka Oolta Chashma" (T.M.K.O.C.). The case highlighted various modes of online infringement, with the plaintiffs, Neela Film Productions, alleging unauthorized use of the show's distinctive elements, such as characters, mannerisms, dialogues, and animations. The defendants were accused of misappropriating and infringing these elements for commercial gain, including publishing AI-generated deepfakes and explicit content featuring T.M.K.O.C. characters on various platforms, which also included pornographic websites, which damaged the show's reputation.

The plaintiffs cited the 2023 Anil Kapoor v. Simply Life India[xiv] case, emphasizing the protection of personality rights against deepfake technology. The court, recognizing the risk of tarnishing T.M.K.O.C.'s brand, ordered the defendants to remove all infringing content, including videos and explicit material, within 48 hours.

IN A NUTSHELL,

While Indian courts have creatively applied John Doe's orders, the absence of specific statutory provisions creates uncertainty in their application. Incorporating express provisions into Indian I.P. law could provide greater clarity and standardization in their issuance and better enforcement. Codifying such orders in IP-related statutes, especially in light of India's growing digital economy, would bolster the legal framework. Additionally, the orders often depend on the cooperation of intermediaries, such as internet service providers, social media platforms, and payment gateways, and the effectiveness of the orders can be compromised if these intermediaries do not act swiftly. The courts must issue proper directions regarding blocking these websites, whether to block the entire website or some specific parts. An issue w.r.t jurisdiction of the defendants also arise for there are many I.P. addresses outside the court's jurisdiction. Ergo, the John Doe order, though not explicitly codified in Indian law, has proven to be an effective tool for combating the anonymous and widespread nature of I.P. infringement in the digital era.

Author: Anavi Jain, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or   IP & Legal Filing.”

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[i] Payel Chatterjee, What’s in a name’… John Doe arrives in India. Journal of Intellectual Property Rights, 12, pp.488-496, 2007.

[ii] Shristi Talukdar , John Doe Jurisprudence – The Much-Awaited Hero of Bollywood, SCC Online Times, 20 Jan 2021.

[iii] Irdeto, Building a Secure Future, Irdeto Research: Despite High Levels of Awareness in India that Piracy is Illegal, 66% of Consumers Polled still Access Pirated Content (2017).

[iv] Taj Television v. Rajan Mandal, (2003) FSR 22.

[v] Reliance Big Entertainment Pvt. Ltd. Vs Jyoti Cable Network & Ors., 2011 SCC OnLine Del 5709.

[vi] Eros International v. BSNL, 2016 SCC OnLine Bom 10315.

[vii] AIR 1984 Del 166.

[viii] Fletcher v. Bealey, 28 Ch.D. 688 at p. 698.

[ix] 2009 (39)PTC 208 (Del.).

[x] CS(OS) 3205/2014.

[xi] Living Media India Limited and Anr v AabTak Channel.com (John Doe’s) and Ors.

[xii] The Indian Hotels Company Limited vs John Doe And Others, Delhi High Court, 07th May, 2024, CS(COMM) 370/2024.

[xiii] CS (COMM) 690/2024.

[xiv] CS (COMM) 652/2023.