Recent Inclination of Indian Judiciary to Pass “John Doe” Orders – A Critical Analysis on the Perspective of Copyright Infringement of Film Productions

Introduction

“John Doe” orders or “John Doe” injunctions are “cease and desist” orders passed by a court of law against anonymous entity/entities. The principle is that the person who is a threat is not known as they are veiled being many in number backed by unknown identities.[1] These orders in the recent times have been issued in matters of protecting copyrights. The protection of books before release[2], prevention of movie piracy[3], preventing showcase of movies in cable network during the time of theatre release[4], and even stopping telecast of live sports events[5] have all been achieved through useful utilization of “John Doe” Orders.

“John Doe” is a term used as a reference so to provide a title to an unknown or anonymous person, entity, organization etc. The person maybe a group or an individual[6], a real person[7] or a legal person[8], a company[9], a registered society, service providers[10], websites[11], newspapers[12] or anything which infringes a right of another through certain actions. Rights range from civil, political, and natural to corporate, intellectual property (copyright, trademark, and patent) and even confidential rights.

John Doe refers to your average person or, as the Merriam-Webster Dictionary puts it, a person who is “party to legal proceedings whose true name is unknown”. What makes a John Doe injunction unique is that some defendants are not named because their identity may be unknown at the time. The plaintiff lists them merely as John Doe or, as they are commonly referred to in India, as Ashok Kumar.[13] A John Doe injunction is given under Order 30 Rule 1 of The Civil Procedural Code, when the petitioners have made a prima facie case establishing the likelihood that their copyrighted work maybe prone to piracy or network sharing, which will affect their financial objectives leading to massive loss.[14]

In the Bodyguard Movie Case, the order of The Delhi High Court read “defendants and other unnamed and undisclosed persons, are restrained from communicating or making available or distributing, or duplicating, or displaying, or releasing, or showing, or uploading, or downloading, or exhibiting, or playing, and/or defraying the movie ‘Bodyguard’ in any manner without a proper license from the plaintiff or in any other manner which would violate/infringe the plaintiffs copyright in the said cinematograph film ‘Bodyguard’ through different mediums like CD, DVD, Blue-ray disc, VCD, Cable TV, DTH, Internet services, MMS, Tapes, Conditional Access System or in any other like manner. Plaintiff is permitted to publish the ‘John Doe’ injunction order passed today in the local newspapers.”[15]

The order provided for the Don 2 Movie Case, stated “defendants and other unnamed and undisclosed persons, are restrained from copying, recording or allowing camcording or communicating or making available or distributing, or duplicating, or displaying, or releasing, or showing, or uploading, or downloading, or exhibiting, or playing, and/or defraying the movie DON2. In any manner without a proper license from the plaintiff or in any other manner which would violate/infringe the plaintiff’s copyright in the said cinematograph film DON2 through different mediums like CD, DVD, Blue-ray disc, VCD, Cable TV, DTH, Internet services, MMS, Pen drives, Hard drives, Tapes, CAS or in any other like manner.”[16]

Considering these Bollywood productions will suffer due to piracy “John Doe” orders were passed. If the orders of the above cases are compared to each other the similar view found is that the producers of these movies have tried to prevent their upcoming movies from featuring in cable networks, the internet or be shared in any form. The wide array of classification where CD, DVD, Blue-ray disc, VCD, Cable TV, DTH, Internet services, MMS, Pen drives, Hard drives, Tapes, CAS and many more have been specified for a detailed list of the mediums of piracy.

These orders are in the nature of cease and desist. Cease and desist orders, tend to prevent through confiscation of instruments involved. Many cable network offices have been raided and much equipment ceased.[17]

Tracing the Evolution of John Doe’s for Copy Right Protection

John Doe injunctions — common in countries like the UK, the US, Canada and Australia, where they are applied to intellectual property rights matters — have been used in India in trademark and copyright infringement cases.[18] In US the Supreme Court case of Doe v. Wade[19] where for the first time the anonymous entity to a criminal suit was referred to as Doe. Hence, subsequently various US court cases referred to unknown parties as ‘John Doe’ for male, and ‘Jane Doe’ for females. This type of identification for an unknown is still followed in USA. 

a)      The Anglo Saxon Judicial View

In English law, ‘John Doe’ orders were adopted during early 1700s during the reign of James III. They were discontinued and recently have resurfaced in English Common Law Courts. The famous case of The Harry Potter book 5 where such order was passed to comprehend and prevent the circulation of the book whose few copies were in possession of few unknown persons before the date of release. These copies were held to be stolen property from the Printing Press of Bloomsbury Publishers.[20]Also, another case that was discussed in the Harry Potter books case[21] was EMI Records v. Kudhail[22] where injunctive relief was sought on an ex parte application against unnamed persons in respect of alleged infringements of its copyright in certain sound recordings and for passing off. The product being pursued in that action was counterfeit, that is to say it was dressed up to look like the original material of the plaintiff. The plaintiff did not know the identity of the other parties engaged in distributing the counterfeit recordings. The Court of Appeal considered whether or not it was appropriate in those circumstances to make an order not just against Mr Kudhail but also against the others involved in the dissemination of the counterfeit products even though their numbers and identities were not known. The court thought that it was appropriate to do so, at least for the short period during which an ex parte injunction was to be in place. The Court of Appeal held, “there was sufficient commercial interaction between counterfeiters to treat them all as a group”.[23]

b)      India

In India, passing of ‘John Doe’ orders started in the famous case of Taj Television v. Rajan Mandal and Ors[24]., where the telecasting of FIFA World Cup 2002 was stopped on various cable networks without licensing and their equipment ceased. The identity of all the telecasters was not known hence a ‘John Doe’ order was passed to prevent unlicensed showcase of the World Cup matches.[25] 

c)      United States of America

In US Criminal cases unknown victims or unknown perpetrators[26], unknown suspects or unknown witnesses are referred to as ‘John Doe’ or ‘Jane Doe’. In a case before the Louisiana District Court of Shreveport Division, titled United States of America v. John Doe (1 to 22), a grand Jury charged the anonymous persons of conspiracy to “advertise the distribution of Child Pornography” in violation of Title 18 United States Code, Section 2251 (d) (1) in the first count. The second count was “Conspiracy to Distribute Child Pornography”, under Title 18 United States Code Section 2252A (a) (2) (A).[27] Many intellectual property infringment disputes have many defendants who are anonymous and identified as “John Doe”/s.[28] In the RDR Books case, Warner Bros stopped the creation of “Harry Potter Lexicon” – a glossary of words and concepts from the Harry Potter books contending infringement of the books copyright which is being held by the author J.K. Rowling.[29] 

Legality of the Order

A “John Doe” in Bollywood productions copyright, case is initiated under Order 39 Rule 1 and 2 read with Section 161 of the CPC.[30] The Copyright Act, 1957 provides no person other than the applicant can deal with various rights in relation to the motion picture without the express authority of the applicant.[31] Under Section 14(d) of the Copyright Act, the copyright infringement in respect of a cinematographic film, the person who has actually infringed and communicated the film to the public has to be made as a defendant and such communication should be of the entire film or part of the film.[32] Section 14(d) of the Copyright Act confers upon the copyright owner an exclusive right to communicate the film to the public. Section 2(m) defines infringing copy in relation to a cinematographic film as a copy of film made on any medium by any means. Section 51(a) (ii) defines that copyright is infringed if any person permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work. Section 62 of the Act provides that a suit for infringement of copyright can be filed where the plaintiff resides or carries on business. Section 55 provides for the grant of an injunction whenever copyright infringement takes place in addition to damages and accounts.[33]

Communication to public is available under section 2(ff) and means making any work available to the public[34] and this availability is solely dependent on the permission approved by the copyright owner of the work for few specified persons and not everyone.

Order 7 Rule 1 of the Code of Civil Procedure provides, the plaint shall contain the name, description and place of residence of the defendant so far as can be ascertained. When such identification is unknown, a “John Doe” suit is maintainable. It is also seen that the number of defendants are many.[35]

In the case ESPN Software India Private Ltd. vs. Tudu Enterprise and others[36], it was held that Indian Courts have jurisdiction to pass an order against unknown persons arrayed as “Ashok Kumar”[37]. In a US Appellate Court Case, Dendrite International, Inc., a New Jersey Corporation vs. John Doe, No.3[38] the Court held for entertaining the John Doe suit, the plaintiff should identify the missing party with sufficient specificity such that the court can determine that the defendant is a real person or entity who could be sued in federal court.

Interim orders/injunctions are passed during the course of the “John Doe” proceedings and after plaintiff shows that with prove that such actions by “John Does” will result in copyright infringement and massive loss, and then such interim orders are made absolute.[39]

In R.K. Productions v. BSNL and Ors.,[40] the respondents tried to vacate the injunctions by resorting to relief under Clause 12 of the Letters Patent[41], stating the court had no jurisdiction to try the case. The Court held this case is not applicable to the Letters Patent but falls under the Copyright Act because the cause of action had taken place in the court itself.

These orders are issued in desperation so as to provide an immediate impact on the actions which can cause loss or damage to the right-holders. In case of a copyright suit, the property in dispute; if shared, sold without license, or distributed for gains infringes the copyrights of the right-holder, added to that the number of such infringers are many and their identity unknown. Then, as in the case UTV Software Communications Limited vs. Home Cable Network Ltd. and Ors.,[42] has noted that court has jurisdiction to pass an order in nature of a “John Doe” injunction order against unknown persons in the circumstances, as has been pleaded by the plaintiff in the above mentioned circumstances of a case.[43]

Certain factors have been outlined by a Chancery Court so as to provide a “John Doe” Order, these also form certain characteristics for “John Doe” Orders themselves. The factors were provided in the case, J.K. Rowling and Bloomsbury Publications v. Newspaper Newsgroup Limited[44], and read as:

“There are at least four factors which need to be addressed before a court can grant an injunction at an interlocutory stage.

First, the claimant needs to demonstrate that he has a good arguable case against the defendant. The stronger the order, no doubt the stronger that case should be.

Second, the order has to be in terms which clearly state what the defendant must and must not do.

Third, it must be possible to identify the defendant against whom the order is sought.

Fourth, it will only be effective against a person who, when made aware of the terms of the order, will understand that it applies to him.”

The claimant needs to have strong case; or else orders will not be passed. A right will be perceived to infringe in the near future or is infringing. In case, of books, Movies and others like, a pre-release sharing of the work by someone other than one with its right needs to be proven to a probable cause. In a matter of fact, copyright infringement needs to be shown. Piracy becomes an important reason in Bollywood Productions request for John Doe order against wrongful publicising of their movies.

The order will specify the activity which is to be restricted by a category of persons. In case of Bollywood productions, a “cease and desist” on all activities which leads to public showcase of the movies without proper licensing from the production house. These are infringing the copyrights of the movies in question. Few such actions are: URLs are stopped by ISPs[45], live telecast stopped by ceasing equipment of networks[46], cable networks prevented to showcase the movies without valid license[47], etc.

The identity of the defendants may not be specific as in individual persons or firms, but identified as a group or as in generalized entities. For e.g., Cable Networks[48], Websites[49], ISPs[50], Book Sellers[51], Newspaper[52] etc.

Effectiveness of the order will be known when the concerned persons follow the order and which is to be prevented is prevented. In case of “John Doe” order for Bollywood productions, subjugation of movie piracy is the desired effect. This in turn decreases the loss of the Production house.

The “Quia Timet” Action – the principle behind John Doe Orders

 The term “quia timet action” has been defined as an action instituted by a party who seeks the aid of the Court in fear of some future probable injury to his rights or interest, which is an action brought to prevent a wrong that is apprehended. The unnamed defendants are persons who are apprehended by the plaintiff to involve in uploading, downloading or in any way communicating the plaintiff’s feature film.[53] Such is maintainable and valid in an Indian Court.[54]

This action is for dire circumstances and is exercised as an equitable relief against copyright infringement. When no other remedy remains, a “John Doe” Case is initiated on the “quia timet” action. An injunction is issued only when apprehension of copyright infringement is proved successfully before the court of law.[55]

The Supreme Court in Kuldip Singh v. Subhash Chander Jain[56] has held that the scope of this action is that it is to apprehend wrong or anticipate mischief. It is specie of precautionary justice, and is to initiate before the mischief or work has been done.

In a English case, Fletcher v. Bealey[57] where it says,

“There are at least two necessary ingredients for a quia timet action. There must, if no actual damage is proved, be proof of imminent danger, and there must also be proof that the apprehended damage will, if it comes, be very substantial. I should almost say it must be proved that it will be irreparable, because, if the danger is not proved to be so imminent that no one can doubt that, if the remedy is delayed the damage will be suffered, I think it must be shown that, if the damage does occur at any time, it will come in such a way and under such circumstances that it will be impossible for the plaintiff to protect himself against it if relief is denied to him in a quia timet action.”

The court will not in general interfere until an actual nuisance has been committed; but it may, by virtue of its jurisdiction to restrain acts which, when completed, will result in a ground of action, interfere before any actual nuisance has been committed, where it is satisfied that the act complained of will inevitably result in a nuisance. The plaintiff, however, must show a strong case of probability that the apprehended mischief will in fact arise in order to induce the court to interfere. If there is no reason for supposing that there is any danger of mischief of a serious character being done before the interference of the court can be invoked, an injunction will not be granted.[58]

The action of “quia timet” is applicable to tortuous liability which is likely to occur in the future. This is applicable to trespass where injunctions are sort for apprehension of trespass.[59]Basis of the “quia timet” action is applicable even in a copyright violation whose apprehension has been made before violation.[60] Hence, “John Doe” orders are issued for Bollywood productions so as prevent copyright violations and stop piracy of the work.

 Conclusion

The future of protecting copyright from online data sharing and preventing piracy is “John Doe” orders. This tool is effective as the stats have shown a decline in piracy of movies which had resorted to prevention of infringement via such orders. The mindset of the people changes as a legal dictum is enforced by a Court of law, this is the order: a warning from the law.

In ‘Singham’, it was uncovered a cut of 62% piracy post-release due to the “John Doe” order. When Viacom 18 Pictures got such an order issued by the Bombay high Court, Anurag Kashyup was heard tweeting, “What is this John Doe?” The Indian directors are unknown to this concept while the producers want the same to prevent piracy and loss of income.[61]

In respect of one  film which was illegally recorded and communicated through the internet medium, an average of more than 3500 links are created which is disbursed across the world. Such links garner approximately 2, 40,000 views per month as well as 45,000 download per day. Each hit causes an average loss of Rs.20/- and by one month, the total loss to the producer comes to Rs.3.88 crores. Such illegal and unauthorized communication of a cinematographic film or motion picture results in enormous loss to the tune of hundreds of crores of rupees for the production companies.[62]