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The dispute surrounding listing of Rooh Afza, manufactured by a company based in Pakistan, on Amazon has been broiling and the matter is being heard by the Hon’ble Delhi High Court which in its interim order has recently directed Amazon to remove the Pakistan based Rooh Afza from its platform in India. Apart from the violation of Hamdard’s IP rights in India over Rooh Afza, the listing of Pakistan-manufactured products was found to be lacking the contact details of the manufacturer, thus making Amazon, an intermediary under Information Technology Act, 2002 (“IT Act”), liable for the lack of the relevant information which could potentially mislead consumers about the product they might be purchasing, or they might wrongly assume that the Pakistan Hamdard is associated with the Indian Hamdard Laboratories. It is now trite that the platforms which are intermediaries under IT Act shall be liable to address the complaint of copyright or trademark violation by de-listing or removing the product or channel.

Similarly, Telegram, the messaging app, also falls within the category of an intermediary under IT Act. The platform shall be liable to remove channels that violate the IP rights of the owners. However, the question that recently came up for consideration before the Delhi High Court was different. The issue emerged when the Plaintiffs – Ms. Neetu Singh, who owns a coaching academy and is an author of books and contents for the preparation of competitive examinations including the examinations of Staff Selection Commission (SSC), Bank Probationary Officer (PO), CDS, NDA, etc. and her company K.D. Campus Pvt. Ltd. found that her copyrighted works in form of videos, lecture, books and study material etc. were illegally being disseminated through various Telegram channels. According to the Plaintiffs, since any abuse on Telegram channels can be reported as per the Privacy Policy of Telegram, the Plaintiffs after acquiring knowledge of the illegal dissemination of the Plaintiffs’ works, called Telegram to take down the impugned channels and also sent e-mails to the e-mail addresses where abuse can be reported. As a response some channels were taken down and others continued to exist while new channels came up like hydra heads. Taking down the channels itself was turning out to be completely ineffective in such a scenario. The infringers operated through private channels and the phone numbers or other details were not visible. Thus, it was not possible to locate the owners of such channels. Since Telegram also makes secret chats possible, the phone numbers could not be traced and the identity of the person(s) was also unknown. Such information is exclusively available only with Telegram.

Telegram had a limited defense in the said suit. As it was already in the process of taking down such infringing channels, it only opposed the grant of relief to the plaintiffs in the interim application to the extent that it cannot share the data relating to the creators or users of the channels.  Telegram contended that the said data is stored in Telegram’s data servers in Singapore and the law of Singapore prohibits such disclosure. Telegram uses a distributed physical infrastructure and is bound by the provisions of the Personal Data Protection Act, 2012, Singapore. Telegram itself is a Dubai-based company and is bound by the laws of Dubai. Moreover, In India it being an intermediary under the IT Act, it was not liable to disclose the identity as none of the pre-conditions which permit the intermediary to disclose the identity of the users, as per the IT Guidelines were satisfied. Telegram relied on Rule 3(1)(d) of the Information Technology Intermediary Guidelines and Digital Media Ethics, 2021 (IT Guidelines) and contended that unless and until, any one of the situations as contemplated in the first proviso to Rule 4(1)(2) of the said guidelines was satisfied, even a Court order cannot be passed directing disclosure of the basic subscriber information. As per Section 72A of the IT Act, any disclosure of information in breach of a lawful contract i.e., the contract between the Telegram platform and the subscriber/ creator of the impugned channels, would also be contrary to law and would constitute an offence.

The Court started its analysis by recording its concern that the number of channels that can be created despite taking down of existing ones are innumerable.  The creators of the channels were able to mask their identity on account of how the app operates and its policies. Therefore, repeated blocking of the channels was proving to be insufficient. This is the fulcrum of the reasoning given by the court in the judgment.

The Court looked into the actions that Telegram is required to take as per its own policy. As per the Q&A provided on Telegram, it does not process any requests related Telegram chats and group chats as they are private amongst their participants. However, in relation to the sticker sets, channels, and bots on Telegram which are publicly available it has been provided that – “If you see a bot, channel, or sticker set that is infringing on your copyright, kindly submit a complaint to [email protected].” The Plaintiffs did follow the procedure and registered its complaint.

The Court then went on to analyse the Copyright Act, 1957 to determine if the Indian Courts have jurisdiction to direct the Respondent-Telegram to disclose the identity of the creators of the channels in the light of the fact that the Telegram stores the data on cloud and that its servers are located in Singapore – this being the core defense sought by the Respondent.  The Court ruled that since the Plaintiff was the owner of copyright in the works, this alone fulfills the criteria of jurisdiction as per Section 62(2) of the Copyright Act which states that an owner can file a suit for infringement in a place where the said owner resides or carries on his business. This makes Delhi High Court the court of competent jurisdiction. The Court added that as the materials being circulated relate to Indian competitive examinations, it is likely that the infringers, though unidentified at this stage, may also be based out of India.

The Court further reasoned that the provisions of the Copyright Act were widely worded to be able to cover and extend protection in the situation where the illegal activities were done with the aid of recent technology as in the present case.  The definition of “infringing copy” was broad enough to cover electronic copies which were being circulated on Telegram channels. Not only Section 14(1)(a) specifically included reproduction by “electronic means”, the devices of the channel operators including smart phones, computers, servers, and such other devices, which were permitting and enabling such dissemination and communication, would constitute “plates” within Section 2(t) of the Act (defined as “any device used for reproducing copies of the work”) and they would constitute “duplicating equipment”. The Court therefore concluded that “… both civil and criminal Courts in India would always be vested with jurisdiction to adequately deal with dissemination of infringing material through such devices and merely because the messaging service has its server located abroad, the same cannot result in the infringer escaping from the consequences of infringement. All contentions to the contrary would be untenable.” The Court then noted that the only party that is in possession of the information relating to the devices used, IP addresses used, channels created, number of users, identity of the devices through mobile numbers etc., was Defendant No.1 – Telegram.

The Court laid additional reasons for concluding jurisdiction in favour of the Indian Courts and why the Singaporean law cannot be an excuse for Telegram to justify the non-furnishing of the information relating to the channels –

• infringement unabatedly was continuing within India;
• Since the content was for preparation of exams in India, the accounts of infringing channels were likely to have been created from India and the data of such accounts would have been uploaded from India;
• For the same reason the devices used in circulating the infringing material must be located in India and so be the owners of such channels/devices;
• the conventional concepts of territoriality no longer would exist, as the data is accessible across different jurisdictions, including India – the physical server being outside India is inconsequential in determining jurisdiction of Indian Courts.
• On analysis of law of Singapore, the Court observed that the law specifically recognized violations of law (which in this case is violation of copyright and other intellectual property rights) as an exception to privilege of privacy, when details of the originators of the infringing data can be revealed
• Furthermore, the copyrighted works are entitled to automatic protection in all WTO countries under the Berne Convention for the Protection of Literary and Artistic Works, 1886 read with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995 to which  Singapore, a WTO country, is a signatory.  This shall provide reciprocal protection to authors who can enjoy rights across the world even without seeking registrations – India recognizes copyright in foreign works and reciprocally, foreign countries recognize the copyright granted under Indian Law.

While enumerating the remedies  that an IP owner or a copyright owner is vested with, the Court stated that owner has the right to seek injunction and the right to claim damages. The latter remedy acts as a deterrent against further infringement. However, the remedy shall become completely a ‘toothless relief’ if infringers are permitted to hide their identity through technological means provided by Telegram, and further if their identity is not directed to be disclosed. Injunction becomes equally ineffective since it does not restrain the infringers from creating new infringing channels. ‘Take down’ or blocking orders were merely token relief. Plaintiffs would then be required to seek an injunction for every new channel which means undue and continuous harassment of plaintiffs which cannot be “integral to public policy behind the legislation.” Thus, the identity of the operators of the channels was required to be disclosed.

In respect of Telegram’s submission of it being an intermediary, and being obliged to not disclose the details of the originator of the information, in the opinion of this Court, these guidelines (esp. Rules 3 and 4 of the IT Guidelines) did not in any manner obviate the duty of Telegram as a platform to take all effective steps required to protect IP rights, including rights of copyright owners. The Court referred to the judgment in My Space Inc. v. Super Cassettes Industries Ltd., (2017) 236 DLT 478 (DB) wherein it was held that section 79 grants only a “measured privilege to an intermediary” and provides for an affirmative defence and not a blanket immunity from liability and it certainly does not pose a barrier in the applicability of the Copyright Act. The Court further underlined that the intermediary is to be granted safe harbour, so long as it complies with the requirements of law. Practically the Court cannot supervise such infringements all the time and, thus, the origin and source of the infringing material had to be traced.

The Court further asserted that the Court has power to exercise its authority under Order XI of Civil Procedure Code, 1908, to direct disclosure of documents and information relating to ‘any matter in question in a suit’.

While dealing with the contention of the Defendant that disclosing of information related to the creators of the infringing channels shall amount to violation of their privacy rights, the Court emphasized that under the IT Act and Rules, Telegram also has a duty to expeditiously remove or disable access to the unlawful material under Section 79(3)(b) of the IT Act. In addition, under Rule 3 of the IT Guidelines, the intermediary has a duty to tell its users not to host, display, upload, modify, publish, transmit, update or share any information, which infringes on copyright or other proprietary rights or violates any law. This is buttressed by Telegram’s Privacy Policy which does not permit spamming, phishing and other abuses. Therefore, the Court ruled that the fundamental rights of privacy or protection of freedom of speech and expression would not extend to protect personal data related to the infringers. It was only the “processing” of data, which can be stopped for protection of fundamental rights. Disclosure of such data pursuant to a Court order would not fall in the definition of “processing”.  Moreover, it is trite that the fundamental right cannot be used by any person or entity in order to escape the consequences of illegal actions.

While Telegram relied upon the judgment of the Supreme Court in Justice K.S. Puttaswamy v. Union of India & Ors., (2017) 10 SCC 1, the Court was of the opinion that if there is a law in existence to justify the disclosure of information and there is a need for the disclosure considering the nature of encroachment of the right then privacy cannot be a ground to justify non-disclosure, so long as the same was not disproportionate. Thus, whenever the data is sought for a legitimate purpose, and for curbing the violation of law, including infringement of copyright, such action shall be in line with the Judgment given in Puttaswamy.

The Copyright Act is the law that clearly requires “infringing copies” to be taken into custody. Finally, a perusal of the provisions of Section 81 of the IT Act shows that the provisions of the IT Act are supplemental to the provisions of the Copyright Act:

“81. Act to have overriding effect.–The provisions of this Act shall have effect notwithstanding anything inconsistent therewith contained in any other law for the time being in force. Provided that nothing contained in this Act shall restrict any person from exercising any right conferred under the Copyright Act, 1957 (14 of 1957) or the Patents Act, 1970 (39 of 1970).” Finally, the Court after reviewing the law in the matter observed as a matter of public policy also if the protection of copyright is not evolved as per the changing times and if the issue is not nipped in a bud especially in the light of the fact that during the COVID-19 pandemic, teachers and the education system as a whole, have taken great initiative to ensure access of educational materials to students through online modes – it would have a chilling effect on the progressive initiatives taken by educators in sharing their materials and ensuring accessibility. The Court, therefore, directed Telegram to disclose the details of the channels/devices used in disseminating the infringing content, mobile numbers, IP addresses, email addresses, etc., used to upload the infringing material and communicate the same, as per the list of channels filed along with the present application. Telegram was also directed to submit list of infringing channels, if any and the data relating to the infringing channels and the details as to the devices/servers/networks on which they are created, their creators, operators including any phone numbers, IP addresses, email addresses, used for this purpose.