An analysis of Delhi High Court's judgment in Jagran Prakashan Limited vs. Telegram FZ LLC & Ors.1
When you come across any astounding news, you think of sharing it with someone and netizens are all too familiar with this concept of 'viral'. Spreading of news, whether fake or titillating, through social media applications has become a vexing activity to curb and has now started to commercially affect the rights of media publication houses. A news recently sparked media frenzy wherein it was reported that sharing of PDFs of e-papers by administrators/creators of groups on social media platforms such as WhatsApp and Telegram would attract penalty2. With a view to seek injunctive relief against the same, Dainik Jagran moved the Delhi High Court against the instant messaging app, Telegram in respect of unauthorised circulation of its e-papers on its platform.
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Plaintiff (Jagran Prakashan Limited) is the publisher of a leading Hindi newspaper, Dainik Jagran, which circulates in both print/physical and digital form throughout India. Riding on the technological wave to gain wider viewership, the digital newspaper may be read for free on its official website www.jagran.com or via paid subscription called E-Paper3. The Plaintiff is also the registered proprietor of the trademark DAINIK JAGRAN/ and variations thereof in several classes.
Defendant No. 1 (Telegram FZ LLC) is a Dubai-based IP service provider which provides its users free instant messaging and voice over IP services across various operating platforms. The application's unique feature of maintaining anonymity while creating a channel led to the unauthorised circulation of the Plaintiff's e-paper in PDF form by several unidentified users (Defendant No. 2 collectively), thereby infringing upon the trademark and copyright subsisting in the said e-paper.
In lieu of such infringement, the Plaintiff moved the Delhi High Court seeking ad interim injunction under Order 39 Rule 1 and 2 of the Code of Civil Procedure, 1908 to restrain the Defendants from subsequent infringement of its intellectual property rights.
Contentions of the Plaintiff
It was contended by the Plaintiff's Counsel that although its digital e-paper was accessible for free on its official website, unlike in foreign jurisdictions wherein the Plaintiff charged subscription fee of USD 1, it had a security feature which barred the users from downloading the same in a PDF format. By using Defendant No. 1's anonymity feature while creating a channel, several channels with the username IDs t.me/dainkjagran, t.me/dainikjagranhindi, t.me/dainikjagran_jnm, t.me/dainikjagranpdf, t.me/dainik_jagran, t.me/dainikjagran, t.me/DJagran, t.me/Dainik_Jagran_pdf, t.me/Fainik_Jagran_News and t.me/dainikja were created, wherein Plaintiff's e-paper were uploaded in a PDF format. Furthermore, these channels allowed subscribers to download all previous editions of e-paper, a feature which was exclusive to paid subscription, thereby not only infringing upon the Plaintiff's registered trademarks and copyrighted content but also causing irreparable financial loss.
Liability towards Defendant No. 1
It was contended by the Plaintiff that despite being an intermediary, Defendant No. 1 was liable in the present matter by way of permitting reproduction, adoption, distribution, transmission and dissemination of Plaintiff's e-paper, evidenced by way of growing number of subscribers of Defendant No. 2's channels (18989 subscribers on May 16, 2020 to 19239 on May 18, 2020).
Further, Defendant No. 1 failed to exercise due-diligence in accordance with Section 79(3)(b) of the Information Technology Act, 20004 read with Rules 3(2)(d) and (4) of the Information Technology (Intermediaries Guidelines) Rules, 20115, wherein upon receiving knowledge of such infringing acts in writing or via email, an appropriate action, herein blocking Defendant No. 2's channels, shall be taken within 36 hours, which was absent despite Plaintiff's repeated requests for an immediate action in this regard.
Court Observations and Judgment
Hon'ble Justice Mukta Gupta concurred with the counsel of the Plaintiff and held that the balance of convenience lied in favour of the Plaintiff. In lieu of the same the following directives were issued by the Court-
- An ad-interim injunction as per Order 39 Rule 1 & 2 of the Code of Civil Procedure, 1908 issued in favour of the Plaintiff; and
- Defendant No. 1 directed to disclose the basic subscriber information/identity of the users/owners of the aforementioned channels and blocking the same within 48 hours.
It has become a norm to be aware of one's liabilities more so than one's rights when signing up with any media platform. A closer perusal of Dainik Jagran's terms and conditions clearly stipulate copyright and trademark ownership with regard to the content subsisting with Dainik Jagran. Further, users are barred from downloading the website content, either directly or indirectly. It permits them to download or print only extracts of such content for individual/personal and non-commercial use only6. Hence, dissemination of information via public channels of Telegram may have been with a malicious intent as a creator/administrator can create such channels with only a username and a telegram.me/link7 and can post messages with or without a signature (username), a handy tool in escaping from liability such as in the present case. Further, a complaint of alleged infringement of one's IP rights on a public channel would be entertained only upon request of the copyright owner or his authorised agent, and assessed individually before taking any action8. Such a provision is not in mandate with the Information Technology (Intermediaries Guidelines) Rules, 2011, as per which an intermediary can take suo-moto cognizance of such a matter9.
Although, there is no copyright protection over news or facts, it does provide protection to the original expression of such news or facts. Works which once are in public domain do not attract any copyright protection10, however, an e-paper is a subscription based service and thus, not entirely a part of public domain. Several other players in the media industry such as Times of India, The Hindu and The Indian Express etc. provide e-paper on a similar subscription basis, wherein unauthorised dissemination of their content will attract liability. As per Shailesh Gupta, President of Indian Newspaper Society (INS), circulation of PDFs of subscription based e-papers without authorisation does not only result in digital piracy and financial loss but also spites aggregators to misuse such information11. Therefore, there is no bar on circulation of PDFs of e-papers which have been provided by media houses at free of cost.
Curbing circulation of news is one of the pivot challenges for any government, entity or even media industry, dangerously circumventing one's right to speech and expression. However, unauthorised circulation has also taken up as a form of digital piracy, threatening the inherent rights in such works. The present case can be seen as a commendable initiative taken up by the media house, Dainik Jagran to protect not only its pecuniary interests but also its intangible rights.
1 CS(COMM) 146/2020 & I.A. 4073/2020
2 https://www.indiatoday.in/fact-check/story/is-it-illegal-to-circulate-pdfs-of-epaper-1673993-2020-05-03; accessed on June 04, 2020
3 https://epaper.jagran.com/epaper/packages.php; accessed on June 04, 2020
4 Section 79 of the Information Technology Act; https://indiacode.nic.in/bitstream/123456789/13116/1/it_act_2000_updated.pdf; accessed on June 04, 2020
5 Rule-3 (2)(d) and (4) of the Information Technology (Intermediaries Guidelines) Rules, 2011 ; https://www.wipo.int/edocs/lexdocs/laws/en/in/in099en.pdf; accessed on June 04, 2020
6 Terms and Conditions; https://www.jagran.com/terms-conditions.html; accessed on June 04, 2020
7 Telegram - Channels FAQ https://telegram.org/faq_channels; accessed on June 04, 2020
8 Telegram FAQ; https://telegram.org/faq#q-there-39s-illegal-content-on-telegram-how-do-i-take-it-down; accessed on June 04, 2020
9 Rule 3(4) of the Information Technology (Intermediaries Guidelines) Rules, 2011 ; https://www.wipo.int/edocs/lexdocs/laws/en/in/in099en.pdf; accessed on June 04, 2020
10 Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1, 111
11 Supra Note 2
Originally published 10 June, 2020.
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