CYBER LAW

SUBMITTED BY: SOHINI BANERJEE

ROLL NO: A048
YEAR: FOURTH YEAR
DIVISION: BBA LLB
SUBMITTED TO: PROFESSOR EKTA SAINI

IN COMPLETION OF TERM END ASSESSMENT FOR CYBER LAW

A PAPER TITLED-

The evolution of Intellectual Property in the Cyberspace

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 CYBER LAW

TABLE OF CONTENTS
Chapter 1: Introduction…………………………………………………………………………………………………………………….4

Chapter 2: Literature Review………………………………………………………………………………….………………………..5

Chapter 3: IPR Infringements in Cyberspace……………………………………………………………………………….…..7

3.1 Infringement of Copyright in Cyberspace……………………………………………………………………………………7

3.1.1 Computer Software and Copyright Law……………………………………………………………………….……….7

3.2 Trademark Laws and Domain Name Issues in Cyberspace……………………………………………………..…..8

3.2.1 Trademark and Domain Names………………………………………………………………………………………..….8

3.2.2 Infringement of Trademark in Cyberspace……………………………………………………………………………8

Chapter 4: Interplay Between IT Act 2000 and Intellectual Property…………………………………………….10

4.1 Standards of Intermediary Liability in India……………………………………………………………………………….10

4.1.1 The Information Technology Act, 2000……………………………………………………………………….………10

4.1.2 The Copyright Act, 1970……………………………………………………………………………………….……………13

4.2 Balance Between Right Owners and Users ……………………………………………………………………………….16

Chapter 5: Comparative Study with Cyber Laws in Other Countries………………………………..……………18

5.1 Intermediaries’ Liability Standards in the United States and Europe…………………………………………18

Chapter 6: Loopholes and Conclusion…………………………………………………………….………………………………21

6.1 Loopholes and Recommendations…………………………………………………………………………………………….21

6.2 Conclusion…………………………………………………………………………………………………………………………………23

Bibliography…………………………………………………………………………………………………………………………….……..24

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TABLE OF CASES

Sl Name of the Case Citation

No
.
1. Google India Pvt. Ltd. v. M/S Visaka Industries Ltd Crl. P. No. 7207 of 2009
and Anr (Andhra Pradesh H.C).

2. Super Cassettes Industries Ltd. v. MySpace Inc. CS (OS) No. 2682/2008

(Delhi H.C).
3. M/S Entertainment Networks Ltd. v. Super Cassettes 2008(9) SCR 165,

4. ESPN Software India Pvt. Ltd. v. Tudu Enterprise CS (OS) No. 384/2011
(Delhi H.C).

5. Twentieth Century Fox Film Corporation v. British , (2011) EWHC 1981

Telecommunication

6. Google Inc. v. Louis Vuitton, C-236/08, Judgement of the

Court (Grand Chamber),
March 23, 2010
7. L’Oreal v. Ebay, C-324/09, Judgment of the
Court (Grand Chamber),
July 12, 2011

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Chapter I
1. INTRODUCTION
Intellectual property denotes the creations of the human mind.1 The porticoes of intellectual
property that associate to cyberspace are covered under the cyber laws in relation with
namely, Copyright Law, Trademark Law, and Patent Law.

The budding significance of cyberspace as an intermediate for carrying out business increases
certain burdens on intellectual property. Some observers submit that the rules and regulations
governing intellectual property in cyberspace must be revised in its entirety; while other
commentators propose that slight alterations in the prevailing rules and regulations shall
suffice.2 Irrespective of the critics’ theoretical take on this matter, it is lucid that the growing
number of cases involving intellectual property in cyberspace are setting aside the
philosophical notions and theories of intellectual property enforcement and protection. The
courts of law, in this period of transition, are facing with the weight of such a shift and are
endeavoring to determine the questions in issue while considering both the advanced
technological reality and the traditional principles of intellectual property.3

Prior to an analysis of the kinds of Intellectual Property Rights (IPR) infringements in the
cyberspace, with special emphasis on copyright and trademark laws in India, the article seeks
to bring out an overview of the questions of personal jurisdiction in the virtual world. 4 The
issue of personal jurisdiction on the cyberspace is mutual to intellectual property, defamation,
pornography, or even simple contract cases. This article seeks to examine the trends in
personal jurisdiction cases in intellectual property, exclusively.

The preliminary and fundamental focus of this article shall be on abuse of an individual’s
private right in the cybernetic world by any medium and what remedy such individual shall
obtain. Along the years Information Technology Act, 2000 (I.T Act, 2000) has been
prevalent, however due to drastic changes in the dynamics of the cybernetics since its
inception, the Act requires to undergo certain amendments in order to adapt to the
technological advances and in order to expand its applicability in future cases. 5 Hence, for the

1
Definition provided by WTO, available at http://www.wto.org, visited
2
Marilyn C. Maloney, Intellectual Property in Cyberspace, The Business Lawyer, Vol. 53 (November 1997)
pp. 225-249
3
Dr. Andreas Rahmatian, Cyberspace and Intellectual Property Rights, Research Handbook on International
Law and Cyberspace (2015) pp. 72-93
4
Supra Note 2.
5
Balaji C, Role of IPR in Cyberspace, International Journal of Advanced Educational Research, Vol. 2 Issue 5
(September 2015) pp. 136-139.

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purpose of limiting and deterring the offences in the cyberspace, the Legislature, Executive
and Judiciary have to take apposite measures for revising and amending the rules and
regulations for effective protection against such cyber-crimes.

The present article also seeks to critically analyze the Indian cyber jurisdiction in comparison
with the cyber laws in other countries, with respect to IPR enforcement and protection. The
article shall bring out the loopholes and put forth recommendations for improving the
protection and enforcement of IPR in cyberspace.
Chapter II

2. LITERARTURE REVIEW
Ms. Marilyn C. Maloney in her work titled ‘Intellectual Property in Cyberspace’ (1997)6
has made a detailed analysis of the realms of intellectual property in the Cybernet. The article
emphasizes on the copyright and trademark concerns in the cyberspace and also throws light
upon the concept of private jurisdiction in the virtual world.

Dr. Andreas Rahmatian in his research article titled ‘Cyberspace and Intellectual Property
Rights’ (2015)7 has dug into the intricacies of the complicated relationship between
intellectual property and the cyberspace. The article makes an in-depth study of the territorial
nature of intellectual property and its implications on the enforcement of IPR in the
cyberspace.

Mr. Balaji C, in his article titled ‘Role of IPR in Cyberspace’ (2017)8 attempts to portray the
correlation between IPR and Cyberspace. The article examines the Indian cyber
jurisprudence, brings out the relations between the I.T. Act 2000 and the various statutes for
intellectual property and throws light upon the lack of enforcement measures in India with
respect to cyber-crimes.

S. Mangala Aiswarya and Awasthy Rajan in their research article titled ‘IPR and
Cyberspace- Indian Perspective with Special Reference to Software Piracy’ (2018)9 has
made an attempt to explore the legal instruments available for enforcement of rights in India
6
Marilyn C. Maloney, Intellectual Property in Cyberspace, The Business Lawyer, Vol. 53 (November 1997) pp.
225-249
7
Dr. Andreas Rahmatian, Cyberspace and Intellectual Property Rights, Research Handbook on International
Law and Cyberspace (2015) pp. 72-93
8
Balaji C, Role of IPR in Cyberspace, International Journal of Advanced Educational Research, Vol. 2 Issue 5
(September 2015) pp. 136-139.
9
S. Mangala Aiswarya and Aswathy Rajan, IPR and Cyberspace- Indian Perspective with Special Reference to
Software Piracy, 119 INTERNATIONAL JOURNAL OF INTELLECTUAL PROPERTY MANAGEMENT,
1677 (2018)

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in case of software piracy on the cyberspace and has portrayed the ideal secure cyber
ecosystem which must be adopted.

Rajendra Kumar & Latha R Nair in their research article titled ‘Information Technology
Act 2000 and the Copyright Act: Searching for the Safest Harbor?’ (2012)10 have
assessed whether the safe harbor provisions for internet intermediaries as under the Copyright
Act and the Information Technology Act provide for a balance between right owners and
right users. It further analyses how the present day internet has facilitated e-commerce.

M Dasgupta in his review article titled ‘Cyber Crime in India: A Comparative Study’
(2011)11 has made a successful attempt in comparing the variations of cyber-crimes being
committed in India, the United States and the United Kingdom, along with a comparison of
the applicable laws. The article brings about a classification of cyber-crimes and how each of
such crimes are dealt with in the three countries.

Paige von Mehren and Julie Yen in their article titled ‘Intellectual Property and Cyber
Law’ (2013)12 have discussed in detail the issues in the field of Intellectual Property and the
issues in the field of Cyber Law and how they intersect with each other. The article deals with
the practical aspects of the cyber-crimes committed in the area of Intellectual Property and
the hurdles that are yet to be eliminated.

N. Mahabir in his article ‘Safe Harbour for Intermediaries’ (2017)13 studies the sections
under the Information Technology Act 2000 which provide for the ‘safe harbours’ to the
intermediaries and makes an analysis of various precedents set by the courts of law in India in
that regard.

S. Suhsaanth and Aswathy Rajan in their research article ‘A Study on Copyright

Infringement in Cyberspace with Special Reference to Liability of Internet Service
Providers’ (2018)14 discuss the various kinds of infringements against Intellectual Property
in the cyberspace and provide for a focused analysis of the liability conferred on Internet
10
Rajendra Kumar and Lata R. Nair, Information Technology Act 2000 and the Copyright Act: Searching
for the Safest Harbor, 5 NUJS LAW REVIEW 555 (2012).
11
M. Dasgupta, Cyber Crime in India: A Comparative Study, 53 JOURNAL OF INDIAN LAW INSTITUTE
516 (2011).
12
Paige von Mehren and Julie Yen, Intellectual Property and Cyber Law, HARVARD LAW SCHOOL
https://www.opialaw.harvard.edu.
13
N. Mahabir, Safe Harbour for Intermediarie, MONDAQ
https://www.mondaq.com/india/Technology/583566/Safe-Harbour-For-Intermediaires.
14
S. Suhsaanth and Aswathy Rajan, A Study on Copyright Infringement in Cyberspace with Special Reference
to Liability of Internet Service Provider, 119 INTERNATIONAL JOURNAL OF INTELLECTUAL
PROPERTY MANAGEMENT, 1465 (2018).

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Service Providers and how the cyber laws and the intellectual property laws are in conflict in
that regard.

Chapter III

3. IPR INFRINGEMENTS IN THE CYBERSPACE

3.1 Infringement of Copyright in Cyberspace-

The objective of copyright is to enable writers, composers and directors to produce original,
unique and innovative pieces of work by awarding them with the exclusive right to publish
and reproduce the works for the benefit of the people. The work, once the term of the
exclusive right is over, belongs to the public which indicates that such work can then be
copied by anyone. Copyrights also exists in the original literary, musical, artistic, dramatic,
sound recording, computer program and cinematographic film.15 Technological
advancements have made copying of copyright content quick and convenient. Regulation of
the copyright infringement is therefore very difficult and sometimes unlikely. Books,
computer programs or video cassettes or digital tapes of movies can be taken from one
country and be reproduced and distributed in another country without much trouble.16 Digital
technology has made it possible to take material from one site, change it or simply replicate it
on another site and this has raised new challenges for the conventional definition of
individual rights and security. Copyright law gives the author the exclusive right to reuse
patented works producing derivative works, distribution etc.17

3.1.1 Computer Software and Copyright Law

Under section 2(ffc) of the Copyright Act, a computer programme is defined as "set of
instructions expressed in words, codes, schemes or in any other form, including a machine
readable medium, capable of causing a computer to perform a particular task or achieve a
particular results".18 According to the Copyright Act, a computer software falls within the
purview of the term “computer programme” and such softwares are protected under the Act.
It is included under the definition of ‘original literary works’ and the owner of the exclusive
right is entitled to the right of granting software licenses.

3.2 Trademark Laws and Domain Names Issues in Cyberspace

15
Available at www.wipo.int ,
16
DR. GUPTA & AGARWAL, CYBER LAWS, 148 (Premier Publishing Company, Allahabad, 2010).
17
TABREZ AHMAD, CYBER LAW AND E-COMMERCE, 25 (APH Publishing Corp., New Delhi, 2003).
18
Copyright Act 1970, S.2(ffc).

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Definition of Trademark- “a mark capable of being represented graphically and which is

capable of distinguishing the goods or services of one person from those of others and may
include shape of goods, their packaging and combination of colours”.19

Definition of Domain Names- To put it quite clearly, a domain name may be understood as
the etymological correspondent of Internet Protocol (IP). Each computer has an unique IP
address similar to a phone number. But since it is difficult for one to recollect a full IP
number such as 212.173.136.24 therefore, a structure was developed in which a title is plotted
to the IP address in question. So, for eg. one simply has to type in www.tata.com instead of
the IP number.

3.2.1 Trademark and Domain Names:

The Trademark Act, 1999 was passed with the intent of amending and consolidating the law
on trademarks for products and services, and to discourage the usage of fake marks.
Nevertheless, right owners seeking to use their trademarks as domain names discovered that
these domain names were recognized by unlicensed parties, often as a intentional attempt to
infringe the exclusive rights of the trademark holder. Domain names are usually licensed on
the basis of 'first come first serve,' which contributes several times to what is widely denoted
to be 'abusive registrations,' i.e. registration by an individual of a domain name comprising of
a trademark with respect to which that individual has no valid interest or right.20

3.2.2. Infringement of Trademark in Cyberspace:

a. Cybersquatting:

Domain name disputes are one of the most common and specific forms of disputes which are
addressed by the courts all across the world. Few of the most severe conflicts have arisen
over ‘Cybersquatting’ involving a person using a domain name with no registration or
intrinsic rights in respect to the name. Domain names and trademarks are often identical, and
have been abused by certain people who register another individual/entity’s trademarks as
their domain names and offer such domain names to the third parties or even owners of the
trademark at a considerable profit. This practice is called cybersquatting, meaning someone
sitting on another person's property.21 This conduct is abusive through which one individual

19
The Trademark Act, 1999, S. 2(1)(zb)
20
S. K. VARMA& MITTAL, LEGAL DIMENSIONS OF CYBERSPACE, 154 (Indian Law Institute, New
Delhi, 2003).
21
DR. B.L. WADHERA, LAW RELATING TO INTELLECTUAL PROPERTY, 134 (Universal Law
Publishing Company, New Delhi, 2009).

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registers a domain name which contains another's trademark. This activity illustrates the
significance of the role the domain names play in establishing online identity. This practice is
generally popular for either blocking the rightful user from registering their most desirable
domain name or trying to offer the names in the market for huge profits. Such phenomenon
has required the courts to scrutinize the affiliation between the marks and domain names. In
order to lodge a lawsuit in order to avert cybersquatting, the claimant would have to show the
fraudulent purpose, absence of valid rights and interests and resemblance of the domain name
with the claimant’s trademark.22

b. Reverse Cybersquatting:

It is also known as reverse domain name hijacking. It occurs when the owner of a trademark
attempts, by legal action to acquire a domain name by making fraudulent cybersquatting
charges against the legitimate owner of a domain name. Sometimes, domain names owners
have to pass domain name ownership to trademark owners in order to escape legal
proceedings and expensive expenditures, particularly if such domain names are that of
smaller organizations or individuals who are not privileged to battle the case. Reverse domain
name hijacking is usually performed by bigger companies and prominent rich persons.

c. Meta Tags:

Meta tag or meta element is a part of every web page. Meta elements provide details on page
titles, keywords and additional related information. They were first used to define the subject
of the website through search engines while the internet was in nascent stages, to aid in
positioning of web pages in the appropriate groupings. Currently, people have a tendency to
misuse Meta tags to create fraudulent page rankings for poorly built webpages. They may be
categorized into the title, definition and keywords.

Chapter IV

4. INTERPLAY BETWEEN IT ACT 2000 AND INTELLECTUAL

PROPERTY
The Information Technology Act, 2000 covers transfer, electronic governance, protection of
electronic records and digital signature, recognition and dispatch of electronic documents,
regulation of certifying authorities, duties of subscribers to digital signature certificates,
appeals tribunal on cyber legislation, offenses and liabilities of network service providers.
HARISH CHANDER, CYBER LAWS AND IT PROTECTION, 35 (PHI learning Private Ltd. Publication,
22

New Delhi, 2012).

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Nevertheless, the existing or planned Information Technology Act in India does not allow for
prosecuting cyber-squatters, and at most the domain can be retracted. While the IT Act does
not offer legal redress, the. IN registry has undertaken aggressive measures to award
compensation to companies falling prey, in order to redress and prevent squatters from
stealing further domains. Regarding jurisdictional questions, IPR-related cybercrimes, cyber
bullying, cyber defamation etc., the Information Technology Act fails. Similarly, the Indian
Trademark Act, 1999 and the Copyright Act, 1957 still remain uncommunicative on issues
resulting from infringements of electronic trademarks and copyrights. While the Copyright
Act covers computer programs, it does not include redress for online piracy of software.

4.1 Standards of Intermediary Liability in India:

4.1.1 The Information Technology Act, 2000

The Indian Information Technology Act, 2000 ('IT Act') was enacted to provide a boost to the
country's development and usage of internet, computers and apps, and to lay down a lawful
basis for the country's parameters for regulating e-commerce and e-transactions. A main
aspect of the IT Act correlates to supplying intermediaries with 'safe harbours'. The term
‘intermediary’ is defined in the IT Act s as follows:

“Intermediary – with respect to any particular electronic message means any person who on
behalf of another person receives, stores or transmits that message or provides any service
with respect to that message.”23

Section 79 of the IT Act, provides for exemptions from liability to network service providers
in specific cases. Network service providers are perceived to be coming within the purview of
‘intermediaries’ and any information which is dealt by the service provider in such capacity is
known as third party information. Prior to the 2008 amendment, it is found that network
service providers were provided with absolute immunity against any liability arising out of
third party information dealt by the service provider, if it is proven that the infringement was
caused without knowledge and reasonable care was taken by the service provider to avoid
such contravention.

Section 81 of the IT Act provided for a non-obstante clause which stated that the provisions
of the Act would have effect notwithstanding anything inconsistent therewith contained in
any other law for the time being in force.24
23
The Information Technology (Amendment) Act, 2008, S. 2(1)(w).
24
Information Technology Act, 2000, S. 8.

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In 2008 a series of changes were made to the IT Act. Among other items, the Report of the
Expert Committee on the Possible Changes to the IT Act, 2000 (August 2005) 25 states that in
some situations the provisions relating to intermediary liability have been amended to
specifically specify the scope of an intermediary's liability. The Report recognizes that the
guiding principles of the EU E-Commerce Directive 2000/3/31/EC issued on 8 June 2000
were used.26

The provisions relating to an ‘intermediary’ and Section 81 were amended by the

Amendment Act of 2008 to the following effect:

“Section 2(1)(w)27 — Intermediary for one specific electronic record, denotes any individual
who collects, stores or transmits on behalf of another person who records or provides any
service relating to that record and includes telephone service providers, network service
providers, Internet service providers, web hosting service providers, search engines, online
payment sites, online auction sites, online market places”

Section 7928 — As discussed earlier, Section 79 deals with the exemptions that are provided
to an intermediary from any liability. Previously, the exemptions were absolute if it was
proven that the contravention occurred without the knowledge of the intermediary or if due
care was taken the intermediary. The amended section now provides for specific
circumstances under which such exemption can be claimed. Such circumstances are listed as
follows:

a. If the intermediary is only concerned with granting access to the communication system on
which such contravening information is available; or

b. If the intermediary’s function does not involve initiation of the transmission, selection or
modification of information or selection of receiver of such transmitted information; or

c. If the intermediary proves to have observed due care and followed the guideline prescribed
by the Central Government while carrying out its duties under the Act.

However, an intermediary does not qualify for such an exemption under the following
circumstances-

25
Report of the Expert Committee, Proposed Amendments to Information Technology Act, 2000, August 2005,
available at http://www.prsindia.org/uploads/media/Information%20(Technology
%20/bill93_2008122693_Report_of_Expert_Committee.pdf
26
Id.
27
Information Technology (Amendment) Act, 2008, S. 2(1)(w).
28
Id., S.79.

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a. If the intermediary has, either by promise or threats or any other means, aided or abetted
the contravention.

b. If the intermediary, in spite of being notified by the Government or its appropriate agency
regarding the contravention or in spite of having knowledge of such contravention, fails to
take measures for expeditious removal of the material.

Section 81 — The amended section states that the provisions under the Act will have an
overriding effect over any law in force that is inconsistent with such provisions. However, the
Explanation to the section, provides for an exception for the exercise of rights under the
Patents Act 1970 and/or Copyright Act 1957.

In Google India Private Limited v. M/s Visaka Industries Limited 29 the Andhra Pradesh
High Court addressed the applicability of exception under Section 79 of the IT Act as set out
above. In the present case, several politicians alleged they had been defamed by certain
articles published on the search engine, Google. In spite of notification being given, Google
India Private Limited ('Google India') did not rescind access to such defamatory articles.
Google India based its arguments on the safe harbour protection under Section 79 and
asserted insusceptibility. Nevertheless, the Court disagreed with Google India, and held
that:30

“It is only under the said amendment, non-obstante clause was incorporated in Section 79
keeping application of other laws outside the purview in a fact situation covered by the said
provision. Now, after the amendment, an intermediary like a network service provider can
claim exemption from application of any other law in respect of any third party information,
data or communication link made available or hosted by him; provided he satisfied the
requirements under Sub-section (2) of Section 79.”

4.1.2. The Copyright Act, 1970

Prior to the amendments made in June 2012 to the Copyright Act, there was an absence of
clear conditions that discussed the question of liability of an intermediary under the Act.
Section 14 of the Act provides for the exclusive rights held by the copyright owner in the
categories of protected copyright works.31 Section 51 of the Copyright Act provides for two

29
Google India Pvt. Ltd. v. M/S Visaka Industries Ltd and Anr., Crl. P. No. 7207 of 2009 (Andhra Pradesh
H.C).
30
Id.
31
The Indian Copyright Act, 1957, S. 14

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broad categories of legal responsibility for infringements of copyright, namely- primary and
secondary infringement.32

In Super Cassettes Industries Limited (SCIL) v. MySpace Inc. 33 The Delhi High Court's
Single Judge Bench investigated into the liability of the MySpace, a social networking
platform falling under the primary and secondary violation title. The Single Judge defined the
privileges granted to the copyright owner in furtherance of Section 14 of the Copyright Act as
having the right of authorizing such acts. Following such an interpretation, the judge agreed
with the argument put forth by MySpace that the violation through authorisation allowed the
accused person to have the right or authority to request that a contravening act resulting in
copyright infringement be perpetrated. Accordingly, the Court found that SCIL had failed to
prima facie establish that MySpace exerted such a degree of control which could amount to
sanction, approval or countenance. However, The Single Judge held MySpace accountable
for secondary infringement under Section 51(a)(ii) of the Copyright Act, keeping in mind the
following factors:

a) The provision on MySpace's website of "notice and take down" safeguards is evidence of
its fair conviction or apprehension that the information available on its website infringe
copyright of an individual or entity;

b) Reasonable belief or information related to the works of SCIL is present as SCIL provided
MySpace with its name and title lists. Therefore, MySpace had been working with SCIL until
the action was launched. MySpace does not overlook the fact that the songs of Bollywood on
its website belonged to SCIL and SCIL had continually notified MySpace regarding its
updated works;

c) Awareness and fair confidence are evident when one explores MySpace's working
mechanism. MySpace requires a restricted user license to add, remove or change the works
accordingly. At the same way, the original work goes into MySpace's computers or servers
when the programmers alter or change the said material accordingly. The said alteration goes
so far as to incorporate other companies 'ads and logos before or after the clips being played;

d) Fair belief and knowledge of the infringement was also evident as MySpace indulged in
India-centered operations in which an entire office was devoted to Indian works for Indian
consumers;

32
The Indian Copyright Act, 1957, S. 5
33
Super Cassettes Industries Ltd. v. MySpace Inc., CS (OS) No. 2682/2008 (Delhi H.C).

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 CYBER LAW

e) Section 51(1)(b) does not allow for due diligence after the infringement.

The Standing Committee Report on the Copyright Reform Bill, 2010 regarding the proposed
amendments made to Section 52, noted the submissions made by the Department of Higher
Education, Ministry of Human Resource Development as follows:34

“According to the Department, Section 52 deals with fair dealing and certain acts which are
not infringement and it does not deal with infringement per se. Any transient and incidental
storage of any work through the process of ‘caching’ has been provided exceptions as per
the international practice. Any deliberate storing of such works and unauthorized
reproduction and distribution of such works is infringement under Section 51 of the Act
attracting civil and criminal liability… However, in order to provide a safe harbor as per
international norms to the service provider to take down such unauthorized works upon
receipt of notice from the authors and right owners and any abuse of suspension, it is
provided that an order within 14 days from the competent court to be produced for the
continued prevention of such storage.”

Analysing the Committee's submissions and recommendations, it appears that the sententia

legis of the amendments made to Section 52 was mainly to provide for safe harbors for
various intermediaries, although the literal interpretation of the amended section does not
bring out the same. The interpretation would be consistent with the classification of ISPs
under the IT Act in the absence of policy considerations to exempt any particular group of
intermediaries. Under Section 79 of the IT Act, safe harbors have been introduced to protect
and inoculate different forms of ISPs and the notification and discharge scheme is the
prerequisite for the continuous application of such safe harbours. However, there exist some
variations in the liability of an intermediary requirements in both statutes. It is noteworthy
that the antecedent section to the current Section 79 of the IT Act put on the intermediary the
burden of demonstrating lack of expertise and practicing due care in order to avoid the
execution of the alleged contravention or infringement.35

Contrary to the law existing under the unamended IT Act, the safe harbors under the new
Section 79 are immediately available. The intermediaries lose protection for neglecting to
delete or incapacitate access to illegal material without delay, after having specific
information or being informed by the relevant agency of the government, and if the

34
The Parliamentary Standing Committee Report on the Copyright Amendment Bill 2010, available at
http://copyright.gov.in/Documents/227-Copyrightamendment.pdf
35
Information Technology Act, 2000, S. 79

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intermediary has collaborated, enabled, aided or encouraged the execution of the illegal act.
Therefore, the rudiments of the intermediary's effective involvement in the actions accused of
and its inability to act after information are the sine qua non for establishing liability under
the Act.

Contrary to such liability requirements pursuant to the IT Act and Section 52(1)(b) of the
Copyright Act tends to offer full protection to ISPs the duties of which involve the temporary
or supplementary storing of a work or output solely in the methodological phase of electronic
transmission or public communication.36 The exemption would tend to refer to channel
functions similar to the conduit exemption under the European E-Commerce Directive and
correlate to providers of telecommunications and internet access.

The exemption under Section 52(1)(c) seems to include certain forms of intermediary
operations like caching, search engines, payment gateways, e-commerce intermediaries and
hosting.37 However, protection provided to these ISPs are made available only if there are no
situations to prove that the concerned intermediary had knowledge of or had fair reasons to
assume that it was storing an infringing copy of the work. This provision requires either real
knowledge or constructive knowledge, depending on the conditions that demonstrate that the
service is exploited for the purpose of storing infringing copies of the work. Additionally, the
proviso to the section provides for right owner the authority to report the infringing works to
the intermediary in writing, and necessitates the right holder to acquire an order by the
competent court within a period of 21 days from the date of reporting through such
notification. If a court order is released within 21days, the responsible intermediary shall
abstain from enabling that access. If the right holder fails to obtain the order within 21 days,
the access can be continued by the intermediary.

4.2 Balance Between Right Owners and Users

The Supreme Court accentuated on the necessity for a balancing of the conflicting interests of
right owners and users in the sense of copyright law in M/S Entertainment Networks v.
Super Cassettes38

“The Act seeks to maintain a balance between the interests of the owner of the copyright in
protecting his works on the one hand and the interest of the public to have access to the
works, on the other. The extent to which the owner is entitled to protection in regard to his
36
Indian Copyright (Amendment) Act, 2012, S. 52 (1)(b)
37
Indian Copyright (Amendment) Act 2012, S. 52 (1)(c)
38
M/S Entertainment Networks Ltd. v. Super Cassettes, 2008(9) SCR 165.

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work for which he has obtained copyright and the interest of the public is a matter which
would depend upon the statutory provisions. Whereas the Act provides for exclusive rights in
favour of owners of the copyright, there are provisions where it has been recognized that
public has also substantial interest in the availability of the works…”.

The Supreme Court's aforenoted stance reinforces the idea that the privileges are not
exclusive, under IP laws and thus a balance must be maintained between the counteracting
obligation for information to be accessible to the public.

The report of the United Nations Special Rapporteur on the Promotion and Protection of the
Right to Freedom of Opinion was submitted to the General Assembly Human Rights Council
on May 16, 2011. The report looks at the position of intermediary liability and states:39

“Intermediaries play fundamental role in enabling Internet users to enjoy their right to
freedom of expression and access to information. Given their unprecedented influence over
how and what is circulated over the Internet, States have increasingly sought to exert control
over them and to hold them legally liable for failing to prevent access to content deemed to
be illegal Any requests submitted to intermediaries to prevent access to certain content or to
disclose private information for strictly limited purposes, such as administration of criminal
justice, should be done through an order issued by a Court or a competent body which is
independent of any political or commercial or other unwarranted influences.”

Considering the aforementioned precedent laid down by the Apex Court and the
corresponding international standards supported by the United Nations, it is evident that the
contemporary drifts in the judiciary in India does not uniformly mirror the essential balance
amongst the prerequisite for copyright protection and the requirement for information being
accessible to the public. The series of John Doe or anonymous party orders passed in the
recent past by various high courts of India at the behest of cinematographic film copyright
owners depicts th method in which the courts have conceded wide-ranging orders not in
favour of intermediaries, ordering them to disable access or block the websites that could
possibly carry overstepping content created by third parties. The extent of these orders is
wide-ranging, and encompasses comprehensively to all intermediaries grouped before the
courts, regardless of their roles. It positions them with a daunting mission of building a

39
United Nations General Assembly, Human Rights Council [UNHRC], Report of the Special Rapporteur on
the Promotion and Protection of the Right to Freedom of Opinion and Expression, ¶ 74, 75, U.N. Doc.
A/HRC/17/27 (May 16, 2011).

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 CYBER LAW

complex, permanent and expensive computer system to track the current works and future
works without any time limit.

The Single Judge affirmed the viability of a John Doe suit in the light of the standards set out
in ESPN Software India Private Limited v. Tudu Enterprise 40 held that they had authority
to pronounce an order in contradiction of unknown persons displayed such as Ashok Kumars
in the present case. It was further noted that the order passed on 22 June 2012, the order
issued by him on 29 March 2012 was later explained by a Division Bench of the court. As the
revised order was not contested and the compromise provided that the order was a feasible
resolution without harming any party's position, the Judge decided to dispose of the appeal of
the intermediaries in relation to the already issued amended order.

Presumably, the aforementioned order was pronounced in the light of the Copyright Act, as it
existed before the amendments of June 2012. The Court was not bestowed with an
opportunity to deliberate the enlisted exceptions under Section 52(1)(b) & (c) to copyright
infringements. As mentioned above, the exemption pursuant to Section 52(1)(b) tends to offer
an unqualified safe harbor for those ISPs implicated in the temporary or accidental storing of
a job or output merely in the procedural phase of electronic transmission or public
communication. It is a debatable theme if the order pronounced by the High Court of Madras
Single Judge on 30 October 2012 will be compatible with the said exception today, because
any immunity given under this provision to these intermediaries should be absolute. In other
words, before arriving at its judgments, the Court would have investigated the essence of the
roles of these intermediaries (all of which tend to be pure conduits).

Chapter V
5. COMPARATIVE STUDY WITH CYBER LAWS IN OTHER
COUNTRIES
5.1 Intermediaries’ Liability Standards in the United States and Europe
The legal responsibility requirements for intermediaries globally were in some way affected
by deviations in the Europe and United States. In the U.S., Internet copyright infringements
are handled by a sui generis statute, called the Digital Millennium Copyright Act. There are

40
ESPN Software India Pvt. Ltd. v. Tudu Enterprise, CS (OS) No. 384/2011 (Delhi H.C).

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 CYBER LAW

safe harbors under the DMCA for four broad categories of activities carried out by ISPs,
enlisted as follows:

a. information location tools;

b. storage of information on systems or networks at the direction of users;

c. system caching and

d. the provision of a network for transitory communications.41

Under the DMCA, the 'safe harbor' from liability against copyright infringement is available
if an ISP disables or blocks access to purportedly invading content when a notification of
infringement is provided by the owner of such copyright or his agent in compliance with
legislative provisions of the DMCA.

Concerning certain styles or kinds of online content, there is a different US law called the
Communications Decency Act. The Act specifies, under Section 230(c), that any supplier or
user of an interactive data service shall not be considered as producer or reciter of any
material supplied by any other supplier of software material. 42 With respect to various legal
wrongs, including slander and obscenity, the aforementioned provision has become the
foundation of protection for ISPs in the USA.

Contrarily, Europe takes a standard neutral attitude towards the responsibility of

intermediaries (referred to as horizontal approach in the Council Directive). 43 The basis for
this approach is contained in Directive 2000/31/EC on E-Commerce' (E-Commerce
Directive).44 In terms of their basic duties, Articles 12 to 15 of Directive 45 regulate a number
of intermediaries (referred to in the Directive as 'information society service providers').

Intermediaries operating as 'merely conduits' are dealt with under Article 12 and it vaccinates
them from legal responsibility on the condition that the ISP does not initiate or select or
change the transmission, of information. The safe harbor 'conduit' covers telephone networks,
ISPs and other infrastructure services essential to functioning of internet. This norm tends to
be an unqualified standard, since it is not subject to note and taking down rule. Article 12(3)
of the E-Commerce Directive, however, enshrines a restriction on the safe harbor of conduits,
41
The Digital Millenium Copyright Act, 1998, S. 512.
42
Communications Decency Act, 1996, S. 230(c).
43
Recital 16 of Council Directive 2001/29/EC of 22 May 2001.
44
Directive 2000/31/EC of the European Parliament and of the Council, available at
http://eurlex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:32000L0031:En:HTML
45
Id., Art. 12, 13, 14, 15

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since it retains the potential for a court or administrative authority to allow the service
provider to terminate or avoid a violation in compliance with the legal systems of Member
States.

In Twentieth Century Fox Film Corporation v. British Telecommunication PLC

(‘British Telecommunication case’)46 The High Court of England and Wales faced the issue
of whether the unqualified protection given pursuant to the E-Commerce Directive under
Article 12(1) may be restricted by a provision under Article 12(3) to compel the ISP involved
to dismiss or circumvent an infringement. The accurate framework under which this dispute
was adjudicated before the High Court referred to a website, ‘www.newzbin2.com’, that can
be accessed by U.K. Users via service provided by British Telecom (BT). The complainant
Studios requested an injunction against BT for forcing it to terminate the alleged
infringement. The Newzbin2 website was undoubtedly a plagiarized and reprobate website
which permitted its subscribers to knowingly retrieve pirated copies of films / TV shows from
the claimant Studios. It was BT's argument that the Court did not have authority to pronounce
the order requested, as such an order will disregard the pure safe harbor of "conduct" as under
Article 12(1) of the Directive.47 The BT's argument was taken into consideration that Article
12(1) of the Regulation protects him from liability for copyright infringement. The High
Court nevertheless ruled that “Article 12(3) provides that this protection does not ‘affect the
possibility for a Court…of requiring a service provider to terminate or prevent an
infringement’.”48

Unlike the safe harbor 'mere conduit,' the safe havens for 'caching' facilities are accessible for
permanent and temporary and intermediate information storing. Therefore, the safe harbors
are qualified on the service provider’s capability to act promptly, delete or block access to the
material being stored by them, on acquiring knowledge. The experience here relates to the
information being the original source of the communication was either detached from the
network, or weakened access to it, or ordered such exclusion or debility by a court /
administrative authority. Similarly, 'hosting' services receive protection from legal
responsibility if the provider has no direct knowledge of the criminal action or material or
acquires any information or understanding, the ISP acts immediately to eradicate or
incapacitate access to the material.

46
Twentieth Century Fox Film Corporation v. British Telecommunication PLC, (2011) EWHC 1981.
47
Id.
48
Id.

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Evidently, while the E-Commerce Guideline offers full defense for pure conduits (subject to
court-imposed conditions), it postulates a “notice and take down” method to hosting and
caching. Under the E-Commerce Directive, the search engines, are not expressly protected by
the safe harbor provisions. Consequently, separate EU Member States are allowed to enact
their individual laws to deal with search engine accountability. Nevertheless, evolving case
laws in Europe has broadened the Directive's definition to include search engines or online
market places.

In Google Inc v. Louis Vuitton49, Louis Vuitton put forward the point that a referencing
service such as AdWords was not an data society service with regard to the of Directive
2000/31, with the effect that in no conditions could the provider of such a service avail
himself of certain limits of liability. Google and the European Communities Commission had
taken the opposite view. The European Court of Justice disagreed with Louis Vuitton's
submissions and ruled as follows:50

“Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8

June 2000 on certain legal aspects of information society services, in particular electronic
commerce, in the Internal Market must be interpreted as meaning that the rule laid down
therein applies to an Internet referencing service provider in the case where that service
provider has not played an active role of such a kind as to give it knowledge of, or control
over, the data stored. If it has not played such a role, that service provider cannot be held
liable for the data which it has stored at the request of an advertiser, unless, having obtained
knowledge of the unlawful nature of those data or of that advertiser’s activities, it failed to
act expeditiously to remove or to disable access to the data concerned.”

In L’oreal v. Ebay51, the The European Court of Justice had been requested to respond to a
question, inter alia, as to whether the service offered by an online market operator is
protected under Directive 2000/31 under Article 14(1) (hosting) and, if so, under what
conditions can it be inferred that the online marketplace operator has 'knowledge' within the
scope of the Article? The Court addressed the query in favor of the online market as follows:

“Where the operator of the online marketplace has not played an active role within the
meaning of the preceding paragraph and the service provided falls, as a consequence, within
the scope of Article 14(1) of Directive 2000/31, the operator none the less cannot, in a case
49
Google Inc. v. Louis Vuitton, C-236/08, Judgement of the Court (Grand Chamber), March 23, 2010.
50
Id
51
L’Oreal v. Ebay, C-324/09, Judgment of the Court (Grand Chamber), July 12, 2011.

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 CYBER LAW

which may result in an order to pay damages, rely on the exemption from liability provided
for in that provision if it was aware of facts or circumstances on the basis of which a diligent
economic operator should have realised that the offers for sale in question were unlawful
and, in the event of it being so aware, failed to act expeditiously in accordance with Article
14(1)(b) of Directive 2000/31.”

Additionally, Article 15 of the Directive requires that Member States, while providing
services covered by Articles 12 to Article 14, do not impose a general obligation on service
providers to track the information they transmit or store, nor a general obligation to actively
pursue facts or circumstances which indicate illegal activity.

Chapter VI
6. 1 Loopholes and Recommendations
The contemporary trends in the judiciary mirror the insufficiency of understanding of the
Internet, especially with regard to the role of the service providers as facilitators and provider
of access to material and information. Imperatively, there exists an ambiguity with respect to
the intermediary’s liability standards under the IT Act and the Copyright Act and also across
jurisdictions.

The balance between the two countervailing interests i.e., the interest in protection of third-
party rights and the interest of the public in the distribution of information which is a central
operation of the internet, is the foundation or principle forming the base of the two statutes.
The exemptions or the safe harbor provisions as provided under Section 79 of the IT Act,
confer an entitlement of censorship on the private intermediaries who act at the demand of an
appropriate government agency or any individual, due to the dread of exhausting the safe
harbors than any neutral valuation of the legitimacy of the grievances brought forward.52

On the contrary, the safe harbors as provided for under Section 52(1)(c) of the Copyright Act
bequeath the question of their application to particular intermediaries, to the whims and
fancies of construal and judicial interference.

However, the circumstances are not favorable for the protection of users’ rights and the
intermediaries with the application of either of the statutes. Until and unless a redressal being
brought about at a legislative level, an inadvertent turn towards damage and incapacitating of
the development of the digital world in India will be taken.
52
Rishabh Dara, Intermediary Liability in India: Chilling Effects on Free Expression on the Internet, http://cis-
india.org/internet-governance/intermediaryliability-in-india

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Although the technological advances and the internet in India are still in the nascent stages, a
revolutionary development in the jurisprudential aspect will be imperative in the near future
since e-commerce and digital India will be shrinking borders and therefore bring in complex
jurisdictional aspects with regard to territorial nature of IP rights. Therefore, we may find that
that there exist two broad dimensions which require consideration and deliberation-

a. Jurisdiction of foreign courts over the internet and related issues arising.

b. The relevancy and applicability of a decree passed by a foreign court in that regard.

The following recommendations are thus made:

1. T.R.I.P.S Agreement requires proper implementation and adoption by all counties in order
to ensure that copyright protection is extended to computer programs and softwares. This will
also cover the jurisprudential aspects which can be challenging in an area of law where the
internet is involved.

2. More stringent safeguarding and enforcement strategies would imply restricted

dissemination of technology.

3. The Copyright and Cyber laws must be amended and adopted in an appropriate manner in
order to ensure that the extent of the legislation cover cybercrimes against Intellectual
Property.

6.2 Conclusion
Intellectual property is a treasured possession of any person, and therefore it ought to be
safeguarded all possible ways as a person applies his mind, skill and time into producing
something original and unique which could be classified as an Intellectual Property. Public
Policy research in the legal and economic fields must be carried out for the purpose of
determining the scope of intellectual property being safeguarded in the cyberspace.
Technological developments and the rise in cyber-crimes have posed new challenges to
Intellectual Property in the digital world and therefore appropriate modifications in
legislations are the need of the hour. The legislations are required to focus on specific cyber-
crimes in the field of Intellectual Property since the only provision regarding the same are the
safe harbours provided to intermediaries, which too is conflicted. Further, jurisdictional
aspects need to be clarified since with growing e-commerce, the internet is shrinking the

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borders which poses a challenge to the territorial nature of Intellectual Property and therefore
international treaties need to eliminate the ambiguity in this regard. The cyberspace
inevitably functions world-wide, whereas intellectual property rights are territorial in essence.
Even though intellectual property protection has been harmonized by international
conventions, especially the TRIPS Agreement, this harmonization has also relaxed the
territorial nature which oversees intellectual property rights. An international guideline of the
cyberspace is the need of the hour to concentrate and solve the jurisdictional challenges.

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BIBLIOGRAPHY

a. Books:

 Dr Gupta & Agarwal- Cyber Laws (2010)

 Tabrez Ahmed- Cyber Law and E-Commerce (2003)
 Harish Chander- Cyber Laws and IT Protection (2012)
 Dr. B.L Wadhera- Law Relating to Intellectual Property (2009)

b. Articles:

 Marilyn C. Maloney, Intellectual Property in Cyberspace, The Business Lawyer, Vol.

53 (November 1997).
 Dr. Andreas Rahmatian, Cyberspace and Intellectual Property Rights, Research
Handbook on International Law and Cyberspace (2015).
 Balaji C, Role of IPR in Cyberspace, International Journal of Advanced Educational
Research, Vol. 2 Issue 5 (September 2015).
 S. Mangala Aiswarya and Aswathy Rajan, IPR and Cyberspace- Indian Perspective
with Special Reference to Software Piracy, International Journal of Intellectual
Property Management Vol. 119 (2018).
 Rajendra Kumar and Lata R. Nair, Information Technology Act 2000 and the
Copyright Act: Searching for the Safest Harbor, Vol. 5 NUJS Law Review (2012).
 M. Dasgupta, Cyber Crime in India: A Comparative Study, Vol. 53 Journal Of Indian
Law Institute (2011).
 S. Suhsaanth and Aswathy Rajan, A Study on Copyright Infringement in Cyberspace
with Special Reference to Liability of Internet Service Provider, Vol. 119
International Journal of Intellectual Property Management (2018).

c. Websites:

 N. Mahabir- Safe Harbour for Intermediaries

https://www.mondaq.com/india/Technology/583566/Safe-Harbour-For-
Intermediaires.
 Paige von Mehren and Julie Yen- Intellectual Property and Cyber Law,
https://www.opialaw.harvard.edu.
 Rishabh Dara- Intermediary Liability in India: Chilling Effects on Free Expression on
the Internet http://cis-india.org/internet-governance/intermediaryliability-in-india.

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 CYBER LAW

 Directive 2000/31/EC of the European Parliament and of the

Council,http://eurlex.europa.eu/LexUriServ/LexUriServ.do?
uri=CELEX:32000L0031:En:HTML
 The Parliamentary Standing Committee Report on the Copyright Amendment Bill
2010. http://copyright.gov.in/Documents/227-Copyrightamendment.pdf
 Report of the Expert Committee, Proposed Amendments to Information Technology
Act, 2000, August 2005. http://www.prsindia.org/uploads/media/Information%20
Technology%20/bill93_2008122693_Report_of_Expert_Committee.pdf

Kirit P. Mehta School of Law