THE TELEGRAM RIGMAROLE: A CASE OF COPYRIGHT INFRINGEMENT

- Shreyashkar & Shivam Shantanu (NLU Nagpur)

Internet has been a place providing the modern age humongous content availability without a single
penny. Have you ever contemplated about the originality of the content that you consume on the internet?
The spontaneous utterance to such a question would be a big no. One such platform renowned for its
content availability is Telegram. It is a cloud-based instant messaging, video telephony and voice over IP
service with end-to-end encryption for secret chat only, whereas cloud chat uses client-server/server-
client encryption. Users can send messages and exchange photos, videos, stickers, audio and files of any
type. Covid-19 lockdown brought with itself many challenges and one such gauntlet thrown to the media
houses was the physical distribution of newspaper. This necessitated a situation where most newspapers
started offering free trials on their websites for e-papers and even free PDFs of daily paper which led to a
hike in e-papers getting forwarded on social media by individuals. The Hon’ble Delhi High Court was
encountered with one such case and pronounced its judgement on 29 th May, 2020 through Jagran
Prakashan Limited v. Telegram FZ LLC imposing an ad-interim injunction in favour of the plaintiff. The
article seeks to analyze the aforementioned judgement and the allied jurisprudence surrounding the
infringement of copyright by an intermediary and the channel administrators.

BACKDROP

Jagran Prakash Ltd. is the exclusive owners of the trademark ‘Dainik Jagran’ with its variations registered
in number of classes. Dainik Jagran brought a suit against Telegram and unnamed defendants operating
certain Telegram channels, which allegedly circulated versions of the plaintiff’s newspaper through PDF.
The version circulating was downloaded from the plaintiff’s web-portal, where registered users can view
the e-paper free of cost. 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 only.
While Telegram was served notices on the alleged infringement occurring through its channels but it did
not respond. Eventually, the plaintiff brought a suit for copyright and trademark infringement against
Telegram as an intermediary, and against the users, owners and operators of the various ‘channels’ on
which the alleged infringement was taking place.

The Court found prima facie infringement of Dainik Jagran’s copyright, and subsequently granted the ad-
interim injunctions prayed for, directing Telegram to furnish information about the administrators and
members of the channels, and directing Telegram to take down the infringing channels.

WHAT DOES THE LAW SAY?

Section 79 of the Information Technology Act, 2000, talks about intermediary’s liability. It says that
intermediary has to comply with the due diligence procedures. Rule 3 sub-rule 4 of the Information
Technology (Intermediaries Guidelines) Rules, 2011 lays down that intermediary has to conduct due
diligence in a way that upon obtaining knowledge by itself or been brought to actual knowledge by an
affected person in writing or through email signed with electronic signature about any information that
belongs to another person and to which the user does not have any right to , such a content must be
disabled within 36 hours.

Further, intermediary liability for violation of any IPR by circulation of third party content was dealt in
Shree Krishna International v. Google, whereby the defendants were held liable on the ground that,
despite having ‘specific knowledge’ of the existence of such copyrighted content owned by the petitioner,
defendants did not take down the content. The above precedent works in the case where the intermediary
has specific knowledge and has willfully disobeyed the same. In the present context, the plaintiff had to
prove that the notices sent via. email was duly delivered and opened by the defendant to make Telegram
liable.

WHO’S LIABLE THEN?

The legal position of intermediary (i.e. Telegram in the present case) is quite conspicuous but what about
the channel or the chat administrators? The legal stance of group administrators of the same is murkier. If
we take example of the present context, fixing the liability of Telegram as a platform for the circulation of
e-newspapers is not a big deal as it can be done on the basis of specific knowledge test but the real catch is
in fixing the liability of the group or the channel administrators for the unlawful content. The Hon’ble
Delhi High Court in Myspace v. Super Cassettes, explaining the general practice, expounded that
intermediaries like Telegram can claim the status of intermediaries and can claim the ‘safe harbour’ from
liability for copyright infringement, available under Section 79 of the Information Technology Act.
According to Section 79 and the rules made thereunder, the intermediary can claim such safe harbour
from liability provided it does not have ‘actual knowledge’ of the illegal or infringing content and does
not fail to expeditiously take down such content upon receiving such knowledge. Thus, the intermediaries
can claim safe harbour by a simple fact of negation of specific knowledge.

The liability of the group administrators for copyright infringement is still an unsettled question in the
present IPR regime. There is little or no direct legal precedent which addresses the issue. However,
Hon’ble Delhi High Court, through its order in Ashish Bhalla v. Suresh Choudhary and Ors. by drawing
an analogy to defamation, was of the view that the administrator of the group should not be held liable to
for such an act. Group or channel administrators can also not claim the safe harbour of not having specific
knowledge under Sec. 79 of the IT Act because of the fact that they do not qualify the definition of
intermediary under the aforementioned Act. Also, by default assumption of liability of group
administrator or the any of the specific member cannot be fixed.

Eventually, the liability has to be determined on case to case basis. For attributing such a liability,
scrutiny of the role of group administrator is of utmost relevance. It is to be seen if the said group
administrator has control over the infringing content shared on the channels or not and if the same is
proved in affirmation, the test of specific knowledge can be applied. It can be dissected whether the
administrators or members of the group have had knowledge of the infringement, or have contributed to
the infringement by their acts of administration. Liability of infringement of copyright may, in fact, be
attributed to both the platform i.e. intermediary as well as the administrators responsible for an online
forum like Telegram channels. With new developments, it will be intriguing to see how courts will fix the
liability group administrators in case of copyright infringement in the near future.
INTERNATIONAL PERSPECTIVE

The whole world seems to be in a legal quandary as to finding ways to cope with the menace of copyright
infringement happening on intermediary platforms. Different nations across the globe have come up with
different principles and models to deal with the situation where copyright owners’ positions are
jeopardized. Paths chosen by various countries are like chalk and cheese. Countries like Russia and Iran
has imposed a complete ban on apps like Telegram which promote flagrant copyright infringements and
provide users with an unrestrained content sharing space. United States and European Union has devised
their own convenient way to deal with the intermediaries.

The Doctrine of Inducement has been into use by the courts of the United States to deal with
intermediaries. This doctrine is used for determining as to whether an intermediary in any manner
presents or promotes itself to infringe copyrighted material. The US Supreme Court in MGM Studios v.
Grokster Ltd., unanimously expounded this principle. It held that if there is willful absence of a check on
usage of a platform/intermediary and is being affirmatively promoted for file sharing; it is inducing
copyright infringements and vicariously contributes in a bid to earn profits. Under the Doctrine of
Contributory Infringement, the intermediaries are also held liable for their contributory infringements.
They also contribute to copyright infringement for the very reason that they gain profits out of such file
sharing between the users. They may not control millions of users but it can certainly put content filters
and reduce copyright infringements. These two doctrines have established the modus operandi for the
courts in the US to deal with copyright infringement routed through intermediary platforms.

Directives of the European Union on copyright and enforcement of intellectual property rights enables a
right holder to seek injunction against the online intermediaries who purportedly invigorate violation of
their intellectual property rights. Similar to the John Doe order granted in India in the case of Taj
Television case, the right holder can seek injunction against apprehended anonymous copyright infringers
using the intermediary platform. It is the only way through which the anonymous infringers could be
brought under one umbrella. The intermediaries are also granted safe harbours through the EU E-
Commerce Directive. As the name suggests Safe Harbours grants exemption to the intermediaries if it
plays a passive role in a transmission which leads to copyright infringement. Under Article 12 of this
directive, role played by the intermediary will be regarded as Mere Conduit if it has not (1) initiated the
transmission: (2) selected the recipient of the transmission: (3) selected or modified the information
contained in the transmission. The EU model is quite similar to the practice followed in India currently.
They seem to be cut from the same cloth.

THE WAY FORWARD

The Social Media aggrandizement the globe is witnessing right now is unprecedented. It is estimated that
around 3.6 billion people are currently active on various social media networks in the year 2020. In India,
the Right to Privacy has been read under Article 21 of the Constitution of India as a fundamental right in
the K. Puttuswamy case. For constricting the copyright infringements looming on various social media
intermediaries like Telegram, it is very pertinent to realize the fact that it is going to be a very daunting
and harrowing task for anyone to pin down the plentitude social media users for sharing copyright
protected contents on intermediaries. The most practical problems will be that of sniffing out the
anonymous users and then the concern of privacy of an individual.
The most expedient way forward is to go behind and knuckle down the intermediaries such as Telegram
who are in a way emboldening copyright infringements through their platforms. There should be a
compulsory introduction of a content filter which keeps a check on the activities being performed on the
platforms. If there is an absence of checks like introducing content filters then such an intermediary
should be held liable as to induce copyright infringements by applying the Doctrine of Inducement as
used in the United States. Application of the Doctrine of Contributory Infringement will help tightening
the screws on the intermediaries who are promoting themselves without having any kind of content filters
for reducing copyright infringements and gaining profits out of such usage. Thus, introduction of content
filters on various intermediary platforms (specifically Telegram) should be made a mandatory regulation.