Hunting down the nameless infringers
John Doe orders (JDOs) are an important tool in India for fighting infringement in situations where those involved are many and at the outset unknown, such as counterfeiters and infringers of broadcast rights.
In order to secure such an order, the plaintiff must show that it is likely to prevail at trial, that the activities of the defendants will cause irreparable harm, that the balance of convenience lies in granting such an order, that there is a reasonable likelihood that the defendants might destroy the evidence and that there are common questions of law or fact arising among the cases against the various defendants.
The quality of the plaintiff’s investigators, who will be key in obtaining the necessary information to justify the granting of the order, is thus vital.
JDOs (or ‘Ashok Kumar’ orders, Ashok Kumar being the Indian man-in-the-street equivalent of the American John Doe), as applied in the field of IP in recent times, are arguably an extension or variant of the Anton Piller order. In the landmark case Anton Piller v Manufacturing Processes, a UK court permitted the plaintiff to enter the premises of the defendant with an authorised officer to search and seize any articles that directly or indirectly infringed the plaintiff’s rights to ensure preservation of evidence that could potentially be destroyed by the infringer.
A JDO has a similar purpose but with an added element: the defendants whose premises are to be searched are unidentified, multiple in number and carrying on business independently of each other.
There is no express statutory provision for JDOs in Indian civil law, although criminal law envisages complaints and orders against unknown accused people, and there is a provision for Anton Piller-type orders in the Code of Civil Procedure, 1908, under which the court may allow local investigations for the purpose of elucidating a matter in dispute.
The JDO concept has been accepted and applied by Indian courts in anti-piracy actions involving multiple defendants; typically fly-by-night entities dealing in counterfeit products. JDOs are also often the norm in cases relating to infringement of broadcast rights for popular sporting events and the sanitisation of suspect markets prior to the release of a highly publicised or much anticipated movie or music album.
Procedurally, Anton Piller orders are granted by courts ex parte against John Does and these are executed against the unnamed defendants in civil raids by court-appointed officers called local commissioners. Such orders have to be granted by courts at the ex parte stage to avoid giving infringers a chance to destroy or remove the evidence from their premises.
The advantages of JDOs
Indian courts have witnessed a spate of John Doe cases over the years and these invariably concern IP and related rights. This form of order has given teeth to more staid civil enforcement remedies and quick relief for IP owners, especially film producers and broadcasting agencies, which face the problem of massive piracy of products with a short shelf life. A JDO order is thus a powerful and handy tool for the protection of ephemeral IP rights through timely and apposite enforcement.
Another significant advantage of a JDO is the flexibility it affords a plaintiff in an action to catch a large number of infringers, even if at the outset the plaintiff was aware of only a handful. The methods by which a JDO can be enforced vary, depending on the scope of the order passed by the court.
For instance, a JDO in a case of broadcasting rights will usually allow local commissioners to execute this “at any location” where the infringing activity is taking place. Afterwards, the plaintiff can ask the local commissioner to search and seize at additional premises within a defined window of time.
Meanwhile, in cases relating to pirated goods, the JDO may or may not prescribe a time period and, in the latter case, it is deemed to be for execution immediately upon the making of the order rather than at some time in the future. In such cases, a plaintiff may move an application to the court with particulars of the new entities that are demonstrably in the same class as the earlier John Does and obtain directions for a new round of local commissions. The court may then appoint the same local commissioners who executed the first set of JDOs or appoint new ones.
Getting the order
Thus far, there has been no detailed decision in a John Doe case that discusses its nuances and lays down guidelines and factors to be kept in mind when granting such orders. This is because JDOs are granted at an ex parte stage and more often than not the defendants do not contest the order and either settle quickly with the plaintiff or drop out of the proceedings, allowing these to proceed ex parte.
When considering a request for a JDO, Indian courts essentially apply the same standards as are used to decide whether to grant an ex parte ad interim injunction, with a further consideration of whether the circumstances justify the granting of wide powers to the court commissioner to search any number of premises where the infringing activity is suspected to be carried out. The factors to consider in whether John Doe order is justified are:
a) Whether the plaintiff has a strong prima facie case on its merits and is likely to succeed at trial;
b) Whether the activities of the defendants are causing or are likely to cause irreparable injury to the plaintiff which cannot be compensated monetarily;
c) Whether the balance of convenience lies in granting such an order;
d) Whether there is a reasonable likelihood that the defendant will destroy or tamper with the evidence; and
e) Whether the right to relief in respect of, or arising out of, the same act or transaction or series of acts or transactions is alleged to exist against such persons, whether jointly or severally and if separate suits were brought against such persons, any common question of law or fact would arise.
Normally, before approaching a court and seeking ex parte orders, a plaintiff ensures that its information about the nature and extent of infringement by the John Doe defendants is properly verified through the services of a professional and independent investigating agency. An affidavit of the investigator with facts, figures, photographs, etc, confirming the existence of infringing and unauthorised activities is placed on the court record with the complaint. The courts give a lot of credence to investigators’ affidavits in granting JDOs. Therefore the accuracy, reliability and integrity of information provided by the investigator is vital.
The local commissioners appointed by courts in JDOs are generally judicial officers or independent lawyers who are empowered to carry out the search and seizure at the premises of the known and unknown defendants.
Challenges
JDOs are wide in nature and are usually sought against a class of persons. While seeking such an order, the plaintiff has a high bar to vault to convince the court that all the John Doe defendants are linked or related in some way.
The objections that a plaintiff may encounter in cases involving numerous defendants or a class of defendant are:
a) The action is aimed at avoiding payment of the higher court fee that is applicable to separate actions;
b) ‘Forum shopping’—if the orders are sought to be enforced against John Does in different parts of the country;
c) Absence or remoteness of causality, connection or linkage between the defendants alleged to form a class;
d) Risk of misuse and improper implementation of orders which have a wide sweep; and
e) Risk of such orders being used to harass bona fide traders, suppress competition or force defendants to settle, etc.
A thorough investigation conducted prior to institution of the action plays a pivotal role in meeting these objections.
Enforcement
Indian courts often take an out-of-the-box approach to ensure that the ends of justice are met. A few examples are:
a) Local commissioners granted powers to visit any premises where they may have reasons to believe that counterfeit products are being stored/sold/offered for sale and seize such goods and serve the infringers with a complete set of papers;
b) Local commissioners granted powers to break open locks or seals if necessary;
c) Local commissioners granted police protection in suitable cases;
d) Courts passing orders to freeze the bank accounts or other movable assets of the infringers at fairly early stages of an action;
e) Orders customised for special circumstances, such as orders having validity for a certain period of time, orders having geographical restrictions, availing of a technical expert if the subject matter calls for this; and
f) Courts approving settlements where defendants agree to engage in social service, organise IP rights awareness campaigns and other positive IP-reinforcing barters.
An invaluable tool
New technologies invariably bring new challenges. As if the bricks-and-mortar hotbeds of piracy were not enough, infringement on the internet is notoriously tough to police. While there is criticism of JDOs in some quarters, largely on the grounds that they may breach the right of privacy, there is adequate justification for granting such orders given their effectiveness in combating piracy.
The concept of the JDO may be applied differently in different jurisdictions but it is universally relevant and significantly meets the demands to address ever-rising levels of piracy. In a jurisdiction such as India, which has a high level of piracy of IP rights, JDOs are an indispensable tool to bring infringers to book swiftly through a clean civil action rather than taking the criminal enforcement route.
There must be checks and balances in the implementation of any coercive measures, even those taken to pursue a legal objective, but the courts are in the best position to put in place the appropriate safeguards and maintain the necessary balance.
Binny Kalra is senior partner and head of litigation at Anand and Anand. She can be contacted at: binny@anandandanand.com
Achuthan Sreekuma is senior associate at Anand and Anand. He can be contacted at: achuthan@anandandanand.com
