Pirate sites and services can be a real challenge for rightsholders to deal with. In India, however, recent court orders have proven to be quite effective.
Indian courts have issued pirate site blocking orders for over a decade. Initially, these orders were relatively basic, requiring local Internet providers to block specific domain names.
These regular injunctions were only partially effective. After the High Court granted a blocking injunction, pirate sites would often switch to new domains, requiring rightsholders to return to court to get these blocked as well.
Expanding Site Blocking Injunctions
To deal with this problem, the dynamic injunction was invented. These orders were issued to block pirate sites more effectively. ISPs were not only required to block original domains but also any clones and mirror sites that surfaced after the case was finalized.
When dynamic injunctions were no longer sufficient to slay the piracy hydra, rightsholders suggested upgrading the Indian blocking regime with Dynamic++ injunctions. These orders also protect copyrighted content that has yet to be registered.
In addition, Dynamic++ orders and their ‘superlative‘ variant also include domain name registrars as defendants. This includes blocking orders targeted at U.S. domain registrars, much to the delight of U.S. rightsholders.
Delhi High Court Slams the Brakes
The expanding scope of these orders has not gone unquestioned. In a recent ruling in a trademark case, the Delhi High Court has put a hard limit on the addition of new domain names, creating a strong divergence with earlier dynamic site blocking orders that were previously issued by the same High Court.
The case itself started as a routine trademark dispute. Mahindra and Mahindra, one of India’s largest conglomerates, sued a string of packers and movers businesses operating under domain names that incorporated the “MAHINDRA” mark.
The court ordered GoDaddy and other registrars to block five infringing domains, directed India’s telecoms regulator to instruct ISPs to do the same, and required Google to delist the relevant results. All parties complied with this order.
When the case reached its conclusion earlier this year, Mahindra requested to make the order future-proof. The company asked the court to allow a court official to add newly discovered mirror and redirect domains to the blocking order on an ongoing basis, without the need to return to a judge each time.
To back up this request, Mahindra pointed to two Delhi High Court rulings that implemented the same procedure: a 2019 decision against 1337x, The Pirate Bay, and others, and a 2023 ruling targeting cyberlocker sites including Mixdrop.
The same procedure had been used routinely in piracy cases ever since, so the company did not expect much pushback. However, after reviewing the matter, Justice Tushar Rao Gedela said no.
Case Closed
The reason for the denial comes down to a straightforward point about how courts work. Once a judge signs a final ruling and closes a case, the court’s authority over that matter ends. It can still fix typos and calculation errors, but it cannot reopen proceedings to add new defendants or extend the reach of its orders.
That principle applies directly here. Once the case was closed, the blocking order against the original five domains became part of the final judgment.
Additionally, Justice Gedela said that it is “beyond comprehension” that a court officer could add new parties and extend dynamic injunctions, even when the judge no longer has the power to do so.
According to Tejaswini Kaushal, analyst at the Indian intellectual property publication SpicyIP, rightsholders can still request injunctions under the new ruling. However, they will have to file a new proceeding to block additional domains after a case is closed.
“This means that practitioners will now have to rely on execution proceedings or initiate fresh litigation to address new instances of infringement,” Kaushal writes.
The ruling effectively creates a divergence between judges of the same court. A rights holder appearing before a different Delhi HC judge could receive the opposite answer today. The question will remain unsettled until a higher bench resolves it.
Legislature, Step In
Justice Gedela did not leave the matter there. The judgment calls on India’s Parliament to update is civil procedure rules and regulations governing online intermediaries, to create a proper legal basis for post-judgment blocking orders.
“There is an urgent and alarming need for the Central Government and the Legislature to act in haste to bring about radical changes,” the judgment states, noting that rightsholders should not be powerless against new infringers who simply weren’t part of the original proceedings.
The ruling effectively means that infringing domains names that appear after a case closes will now require fresh legal action, at least until a higher court settles the question.
This significantly changes the game for film studios, Netflix, and sports rightsholders who repeatedly relied on post-judgment expansions. They can still get these additional blockades by going back to court, but that means more time, and more money, to achieve the same result.
For now, the ball is in Parliament’s court.
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A copy of the judgment in Mahindra and Mahindra Limited & Anr. v. Diksha Sharma Proprietor of Mahindra Packers Movers & Ors. (CS(COMM) 209/2023) is available here.
