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Ashok Kumar, the John Doe of India

By – Ramesh Vaidyanathan & Nidhi Tandon

In suits involving infringement of intellectual property (IP), it is practically impossible to track down every infringing party. Parties try to obtain a blanket cease and desist injunction known as a ‘John Doe order’ or ‘Ashok Kumar order’ against anonymous persons. Such orders are regularly passed by various High Courts in India. A recent judgment of the Delhi High Court in Dabur India Limited V/s Ashok Kumar/John Doe & Others happens to be one of the latest ones.

What is a John Doe Order?

John Doe Orders are founded on the premise that the mystery of a defendant’s identity should not be an obstacle to the pursuit of justice. The Oxford Dictionary defines “John Doe” as an “anonymous party”.

These are cease and desist orders passed by a court of law in cases where an unknown person may commit a breach or has infringed the rights of the plaintiff, and whose identity is unknown at the time of filing the suit. To avoid delay, the court names the defendant as “John Doe” until such time that the defendant is identified. Once the defendant is identified, it is replaced with the real name of the defendant. These orders prohibit ongoing or potential infringing activities of unidentified people.

Introduction of John Doe in India

Indian Courts have since long granted interim orders under Order 39 Rules 1 & 2 of the Code of Civil Procedure, 1908 (“CPC”) to prevent possible injury. However, on account of delay by courts in granting interim order, much damage is caused to the plaintiffs. For example, when a movie is pirated by known as well as unknown people, the producers suffer loss. Since movies have limited shelf life, producers cannot wait until the identity of all the infringers is ascertained, before moving court for interim protection. In order to tackle such issues andprovide immediate and effective redress, the common law concept of John Doe Orders aka ‘Ashok Kumar Orders’ has been adopted by courts in India.

The Delhi High Court passed its very first Ashok Kumar Order in Taj Television v Rajan Mandal[1] to prevent illegal broadcast of the FIFA World Cup 2002. The case pertained to unauthorized transmission of the channel (Ten Sports) by unlicensed cable operators without entering into agreements with broadcasting license holders. The Court recognized the unique nature of cable piracy. Having to wait and locate the errant cable operators would have led to huge losses for the license holder. The Court passed an Ashok Kumar Order that helped curb what might have been a total destruction of the plaintiff’s IP rights. After this, a series of similar orders were passed.

Importance of Ashok Kumar:

Media: Most of the films are made available on different web portals on the day of their release, apart from other platforms like CDs, DVDs, Blu-ray discs, VCDs, or on cable TV through various local cable operators or uploaded on the internet for download by the general public without a license. A single pirated DVD sold by peddlers becomes a palate for uncontrolled piracy. The defendants remain shrouded in mystery, their illegal act costing a fortune to filmmakers. In order to combat this menace, preventive orders such as these have been growing.

This template for Bollywood movies began with the case of UTV Software Communications Limited v. Home Cable Network Ltd. and Ors[2].where producers of ‘Thank you’ and ‘7 khoon maaf’ obtained Ashok Kumar Order against the cable operators that telecasted pirated versions of the films. While a few errant cable operators could be identified, many could not be. Since then, several other Bollywood producers sought similar orders including the producers of ‘Udta Punjab’ and ‘Radhe Radhe’. Similar orders have also been passed against various ISPs directing them to block websites exhibiting infringing content.

Trademarks: John Doe orders are the only remedy to counter large numbers of anonymous counterfeiters. Dabur India filed a trademark infringement suit before the Delhi High Court seeking similar orders with respect to infringement of its various IPs, including the trademark ‘DABUR’, copyright in the labels and packaging of its various products, passing off and unfair competition. Dabur also contended that there are several domain names such as www.daburdistributor.com, www.daburdistributorships.in using its name and masquerading as Dabur and inviting people to register in order to be appointed as authorized dealers of Dabur products for a fee. Dabur sought a John Doe Order as the names or other details of those operating such websites were unclear and protected due to privacy concerns, i.e., the information of the domain registrant is masked by enabling the privacy protection feature.

Conclusion

The usage of John Doe Orders alias Ashok Kumar Orders has brought immense relief to the holders of IP rights in India. The question that remains is if the unidentified defendants are unaware of such orders and continue with the infringement, how effective is this remedy? An effective mechanism needs to be in place to address the challenges in the implementation of such orders.

[1] 2003 FSR (22) 407

[2] CS(OS) No. 821/2011

 

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