What happens when law meets the internet’s favorite trick, shape-shifting? One day it’s a website, the next day it’s ten mirror sites, each wearing a slightly different disguise. That tension between technological agility and legal finality came into focus in a recent judgment of the Delhi High Court in Mahindra and Mahindra Ltd v. Diksha Sharma and Others.
The dispute itself was fairly straightforward. Mahindra & Mahindra filed a suit against the defendant, a mover and packers’ company, for using its well-known mark of “MAHINDRA” across domain names. By its order dated April 12, 2023, the Court granted an injunction directing intermediaries to block the infringing domain names along with their alphanumeric variations. Then, by a subsequent interim order on 2 May 2024, the Court went a step further and permitted Mahindra to implead newly discovered mirror or redirect variants of those domain names and for the Joint Registrar to extend the injunction to such infringing mirror domains. This seemed like a workable model of a dynamic injunction which was flexible, responsive and capable of keeping pace with online infringement.
When the matter reached final disposal, the Court found itself in a conundrum. It first recognised that the well-established procedural doctrine of a court becoming functus officio after pronouncing its judgment [Order XX, Code of Civil Procedure, 1908] meant that it was hamstrung in continuing a dynamic injunction. Wearing those shackles, the Court stated that the Joint Registrar, being an officer of the court, could not exercise the power of extending injunctions to mirror sites since the Court itself no longer possessed such a power after pronouncement of its judgment. For that reason, the Court pulled back from the dynamic injunction which it had granted at the interim stage and despite decreeing the case in favour of Mahindra, held that such a mechanism could not continue beyond the stage of final judgment.
Recognising that the decree holder was being put in an inequitable position despite having succeeded, the Court urged the legislature to “act in haste to bring about radical changes in CPC as also the IT Rules.”
This decision underscores a striking legal paradox between the principles of traditional infringement law and the realities of the online world. Traditional infringement law developed in an era where the replication of original content was presumably tougher as compared to replication in the online world. Once courts injuncted infringing material, it was not easy for infringers to introduce minor alterations and continue violating intellectual property rights. In contrast, the internet facilitates rapid, inexpensive and near-effortless replication, often accompanied by constant modifications.
It is in this context that the dynamic injunction emerged as a potentially effective tool to restrain online infringement. They enabled right holders to seek the blocking of newly created infringing websites based on an existing injunction order. Indeed, the Singapore High Court, in a copyright infringement suit, had explained the function of a dynamic injunction by stating that: “the dynamic injunction merely blocks new means of accessing the same infringing websites, rather than blocking new infringing websites that have not been included in the main injunction.”
However, as noted by the Court in the Mahindra case, there exist inherent limitations within the Indian legal framework that constrain the grant of such relief in a rapidly evolving digital landscape. While the courts have previously acknowledged the practical necessity of dynamic injunctions, the procedural constraints under Order XX of CPC make it difficult to implead new parties once a judgment has been rendered. This creates a procedural hurdle for right holders who, even after successfully concluding litigation, continue to face online infringement of their rights through mirror or redirect domain names.
While the Court in the Mahindra case urged the legislature to consider amendments to the CPC, any such attempt to modify the existing procedural framework to accommodate dynamic injunctions is likely to be complicated. This is because a foundational principle of our legal system is that no party should be deprived of the opportunity to present its defence. When an injunction is extended to new persons, they are impleaded as defendants and given an opportunity to meet the case that has been put against them. As a result, mirror or redirect websites are not only afforded an opportunity to challenge the injunction before the court, but also be enjoined in the trial. That ability would be lost in the event a dynamic injunction is continued post trial because there would be no opportunity of a full defence.
One possible way to address the issue of proliferation of mirror or redirect websites is to impose significant costs on infringing websites where a court has already issued an injunction protecting the right holder. A significant costs order would hammer down on digital whack-a-moles, acting as a strong deterrent by preventing hydra heads from continually emerging as infringers.
Nakul Dewan is a Senior Advocate and King’s Counsel.