Obligations of Online Intermediaries to act against content infringing Trademark, What Delhi HC held [Read order]

The Delhi High Court recently had occasion to reiterate the obligations cast on online intermediaries when it comes to acting against online content that infringes intellectual property rights..In this regard, Justice Pratibha M Singh noted that while online intermediaries may not perform an active role in the posting of infringing content, they would still be liable to pull down such content as and when it is brought to their notice. The order reads,.“Considering the provisions of the IT Act and Information Technology (Intermediaries Guidelines) Rules, 2011, platforms such as Facebook and Instagram, which claim to be intermediaries not performing any active role in the posting of such information by third party alleged infringers, have a duty only to take down the posts which are brought to their notice by the Plaintiff in terms of Section 79(3), by following due diligence. The said Section and the Guidelines thereunder have been interpreted by the Supreme Court in Shreya Singhal v Union of India (2015) 5 SCC 1 to mean that any information received by the platforms would be by means of a Court order.”.The case before the Court involved claims of trademark infringement by the owner of the mark ‘Da Milano’ (plaintiff). A suit had been instituted against online advertisements that were illegally using the Da Milano trademark. The trial court, in turn, had sought the personal presence of Facebook and Instagram in the matter..This prompted the intermediaries to approach the Delhi High Court seeking exemption from personal appearance before the trial court. Appearing for the two platforms, Senior Advocate Parag Tripathi also informed the High Court that the intermediaries had complied with the trial court’s interim order and that they were willing to take down infringing content if it is brought to their notice. The submission was made in response to the plaintiff’s request that it be allowed to informed the intermediaries of infringing content as and when it is posted. Facebook and Instagram further contended that there was no need to insist on their personal presence before the trial court, given that they did not play an active role in posting such content..While the High Court agreed that the two platforms do not play such an active role, it reiterated the observations made in the landmark case of Shreya Singhal v Union of India, when it comes to intermediary liability under Section 79(3) of the Information Technology Act, read with the relevant Intermediary Guidelines of 2011..Section 79 states that an online intermediary would not ordinarily be liable for third party content. However, sub-clause (3) of the provision lays down an exception, where an intermediary would be held liable for third party content if the same has been brought to its notice. Section 79(3) states that the general exemption from third party content liability would not be available to an intermediary if,.“ …(b) upon receiving actual knowledge, or on being notified by the appropriate Government or its agency that any information, data or communication link residing in or connected to a computer resource controlled by the intermediary is being used to commit the unlawful act, the intermediary fails to expeditiously remove or disable access to that material on that resource without vitiating the evidence in any manner.”.The Supreme Court in the Shreya Singhal case had commented on the ramifications of this provision thus:.“Section 79(3)(b) has to be read down to mean that the intermediary upon receiving actual knowledge that a court order has been passed asking it to expeditiously remove or disable access to certain material must then fail to expeditiously remove or disable access to that material. This is for the reason that otherwise it would be very difficult for intermediaries like Google, Facebook, etc. to act when millions of requests are made and the intermediary is then to judge as to which of such requests are legitimate and which are not. “.In view of these observations, the High Court directed Facebook and Instagram to take down infringing online content as and when the plaintiff informs them of the same..The Court also allowed the plea to exempt the two intermediaries from personal appearance before the trial court. Further, the plaintiff was granted liberty to move the trial court or avail other available legal remedies if the intermediaries do no comply with this order..Senior Advocate Parag Tripathi along with Advocates Richa Srivastava, Nayantara Narayan, Mishika Bajpai and Malikah Mehra appeared for Facebook and Instagram in the plea before the High Court. The plaintiff/respondent was represented by Advocates Vikas Khera, Vishal K Sharma and Surabhi..[Read Order]