The contemporary world has been fortunate enough to witness the advent and advancement of various scientific technologies. These technologies owe their origin to heterogeneous inventions in the field of computer science. However, numerous cons are associated with the existence of this mechanization. Every coin has two sides, similarly, evolution and inventions in the field of science and technology have led to the widespread phenomenon of intellectual property rights infringement. Identification of these infringers, who are spread across various locations and live all around the globe, has become a herculean task. In addition to this, the thriving internet and digital media industry, which has flourished dramatically over the last decade, has enormously affected the rights of IP owners in different quarters of work like cinematography.
In the era of LPG i.e. Liberalization, Privatization, and Globalization, the most important asset is intellectual property which has to be protected. What makes digital piracy so vulnerable is the inability of the IP right holders to identify the infringers. To avoid piracy and protect the IP rights holders, John Doe orders have been introduced as a new force for justice. For combating infringement of rights, the media and television have warmly embraced this change entreating John Doe orders against internet service providers (ISPs), various cable operators, and the illegal unlicensed distributors. The idea behind John Doe order is to give protection when the infringers are unknown, so as to prevent revenue loss and destruction of infringing evidence. John Doe orders are recognized in various countries like UK, Canada, the US, Australia including India.
John Doe order
A John Doe order is a kind of injunction accorded by the courts where the state of affairs is such that an anonymous person is violating the IP rights of the IP rights owner and cannot be discerned at the time of filing of the suit. It protects the right holders by enabling them to serve notice and take actions against the infringers. The plaintiff (right holder) also has the right to search the premises and seize evidence of an infringement. The person with an apprehension that there is the likelihood of his work being pirated or his right being infringed by an unidentifiable person is entitled to proposition the court for issuance of John Doe order. John Doe orders are awarded ex-parte owing to the fact that the defendant(s) is unidentifiable, and the time span is fleeting.
John Doe was first used at the time of the rule under England’s King Edward III’s reign, where the orders were used in cases of unidentified defendants. The first case where John Doe order was formally used in the English case of EMI Records Ltd vs. Kudhail, a 1983 case involving copyright infringement of certain cassette tapes by street traders whereby John Doe order was passed against unidentified persons who belonged to an identifiable class and bore the pirate brand name ‘Oak Records’.
In India, the John Doe/Ashok Kumar order was first passed in Taj Television vs. Rajan Mandal where the plaintiff was the authorized registered broadcaster of the Soccer World Cup, 2002 and had suffered revenue loss due to unauthorized and unlicensed transmission of its channel, Ten Sports by certain unlicensed cable operators. The Court was finding it difficult to identify any particular unlicensed cable operators out of thousands of cable operators in India. Hence, the Court historically passed John Doe/Ashok Kumar order against unidentified cable operators.
Conditions to pass John Doe order
In order to pass John Doe orders, the Indian courts rely on Order 39, rules 1 and 2 of the Civil Procedure Code, 1908 (CPC), read with S. 151 of the CPC and the provisions of the Specific Relief Act, 1963 related to permanent injunctions. There are certain conditions that have to be fulfilled in order to convince the Court to pass John Doe order. Some of the conditions, as observed in different judicial pronouncements are:
• The plaintiff(s) must establish a prima facie case.
• Additionally, the plaintiff(s) must establish that if the John Doe order is not passed, he/she will suffer actual/potential damage or irreparable losses.
• The balance of convenience should be in favor of the plaintiff.
John Doe/Ashok Kumar order – Judicial trend in India
John Doe orders or Ashok Kumar orders are ex parte injunctions against unknown or anonymous offenders. These orders are mostly passed in proceedings relating to copyright and trademark infringement, online piracy, personal privacy, and confidential information. In India, the name Ashok Kumar is used for unknown defendants has gained legal acceptance by various courts.
In the famous case of ESPN Software vs. Tudu Enterprises, ESPN Software Pvt. Ltd. claimed that their exclusive rights to broadcast the 2011 Cricket World Cup were being infringed by unauthorized cable operators who were illegally capturing sports-related channels of the plaintiff and were illegally transmitting them despite having no distribution right or legal authority. The Court, holding that the unauthorized transmission by defendants violated S. 37(3) of Copyrights Act, 1957, passed an injunction order against un-named and undisclosed persons who may have committed a breach of the rights of the Plaintiff by resorting to illegal tapping of DTH connections by linking the same to the distribution networks.
Also, in the case of Ardath Tobacco Company Ltd. vs. Mr. Munna Bhai and Ors, an order was passed against unidentified defendants who were restrained from manufacturing, selling, stocking, or dealing in cigarettes under a label, carton, or packaging material deceptively similar to the label, carton and packaging material of the STATE EXPRESS 555 of the plaintiff.
In the case of Tata Sky Ltd. (Appellants) vs. Nible TV Inc. and Ors., similar John Doe orders were passed injuncting the known and un-known infringers.
The test of confusion and deception in order to prove the case of passing off has been very well discussed in the case of Laxmikant vs. Patel vs. Chetanbhat Shah and Anr., wherein the Supreme Court while considering a plea of passing off and grant of ad interim injunction held in no uncertain terms that a person may sell his goods or deliver his services under a trading name or style which, with the passage of time, may acquire a reputation or goodwill and may become a property to be protected by the Courts. It was held that a competitor initiating sale of goods or services in the same name or by imitating that name causes injury to the business of one who has the property in that name. It was held that honesty and fair play are and ought to be the basic policy in the world of business and when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else, it results in confusion and has the propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.
The Supreme Court further held that where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently.
Nowadays, there are relentless news pieces regarding movies and TV shows being leaked online for download within few hours of their release. Sometimes, the scripts and movies are leaked for downloading purposes before they are even released. In the case of the Games of Thrones series, the producers faced a ransom threat from the hackers who threatened to release the show online if the ransom is not provided to them. To curb these instances of infringement, John Doe orders are being used widely by the producers of movies/ series to restrain unauthorized production and copying of their movies/ series, before as well as after the release of the movie/series. The Courts have directed the internet service providers to block websites that host movies without authorization, as in the case of Great Grand Masti, Gangs of Wasseypur, and countless other movies.
John Doe orders were introduced to maintain a balance between IP rights owners and unknown infringers. In India, it has been successfully used as a shield that provides a precautionary and quick remedy to the IP rights owners as it is enforceable against the infringers when an infringement has been done and the former is unknown of the identity of the latter. In contemporary times, John Doe order has an expanding reach, thus making it an efficient preventive mechanism against the unknown infringers.
The author is a Corporate and M&A lawyer at Sarin Partners Advocates & Legal Consultants with focus on Technology Media & Telecommunications (TMT) practice. The views in the article should not be construed as legal advice. Please contact the author for any clarification.
  F.S.R. 36
  F.S.R 24
 2009(39) PTC 208 (Del)
 CS(OS) No. 1471 of 2014 & IA No. 9711 of 2014 Decided on April 4, 2016 Delhi High Court
 (2002) 3 SCC 65
 Balaji Motion Pictures Ltd. v. Bharat Sanchar Nigam Ltd. (2016) 4 Bom CR 485
 Viacom 18 Motion Pictures v. Sonali Cable Vision Pvt. Ltd. and Ors. 2012 SCC OnLine Bom 1968