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SSRN Id2224153 PDF
SSRN Id2224153 PDF
Anton Piller KG v. Manufacturing Processes Ltd., [1976] 1 All E.R. 55(C.A.), Lord Denning M.R., Ormrod and Shaw L.JJ. It is
to be noted, however, according to the English Court of Appeals decision in that case, that the ancestry of such orders can be
traced back much further, to the decision of the House of Lords in United Company of Merchants of England, Trading to the
East Indies v. Kynaston (1821), 3 Bli. (O.S.) 153 (H.L.), Redesdale L.J
2
With regard to this point the Court relied on the landmark civil liberties judgment in the case of Entick v. Carrington [1765]
EWHC KB J98.
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forcefully enter the premises of the Defendant.3 Keeping in mind the extraordinary nature of remedy,
Lord Denning stated in no uncertain terms that Defendants could resist entry of the Plaintiff into
premises, with the caveat that such resistance is bound to be treated as contempt of Court and
accordingly punished.4
The grant of such orders were justified only in instances where the Plaintiffs demonstrated a strong prima
facie case of infringement and where there was the possibility of the Defendant destroying the evidence
that was required by the Plaintiff to establish its case at trial. The first such order was passed in the case of
Taj Television v. Rajan Mandal5 where the Plaintiffs owned an Indian sports-broadcasting channel and
also the Indian broadcasting rights for the Football World Cup organized by FIFA. The Plaintiff had filed
this law-suit against 6 known cable-operators and another 14 unknown cable-operators and had sought
injunctions against not only the 20 cable-operators but also against all other un-named cable-operators
who maybe violating the broadcast rights of the Defendants. In this particular case, the Plaintiff had tried
to convince the Court that such an exceptional request had to be accepted since sporting events like the
FIFA World Cup are time-bound events, wherein it was not possible to identify each and every possible
infringer before approaching the Court and that the Plaintiffs would face an irreparable loss if such orders
were not granted because cable-operators could easily destroy the infringing evidence. The Plaintiff then
attempted to convince the Court that it could frame such an order under its inherent power available under
Section 151 of the Civil Procedure Code, 19086 and also pointed the Courts attention to several
judgments in other common law countries which permitted the passing of such orders against un-named
Defendants.7 The Judge convinced by the arguments of the plaintiff issued interim injunctions under
Order 39 of the CPC (i.e. prima facie case, balance of convenience and irreparable loss proved) read
along with the inherent powers of a Court under Section 151 of the CPC, against all named and un-named
Defendants, who may be violating the broadcast reproduction rights of the Plaintiffs, under Section 37 of
the Copyright Act, 1957. In order to ensure that its orders were complied with the Judge also appointed a
judicial officer as a Commissioner8 with instructions to the local police officers that they were to assist
the Commissioner in seizing any broadcasting equipment that was being used to violate the Courts order.
In ESPN Software India Pvt. Ltd. v. Tudu Enterprise and Ors.,9 it was observed that John Doe orders are a
common feature in the courts of Canada, America, England, Australia and in some other countries. The
judicial systems of all these countries have basic similarity with our judicial system. Therefore looking at
3
In support of this argument, Lord Denning cites the case of East India Company v. Kynaston, (1821) 3 Bligh, 153 where it was
held that The arguments urged for the Appellants at the Bar are founded upon the supposition that the Court has directed a
forcible inspection. This is an erroneous view of the case. The order is to permit; and if the East India Company should refuse to
permit inspection, they will be guilty of contempt of the Court. ... It is an order operating on the person requiring the defendants
to permit inspection, not giving authority of force, or to break open the doors of their warehouse
4
Id.
5
CS (OS) No. 1072 of 2002 before the High Court of Delhi.
6
Sec.151. Saving of inherent powers of Court Nothing in this Code shall be deemed to limit or otherwise affect the inherent
power of the Court to make such orders as may be necessary for the ends of justice or to prevent abuse of the process of the
Court.
7
Id.
8
The Code of Civil Procedure, 1908 allowed for the appointment of Commissioners under Order 26 and also the preservation
of evidence under Order 39 Rule 7.
9
CS (OS) No. 384 of 2011 before the High Court of Delhi. The same Plaintiff had filed a similar suit in the year 2006: ESPN
Software India Pvt. Ltd. v. Mr. Arabinda Maharan & Anr.
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the extraordinary facts and circumstances of the case in the interest of justice, the courts in India would
also be justified in passing the John Doe orders.
In the absence of a comprehensive law and lack of precedents, guidance has been taken from the foreign
courts in evaluating these orders and building a strong basis for future reference of Indian Courts.
BASIC CONDITIONS FOR GRANT OF JOHN DOE AND ANTON PILLER ORDERS
In arriving at its original decision to grant an Anton Piller order, the English Court of Appeal set forth
three specific preconditions for granting an order:10
1. There must be an extremely strong prima facie case.
2. The damage, potential or actual, must be very serious for the applicant.
3. There must be clear evidence that the defendants have in their possession incriminating documents or
things, and that there is a real possibility that they may destroy such material before any application can
be made.
Each of these conditions shall be now taken into consideration.
10
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Widespread Infringement- In Club Monaco Inc., the Trial Division reaffirmed the need for the plaintiff to
show infringement on a large scale.14
Specificity of infringement- In Indian Performing Right v. Mr. Badal Dhar Chowdhry15, the Court noted
that it ought not to issue an injunction which is vague or indefinite. Breach of injunction has serious
consequences for the violator. However, before the Defendant can be so injuncted, the Defendant ought to
be made aware of the precise act which he is prohibited from doing. A vague injunction can be an abuse
of the process of the court and such a vague and general injunction of anticipatory nature can never be
granted.
Thus, the plaintiff must provide in order for the Court to grant an ex-parte injunction:
(a) the valid, registered trademark in which the infringement is alleged;
(b) the anticipated source based on prior experience of infringement;
(c) limited steps which can be taken by the plaintiff to enforce the injunction.
Club Monaco Inc. v. Woody World Discounts (1999), 2 C.P.R. (4th) 436 (F.C.T.D.), Pelletier J.
CS (OS) 1014/2004 before the High Court of Delhi.
16
CS (OS) No. 1724 of 2011 before the High Court of Delhi.
17
Oakley, Inc. v. Jane Doe, [2000] F.C.J. no. 1388, at paras. 17-18 and 20 (F.C.T.D.), Pelletier J.
18
Chin-Can Communication Corporation et al. v. Chinese Video Centre Ltd. et al. (1983), 70 C.P.R. (2d) 184, at 188 (F.C.T.D.),
Addy J.
15
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needed to counter the threat of the John Does have to be evaluated and brought into reality. The available
details should be clearly evaluated and enquired about and the steps towards protection of your data have
to be taken quickly and with diligence.
CABLE OPERATORS
In UTV Software Communications Limited v Home Cable Network Ltd. and Ors.,21 The plaintiff urged
that the defendants were of unknown identities who would without authorization illegally telecast pirated
version of the plaintiffs films by their network. The Court thus granted an injunction to prevent the
19
See generally, G. F. Nelson, Anton Piller order Equitys commando remedy against illicit traders & Ors. Criminal Law
Journal 3 (July 1993) (This article notes how John Doe orders are required against Defendants such as street side vendors since
they often vanish without a trace.)
20
CS (OS) 141/2004, 2009 (39)PTC 208 (Del.)
21
CS (OS) No.821/2011 before the High Court of Delhi.
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broadcast of not only the plaintiffs movie 7 Khoon Maaf but also preemptively prevent the broadcast of
the plaintiffs upcoming movie Thank You.
In Satellite Singapore PTE Ltd. v. Star Cable Network & others22 also the Court ordered that any
person/organization/body who was indulging in the act of piracy of the signal of the Appellant and/or in
which the Appellant has the exclusive right is also prohibited/injuncted from distributing or broadcasting
the said signal/programme of the Appellant qua the IPL Cricket Tournament. A Commission was also
ordered to be executed to visit the premises of the Respondent and/or any other during the hours IPL
matches were being telecast live and seize the receiving and transmitting devices, if it was found that the
latter had been downloading Sony Set Max channel signal without proper authorization.
PUBLISHERS
In Bloomsbury Publishing Plc, JK Rowling v. Newsgroup Newspapers Limited & Ors.,23 a John doe
order was issued in relation to the book Harry Potter and the Order of Phoenix that prohibited anyone
who came into possession of all or part of the book from disclosing it or any information in it to any third
party, and required immediate delivery of the book or any copies of it to the publisher. In this case, The
Sun, the Daily Mail and The Mirror had received phone calls from someone offering for sale chapters of
the unpublished book asking for 25,000 for each chapter. A John Doe order was thus issued to prevent
disclosure of the contents of the book. A similar order was also issued for Harry Potter and the HalfBlood Prince.
WEBSITE OPERATORS/ISP
Website blocking is addressed by the Information Technology (Procedure and Safeguards for Blocking
for Access of Information by Public) Rules, 2009 which authorizes the Department of Information &
Technology (DIT) to block websites and confers investigation powers for reasons connected with national
security or public order or incitement of any unlawful activity as laid down in Section 69A of the IT Act.
Additionally, the court exercising its inherent powers under Section 151 CPC may grant any relief it
deems fit in order to protect proprietary interests of plaintiffs from any irreparable harm, including
blocking of websites.
Blocking of sites directly affects individuals right to freedom of speech and expression under Article
19(1)(a). Logical corollary would mean that any denial of access should fall within the reasonable
restrictions specified under Article 19(2). A John Doe order to block a website falls within reasonable
restrictions because refusal to do so would be a contempt of court, a ground under Article 19(2). Caveat
here is that the right can be taken away only under the authority of and procedure established by the law.
Therefore, unless there is an express direction from the Court or the DIT, the ISPs are not bound to block
any internet source. A John Doe order only permits a copyright owner to seek action against any errant
website by the ISPs upon authorization of the DIT and not to bypass the authority under the law.
22
23
FAO (OS) No. 211 of 2010 before the High Court of Delhi.
HC 03 C01725 dated 23rd May, 2003
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A John Doe order was passed in favour of Reliance Communications restraining websites, cable operators
and Internet Service Providers (ISPs) illegally screening the film Bodyguard.24
An action was brought by members of the Motion Picture Association of America (MPAA) against
British Telecom (BT), UKs largest ISP, Twentieth Century Fox Film Corporation and Others v British
Telecommunications Plc.25 The application for an injunction to block access to Newzbin2 was made by
the MPAA under section 97A of the UK Copyright, Designs and Patents Act 1988 which provides that a
High Court has the power to grant an injunction against a service provider, where that service provider
has actual knowledge of another person using their service to infringe copyright. For actual knowledge
to be shown, the service provider should have received a notice with the details of the infringement in
question. Mr. Justice Arnold in his judgment showed his full conviction that BT had full knowledge of
other persons using its service to infringe copyright and hence granted an injunction in favour of the right
holders.
John Doe can use the Internet's widespread reach to inflict serious harm on a corporation. A cybersmear
lawsuit may alert the public to the falsity of certain Internet statements. Credit Suisse First Boston sued
ten John Does and one named defendant in the Southern District of New York in July 2000. Credit Suisse
alleged that certain Internet postings concerning the integrity of the investment bank and one of its
research analysts were false and defamatory and claimed that the postings could potentially harm its
business.26 The bank sought one million dollars in damages and an order to prohibit further defamatory
postings. Credit Suisse negotiated a non-monetary settlement agreement in which the named defendant
agreed not to make further false statements about the company or its analyst. "
Lucent Technology's stock price fell 3.6% the day after a false Internet press release stated that the
company expected an earnings shortfall. This illustrates the potential impact of false Internet postings
and indicates that companies have an interest in protecting the integrity of information posted on Internet
financial boards.27
COUNTERFEIT IMPORTERS
The Canadian Federal Court plays an important role in redressing the Plaintiffs costs of litigation and
understanding the gravity of piracy and counterfeiting in Canada. A Trial Court Judge has gone to the
extent of issuing a judgment in the amount of C$1million against an importer of counterfeit Polo Ralph
Lauren garments.28 This was the single largest award ever granted in counterfeit litigation in Canada, and
it contained an explicit recognition of the need to reinforce and convey a powerful deterrent to
defendants.
24
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The Polo litigation illustrates the new degree of precision that counterfeiters use in establishing the socalled provenance of fake products. In a pattern that has appeared in a number of import schemes, the
Canadian distributor received multiple layers of paperwork, purporting to authenticate the garments,
including a fake purchase order addressed to Polos Hong Kong licensee and a fake letter of
authentication releasing the shipment for sale into North America: remarkably convincing documents
created at a keyboard far from Hong Kong. The judgment stands as a warning to importers, who have
been too willing to accept fabricated authentication in order to turn a quick profit for products priced at
obviously counterfeit levels.
PROCEDURE TO BE FOLLOWED
JURISDICTION OF THE SUIT
Section 62 of the Copyright Act, 1957 and Section 134 of the Trademarks Act, 1999 both allow for the
copyright owner and trade mark owner, respectively, to sue before the Court within whose jurisdiction
these companies or persons are residing or carrying on business. In case of Companies having various
offices in the country, the application of the explanation29 to Section 20 of the Civil Procedure Code is
required.
The first judgment on this point was by a Single Judge in the case of Indian Performing Rights Society
Ltd. v. Sanjay Dalia.30The Plaintiff, a copyright society registered under the Copyright Act, 1957, with its
registered/principal office in Bombay, had filed a copyright infringement suit before the Delhi High
Court. The Plaintiff sought to establish jurisdiction of the Delhi High Court under Section 62since it had a
branch office within the jurisdiction of the Court and thus averred that it was carrying on business, in
terms of Section 62, within the jurisdiction of the Delhi High Court. The Defendant however sought to
contest the jurisdiction of the Delhi High Court since both the Plaintiff and the Defendant had their
registered/principal offices in Bombay and the Defendant had no business or offices within the
jurisdiction of the Delhi High Court. The Court opined that the aim of Section 62 (2) is to remove the
fetter and expand the scope of Section 20 CPC by extending the jurisdiction with reference to not only the
Defendant but also the Plaintiff. The word corporation may be a Plaintiff or a Defendant. This decision
was however appealed before the division bench of the Delhi HC where it was dismissed. Presently, it is
pending before the Supreme Court.
INVESTIGATION
The modus operandi, is as explained in one of the orders of the Delhi High Court, is to sue the Defendant
company on the basis of an investigators report outlining the suspicions of the investigator.31 The
investigator takes into consideration all the material facts available to him as well as all the information
29
A corporation shall be deemed to carry on business at its sole or principal office in India or, in respect of any cause of action
arising at any place where it has also a subordinate office, at such place.
30
MIPR 2007 (3) 204
31
See generally, Microsoft Corporation & Ors. v. Y. Parthasarathy & Ors. CS(OS) No. 875 of 2011
before the High Court of Delhi
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implied can be collected. The investigators report is used to establish a prima facie case before the
High Court, which if convinced of the same, the Court passes an ex parte interim injunction order
restraining the Defendant from infringing the Plaintiffs copyright.
REVIEW OF EXECUTION
The motion for review of an execution of the order must be supported in court by a full report from the
supervising solicitor of the execution or executions to which it relates, including occasions on which the
identity of the defendant is not ascertained. The report must include a description of all the goods,
equipment and records seized, when and from whom they were seized. The most effective and efficient
way of providing such, in many cases, will be by photographs coupled with an inventory.35
COSTS INCURRED
Currently, plaintiffs in infringement proceedings recover somewhere between 40 and 80 per cent of their
costs as concluded by the Business Software association of Australia.
DAMAGES
32
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In the US, statutory damages per infringement range from $500 to $20 000 in the case of innocent
infringement, and up to $100 000 in cases of intentional infringement. 36The Canadian scheme, which
commenced on 1 October 1999, allows a plaintiff to elect to receive a single amount for all infringements
in the proceedings. The statutory amount is from $500 to $20 000 in the case of intentional infringement,
and generally from $200 to $500 in the case of innocent infringement.37
In cases where the quantum of damages is contested by a defendant, the Trial Division has specifically
mentioned that it will determine the quantum on the basis of the evidence before it. The courts have, for
example, held that the license fee approach is not always an appropriate way to calculate compensatory
damages.38
BIASED INVESTIGATION
The investigators, who had filed affidavits to establish a prima facie case for the Plaintiffs, were not
independent but in fact employees of the law firms who represent the software companies in the law
suits.43
SEALING OF HARD-DISKS
The Anton Piller orders allowed the Plaintiffs to seal the hard-discs of the computers of the alleged
infringer-Defendant which contained the infringing software. In this case, the Court criticized this
practice of allowing for the sealing of hard-discs since the effect of such an order would be to shut
down the entire business of a company which was using pirated software to run an otherwise legitimate
36
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business establishment.44 In one of the cases,45 the Court ordered the unsealing of the computers after 15
months; this resulted in the business coming to a grinding halt and losses being sustained.
44
Ibid.
CS (OS) No. 2403 of 2007 before the High Court of Delhi.
46
Ibid.
47
Autodesk v. Mr. Anish Singhal, CS (OS) No. 2403 of 2007 before the High Court of Delhi.
48
Part B, Rule 2, Chapter 10 Delhi High Court Rules, 1966.
(available at: http:// delhihighcourt.nic.in/writereaddata/upload/CourtRules/CourtRuleFile_VS9KZQS0.PDF)
49
CS (OS) No. 2375 of 2007.
50
Padam Sen and Anr. v. The State of U.P, AIR 1961 SC 218
51
Louis Vuitton Malletier S.A. v. Bags OFun Inc., [2000] F.C.J. no. 1432 (F.C.T.D.), Pelletier J.
45
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The legal requirements for a finding of contempt were briefly phrased by the Trial Division in Nintendo
of America Inc. v. 131865 Canada Inc.: The standard of proof required for a finding of contempt of court
is that a court order must have been breached beyond a reasonable doubt by the party against whom the
order was issued. The standard of intention required for breach of the order is knowledge of the reasons
for order and contravention of the order. Direct intention to disobey the order is not required and it is
no defence for a company to show that its officers were unaware of the terms of a court order, or that they
failed to realize that they were in breach of the order.52 It has been found that sales conducted off the
premises of the defendant, after store closing hours, by an employee of the defendant, who took full
responsibility for the off-premises sales, nevertheless constituted an act of recidivism punishable by a
contempt order.53
In Hugo Boss A.G. v. John Doe, 54the Trial Division issued a show cause order against a corporation
operating a flea market which had been added as a defendant to the proceedings. It was found that the
corporation aided and abetted other defendants (in the same John Doe proceedings) operating in its flea
market in continuing to infringe the plaintiffs trade-mark rights. In issuing the order, the court mentioned
that while the corporate defendant and its principal operator did not directly infringe an order of the court,
it sufficed that they had first-hand knowledge of the injunctions of the court and of the fact that their
actions interfered therewith.
In Asian Video Movies Wholesaler Inc. v. West End Video Films,55 the Trial Division issued an order
requiring infringers who had been served with a John Doe order to appear before it and show cause
justifying their refusal to grant the plaintiff access to their premises. A plaintiff who wishes to secure a
finding of contempt against an uncooperative infringer may need to provide the court with evidence of
counterfeiting activities occurring subsequent to the service of the order.
DISPUTED OWNERSHIP
The Copyright Act of Australia currently contains in sections 12630 and 131presumptions to assist in
proving subsistence and ownership of copyright. Accordingly, subsistence and ownership will be
presumed by a court, unless the defendant puts these matters in issue. The presumptions are designed to
facilitate proof, but several witnesses suggested that they are of little practical value. It has been
submitted that the defendants, without seriously disputing ownership of copyright, will raise it as an issue
as an obstructive tactic.56 The Motion Picture Association (MPA) agreed that the difficulty of proving
ownership can encourage infringers to put owners to proof of copyright in the hope that they can defeat
the proceedings on some technical defect.57 Evidence has also suggested that ownership is often so
difficult to prove that the threat of infringement proceedings is a hollow one for some defendants. The
52
Nintendo of America Inc. v. 131865 Canada Inc. (1991), 34 C.P.R. (3d) 559, at 562 (F.C.T.D.), Denault J.
Ibid.
54
Hugo Boss A.G. v. John Doe (2000), 5 C.P.R. (4th) 432 (F.C.T.D.), Gibson J.
55
Asian Video Movies Wholesaler Inc. v. West End Video Films (1996), 67 C.P.R. (3d) 35(F.C.T.D.), Reed J
56
Business Software Association of Australia (BSAA), Submissions, p. S346.
57
Motion Picture Association (MPA), Submissions, p. S275.
53
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Australian Attorney Generals Department conceded that the existing presumptions provide no real
assistance where subsistence and ownership are challenged.58
POLICE ASSISTANCE
In Canada and England, the mandate of the officers is clearly limited to keeping the peace and the Police
Officers are strictly warned against assisting the Plaintiff in searching the premises of the Defendant. 60
The Police are required to act as Protectors of Peace rather than its Destructors.
PRESERVATION OF EVIDENCE
The Commissioner can be ordered to take an inventory of the pirated software in the presence of the
Defendant and record any possible objections after which the Commissioners report would be signed by
both the Plaintiff and the Defendant. The Commissioner can instead, also take a back-up copy of the
58
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Defendants hard-discs which contains the infringing copies of the software. Once the back-up copies are
taken the same can be introduced during the course of the trial and the Court can decide on the basis of
these copies.
Civil remedies are in the form of interlocutory or permanent injunctions in which damages can be
awarded and ex parte orders in the form of John Doe and Anton Piller orders are also a
common feature.
Criminal remedies provide for imprisonment for a period of 6 months to 3 years or fine of Rs.
50,000 to 2 lacs as infringement being a cognizable offence. On second and subsequent
conviction, the minimum term of imprisonment has been increased to one year which may extend
to three years and minimum fine has increased to Rs. 1 lac which may be extended to Rs. 2 lacs.64
This order may be coupled with seizure, forfeiture and destruction of infringing goods/ material
for placing before the Magistrate.65
62
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Administrative remedies have been provided under the Indian Customs Act, 1962 which deals
with import / export of goods including protection of patents, trademarks and copyrights.
Restrictions against parallel importation of goods have also been imposed.
Technological measures can be provided in the form of holograms, electronic devices, encryption
and anti-copy devices.
Thus, the mechanism for effective enforcement entails political will to strictly enforce the law, legal
power and willingness to conduct secret raids without notice to the infringer, legal power and willingness
to seize all infringing products including machinery and business records, willingness to follow through
with quick prosecution of damage awards, willingness to impose deterrent fines and jail terms affecting
large manufacturers and organized crime syndicates, legal power and willingness to impose preliminary
injunction with severe penalties and legal power to confiscate and destroy infringing products.
However, the system is infected by judicial/administrative delays, lack of damages culture with no
deterrence for infringing conduct, lack of effective border enforcement measures, political interference,
corruption, lack of technical expertise, delay in case preparation, delay in commencement of prosecution
and so on.
But a lot of measures in protection of intellectual property rights have been taken up namely the courts
being largely fair and pro active in the cases of infringement, Special IP (cells) being set up in major cities
and suo motu raids being carried out. The Code of Civil Procedure has also been amended to ensure
expedited trial. Industry specific bodies like the National Association of Software and Services
Companies (NASSCOM) with the help Business Software Alliance (BSA) in the area of Software piracy,
Indian Performance Rights Society (IPRS) and Public Performance Limited (PPL) in the fields of Sound
recording and Performance piracy are also playing an active role as watchdogs protecting the recognized
rights of copyright and trademark holders.
CONCLUSION
Having analyzed, at length, the nature, application, procedure, safeguards and shortcomings of the John
Doe and Anton Piller orders in the copyright and trademark infringement cases, it leads us to the
conclusion that these orders are difficult to be implemented and strict safeguards must be followed while
implementing them. The Indian courts are still in their nascent stage and need a strong precedent in the
field of copyright and trademark infringement that would establish the law and the rules of
implementation, providing a strong backbone and clear understanding of the future course of action.
These orders are recognition that extraordinary problems require extraordinary solutions.66 The present
litigations are a tribute to the brand owners commitment to the genuineness of its product but a sad
commentary on the blanket censorship by the courts. Though the Indian courts have undertaken activities
like anti-piracy drive and Website-blocking, it has to exercise this power with caution. The Court has to
66
Club Monaco Inc. v. Woody World Discounts (1999), 2 C.P.R. (4th) 436 (F.C.T.D.), Pelletier J.
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play a balancing role in protecting the rights of the copyright holders in one hand and the rights of the
consumers on the other.
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