Jurisdiction in cyberspace and the cross-border enforcement of IP rights

1. Jurisdiction in the traditional sense

International law recognises three kinds of jurisdiction: prescriptive (to make law), adjudicative (to hear cases) and enforcement (to act on persons and property). The usual bases are territory, nationality, the protective principle and, for a few crimes, universality. For civil suits the common law asked whether the defendant was present or had submitted, and later whether the cause of action arose within the forum.

In India the general rule is section 20 of the Code of Civil Procedure, 1908: a suit lies where the defendant resides or carries on business, or where the cause of action arises wholly or in part. IP statutes add a plaintiff-friendly forum:

• Section 62(2), Copyright Act, 1957 and section 134(2), Trade Marks Act, 1999: the plaintiff may sue where it resides, carries on business or personally works for gain, wherever the defendant is.
• Patents Act, 1970: no equivalent; infringement suits follow the CPC and cannot be filed below a District Court.

Two Supreme Court decisions limit these provisions. In Dhodha House v. S.K. Maingi, 2005 INSC 617, the Court held that a passing off claim cannot ride on section 134(2) merely by being joined with a copyright claim, and that jurisdiction must be found under the CPC for each cause. In Indian Performing Rights Society v. Sanjay Dalia, 2015 INSC 452, it held that where a plaintiff has its principal office in one place and the cause of action arose where it has a branch office, it must sue at the branch, and cannot use the special provisions to drag the defendant to a distant forum. The purpose of section 62 and section 134 was to help the right holder, not to cause inconvenience to the other side.

2. Why the internet unsettles these rules

A website is available everywhere. If accessibility were enough, every court in the world would have jurisdiction over every website, and every site would be subject to every law. If physical presence were required, a defendant could escape by hosting abroad. The cases search for a middle test.

3. The US tests

• International Shoe Co. v. Washington (1945). A court may exercise jurisdiction over a non-resident who has “minimum contacts” with the forum such that the suit does not offend traditional notions of fair play and substantial justice.
• Calder v. Jones (1984). The effects test: intentional conduct expressly aimed at the forum, causing harm the defendant knows will be suffered there.
• Zippo Manufacturing v. Zippo Dot Com (W.D. Pa., 1997). A sliding scale. At one end, a defendant who clearly does business over the internet with forum residents is subject to jurisdiction; at the other, a passive site that only posts information is not; in the middle, an interactive site is judged by the level of interactivity and the commercial nature of the exchange.
• Cybersell v. Cybersell (9th Cir., 1997). A passive site with no activity directed at Arizona did not support jurisdiction there.

Later US courts moved from Zippo’s interactivity towards targeting: did the defendant aim its site at the forum? Interactivity is a feature of nearly every site now, so it no longer distinguishes much.

4. Two landmark foreign disputes

• LICRA v. Yahoo! (Paris, 2000). A French court ordered Yahoo! to take steps to stop French users from accessing auctions of Nazi memorabilia, which were lawful in the US. Yahoo! sought a US declaration that the order could not be enforced; the Ninth Circuit en banc (2006) eventually dismissed the case without a clear ruling. The dispute showed that a state can assert jurisdiction over a foreign site, and that geolocation technology makes compliance possible, but also that enforcement abroad depends on the foreign court.
• Dow Jones v. Gutnick (High Court of Australia, 2002). Defamation in an online article occurs where it is downloaded and read, so a Victorian businessman could sue an American publisher in Victoria. The court rejected a single-publication rule tied to the place of upload.

5. The Indian line of cases

1. Casio India v. Ashita Tele Systems (Delhi High Court, 2003). In a domain name passing off case, the single judge held that because the defendant’s website could be accessed in Delhi, the Delhi court had jurisdiction.
2. India TV Independent News v. India Broadcast Live (Delhi High Court, 2007). The court moved towards the Zippo approach, asking whether the site was interactive and directed at Indian users.
3. Banyan Tree Holding v. A. Murali Krishna Reddy (Delhi High Court Division Bench, 2009). On a reference, the court overruled Casio. In a passing off action where the defendant is outside the forum, the plaintiff must show that the defendant purposefully availed itself of the forum, by a site specifically targeted at viewers there for commercial transactions, and that the use resulted in injury to the plaintiff there. A single “trap transaction” set up by the plaintiff is not enough.
4. World Wrestling Entertainment v. Reshma Collection (Delhi High Court Division Bench, 2014). For the plaintiff’s own forum under section 62(2) and section 134(2), a foreign plaintiff whose website sells to customers in Delhi, with contracts concluded there, can be said to carry on business in Delhi.

For offences, section 1(2) and section 75 of the Information Technology Act, 2000 extend the Act to contraventions committed outside India by any person, if the act involves a computer, computer system or network located in India.

6. The European approach

Under the Brussels I Recast Regulation (2012), a defendant may be sued where domiciled, or in tort where the harmful event occurred. The CJEU has applied this to online IP as follows. For a national trade mark, the courts of the State of registration, or of the advertiser’s establishment, have jurisdiction (Wintersteiger, 2012). For copyright, the courts of each State where the content is accessible have jurisdiction, limited to the damage in that State (Pinckney, 2013; Hejduk, 2015). For applying the substantive law, a mark is used in a territory only if the offer is targeted at consumers there (L’Oréal v. eBay, 2011).

7. IPR issues in cyberspace and the enforcement problem

IP rights are territorial: an Indian copyright or trade mark is infringed only by acts in India, and the law applicable is that of the country for which protection is claimed (Berne Article 5(2)). Online, the same act happens in many countries at once. The problems are:

• Identifying the defendant: anonymous uploaders and offshore operators of pirate sites.
• Choice of law: whose copyright is infringed by a worldwide upload, and which exceptions apply.
• Enforcing the judgment: foreign decrees are enforced in India under sections 13 and 44A of the CPC only on conditions, and Indian decrees face similar hurdles abroad. The Hague Judgments Convention (2019) excludes intellectual property from its scope.
• Mirror sites: a blocked site reappears under a new domain the next day.

8. The need for trans-border protection

Courts and drafters have responded in four ways.

1. Acting on local intermediaries. Indian courts order access providers to block rogue sites and extend the order to mirrors (UTV Software v. 1337x.to, Delhi High Court, 2019), and order registrars to suspend domain names.
2. Global orders. In Google v. Equustek (Supreme Court of Canada, 2017) a worldwide de-indexing order was upheld. The CJEU in Glawischnig-Piesczek v. Facebook Ireland (2019) held that EU law does not prevent a worldwide removal order, while in Google v. CNIL (2019) it held that de-referencing under the right to be forgotten need not be worldwide. In Swami Ramdev v. Facebook (Delhi High Court, 2019), the court required platforms to disable worldwide content uploaded from India. Global orders are criticised for imposing one country’s law on the rest.
3. Soft law. The WIPO Joint Recommendation on the Protection of Marks and Other Industrial Property Rights in Signs on the Internet (2001) treats use on the internet as use in a country only if it has a “commercial effect” there. The American Law Institute Principles on IP and the European CLIP Principles (2011) propose rules on jurisdiction and choice of law for multi-State infringement.
4. Private ordering. The UDRP binds every domain registrant by contract and avoids the jurisdiction problem altogether (Unit V).

How this is examined

Likely long questions: “Discuss the problem of jurisdiction in cyberspace with reference to decided cases.” “Distinguish jurisdiction in the traditional sense from internet jurisdiction.” “Examine the jurisdictional issues relating to enforcement of IPRs on the internet and the need for trans-border protection.”

Likely short notes: Zippo sliding scale test; effects test; Banyan Tree; section 75 of the IT Act; section 62 of the Copyright Act; Yahoo! v. LICRA; global takedown orders.

Structure a long answer: traditional bases, then the Indian statutory forum rules with Dhodha House and Sanjay Dalia, the US tests, the Indian line ending with Banyan Tree, the EU approach, and finally the enforcement problem and the four responses.