India: Teaching circumvention raises legal issues

A recent but interesting order relates to an injunction issued against Youtube in Tata Sky Ltd v Youtube LLC, directing Youtube to take down videos that gave instructions on circumventing of the encryption system employed in Tata Sky's set-top boxes. This allowed users to view content made available by Tata Sky that they had not paid for. The recent order in August 2016 involved a variation to an earlier interim injunction issued in 2015 against Youtube. The interim injunction originally directed Youtube to ensure that the Tata Sky trade mark is not used on its website without written authorisation and to remove such circumvention tutorials. Youtube also apparently complied with taking down the allegedly offending videos. Tata Sky did not assert copyright on the videos itself.

With due respect to the court, perhaps the case reflects significant legal issues. The first concern is the rush with which the interim injunction was granted in the first place, that too for trade mark infringement against Youtube. The court itself states in its August 2016 order that its earlier injunction was directed to removing the offending videos and yet the order refers to trade mark infringement. Moreover, the court also highlights that there was a confusion in the underlying facts whether the case related to copyright or trade mark infringement, and yet an injunction was issued.

The second and more substantive concern is the legal basis for such an injunction. Circumvention of technology protection measures imposed to protect copyrighted words, such as the encryption employed by Tata Sky, is a criminal offence under Indian law; tutorials are not, at least not directly, held to be an offence. In addition, Youtube itself did not commit any circumvention or teach circumvention. As an intermediary, Youtube, upon request, has an obligation to take down infringing videos, but only in certain cases, such as when the videos infringe copyright or some other law. The factual history suggests that Youtube sought more detailed clarification from Tata Sky on its take-down request and even suggested filing a copyright complaint if videos in question contained copyrighted content, but the suit was filed for alleged trade mark infringement and taking down the videos anyway.

These issues do not appear to be raised or discussed in this order, and yet it may have the effect of setting a precedent for future cases. To act first and think later is perhaps not a prudent approach for such relatively new issues.

R Parthasarathy

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