M/S Unik Industries vs M/S Amazon India Ltd.

M/s.Unik Industries, a proprietary firm represented by its proprietor Mr.M.Purushotham-petitioner-appellant herein, filed this contempt case against M/s.Amazon India Limited represented by its Authorized Corporate Counsel Ms.Swathi Agarwal-contemnor-respondent herein seeking to punish for her wilful disobedience of the interim order dated 23.03.2021 passed in I.A.No.2 of 2020 in CMA No.404 of 2020 on this file of this Court.

The petitioner would assert that he is the absolute owner of the design patent for the products of clothing hanger under Application Nos.276541 and 276542. He filed CMA against the order dated 08.06.2020 passed in I.A.No.3387 of 2018 in O.S.No.929 of 2018 on the file of the learned III Additional Chief Judge, City Civil Court, Hyderabad, against the respondent herein and others to restrain from infringing the design patent by displaying them in their OnLine portal. The petitioner herein also prayed to exercise the appellate jurisdiction of this Court under Order 43 Rule 3 CPC and set aside the order dated 08.06.2020 passed in I.A.No.3387 of 2018 in O.S.No.929 of 2018 only against the respondent herein while confirming the injunction order against Respondent Nos.2 to 8 therein. In the said appeal a Memo dated 05.02.2021 was filed on behalf of the respondent herein in the form of sworn affidavit. Basing on the said affidavit, this Court passed the order. The petitioner would also state that the above order was communicated to the first respondent and she is having sufficient knowledge about it and that the said order was also passed in the presence of the first respondent. The petitioner herein sent notices on 06.04.2021, 16.04.2021, 05.05.221 and 03.08.2021 addressed to the emails of Mr.Rahul Sundaram, Ms.Swati Agarwal and Ms.Varuni Segal along with URLs as directed by this Court calling upon the first respondent to comply with the order dated 23.03.2021 or else contempt proceedings will be initiated. On receipt of each and every notice the first respondent replied and promised that they will obey the order and will remove all the advertisements published in their websites. The petitioner would complain that the first respondent failed to comply with order of this Court and did not remove the advertisements from their website. He would also complain that the first respondent intentionally and consciously uploaded and advertised the alleged design patent on their website. He would also assert that when he sent notice, the respondent herein removed the advertisement for few days and after some time again the respondent herein uploaded the advertisement and as such the respondent followed the order irregularly on and off basis and defiance to the order of this Court thereby attracting the provisions of Contempt of Courts Act. The first respondent deliberately ignored and intentionally disobeyed the order of this Court and it is nothing but wilful disobedience of the order dated 23.03.2021. The petitioner would also state that he is eking out his livelihood by selling his own patent product-clothing hanger and on account of infringement by the respondent herein he is losing his entire business and as such the respondent is not only liable to punish of contempt but also liable for payment of suitable compensation for the acts done by the respondent herein.

The order dated 23.03.2021 passed in I.A.No.2 of 2020 in CMA No.404 of 2020 reads as under:

‘A Memo dated 05.02.2021 was filed on behalf of respondent No.1 by way of affidavit sworn to by Ms. Swati Agarwal, D/o.Subhas Agarwal, Corporate Counsel. Paragraph 5 thereof reads as under:

“It is submitted that the Respondent No.1 is not liable for the listing, advertisement or sale of the Impugned Products and consequent violation of rights arising therefrom. Nevertheless, ASSPL undertakes that it shall taken down any URL of the Impugned Products that is identified by the Plaintiff, in writing, as violating her rights, within 36 hours of receipt of a communication from the Plaintiff. The identified URLs may be communicated to ASSPL by email sent to Mr.Rahul Sundaram (sunrahul@amazon.com), Ms.Swati Agarwal (agaswa@amazon.com) or Ms.Varuni Seehgal (svaruni@amazon.com), Corporate Counsels of the Respondent No.1.”

In the light of the above, pending consideration of the appeal, the appellant is given liberty to send URLs in terms of the aforementioned paragraph so as to enable respondent No.1 to take appropriate action with respect to his grievance within 48 hours from the date of such intimation. It is made clear that violation of the said undertaking would be viewed seriously and it would amount to violation of the provisions of the Contempt of Courts Act, 1971.’

The respondent filed objections through an affidavit stating that Amazon Seller Services Private Limited is hereinafter referred to as the respondent company. CMA No.404 of 2020 is an appeal arises out of O.S.No.929 of 2018 wherein the petitioner herein sought an injunction restraining inter alia the infringement of its registered designs by sale of certain clothing hangers on the website www.amazon.in. She would further state that she has greatest respect for the statute and dignity of this Court as she is the legal officer of the respondent company. She has no control over the day to day functioning or operation of the company. In fact, the respondent company obeyed the order of this Court in its letter and spirit and removed all the advertisements published in its web site which allegedly infringe the petitioner’s design by identifying such advertisements on its own and that the petitioner is trying to mislead the Court. Prima facie reading the appellate order would clearly indicates that the obligation of the respondent company was limited in taking down specific URLs of the impugned products which allegedly infringe petitioner’s designs in the desired format that are identified by the petitioner. The petitioner vide letter dated 16.04.2021 has not mentioned any URLs for identification and to bring down the list of the products. In a letter dated 08.08.2021 learned counsel for the respondent company requested the petitioner to identify URLs. Basing on the said request, the company bring down URLs. The following are the letters exchanged:

a) On April 16, 2021, petitioner communicated to the respondent company 21 URLs to bring down.

b) On April 19, 2021, counsel for the respondent company informed the petitioner that “Our Client informs you that in compliance with the Order, it has removed twenty-one URLs identified in Your Email”.

(Page 68 of the Instant Appeal).

c) On May 5, 2021, petitioner communicated to the respondent company, another set of 39 URLs in order to bring down listings of products.

d) On May 7, 2021, counsel for the respondent company informed the petitioner that “Our Client informs you that in compliance with the Order, it has removed thirty-nine URLs identified in Your Email”. (Page 76 of the Instant Appeal).

e) After a lapse of 3 months, on August 3, 2021, petitioner communicated to the respondent company another set of 16 URLs in order to bring down listings of products.

f) On August 8, 2021, counsel for the respondent company informed the petitioner that “Our Client informs you that in compliance with the Order, it has removed sixteen URLs identified in Your Email”. (Page 82 of the Instant Appeal).”

The respondent would also submit that whenever the petitioner communicated to the respondent any set of URLs to bring down listings of products, which infringe the petitioner’s design registration, the company complied with the order. The respondent company is an intermediary under Section 2(1)(w) of the Information Technology Act, 2000. She would also submit that as the company has the highest regard for the orders of the Court has not intentionally or wilfully permitted the unauthorized listing of products on the OnLine marketplace. The  said  listings  were  made  without  the  knowledge  of  the respondent company and as such it will not amount to violation of the orders of the Court. Whenever the petitioner communicated to the respondent company regarding the set of URLs to bring down the listings, the respondent company complied with the same expeditiously. The respondent also denied that the company removed advertisements for few days and after some time again it displays on the website. She further stated that respondent company does not personally engage in the procurement, manufacture and sale of any product on its OnLine market place and it is done by the third parties and as such the respondent is not liable for contempt on the ground of infringement. The respondent has not wilfully, consciously or deliberately disobeyed the order of the Court.

Heard the learned counsel for the petitioner and the learned counsel for the respondent.

In view of the submission of both the counsel, now it is for this Court to see whether the respondent company is liable for contempt as stated by the petitioner herein or not.

As per the order dated 23.03.2021 passed by this Court in I.A.No.2 of 2020 in CMA No.404 of 2020 whenever the petitioner furnished URLs to the respondent, it complied with the same immediately and listed them down from the website. If fact, it is only an intermediary and it will not procure, manufacture and sale of any product on its OnLine market place including the petitioner’s products and all those things were done by the third party entities by means of entirely automated process without any human intervention and as such the company has no actual knowledge of the products that are listed or made available on its OnLine market place, and thus, it is practically impossible for the company to ensure that no listings of the impugned products are made available on the company’s OnLine market place. Therefore, it cannot be said that the respondent company wilfully violated or disobeyed the orders of this Court and is liable for contempt under Sections 10 to 12 of the Contempt of Courts Act, 1971.

For the foregoing discussion, I do not find any merit in the contempt case and is accordingly dismissed.

Miscellaneous Petitions, if any, pending in this appeal shall stand dismissed in the light of this final order.