Google Suffers Severe Setback from the Supreme Court of Canada

Google lost today in the Supreme Court of Canada (“SCC”), which held that a trial judge in British Columbia can, on an interlocutory motion, order Google world-wide to de-index sites alleging violating IP law in BC. As the minority points out, this is effectively a permanent injunction and a permanent remedy for all practical purposes.

Watching the webcast of the hearing helps to explain what went so wrong here. It becomes apparent early on.

The best argument apparently wasn’t sufficiently emphasized – namely that this was an IP case and the IP rights in issue, namely trademark and trade secrets were tenuous at best and unestablished outside of Canada and that TM and trade secrecy law differ dramatically outside of Canada and from country to country.

Curiously enough, INTA of all folks was ready to ably make and focus on those arguments – but the Court refused to hear from them as interveners and heard, instead, from the record and film industries.

This is going to create a lot of problems. I don’t see how this is consistent with the SCC’s 2011 decision in Crookes v. Newton, which held that merely linking to a defamatory site is not defamation. Google made that point, but perhaps it wasn’t sufficiently emphasized. It didn’t find its way into the judgment.

I can just see the RIAA and MPAA salivating at the thought of getting world-wide injunctions against Google at an interlocutory hearing from a trial judge in British Columbia. Will the mere fact that copyright subsists in BC - as it does virtually everywhere - be sufficient to get the injunction? One can imagine that few if any defendants would appear in such proceedings.

At least, we have competent trial judges in Canada and the rule of law. However, if other countries become emboldened in this way, perhaps worldwide injunctions against Google will emanate from unsavoury jurisdictions at little cost and with little justice.

HPK 

Google v. Equustek in the SCC - Webcast Live December 6, 2016 at 9:30 AM ET

This very interesting and extraordinarily important case will be heard tomorrow in the Supreme Court of Canada. Here's the Court's Summary:

36602

Google Inc. v. EquustekSolutions Inc., et al.

(British Columbia) (Civil) (By Leave)

Keywords

Administrative law - Interlocutory orders, Injunctions, Private international law, Extraterritoriality, Communications law, Internet, Intellectual property, Industrial design.

Summary

Case summaries are prepared by the Office of the Registrar of the Supreme Court of Canada (Law Branch). Please note that summaries are not provided to the Judges of the Court. They are placed on the Court file and website for information purposes only.

Administrative law — Interlocutory orders — Injunctions — Private international law — Extraterritoriality — Communications law — Internet — Intellectual property — Industrial design — Interim injunction issued against non-party to litigation — Google prohibited from displaying impugned websites in Internet search results — Under what circumstances may a court order a search engine to block search results, having regard to the interest in access to information and freedom of expression, and what limits (either geographic or temporal) must be imposed on those orders? — Do Canadian courts have the authority to block search results outside of Canada’s borders? — Under what circumstances, if any, is a litigant entitled to an interlocutory injunction against a non-party that is not alleged to have done anything wrong?

The plaintiffs sued their former distributors for unlawful appropriation of trade secrets, alleging that the distributors designed and sold counterfeit versions of their products. The plaintiffs obtained injunctions against the distributors, prohibiting them from carrying on any business online. When this proved ineffective, the plaintiffs sought a court order against Google, to prohibit it from displaying search results that included the distributors’ websites.

The Supreme Court of British Columbia granted a worldwide injunction against Google, finding that it had territorial competence over Google and that it possessed an inherent jurisdiction to maintain the rule of law and protect its processes, which in appropriate circumstances may include an injunction against non-parties. In this case, the balance of convenience favoured granting an injunction. The Court of Appeal agreed that the court held jurisdiction over Google with respect to the injunction application. It also concluded that it was permissible to seek interim relief against a non-party. The power to grant injunctions is presumptively unlimited, and injunctions aimed at maintaining order need not be directed solely at the parties involved in litigation. In this case, an injunction with worldwide effect was justified.

(highlight added)

The webcast should be available live here at 9:30 AM ET.

Here are the factums on appeal.

HPK

Date modified:

Warman & National Post v. Fournier – the Interveners Have Started Their Engines - updated

In the Warman v. Fournier copyright litigation, we saw as of March 14, 2013  that that such important copyright questions as:

·         what is substantial,

·         how does fair dealing apply in the context of news reporting, blogs, and critical comment,

·          when the limitation period begins to run for material posted online, and

·         whether there can be copyright in a headline

have been left  by fate to be decided in a case based upon rather strange facts, controversial parties and on what has been up until now a very lopsided playing field.  Leaving aside Richard Warman, the main plaintiff who is no stranger to the instigation of controversial litigation, we saw Mr. and Mrs. Fournier (who for their part are also not your typical non-represented litigants) representing themselves against Warman, who had legal representation, and the National Post, which for whatever incomprehensible and unexplained reason was a necessary party below but was supposedly not even aware of or involved in the earlier proceedings until after the final judgement was rendered.

Nonetheless, the National Post now appears in full regalia on the appeal with prominent copyright counsel eager to establish, inter alia, that it has enforceable copyright in short headlines.  Whether or not one has any sympathy for either Warman or the Fournier’s or both or neither, there is a lot at stake here from a public interest standpoint. It was quite clear on March 14, 2013 when I posted my blog that the National Post with its very experienced copyright counsel would more than adequately represent big corporate copyright. But the public interest representation was quite another matter.

So, I said on March 14, 2013, “Interveners, start your engines.”  And, whether by causation or coincidence, I am pleased to note that is precisely what has now happened.

First, the now ubiquitous CIPPIC sought leave to intervene. CIPPIC is a law school clinic, for which I acted as lead counsel on its first and probably most influential case to date, which involved an intervention in the first attempt at mass copyright litigation in Canada – namely the BMG v. Does case in 2004-2005. CIPPIC played a key role both behind the scenes and on the record in facilitating a positive public interest result in that case. The National Post wants to limit CIPPIC’s scope of intervention. CIPPIC has responded in this way.

Now enter the U.S. based Computer and Communications Industry Association (“CCIA”) which counts, among its membership, Google and Microsoft. It has filed an application for leave to intervene in the Warman case that raises some useful points that are potentially helpful to the public interest point of view. The National Post has opposed this application to intervene in strenuous terms, or alternatively to allow it with limits. Interestingly, one of the grounds for objection to the intervention by the National Post is that CCIA has raised what the National Post considers to be the new, irrelevant and unnecessary issue of the application of a certain provision in the Berne Convention specifically regarding quoatations from newspaper articles.  Ironically, the same counsel now acting for the National Post, when he was acting for CMRRA as an intervener in the Supreme Court of Canada,  strenuously urged the Court in the K-12 Province of Alberta case to consider the very general “three-step” test as set forth in the Berne Convention, which would have been a new issue at the Supreme Court level. Prof. Ariel Katz and I argued that the three-step test as found in international law was an irrelevant “red herring” in the that case – and the Supreme Court apparently agreed with us because there was not a word about it in the judgment.

There may still be some important issues that are not yet be on the table or which could use further focus. Although it is getting late in the day, it is possible that other would-be interveners on both sides may emerge, given that this is now clearly a high stakes case and the playing field has been largely levelled. This could be interesting because there are probably some interests watching this case that don’t really want to see a level playing field and may have hoped that this appeal could have served to at least partially undo what they hubristically and mistakenly regard as the  misguided rulings of the Supreme Court of Canada and the regrettable results, from their point of view, of parliamentary democracy in the form of Bill C-11.

At any rate, at least two very credible potential interveners have indeed started their engines. The countdown is progressing.

There will likely be some to and fro on these intervention applications, but it would frankly be surprising if they were not allowed in these circumstances.

I will keep readers posted on important developments.

HPK

PS - here's CCIA's reply to National Post's attempt to deny its leave to intervene application.

Google Book Conference from U. of T. Now Viewable on Web

The recent May 28, 2010 conference on the Google Book Search/Settlement ("GBS") at U. of T. has has now been archived here.

It was extremely informative, provocative and balanced and was very capably organized by Prof. Ariel Katz.

All kinds of talk about the implications for Canada - including from yours truly?

Unfortunately, there was no speaker from Google.

We all await what Judge Chin will do in New York one of these days...

HK

Some Thoughts on the Google Book Settlement Hearing of February 18, 2010

I’ve said very little about the Google Book Settlement (“GBS”) to date because it is so complex and because is raises so many unanswerable questions. Moreover, at this stage I have no committed convictions on it. In fact, I’m really genuinely agnostic about it.

On the one hand, I love the idea of great celestial digital library in the cloud that will include virtually all useful books, including "orphans", will last forever and provide the greatest possible accessibility at the lowest possible cost while fairly compensating current rights owners. On the other hand, I wonder whether this grand vision is entirely legal under the relevant current domestic and international legal regimes. I’m skeptical about using the class action process of a single country, wherein a handful of brilliant and well intentioned individuals can take upon themselves the mandate arguably to unilaterally, effectively and fundamentally change copyright law in the major English speaking jurisdictions of the world, with French books published in Quebec being included. Moreover, I have serious questions about a settlement that will sweep in Canadian authors and publishers but will deny Canadian users most of the bells, whistles, benefits and access to the resulting library.

There are big questions here that won’t go away easily. Judge Denny Chin is a District Court Judge in the Southern District of New York who has been nominated to the fabled Second Circuit Court of Appeals to replace Judge Sotomayor who was recently appointed to the US Supreme Court. He will have to rule on many complex questions following a fairness hearing today February 18, 2010 dealing with the Amended Settlement Agreement (“ASA”). Judge Chin has dealt with many high profile cases, including that of Bernie Madoff, who he sentenced to a longer than life term of 150 years in jail, leaving no doubt that life means life.

For starters, here is the partial list of documents that Judge Chin will have to consider, most of which were only recently filed. There have, of course, been many more filed before this ASA hearing was set down and for the first hearing.

Here are some of the general questions that various stakeholders have for Judge Chin, followed by some Canadian based questions that he may not have to answer but Canadians need to consider:

General:

1. Is this an appropriate use of the class action process, especially in view of the many prestigious groups, corporations and individuals who have objected to the ASA? In other words, to what extent does the class involved adequately represent affected authors and publishers, not to mention countless other stakeholders, including librarians and scholars?

2. Can a class action settlement go well beyond the original pleadings and, effectively, change the law both for the past and for the future in a way that would otherwise be impossible at this point in time if it were to be attempted in Congress and/or through a treaty?

3. Given the extraordinary complexity of the settlement documentation and the relatively short notice period, can affected authors, publishers and other stakeholders realistically come to informed conclusions?

4. Is it appropriate to use class action litigation to arguably transform the normally “exclusive rights” basis of copyright law, which requires explicit permission, into an opt-out regime, where permission will be given unless specifically refused in writing? The deadline for total “opting out” was January 28, 2010. Google argues that even those who didn't opt out by January 28, 2010 will have plenty of opportunities to exercise control over their works down the line for many purposes - but this will still require further “opt out” or other action.

5. Would the Settlement, if approved, put the United States into contravention of international law with respect to such basic concepts as those of national treatment, mandatory exclusive rights, and the three step test? None other than the Hon. Marybeth Peters, U.S. Register of Copyrights raised the national treatment issue in her testimony to the House Judiciary Committee.

6. What will be the antitrust implications of the ASA, given the dominant or monopoly position that Google will have with respect to several markets that it is creating by virtue of this Settlement, i.e. access to orphan works, and, above all the sole portal to search engine access to the database of tens of millions of books (the great “Library to Last Forever”, as Sergey Brin himself calls it)?

7. What are the implications of views such as this by prominent US IP antitrust lawyer Gary Reback?

8. What are the extraterritorial implications of this agreement, which requires authors of books published in Australia, Canada (including French language books) and the UK (the “foreign publishing countries”) to have opted out by January 28, 2010 or be bound by it? It also covers books published in these countries, even for the countless authors who are not citizens or residents of these foreign publishing countries or the USA. Unlike United States works, there is no requirement for the foreign works to have been registered in the US Copyright Office. Given the practice of simultaneous or near simultaneous publication of countless English language books in the foreign publishing countries, Google will acquire an enormous number of books in their database that would not fit into the necessarily tighter definition of a US work, which requires publication and registration in the USA. Moreover, many French books published in Quebec but originating from anywhere in the world including France would be included.

9. What about the countless past agreements signed between authors and publishers that were silent or at best ambiguous about electronic rights?

10. What about the privacy rights of potential users?

Here are some Canadian-focussed questions, which Judge Chin will not likely answer but others may eventually have to face:

1. Why has the Government of Canada apparently been uninvolved and uninterested in the GBS? There has been no public consultation that I am aware of. France and Germany have become engaged at the official level. On the other hand, Canadian officials who would normally be involved in an issue such as this haven’t been.

2. Where are the several prominent Canadian trade associations and collectives that should have provided some useful specific advice and potentially some representation for Canadian authors, publishers, librarians etc. on these issues?

3. What are the implications of the Google Partner Program, which appears to allow publishers to feed into Google’s database for very extended access the books of many authors, who may have been and still may be unaware of the Program?

4. Why is this shaping up to be a battle between scholarly and other individual authors. ranging from the most obscure to J. K. Rowling herself on the one hand and big corporate publishers on the other? I note that the Canadian Publishers’ Council and the Association of Canadian Publishers (which together represent the big multinational and major Canadian publishers) are recommending approval of the Settlement at the same time that they attempting to intervene to fight “flexible fair dealing” and push back on the CCH v. LSUC decision in the Access Copyright K-12 case currently before the Canadian Federal Court of Appeal. On the other hand, many independent Canadian authors and the Canadian Association of University Teachers (“CAUT”) are opposing the GBS. Naturally, the database will be far more important for innovation and research purposes with respect to scholarly works than, for example, light romance novels (no offence to the fan fiction crowd).

5. Although vast numbers of Canadian published books by thousands of Canadian authors will be drawn into this settlement, most of the bells and whistles of the Google Books database will presumably not be available in Canada with respect to most of the database. This is because Google is necessarily putting up something of a firewall around this database since, even though there may be some extraterritorial aspects to the settlement, the Settlement not surprisingly purports not to affect activities implicating copyright rights in foreign countries outside of the USA.

6. Canadians may wish to read, if nothing else, the submissions of Google itself and the US Department of Justice (which supports the basic goals of the ASA but reiterates that it is still “a bridge too far” and should not be approved as is). Canadians will also want to read the few but important submissions from Canada. As well, there are “must read” submissions from Pam Samuelson and many notable advocacy groups on all sides, and corporate interests, including Microsoft and AT&T.

There is no doubt that Judge Chin will have his hands full with this case, and they eyes of the entire copyright world will be focussed on him. If this case were ever to go to trial, it would likely be a vastly more complex copyright case than anything ever heard anywhere before. Whatever happens after today will most certainly not be a routine rubber stamp judicial approval of a class action settlement.

Judge Chin's ruling will have profound public policy implications not only in the USA but potentially also everywhere else. Whatever Judge Chin decides, he will be expected to provide ample reasons. Despite, or perhaps indeed because of, the importance, complexity and controversy of this matter, I’m willing to predict that we will see a lengthy and detailed judgment from Judge Chin in a few weeks or a few months at the most.

HK

MacGillivray to Twitter

(NY Times)

I don't normally blog about personal or personnel issues but this one is important.

Alexander Macgillivray - the brilliant young Canadian Harvard grad Deputy General Counsel of Google and sometime Fordham frequenter - who was the brains behind the Google Book Settlement and many other things- is going over to Twitter. Here's the NYT confirmation.

This is an unbelievable catch and great news for Twitter.

What it means for Google and the rest of the net remains unclear. Alex, or "Amac" as some call him, is one of the most influential minds around today in the world of IP and cyberlaw.

Whatever, we wish him well because he's a swell and remarkable guy and a great credit to Canada, who is flourishing in the heart of the digital evolution and revolution and who believes in a balanced IP system.

What I know is that this means that Twitter really matters. Happy to say I was a relatively early adopter.

See here.

HK

Google and Lessig on Net Neutrality

Is Google changing its tune on net neutrality? The Wall Stree Journals seems to be so so suggesting in a widely linked and discussed artcicle:

Here's a taste...According to WSJ:

Google Inc. has approached major cable and phone companies that carry Internet traffic with a proposal to create a fast lane for its own content, according to documents reviewed by The Wall Street Journal. Google has traditionally been one of the loudest advocates of equal network access for all content providers.
...

The developments could test Mr. Obama's professed commitment to network neutrality. "The Internet is perhaps the most open network in history, and we have to keep it that way," he told Google employees a year ago at the company's Mountain View, Calif., campus. "I will take a back seat to no one in my commitment to network neutrality."

Barack Obama

But Lawrence Lessig, an Internet law professor at Stanford University and an influential proponent of network neutrality, recently shifted gears by saying at a conference that content providers should be able to pay for faster service. Mr. Lessig, who has known President-elect Barack Obama since their days teaching law at the University of Chicago, has been mentioned as a candidate to head the Federal Communications Commission, which regulates the telecommunications industry.

Is the Internet going to become more and more like cable and pay TV?

PS - UPDATE: Google's answer to this can be found here.

HK

The Politics of Antitrust Enforcement

The respected journalist and commentator Declan McCullagh has a provocative piece in CNET today about Microsoft's role in the non-deal between between Google and Yahoo, as well as some of the ironic politics involved and some prognostications for the post Bush era.

HK

ACTA - EFF Sues USTR

The redoubtable EFF has sued the secretive and determined USTR over its allegedly insufficient disclosure under the US Freedom of Information Act ("FOIA") concerning the very non-transparent ACTA negotiations. Here's the complaint.

Here's the story from IP-Watch.

According to this story, even corporate giants such as Google are concerned.

Ironically, the level of transparency in Canada appears to even less than in the USA.

In my experience with IP treaties, which goes back more than twenty years, draft texts have always been made public at a relatively early stage, even if replete with square brackets. Not so here. This treaty was supposed to be a done deal by the end of this year, although rumours are that this won't happen.

HK

Google and Privacy - update

The other day on July 4, 2008 I posted about the sweeping production and disclosure order in Viacom v Google that was issued by a US Court.

Today, Ontario's Privacy Commissioner, the redoutable Ann Cavoukian, challenged Google to appeal this order.

This case will clearly focus again on why Google and YouTube and others retain personal data for so long - i.e. 18 months. And that's down from two years.

The EU is clearly concerned about search engine data retention policies.

The EU seems to be heading strongly to a six month maximum retention period based on this April report.

PS - David Fraser, a Canadian East Coast lawyer, has a thoughtful blog on this available here.

HK

Copyright and Personal Privacy, eh?

Yesterday's ruling in the American mega litigation involving Viacom v. YouTube & Google requires the handover of 12 terabytes of data containing info about viewers' login ID, IP addresses, time of viewing, etc. is a potentially devastating invasion of the privacy of millions of people, who had no expectation that this could ever happen. Here's the ruling and here's the NYTimes story.

As the privacy breach debacle by AOL in 2006 showed, it is not hard to find out a lot about particular people with far less information than appears to be at stake here. Knowing an IP address and time of access can identity a particular person in many cases.

I would hope that such a ruling would not be made in Canada. We have our PIPEDA federal privacy statute.

We have the BMG ruling, in which I was pleased to have been involved. Here's two opposing views and a neutral summary of that ruling by an editor, myself and another counsel on the other side. These set forth some of the basis of the debate in Canada, if a similar situation should arise.

HK