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US court knocks back Canada’s global injunction over IP infringement

By | Published on Monday 6 November 2017


A federal judge in California last week issued a preliminary injunction preventing Canada’s Supreme Court from forcing Google to de-list a website on its American search engine. The ruling greatly limits the reach of a Canadian judgement that was widely welcomed by the music community as a step forward in helping copyright owners tackle online infringement.

The dispute that kickstarted all this wasn’t a music case, rather one tech company – Equustek – accused another – Datalink – of infringing its intellectual property rights. When the court in the Canadian province of British Columbia started siding with Equustek, Datalink moved its operations out of said court’s jurisdiction to a location unknown.

Equustek then asked to have Datalink de-listed from the Google search engine. This was done within Canada, but Equustek argued that the de-listing would only really work if its IP infringing rival was de-listed by Google on a global basis. And back in June the Canadian Supreme Court backed an injunction ordering such global de-listing.

The music industry, which has often seen copyright infringers move to jurisdictions where it is harder to enforce IP rights, welcomed the ruling. Trade body Music Canada said the judgement was “a crucial development given that the internet has largely dissolved boundaries between countries and allowed virtual wrongdoers to move from jurisdiction to jurisdiction in search of the weakest enforcement setting”.

Google hit out at the ruling, arguing that the Canadian Supreme Court had no right to pass an injunction that applied globally, because its order to de-list Datalink might breach internet or free speech laws in other territories.

For example, maybe the First Amendment of the US constitution. Or Section 230 of America’s Communications Decency Act, which has parallels to the copyright safe harbour in terms of reducing the liabilities of internet companies hosting or linking to other people’s content or products, but with a wider remit.

The Supreme Court in Canada said such concerns were theoretical, but last week Google tried to prove that wasn’t so by asking a court in California to issue an injunction stopping the forced removal of links to Datalink from its American search engine.

As previously reported, Google’s legal rep stated: “This is about whether a trial court in a foreign country can implement a law that is violative of the core values of this country … imagine if we got an order from North Korea that said we could not publish anything critical of Dear Leader. Imagine if Russia doesn’t like what people are saying about Putin. It would be very dangerous to deny relief in this instance”.

With no representatives of either Equustek or the Canadian Supreme Court in attendance, judge Edward Davila last week quickly complied with Google’s request for a preliminary injunction in its favour on this issue. He agreed that “by forcing intermediaries to remove links to third-party material, the Canadian order undermines the policy goals of Section 230 and threatens free speech on the global internet”.

Expanding on how Section 230 would have impacted on the Equustek v Datalink case, and Google’s liabilities in relation to it, had the matter been heard in an American court room, the judge added: “Section 230 of the Communications Decency Act states that third-party internet hosts, such as Google, cannot be held liable for offensive or illegal material generated by other parties”.

The dispute isn’t entirely resolved with last week’s injunction, and further legal wrangling is incoming. Though Davila’s ruling does seem to limit the reach of June’s Canadian judgement, which – of course – the music industry was so keen to welcome.

For its part, digital rights campaign group the Electronic Frontier Foundation welcomed last week’s ruling, but said more needs to be done to stop other courts from issuing wide-ranging internet injunctions, like that issued by the Canadian Supreme Court in June.

In its commentary of the case, it wrote: “The California ruling is a ray of hope on the horizon after years of litigation, but it is far from a satisfying outcome. While we’re glad to see the court in California recognise the rights afforded by Section 230 of the Communications Decency Act, most companies will not have the resources to mount this kind of international fight”.

It went on: “If the current trend continues, many overbroad and unlawful orders will go unchallenged. Courts presented with a request for such an order must step up and require plaintiffs to meet a high burden – including proving that the requested order doesn’t run contrary to the rights of everyone it will affect”.