Taking it down: Remedies involving internet intermediaries IPIC Annual Meeting, October 2015 George Sevier Wragge Lawrence Graham & Co, London

Online infringement  What are we talking about?  What can be done?  What’s changed? George Sevier Wragge Lawrence Graham & Co London

What are we talking about? George Sevier Wragge Lawrence Graham & Co London Counterfeits [Parallel imports] Design or patent infringing products Copyright infringing content Imitation websites

What can be done? George Sevier Wragge Lawrence Graham & Co London Action against website operators Domain name complaints eBay VeRO, Amazon, Alibaba etc takedown requests Search engine delisting Payment method blocks Website takedowns ISP blocking injunctions

George Sevier Wragge Lawrence Graham & Co London ISP blocking injunctions s97A(1) Copyright Designs and Patents Act 1988 The High Court (in Scotland, the Court of Session) shall have power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright.

ISP blocking injunctions George Sevier Wragge Lawrence Graham & Co London

ISP blocking injunctions George Sevier Wragge Lawrence Graham & Co London

Cartier v B Sky B George Sevier Wragge Lawrence Graham & Co London Directive 2000/31/EC - the E-Commerce Directive ISPs, as mere conduits, are not liable for information transmitted by them (Article 12), but this "shall not affect the possibility for a court or administrative authority, in accordance with Member States' legal systems, of requiring the service provider to terminate or prevent an infringement". Article 8(3) of Directive 2001/29/EC - InfoSoc Directive “Member States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right.”

Cartier v B Sky B George Sevier Wragge Lawrence Graham & Co London Article 11 of Directive 2004/48/EC - the Enforcement Directive “…Member States shall also ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of Directive 2001/29/EC". Section 37(1) of the Senior Courts Act 1981: "The High Court may by order (whether interlocutory or final) grant an injunction … in all cases in which it appears to be just and convenient to do so."

Taking it Down: Remedies Involving Internet Intermediaries Canadian Perspective James G. Kosa October 15, 2015

Contents  Review 2 cases Equustek Solutions Inc v Google Inc, 2014 BCSC 1063, aff’d 2015 BCCA 265 Niemala v Malamas, 2015 BCSC 1024  Discuss likelihood of Canadian courts applying Equustek in other contexts

 The plaintiffs designed and sold industrial network interface hardware.  The defendants to the underlying litigation (Datalink Technologies Gateways Inc.) were distributors of the products, but began to re-label the product and pass it off as their own. They later began to manufacture their own product and fill orders for the plaintiff’s goods with the Datalink product. Equustek Solutions Inc v Google Inc, 2015 BCCA 265

 Although interlocutory orders were made against the Datalink, they did not comply with the orders and eventually ceased responding to litigation communications.  Datalink then moved their operation and began to fill orders from unknown locations. Equustek Solutions Inc v Google Inc, 2015 BCCA 265

 The plaintiffs wanted Google to remove a number of websites used by the defendants from its search indexes.  Google voluntarily removed 345 URLs from search results on google.ca, but did not want to go further. Equustek Solutions Inc v Google Inc, 2015 BCCA 265

 Plaintiffs successfully obtained an injunction prohibiting Google (worldwide) from presenting search results for the Defendants’ websites.  Google Appealed: Contended that such an injunction was beyond the competence (jurisdiction) of the Court.

Google does not have resident employees, business offices, or servers in the Province, but its activities in gathering data through web crawling software, in distributing targeted advertising to users in BC, and in selling advertising to BC businesses are sufficient to uphold the chambers judge’s finding that it does business in the Province. Equustek Solutions Inc v Google Inc, 2015 BCCA 265

[73] Mr. Justice Arnold found that the English High Court had jurisdiction to require Internet service providers to block availability of the offending websites. […] [75] Canadian law on the authority to issue injunctions has paralleled that of England. In my view, Arnold J.’s conclusions with respect to the jurisdiction of English courts to grant injunctions are equally applicable to the Supreme Court of British Columbia. Equustek Solutions Inc v Google Inc, 2015 BCCA 265

 Vancouver lawyer suing a former client for making defamatory statements on internet forums.  Also suing Google for the snippets that accompany the URL search results when you search for the lawyer’s name on Google. Niemela v Malamas, 2015 BCSC 1024

 Court declines to grant interlocutory injunction against Google  Distinguishes Equustek – higher threshold for the granting of an interlocutory injunction required for defamation cases, and the plaintiff failed to meet the evidential burden

Niemela v Malamas, 2015 BCSC 1024 “I take judicial notice of the fact that few searchers will be motivated to move through 380 search results on 38 pages to reach [allegedly defamatory content]. In any event, Google has agreed to block those URLs as well, voluntarily removing them from google.ca.”

Tangerine Financial Products Limited Partnership v Reeves Family Trust, 2015 BCCA 359  Plaintiffs sought to prevent Scotiabank from changing the name of ING Bank to Tangerine.  Plaintiffs claimed exclusive rights to the trademark Tangerine by virtue of receiving assets of Tangerine LP from a party that had purchased in a court-approved sale in a receivership.

[46] Both Equustek Solutions and this case raised the issue of the jurisdiction of a superior court to grant injunctive relief against a non-party… […] [48] In dismissing Google’s appeal, this Court held that a superior court has jurisdiction to grant injunctive relief against non-parties. Accordingly, I agree with RSP’s supplemental submission that Equuestek Solutions defeats Scotiabank’s argument that contempt is the only remedy against non-parties. However, I do not agree with RSP that Equustek Solutions is dispositive of this appeal in its favour. Quite the opposite is true. [49] In his reasons for judgment in Equustek Solutions, Mr. Justice Groberman recognized that orders against non-parties will usually be inappropriate when the applicant has the ability to obtain the relief it seeks by means of an action. Tangerine Financial Products Limited Partnership v Reeves Family Trust, 2015 BCCA 359

Other IP?  Patents?  Copyright?  Non-IP?

Strategies for Rights Holders  Consider adding ISP/Google as a party to the underlying litigation.  Positive vs. negative rights or obligations (active or passive)  Other search engine providers

Questions?