A recent Canadian decision shows how useful it can be to obtain copyright but unfortunately also illustrates how difficult it can be to have material removed from the Internet in Canada.
The Facts
The plaintiff performed in a series of pornographic works consisting of films, photos, and a series of performances broadcast over the Internet (collectively “the Works”) between 2002 and 2003. The Works were created and filmed by Intercan, a Montreal, Quebec company.
In 2003, the plaintiff decided not to work in the pornographic industry and stopped working for Intercan. The plaintiff entered into an agreement with Intercan to transfer all copyright in the Works it produced to him and to remove all the Works from its websites, cease using and destroy the Works in its possession or control.
In March of 2009, the plaintiff found that the Works were being hosted on some archived websites belonging to Internet Archive. Internet Archive is a non-profit, public benefit corporation in California that owns and operates the “Wayback Machine”. By using the Wayback Machine the public could continue to access the pages of Intercan’s websites.
Between April 2009 and August 2009, the plaintiff made multiple requests to Internet Archive, seeking the removal of the Works from numerous “web.archive.org” internet pages hosted by Internet Archive. The plaintiff also caused take down notices under the DMCA to be sent to the Internet Archive.
Internet Archive told the plaintiff that the Works had been deleted from their website. However the plaintiff was still able to access the works on Internet Archive’s website. As a result the plaintiff commenced an action in the Federal Court against the Internet Archive alleging copyright infringement.
The Motion
The Internet Archive brought a motion on the basis that the Federal Court had no jurisdiction to hear the action and asked for a permanent stay. In substance it was asserted the dispute should be decided in the state of California in the United States. At first instance a Prothonotary of the Federal Court found the court had jurisdiction to hear the claim, and the circumstances of the case favoured hearing the claim in Canada. The Internet Archive appealed from this decision to a single judge of the Federal Court.
On the appeal the primary issue was whether the Federal Court has jurisdiction to hear the case. All agreed that the real and substantial connection test was the appropriate test to be applied.
It has been difficult to apply the concept of jurisdiction to the Internet, since, as it is frequently said, the internet knows no boundaries. When copyright material is reproduced on a website which is available to consumers, it must be determined which court has jurisdiction with respect to potential disputes.
The Supreme Court of Canada has said the applicability of the Copyright Act to communications that have international participants depends on whether there is a sufficient connection between Canada and the communication in question for Canada to apply its laws in a way that is consistent with the principles of order and fairness that ensures security of cross-border transactions with justice. This is referred to as the real and substantial connection test.
For the Internet the relevant connecting factors include the location of the content provider, the host server, the intermediaries and the end user. The weight to be given to any particular factor will vary with the circumstances and the nature of the dispute. However, the courts have recognized, as a sufficient “connection” for taking jurisdiction, situations where Canada is the country of transmission or the country of reception. This jurisdictional posture is consistent with international copyright practice.
The judge referred to the fact that the Internet Archive had reached into Canada to the Intercan website when they requested the web pages to post in its archive. The Canadian public could then access the webpage and have it transmitted back to Canada. This was sufficient to give the Federal Court jurisdiction and the appeal was dismissed.
Comment
The decision is interesting in that it shows the advantages of owning copyright in a work as well as how jurisdictional issues are assessed. It is unfortunate that the take down under the DMCA was not successful since frequently proceeding in this fashion is effective. Unfortunately there is no Canadian equivalent.
The plaintiff’s battle to have the material removed from the Internet is also much less effective than the new European right to be forgotten.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.