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 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
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 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
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
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
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
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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