They say the internet never forgets. From time to time, someone
wants to challenge that dictum.
In our earlier posts, we discussed the so-called "right to
be forgotten" in connection with a Canadian trade-secret misappropriation and
passing-off case and an EU privacy
case. In a brief ruling in October, the Federal
Court reviewed a copyright claim that fits into this same category.
In Davydiuk v. Internet Archive
Canada, 2014 FC 944 (CanLII), the plaintiff
sought to remove certain pornographic films that were filmed and
posted online years earlier. By 2009, the plaintiff had
successfully pulled down the content from the original sites on
which the content had been hosted. However, the plaintiff
discovered that the Internet Archive's "Wayback
Machine" had crawled and retained copies of the content as
part of its archive.
If you're not familiar with the Wayback Machine, here is the
court's description: "The 'Wayback Machine' is a
collection of websites accessible through the websites
'archive.org' and 'web.archive.org'. The collection
is created by software programs known as crawlers, which surf the
internet and store copies of websites, preserving them as they
existed at the time they were visited. According to Internet
Archive, users of the Wayback Machine can view more than 240
billion pages stored in its archive that are hosted on servers
located in the United States. The Wayback Machine has six staff to
keep it running and is operated from San Francisco, California at
Internet Archive's office. None of the computers used by
Internet Archive are located in Canada."
The plaintiff used copyright claims to seek the removal of this
content from the Internet Archive servers, and these efforts
included DMCA notices in the US. Ultimately unsatisfied with the
results, the plaintiff commenced an action in Federal Court in
Canada based on copyrights. The Internet Archive disputed that
Canada was the proper forum: it argued that California was more
appropriate since all of the servers in question were located
in the US and Internet Archive was a California entity.
Since Internet Archive raised a doctrine known as "forum
non conveniens", it had to convince the court that the
alternative forum (California) was "clearly more
appropriate" than the Canadian court. It is not good enough to
simply that there is an appropriate forum elsewhere, rather the
party making this argument has to show that clearly the
other forum is more appropriate, fairer and more efficient. The
Federal Court was not convinced, and it concluded that there was a
real and substantial connection to Canada. The case will remain in
Canadian Federal Court. A few interesting points come out of this
This is not a privacy case. It turns upon copyright claims,
since the plaintiff in this case had acquired the copyrights to the
original content. Nevertheless, the principles in this case (to
determine which court is the proper place to hear the case) could
be applied to any number of situations, including privacy,
copyright or personality rights.
Interestingly, the fact that the plaintiff had used American
DMCA notices did not, by itself, convince the court that the US was
the best forum for this case.
The court looked to a recent trademark decision
(Homeaway.com Inc. v. Hrdlicka) to show that a trademark
simply appearing on the computer screen in Canada constituted use
and advertising in Canada for trademark law purposes. Here,
accessing the content in Canada from servers located in the US
constituted access in Canada for copyright purposes.
While some factors favoured California, and some favoured
Canada, the court concluded that California was not clearly
more appropriate. This shows there is a first-mover advantage
in commencing the action in the preferred
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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