The issue of online search engines and their ability to play a critical role in stopping access to infringing copyright material has been a very important one for rights holders.
In this particular dispute between Perfect 10, a website featuring high-resolution photographs of topless or nude women, and Google, Perfect 10 notified Google that its thumbnail images and in-line linking to full-size images infringe Perfect 10’s copyright. In particular, it alleges that the Google search engine program infringes its display and distribution rights. The court conducted an extensive examination of the factors needed to prove both infringing rights and held that Perfect 10 had a case against Google’s thumbnail images, but it was still required to show a likelihood of success against Google’s fair-use defence.
The US Congress has codified the fair-use defence, which permits the use of copyrighted work without the copyright owner’s consent. Much American jurisprudence stands for the proposition that this defence must be interpreted in a flexible manner and be similarly applied, calling for a case-by-case analysis. On the facts of this case, the court discussed the significantly transformative nature of Google’s search engine, especially given its public benefit, which, in the court’s view, was more important than Google’s incidental superseding and minor commercial use of the thumbnails in question. This factor ranked as one of the most important among many used to determine Google’s use of the thumbnails as being fair use, in light of the purpose of copyright law in the U.S.
The court then continued on an analysis of secondary liability for copyright infringement. Using the Grokster case, it said that Perfect 10 must prove Google’s activities intentionally induced or encouraged direct infringement. The two ways in which this may occur are (i) actively encouraging or inducing infringement through certain specific acts or activities or (ii) distributing a product whose use is to infringe copyright. On the second element, the court quickly concluded that Google cannot be held liable for contributory infringement based solely on the design of the search engine. That would be absurd. Rather, the court concentrated on the first category (intentionally encouraging infringement through specific acts).
The question before the court was therefore whether Google knowingly took steps that are substantially certain to result in such direct infringement. In the parallel Napster case, the court held that if a computer system operator has knowledge of infringing material and fails to delete the content from the system, it contributes to direct infringement. Under this reasoning, intent can be imputed. In the case at hand, the court relied on these above two cases and said that Google indisputably assists both websites in distributing infringing copies to a worldwide market and users in accessing infringing material. Since the lower court failed to analyze this point in detail and look at reasonable and feasible means for Google to curb access to infringing images, this claim has been remanded to it for further consideration.
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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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