An International Perspective

The greatest communications medium of our time, the Internet is also the world’s largest copy machine. But unlike traditional copy machines, the Internet, coupled with digital technology, makes near-perfect copies every time and allows a software pirate to send as many copies as he or she wishes by simply pressing a few buttons.

John Malcolm

Search Engines- ‘creating seas of information’

Now growing at a phenomenal rate, the Internet has moved from a quiet means of communication among academic and scientific research circles into the commercial arena and private homes. The Internet has become a major global data pipeline through which large amounts of intellectual property are moved. As this pipeline is increasingly used in the mainstream of commerce to sell and deliver creative content and information across transnational borders. A tool which proves to be handy and vital for the entire web user to filter out the website according to their need is Web Search Engines.

Search Engines causing threat to Intellectual Property

Search engines play a vital role in ensuring the free flow of the Internet and its core purpose access to information. However, copyright laws by their very nature; fundamentally challenge this concept of a freely accessible and flowing Internet. This conflict was alluded to in the case of Perfect 10 v Google 416 F Supp 2d 828, 831 (CD Cal, 2006) , where the Court held that the principal legal issues for search engines arise out of the increasingly recurring conflict between intellectual property rights on the one hand and the dazzling capacity of internet technology to assemble, organize, store, access and display intellectual property “content” on the other hand

The legality of linking by search engines has also been considered in a number of United States cases like Kelly v Arriba Soft Corporation, 280 F 3d 934 (9th Cir, 2002; withdrawn 9th Cir 3 July 2003) where plaintiff Leslie Kelly had copyrighted many images of American west. Some were located on her website. Defendant produced thumbnail pictures in its search engine’s search results and by clicking on them; larger version could be viewed within Arabia’s page. Circuit court held that, use of thumbnails is fair use but display of larger image within its web pages is violation of author’s exclusive right to publicly display his works.

Types of Copyright Infringement

In one of the most important jurisdictions for search engines, the United States, Courts have also held third parties liable for copyright infringement under two long standing common law doctrines of contributory infringement and vicarious liability.

Under the doctrine of contributory infringement, a third party can be held liable for indirectly infringing copyright where they have knowledge of the infringing activity and either induce, cause or materially contribute to the infringing conduct of another. Contributory liability with regard to copyright infringement over the Internet may be used here as laying down the parameters for contributory liability where it is found that a person (1) with knowledge of the infringing activity, (2) induces, causes or materially contributes to the infringing conduct of another. Thus, courts defined contributory infringement as knowingly making a material contribution to an infringement.

Global analysis of effectiveness of laws dealing with search engine liability

The US Digital Millennium Copyright Act (DMCA), 1998 (as amended in 2005) safe harbor provisions mentions in detail about Information Location Tools which functions as linking users to an online location which is the primary service provided by search engines, and thus the specifics of the provisions for “information location tools” are the focus point. (Section 512 (d) of DMCA, 1998).

Initial Eligibility Requirements

This provision of DMCA mentions that the service provider must have adopted and reasonably informed and implemented a policy that provides for the termination in appropriate circumstances of subscribers and account holders of the service provider’s system or network who are repeat infringers(Section 512 (d) of DMCA, 1998).

Counter-Notification Procedures

Section 512(g)(3)  provides that a service provider can still be held liable for removal of material residing at the direction of a subscriber of the service provider on a system or network controlled or operated by or for the service provider unless the service provider fulfills three requirements. First, the service provider must take reasonable steps promptly to notify the subscriber that it has removed or disabled access to the material. Second, upon receipt of a counter-notification from the subscriber, the service provider must provide the original complainant with a copy of the counter-notification and a warning that it will replace the material in ten business days. Finally, the service provider must replace the material, within ten to fourteen days after receipt of the counter-notification, unless the original complainant notifies the service provider that it has filed an action seeking a court order to restrain the subscriber from engaging in infringing activity relating to the material on the service provider’s system or network

Principles laid down by US judiciary which acts as a shield for protection of Search Engine liability In case of Field v. Google (412 F.Supp.2d 1106 (C.D Cal. 2006) assuming, for the purposes of summary judgment, that Google’s display of cached links to Field’s work did constitute direct copyright infringement, the court considered four defenses raised by Google, and found in its favour on all counts.

Implied License

First, the court found that the plaintiff had granted Google an implied, nonexclusive license to display the work because “consent to use the copyrighted work need not be manifested verbally and may be inferred based on silence where the copyright holder knows of the use and encourages it.” Field’s failure to use meta-tags to instruct the search engine not to cache could reasonably be interpreted as a grant of a license for that use.

Fair Use

In a detailed analysis, the court concluded that Google’s cache satisfies the statutory criteria for a fair use:

Purpose and character of use

The search engine’s use of the protected material is transformative. Rather than serving an artistic function, its display of the images served an archival function, allowing users to access content when the original page is inaccessible.

Nature of the copyrighted works. Even assuming the copyrighted images are creative, Field published his works on the Internet, making them available to world for free; he added code to his site to ensure that all search engines would include his website in their

search listings.

Amount and substantiality of the use

The court found that Google’s display of entire Web pages in its cached links serves multiple transformative and socially valuable purposes. The court considered  U.S Supreme Court decision in Sony v. Universal Studios 464 U.S. 417 (1984), held that “there must be a balance between a copyright holder’s legitimate demand for effective protection, and the rights of others to freely engage in substantially unrelated areas of commerce.”

European Union

In order to counter infringement caused by Search Engines, the EU has introduced Article 23 of ‘Regulation on the Protection of the Right to Network Dissemination of Information, of EU Directive2006’ which says that-

“Where a network service provider provides any searching or linking service fully aware or should have known that any of the works, performance or audio-visual products it has linked to constitute an infringement, it shall be subject to the liability of copyright infringement.”

Google v. Copiepresse No. 06/10.928/C (13^th Feb. 2007)., Copiepresse, an organization that manages copyright for Belgium’s French and German language newspapers, alleged that Google had infringed the newspaper publishers’ copyright by caching, making automatic summaries of and reproducing the newspapers’ materials on the Google news website. The Court of First Instance ordered Google to remove the articles, photographs and graphical images from the various Belgian newspapers on Google News and Google’s Belgian search website. The Court rejected Google’s argument that it was a non-infringing fair use to store cached copies of the newspaper articles and use short extracts from the articles on the Google News website. In February 2007, the injunction was upheld but the Court reduced the penalty payable by Google

Situation in India

Section 2(ff) of Indian Copyright Act 1957 talks about “communication to the public.” This definition of communication to the public could be stretched to cover the communication of contents of a Web site on the Internet and search engine as the expression ‘by any means of display’ has been used to define communication. Inlining  can also be expressed dealt under Section 14(a) (vi) of the Copyright Act 1957, which grants the right of adaptation only to the owner of the copyrighted work.

The first case law dealing with this issue was in the year 2007, when T-Series brought a case against You Tube.com and its parent company Google Inc. for earning profits at the expense of a rightful copyright owner by allowing its subscribers to upload T-Series copyrighted materials without obtaining any license and permission from T-Series. In the ordinary course of event, T-Series should have proceeded against the user who has posted such content. Under Section 51 of the Indian Copyright Act 1957 this could be taken as infringing the Copyright by the user.

Section 63 also includes within its scope abetment of infringement. Under its parent company Super Cassettes Industries Limited (SCIL) brought an action against YouTube and its parent company Google Inc. The Delhi High Court passed an order of interim injunction against YouTube and its parent company Google against the business practice of YouTube of earning profits at the expense of a rightful copyright owner on the reasoning that SCIL’s revenue comes from manufacturing and selling DVDs, CDs and audio cassettes of its copyrighted music and from royalties collected by licensing the copyrighted music to radio stations, telecom operators and internet websites. It seems that both the parties will settle the matter by Negotiation.

Similarly in thecase of Super Cassettes Industries Ltd. V Yahoo Inc. & Anr (CS (OS) 1124/2008 of Delhi High Court), the Honorable High Court of Delhi On Friday, May 30th 2008 issued notice to Yahoo Inc. and its Indian subsidiary Yahoo Web Services (India) Pvt. Ltd on a suit filed by Super Cassettes Industries Limited (SCIL) owner of the largest Indian music label “T-Series” for infringement of their copyright caused by unlicensed streaming of SCIL’s copyright works on Yahoo’s portal video.yahoo.com as the plaintiff found that the defendants are infringing the copyright of the plaintiff by hosting and streaming the songs, mainly partial and full video clips of audio-visual songs in which the plaintiff owns the copyright, on its website, www.video.yahoo.com.Legal Notices were served but it was found that the copyrighted works were not removed by the company.

Hima Kohli J. passed an order that the defendants and/or its officers, servants, agents and representatives are restrained from reproducing, adapting, distributing or transmitting in any manner on their website, ‘www.video.yahoo.com’ or otherwise infringing in any manner, the cinematograph films, sound recordings and/or the underlying literary or musical works of the plaintiff, in which the plaintiff claims copyright, without obtaining an appropriate license from the plaintiff.

Grey points of  Indian Copyright Law dealing with search engine liability

India Under the Information Technology Act, 2000, Section 43(b) deals with the copying of the data, computer database or information over a computer, computer system or computer network. Section 79 absolves ‘Network Service Provider’ from certain liabilities. Both of the Sections are not potent enough to bring Search Engines under its ambit. The key question is now whether Search Engine by directing the users to the specific web pages makes it “available” to the user. Obviously the question will be negatively answered. Although there are no precedents in India but as per the judgment in the Perfect10 v. Amazon.Com should be welcomed in which the Ninth Circuit court held-:

“In case of search engines the HTML instructions do not themselves cause infringing images or materials to appear on the user’s computer screen. The HTML merely gives the address of the image to the user’s browser. The browser then interacts with the computer that stores the infringing image or materials. It is this interaction that causes an infringing image to appear of the user’s computer screen.”

Thus a Search Engine in India cannot be held liable for Direct Copyright Infringement. Further, under Section 51 (a) (ii) the Search Engines can provoke defense that they were “unaware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright”. However where it is proved that the Search Engines were made known of the infringing act they can be held liable under contributory liability and injunctive orders can be passed against them.

Conclusion and Suggestions ‘Effectiveness of laws and the way ahead’

Search engines, such as Google and Yahoo are critical to accessing knowledge in the Internet environment. They enable Internet users to find and retrieve information and documents, trawling the internet using ‘robots’ and caching material for ease of access and presentation. It is therefore essential, that copyright laws accommodate the great potential which search engines have to offer society and ensure the free flow of information on the Internet.

In many jurisdictions throughout the world there still remains uncertainty as to whether search engines can be held liable for infringing copyright. In particular, provisions regarding the caching of copyright material, the extent to which fair use or fair dealing will apply, secondary or authorization liability and the operation of safe harbor provisions all need to be clarified from the perspectives of search engines. Compounding this uncertainty is the lack of clear judicial precedent regarding search engine liability for copyright infringement.

However, no law can claim to be perfect, so is the case with laws of various countries dealing with liability of search engine in the copyright regime. The difficulty arises when the line of distinction between public and private users gets narrowed, due to availability of materials on internet and causes infringement. Although, it is not possible to delimit the activities in totality on the Internet, still, some precautionary measures can be taken regarding the same so that the rights of the producer or the author can be protected and safeguarded.

BY LAWZ BUREAU