Archive for Ben Challis

Travis Scott takes action against former management



Travis Scott (Jacques Webster), the US rapper, singer, songwriter and record producer, has accused the artist management company owned by music industry veteran Lyor Cohen (now  top music man at YouTube) of violating California’s Talent Agencies Act.

It’s a two way battle: LCAR Management sued Scott earlier this year claiming that the rapper, who had been a client, owed the firm $2 million. Now, according to Billboard, Scott has responded by accusing LCAR of Talent Agencies Act violations by allegedly booking shows for him without the approval of his actual talent agent, and therefore acting as if a talent agency in itself – without a licence from the California state Labor Commissioner.

Scott is seeking to void his contract with LCAR on the basis of the alleged violations. There are further allegations including that LCAR allegedly used Scott to promote Cohen’s other business venture, even though he had no affiliation with that business. LCAR is yet to respond to Scott’s claims.

Lil Wayne adds Universal to his ‘Cash Money’ litigation

Recorded music


Lil Wayne has added Universal to his ‘Cash Money’ litigation in a New Orleans law suit that accuses the Cash Money record company and its major label partner of colluding to deny Lil Wyane royalties that are properly payable to him.  Cash Money co-owners Bryan “Birdman” Williams and Ronald “Slim” Williams are also added to the pending suit that asserts a conspiracy and seeks more than $40 million in actual damages. 

Cash Money are Lil Wayne’s long-time label and the dispute includes both a complaint over the delayed release of his long awaited ‘Tha Carter V’ album, and the royalties Wayne claims are due from records released by his joint venture imprint Young Money, which includes albums from Drake.

Last year Wayne sued Universal Music directly. In that case, the rapper argued that Universal, which distributes Cash Money and Young Money releases, was withholding monies generated by the latter label’s records in order to recoup advances previously paid to the former. Wayne argued that his share of Young Money income should not be applied be used to recoup Cash Money’s debts. That law suit, which also lists US collecting society SoundExchange as a defendant, was subsequently put on hold, because the court overseeing the proceedings decided that Wayne’s existing litigation against Cash Money itself should be resolved first.

Now Wayne has added Universal Music as a defendant on the ‘Cash Money’ litigation, citing various alleged agreements between the major and Cash Money boss Bryan ‘Birdman’ Williams which, he says, interfered with his rights in the Young Money venture, and income linked to Drake releases in particular. He also alleges that those agreements were back-dated and this ensured he lost out even more and “Despite Universal being aware of Cash Money’s obligations to pay royalties and profits to plaintiffs, and Cash Money’s failure to do so, Universal made a series of huge cash advances to Cash Money which Universal contended were nonetheless collateralised by, and recoupable by Universal against, the future revenues on Drake and other artist records and albums delivered by Cash Money”.


The amended lawsuit demands a third of the net profits from Drake’s recordings, the right to audit both Cash Money and Universal Music, and the right to take ‘Tha Carter V’ to another label for release, and that a “receiver be appointed to supervise the operations of the Young Money label joint venture” or “the joint venture be adjudged terminated and a liquidator appointed”.

The European Copyright Directive, safe harbour and the value gap found in the middle of it

Internet, digital


The EU’s E-Commerce Directive created the ‘safe harbour’ to protect Information Society Service Provides (ISP) where, subject to certain requirements, they unknowingly provided copyright-infringing material.


Take the YouTube example; due to the scale and amount of content that is uploaded to YouTube on a daily basis, it is almost an impossible task to monitor all content for copyright-infringing material. Therefore, and providing YouTube is doing all that it can in actively monitoring for copyright infringing content, it is protected by the ‘safe harbour’ rules. These rules mean that YouTube cannot be found to be liable for the infringement. However, with all rules there is an exception, the general exception for the safe harbour rules mean that if a ISP is put on notice that it is hosting infringing material it must act efficiently and expeditiously to remove the content, if this does not happen the ISP may be found to be liable.


It has been argued by both the music publishing and recorded music sectors that sites such as YouTube exploit the safe harbour rules. It is said that YouTube uses the safe harbour rules to effectively pay (much) lower royalties to copyright holders and this creates….(you guessed it!) the value gap! The value gap is effectively a tug of war match against the revenue that sites such as YouTube makes from advertising and the like, against the royalties it pays to copyright holders when their content is available on the site. Why is the ‘platform’ worth more then the content?


The proposed Digital Single Market Directive has the value gap in its sights. Article 13 of the proposed directive would provide that ISPs must put measures in place that ‘prevent the availability on their services of works or other subject-matter identified by rightsholders’ by using ‘effective content recognition technologies’. In layman’s terms, the implementation of the proposed Article 13, as it stands, would mean that ISPs are subject to a general monitoring obligation.


However, and as one would expect, the proposed directive has been the subject of considerable lobbying. 104 organisations and entities have made their thoughts be known. The president of GESAC, a representative of 32 authors societies based in 27 EU countries, said the proposal was “encouraging” and that “creators’ freedom of expression can only exist if there is a freedom to create and to be remunerated fairly”. On the other hand, the European Digital Media Association said that the requirements under the proposed Article 13 “would cripple innovation and undermine free expression for millions of EU citizens and businesses”.


Two committees in the European Parliament have now voted on their respective responses to the draft European Copyright Directive, and the music industry has generally welcomed those responses. The Consumer Rights Committee had already responded, and now both the Culture and Industry Committees have now had their say, and with regard to safe harbour, both committees resisted calls to abandon or weaken Article 13, instead seeking to reinforce and further clarify the draft article and the new obligations of safe harbour dwelling services of the YouTube variety. They also responded to a proposal  put forward by the Consumer Rights committee that would provide an exception for user-generated content which the music industry said !could have a profound impact on the creative community with rights holders having to initiate expensive legal proceedings to establish the actual boundaries of such an exception”. In relation to that proposal, yesterday’s committees voted (a) against the idea entirely, or (b) to leave such matters to national law within the EU, rejecting the idea that European law-makers should make such an exception compulsory for member states.

The music industry welcomed the news: Helen Smith the independent label’s IMPALA said: “It makes complete sense to narrow the value gap and the parliament has sent a strong message this morning. That’s very good news – recalibrating the digital market in this way is necessary to stop creators, start-ups and citizens being dominated by abusive practices of big platforms who don’t pay fair or play fair”.

Gadi Oron of CISAC said: “It is good news to see policy makers in Europe standing up for creativity and culture and voting to close vital loopholes that are harming millions of creators. These two committees have understood the opportunity for Europe to take the lead in making sure creators in the digital market are properly respected and fairly remunerated. We now look for this positive signal to be confirmed in the plenary vote of the European Parliament later this year”.

The important Legal Committee will lead the final round of responding after the summer break. The EU Parliament will start the voting procedure with the Council Of The EU also scrutinising and potentially and amending what’s been proposed.


Although, the value gap is not the only issue that the proposed directive seeks to address. There are aims in Article 14 to ensure that authors and performers receive sufficient information regarding the exploitation of their works. This includes being notified of whom has been licenced or transferred the rights and revenues generated and remuneration due. The proposed Article 15 will provide that authors and performers will be entitled to request additional remuneration where the original remuneration agreed is now disproportionately low. Smith also welcomed recommendations made by the culture committee with regard to the contract adjustment mechanism, which would likely limit the reach of the new measure so that in music it would only really apply to session musicians who work at ‘mates’ rates’ on an unexpected hit.


The proposed directive does make one thing clear, the EU has realised that many elements of copyright do need a ‘update’ in order to succeed and that the value gap needs to be lessened. One thing that is not so clear is whom will have the greatest lobbying power, the content creators (including the record labels, artists, music publishers, CMOs) or the ISPs and technology giants.


By Samuel O’Toole –

US music publishers up the stakes with Spotify

Music Publishing, collection societies


Tensions between Spotify and National Music Publishers Association are reportedly rising in the USA with the arguments now focussing on the so called ‘mechanical right’ which generates a mechanical royalties on Spotify streams – and which cannot be collected bu US collecting societies BMI and ASCAP which only represent the performing rights in songs.

Spotify can benefit from the compulsory licence schemes for mechanical rights Stateside, and hired The Harry Fox Agency (previously owned by the NMPA) to manage the process, but a group of independent songwriters and music publishers  who were  not represented by HFA went unpaid, and this resulted in class action litigation led by musicians David Lowery and Melissa Ferrick – a battle where the NMPA intervened as a peace maker: as the legal battle began in early 2016, the NMPA announced a settlement deal with Spotify over previously unpaid mechanicals. Subsequently Lowery and Ferrick’s class actions were settled in May this year.

But now reports say that the NMPA has been pushing for new commitments from Spotify (not least as the major recorded music groups have equity stakes in the soon to be listed streaming giant – unlike the major music publishers) and are challenging the streaming company’s often used excuse that it cannot always pay mechanicals royaties as there simply isn’t an accurate database of music rights owners to access. The NMPA has stated in a recent letter that it knows of examples where mechanical royalties went unpaid on songs where the ownership information for said works was clearly listed at the US Copyright Office. Will legal action follow?

Barry based security firm under investigation

Live events sector


A Welsh event security firm is under investigation by the Security Industry Authority (SIA) for allegedly supplying unlicensed stewards to several British music festivals. The Security Industry Authority (SIA) confirmed it was investigating LS Armour Security Ltd of Barry, South Wales, following a compliance check. The SIA It said it was “exceptional” for it to comment publicly and had taken “unprecedented action due to public safety.” The investigation is looking at wether the firm supplied cloned badges to unlicensed stewards at UK festivals.

Reports say that Lee Szuchnik of LS Armour Security, had advertised for security staff for several festivals this summer, including Glastonbury Festival, Shindig Weekender in Bruton, Somerset, and Mutiny Festival in Portsmouth. The company has also been recruiting for stewards for Liverpool International Music Festival and Lewes Live Festival later this month.


In a statement, an SIA spokesman said: “This type of unlawful conduct remains rare due to responsible organisers and security providers conducting appropriate due diligence ….

Nevertheless, the SIA understands that at this time of year, event organisers and primary contractors may not have sufficient SIA-licensed staff, which can lead to extensive sub-contracting” and “This provides opportunities to rogue providers that, with appropriate checks by organisers and primary contractors, can be largely mitigated.”

In a letter to promoters, the SIA’s deputy director said: “If SIA-licensed staff arrive on site and are unknown to you, you must take all reasonable steps to ensure the person named on and in possession of the licence are the same person by requiring them to provide further evidence of identity. “This will mitigate the risk of the cloned licence.”


The SIA adds: “The SIA will be contacting organisers of events and festivals known to be using LS Armour Security Ltd and will work with them and to ensure that operatives are correctly licensed.” Any event which has hired, or security company which has contracted, LS-supplied staff is being advised to check the register of SIA licence-holders.

And more on Access All Areas here

Cross party support to protect pre-1972 sound recordings and a new music database in the USA

Recorded music, broadcasting


US legislation has been introduced to close the long-standing anomaly in US copyright law which means that pre-1972 sound-recordings are nor protected by federal law, a position highlighted in the long running litigation between SiriusXM and Flo & Eddie, the California corporation with the rights to songs by the 1960s group The Turtles (“Happy Together,” “She’d Rather Be With Me”).


The Compensating Legacy Artists for their Songs, Service and Important Contributions to Society Act (CLASSICS) was introduced by a group of House Republicans and Democrats, including Rep. Darrell Issa (R-Calif.) and Rep. Jerrold Nadler (D-N.Y.). Issa is the chairman of a key House Judiciary subcommittee on intellectual property, and Nadler is the ranking member

The legislation would make the owners of the pre-1972 recordings eligible for royalties for digital broadcast. The legislation also ensures that artists are entitled to the same share of royalties regardless of whether a label and a digital music platform reach an agreement on payment.

“This an important and overdue fix to the law that will help settle years of litigation and restore some equity to this inexplicable gap in our copyright system,” Issa said.

“For years, we have been working to ensure royalty payments for artists who recorded many of our great musical classics before 1972,” said Nadler.

SoundExchange would distribute the royalties for the pre-1972 recordings, just as it does for music after that date.
However, the legislation does not address the other major contentious issue around sound recordings in the USA: namely that whilst digital and satellite broadcasters have to pay to play, unusually, traditional broadcast radio stations do not have to pay royalties to artists and labels for US airplay, even though the music industry has long sought legislation to require compensation for broadcasts of performances.

musicFIRST executive director Chris Israel said: “Recordings made before the arbitrary date of Feb. 15, 1972, are among the most popular and valuable in the world. And yet, because of an anomaly in U.S. copyright law, the creators of those sound recordings have had to endure years of litigation simply for the right to be paid, and the litigation continues to this day. It’s time for Congress to fix this injustice so legacy artists are paid when their music is used by digital radio.”

Recording Industry Association Of America CEO Cary Sherman said: “This bipartisan legislation helps close, once and for all, the loophole in federal law that has short-changed legacy artists for decades. If enacted into law as we hope it will be, music’s founding generation of iconic performers and creators will finally share some of the value generated by the music that is the backbone of digital radio. It’s the right thing to do, and that’s why a growing chorus of voices throughout the music community support this effort. We commend Representatives Issa and Nadler for their leadership on this important issue and encourage its swift passage”.

n another legislative move, The Transparency In Music Licensing & Ownership Act has been proposed by Republicans Jim Sensenbrenner, Blake Farenthold and Steve Chabot as well as Democrat Suzan DelBene. The Act would oblige the US Copyright Office to build a publicly accessible database of music rights ownership (both for compositions and sound recordings), while limiting the remedies available to copyright owners if they fail to provide the required data for the new system. The lack of a publicly accessible central database of music rights information (linking recordings to songs,  and listing who currently owns and/or controls those works) has been much debated within the music community for some time and the lack of such a database has been a real issue in the digital era, especially on the music publishing side. The much vaunted Global Repertoire Database, which had the support of PRS for Music, SACEM, ASCAP and Buma-Stemra amongst others, previously stalled in 2014.



US collecting societies ASCAP and BMI have now (26.07.17) announced that they are working on a combined music rights database that will be publicly available and which – the two organisations say – will “deliver an authoritative view of ownership shares in the vast majority of music licensed in the United States. Note: this is music only (and not sound recordings), its US based (not global) and doesn’t as yet include the involvement of the other two US music collection societies GMR and SESAC AND

Will legalities rain down on the Purple Rain stage show?

Live events sector, music publishing


It has been announced that a ‘jukebox musical’ made up of Prince’s songs will tour the UK next year and the current plan is that it will open very shortly with a string of dates across the UK.  


I say plan because Prince’s family or the Prince estate has not given permission for the musical. In fact, Troy Carter, entertainment advisor to the Prince estate has explained that “Neither Prince’s family nor the estate have given permission to use his name, likeness or music catalogue for this event”,


But do they need permission?  With the music, there are two licensing issues that must be taken into account. 


Firstly, let’s take the boring option, if the Purple Rain musical is in essence just a band performing Prince’s catalogue of music, nothing more, nothing less, so in effect a tribute band playing Prince songs (albeit under the guise of a musical) it would be likely that permission of the Prince estate would not be needed. This is because it is possible to obtain, or play a venues where  a PRS ‘blanket licence’ will cover the public performance of the musical works.


Now, the more entertaining option, but also the more complex option. This option is the entertaining option because it requires that the musical be dramatic, or theatrical. Technically speaking, the musical would need to be a ‘dramatico-musical’ work. Now for the more complex part, if the musical is to be….a musical, the involvement of the Grand Right will be taking a place on centre stage.  


The Grand Right exists in musical works that are specifically written for dramatic use. However, PRS does not licence this right, the right stays with the author or copyright holder of the musical work (isually a music publisher). The rationale behind why the right stays with the rights holder,(and not PRS) is due to the fact that proposed use means that the creator of the musical work would require a higher degree of control over the work.


In this Purple Rain musical case, the Grand Right is likely to be owned by the Prince estate or Prince’s publisher(s) This means that if the musical is to see the involvement of this right the permission of the Prince estate will be required, something that has not yet been obtained.


My thoughts on this, if the show goes on it is likely to be a cover band singing Prince songs with little involvement in the way of ‘theatricals’. This is because the musical producers will not need permission if it is only to be a performance of Prince songs.


However, that is if the show does go on at all. Music rights aside, Prince’s estate mention the fact that the musical will use Prince’s ‘name and likeness’:  and this may prompt additional concerns: Firstly,  one cannot discount an action for passing off or an action for Trade Mark infringement. The passing off principle means that one business cannot copy the distinctive features, or goodwill, of another company and pass themselves off as that company. 

In addition to this, and whilst image rights are not protected as a stand alone right in the United Kingdom, in other jurisdictions they may well also come into play.


And then there are the European Community and United Kingdom  Trade Marks foir  ‘Purple Rain’ filed in classes 9 and 41 and owned by NPG Records who are based in the USA and were and are, in  effect, Prince’s record label. These registered marks cover (amongst other things) “Entertainment services, namely, live musical performances; live stage performances in the nature of concerts; live music shows;”. Another company (Nova of London Limited) has a class 25 UK Trade Mark registration covering clothing a footwear (so potentially no merchandise for the stage show!).  Even without image rights and the Trade Marks, action might be taken which could potentially see an injunction being sought to prevent the musical’s producers using the goodwill that is associated with Prince, (and even in the Purple Rain film that starred Prince), for their own benefit.


At this point in time I am certainly more interested in the legalities rather than the musical itself. 


By Sam O’Toole, Trainee Solicitor, LawDit Music

Robyn Rihanna Fenty v Arcadia Group Brands Ltd (T/A Topshop) [2013] EWHC 2310 (Ch)

Stream-ripping tops music piracy chart

Internet, digital


A study carried out by PRS for Music and the Intellectual Property Office (IPO), has found that stream-ripping is now the most prevalent and fastest growing form of music piracy in the UK, with nearly 70% of music-specific infringement dominated by the illegal online activity.


Research revealed that the use of stream-ripping websites, which allow users to illegally create permanent offline copies of audio or video streams from sites such as YouTube, increased by 141.3% between 2014 and 2016, overwhelmingly overshadowing all other illegal music services.


In 2016, PRS for Music and the IPO jointly commissioned two separate studies by INCOPRO and Kantar Media to better understand stream-ripping and its impact on the UK market and online consumer behaviour. Over 9,100 consumers participated. 


Stream-ripping can be carried out via apps, websites, plug-ins or specially developed software on any online audio and video content to create a permanent audio-only copy of the music, without the rightsholders’ permission. Once saved, the track/file can be listened to offline on any digital device such as smartphones and tablets.


YouTube was found to be the most popular source of content for these sites, used by 75 of the 80 stream-ripping services surveyed. SoundCloud, Spotify and Deezer were amongst other popular licensed platforms most targeted.


While the majority of stream-ripping traffic was found to come from individuals actively seeking the illegal services directly, search engines also delivered a significant proportion of traffic to the stream-ripping services; notably, over 60% for in the case of download sites.


In a survey of over 9000 people, 57% of UK adults claimed to be aware of stream-ripping services and 15% claimed to have used a stream-ripping service. Those who claimed to have used a stream-ripping service were significantly more likely to be male, ABC1 social grade, and between the ages of 16 to 34 years.


Of those surveyed, apps were identified as the most common type of stream-ripping service in terms of both awareness, 11%, and use, 54%.


Reasons given for stream-ripping were: music was already owned by the user in another format (31%); wanting to listen to music offline (26%), or on the move (25%); unaffordability (21%) and feeling that official music content is overpriced (20%).


Advertising was found to be the main funding model keeping stream-ripping services active, with over half (52.5%) linked to malware/PUP advertising.*


Robert Ashcroft, Chief Executive, PRS for Music: “We hope that this research will provide the basis for a renewed and re-focused commitment to tackling online copyright infringement.  The long term health of the UK’s cultural and creative sectors is in everyone’s best interests, including those of the digital service providers, and a co-ordinated industry and government approach to tackling stream ripping is essential.”


Ros Lynch, Copyright and IP Enforcement Director at the IPO: “It’s great that legal streaming sites continue to be a hugely popular choice for consumers. The success and popularity of these platforms show the importance of evolution and innovation in the entertainment industry.


“Ironically it is innovation that also benefits those looking to undermine IP rights and benefit financially from copyright infringement. There has never been more choice or flexibility for consumers of TV and music, however illicit streaming devices and stream-ripping are threatening this progress.


“Content creators deserve to be paid for their work – it is not a grey area. This government takes IP infringement extremely seriously and we are working with our industry partners and law enforcement to tackle this emerging threat.”


Dennis Collopy, academic and music industry expert: “Consumer attitudes towards accessing music through the use of stream-ripping services is of great concern. As this research indicates, the advent of stream-ripping and the dominance of the 16-34 age group with high levels of digital literacy and an ability and willingness to find alternative ways to access free music, suggests there are problems convincing not just the post-Napster but also the post-YouTube generation of the value of music.”

France’s Highest Court Rules in Favor of Freedom of Expression of Director over Heirs’ Droit Moral



This article was written by Marie-Andree Weiss


Readers of the 1709 blog may remember that the Paris Court of Appeals found in October 2015 that the staging of the opera Le Dialogue des Carmélites by Dmitry Chernyakov for the Munich Opera in 2010 violated the moral rights of composer and librettist Francis Poulenc, which adapted the eponymous theatrical play by Georges Bernanos.


Le Dialogue des Carmélites tells the story of French aristocrat Blanche de la Force who decides to enter the Carmelite Convent, possibly to be sheltered from life, as she is fearful and shy. The French Revolution upset her world and the Carmelites must leave the convent. Blanche leaves the congregation to return to her family. When the Carmelites are arrested and sentenced to death by the revolutionary tribunal, Blanche returns to them as they are each climbing the steps to the guillotine, and she is the last one to have her head cut off.


Dmitry Chernyakov had not modified the score or the dialogue. However, his interpretation did not take place during the French revolution, but in contemporary time. In the last scene, the Carmelites are locked up in a shed full of explosives. Blanche appears on the scene and pulls them all out to safety, one by one. She then comes back to the shed which explodes, killing her, an apparent suicide.


The heirs of both Francis Poulenc and Georges Bernanos had sued Dmitry Chernyakov and the Munich Opera, claiming a violation of their moral rights, which are which are perpetual and transferable upon death under Article L. 121-1 of the French intellectual property code. The Paris Court of Appeals had ruled in their favor, finding that the scenography profoundly modified the final scene and distorted its spirit. The DVD of the play could no longer be sold.


The director and the Opera took the case to the Cour de cassation, France’s highest civil court. The heirs argued in defence that “if a certain freedom can be recognized for the director to performance his work, this freedom is limited by the moral right of the author to the respect of the integrity and spirit of his work, which must not be denatured.”


But the Cour de cassation just ‘broke’ this holding on June 22. The Court reasoned that the Paris Court of appeals had noted that “the contested staging did not modify the dialogue, absent in this part of the pre-existing work, nor the music, even going so far as to reproduce, along with the religious songs, the sound of the guillotine which rhythms, in the Francis Poulenc opera,  each death, and that the end of the story, as staged and described by Dmitry Chernyakov, respected the themes of hope, of martyrdom, of grace and transfer of grace and of the communion of saints dear to the authors of the original work, [and that thereforethe Court of appeals did not draw the legal consequences of its own findings and violated [article L. 113-4 of the French intellectual property code]”

Article L.113-4 of the French intellectual property code states that “[t]he composite work is the property of the author who created it, subject to the rights of the author of the pre-existing work.”


In our case, the staging of the opera is a composite work, subject indeed to the rights of the authors of the pre-existing work, the opera. Such rights include moral rights. But the staging, as a composite work, is also a work on its own, protected by article L. 113-4. Since it does not infringe on the rights of the authors of the original work, their rights had not been violated.

This ruling is not surprising, as the Cour de cassation had held on m Mat 15th, 2015, that a Court of Appeals must explain “in a concrete manner how searching for the right balance between the rights[of the author of the original work and the rights of the author of the composite workjustified the sentence it had pronounced.”


The Cour de cassation also cited Article 10, § 2, of the Convention for the Protection of Human Rights and Fundamental Freedoms. Protecting freedom of expression, to find that the Court of appeals erred in forbidding the sale of the DVDs of the opera and its broadcast, because it should have examined “what in the search for a fair balance between the director’s freedom of creation and the protection of the moral rights of the composer and the author of the libretto justified the prohibition order it ordered.”

The Versailles Court of Appeals will not review the case again and will likely rule in favour of the director, and thus preserve his freedom to create and to express himself. Moral rights are often viewed in the U.S. as a way to censor creativity, and the 2015 Paris Court of appeals ruling certainly provided grounds for this view.

The Canadian Supreme Court brings music to the ears of the music industry

Internet, digital


The Canadian Supreme Court has brought music to the ears of the music industry, although it’s not a music case! 

It’s no secret, Google regularly links to content that is an infringement of copyright. It is also no secret that Google de-lists specific web pages that link through to copyright infringing content, but does not actually de-list the whole website.  Now the Supreme Court has ruled that the internet giant Can be forced to remove results worldwide, although the decision criticised by civil liberties groups who argue the judgment sets a precedent for censorship on the internet.

The landmark ruling from Canada’s Supreme Court, which will undoubtedly have a major impact in the music industry, comes in the case of Google v Equustek. The music industry has been complaining, for some time that whilst Google does remove individual web pages, it will not remove the whole website. And indeed it’s always a game of ‘whack a mole’ – as soon the infringing content is removed, it then just pops up again. And it should be noted, safe harbour obligations provide that Google should de-list the web page, but there is no obligation to de-list the whole website. This is a particular problem to the music and media industries, it is often the case that a web page will be de-listed one day and the next day a mirror page will appear – the Pirate Bay’s ever changing URLs were a great example of this

Equustek Solutions (Equustek), are a technology company based in British Columbia Canada and they accused another tech company, Datalink Technology Gateways (Datalink) of taking one of its products and relabelling it as its own. In addition Datalink was accused of taking Equustek’s confidential files and using the information to sell a product that competed with Equustek’s. 

Back in 2011, Equustek secured an injunction ordering Datalink to return all confidential information it had obtained, to cease the sale of the Equustek products and to route people wishing to obtain the Equustek products to Equustek itself. Datalink then went on to fail to comply with the injunction, and subsequently moved to a unknown location. Guess what… it continued to sell the Equustek products. It’s now 2012, Datalink and its director are now found to be in contempt of court. They have failing to make contact with the court for some time and a warrant for their arrest is out.  

Now it is time for Google’s involvement, with Datalink continuing to sell Equustek’s products, Equustek sought an injunction ordering Datalink to stop online trading. Where Datalink was in breach of the injunction Google went ahead and de-listed the web pages. Guess what… Datalink kept an eye out for the pages that had been deplisted and would create new pages to sell the products. That old game of cat and mouse, a web page will be delisted one day and the next day a mirror page will appear. 

Equustek then went back to court to obtain an injunction, it was hoped that the injunction would see Google ordered to de-list any Datalink website.  Google didn’t want to play ball, it argued that it was not a party in the dispute and that free speech would be hindered. 

The case eventually reached Canada’s Supreme Court in which it was ordered that Google de-list Datalink’s websites on a global basis. The (7-2 majority) of the court went on to state that if the injunction were to breach laws in other jurisdictions, free speech included, Google should explain that to the courts in BC and they would amend the injunction. 

As so many websites provide links to copyright infringing material, and the pages get de-listed by Google one day but a new link is back the next, Canada’s Supreme Court, might just be onto a winner with their global injunction. Although I am sure there are many advocates for free speech that will not be feeling the same way. 

Chief Executive officer of the International Federation of the Phonographic Industry, Frances Moore, said “Canada’s highest court has handed down a decision that is very good news for rights holders both in Canada and around the world. Whilst this was not a music piracy case, search engines play a prominent role in directing users to illegal content online including illegal music sites. If the digital economy is to grow to its full potential, online intermediaries, including search engines, must play their part by ensuring that their services are not used to facilitate the infringement of intellectual property rights”. 

OpenMedia, a Canadian group campaigning for open communications, opposed the ruling.

“There is great risk that governments and commercial entities will see this ruling as justifying censorship requests that could result in perfectly legal and legitimate content disappearing off the web because of a court order in the opposite corner of the globe,” said spokesman, David Christopher.

Google Inc v Equustek Solutions Inc, 2017 SCC 34 

By Samuel O’Toole Trainee Solicitor