This document discusses issues around jurisdiction in intellectual property cases involving the internet. It notes that the internet enables cross-border activities routinely, but different countries have different laws. The Berne Convention says protection is governed by the laws of the country where protection is claimed, but there is no consensus on what this means. Courts in different countries have taken different approaches in cases involving Google and file sharing websites. Resolving jurisdiction questions in internet IP cases remains an ongoing challenge.

1. CCIL Panel on Intellectual Property – Jurisdiction in the Internet Age 1
McCarthy Tétrault Advance™
Building Capabilities for Growth
CCIL Panel on Intellectual Property –
Jurisdiction in the Internet Age
Daniel G.C. Glover, McCarthy Tétrault LLP
McCarthy Tétrault LLP / mccarthy.ca / November 2011 10872017

2. CCIL Panel on Intellectual Property – Jurisdiction in the Internet Age 2
Why Is Jurisdiction Important?
• The Internet makes cross-border events routine
• Different standards apply in different countries
• Relevant to ©, ™, privacy and defamation
• Forum conflicts increasingly prevalent
• Perfect 10 pursuing Google in the United States and
Canada, potentially with different results
• Supreme Court has recognized “the spectre of
overlapping liability” but suggests “the answer lies in the
making of international or bilateral agreements”
• These agreements exist between collective societies,
but not on a country-to-country level
McCarthy Tétrault LLP / mccarthy.ca

3. CCIL Panel on Intellectual Property – Jurisdiction in the Internet Age 3
Berne Convention, Art. 5(2)
“The enjoyment and the exercise of these rights shall
not be subject to any formality; such enjoyment and
such exercise shall be independent of the existence of
protection in the country of origin of the work.
Consequently, apart from the provisions of this
Convention, the extent of protection, as well as the
means of redress afforded to the author to protect his
rights, shall be governed exclusively by the laws of
the country where protection is claimed.”
Is this a principle of non-discrimination?
Is it a choice of law rule?
McCarthy Tétrault LLP / mccarthy.ca

4. CCIL Panel on Intellectual Property – Jurisdiction in the Internet Age 4
There Is No Consensus on What Art. 5(2) Means!
“The national treatment obligation of the Berne Convention …
suggests that some notion of „place‟ … should be controlling.
But… it is not clear which „place‟ is the most relevant.”
- Graeme B. Dinwoodie
“Article 5(2) might direct the application of the forum‟s conflict law
(or even its substantive law), but it does not tell us the basis on
which the forum became the forum. … At most, then, article 5(1)
and (2) anticipate that the law of the territories on which alleged
infringements occur will determine most questions regarding the
existence of protection, its scope, and the available remedies.”
- Sam Ricketson & Jane C. Ginsburg
“[Article 5(2)] is, in a way, a confirmation of the independence of
protection, and underlines that there is no need to refer to the law
of the country of origin in these respects.”
- WIPO Guide to the Copyright and Related Rights Treaties
McCarthy Tétrault LLP / mccarthy.ca

5. CCIL Panel on Intellectual Property – Jurisdiction in the Internet Age 5
Tariff 22 (Supreme Court of Canada, 2004)
• Copyright law respects the territorial principle, reflecting
the implementation of a “web of interlinking international
treaties” based on the principle of national treatment
• The applicability of our Copyright Act to communications
that have international participants will depend on whether
there is a sufficient connection between this country and
the communication in question for Canada to apply its law
consistent with the “principles of order and fairness ... that
ensure security of [cross-border] transactions with justice”
• A telecommunication from a foreign state to Canada, or a
telecommunication from Canada to a foreign state, “is
both here and there”. Receipt may be no less “significant”
a connecting factor than the point of origin (not to mention
the physical location of the host server, which may be in a
third country).
McCarthy Tétrault LLP / mccarthy.ca

6. CCIL Panel on Intellectual Property – Jurisdiction in the Internet Age 6
Sirius Canada v. CSI, 2010 FCA 348
• Sirius Canada offers satellite radio services
• CSI is a collective society administering the right to
reproduce
• To deliver the service to Canadians, Sirius contracts with
studios in the USA
• The studios make copies that are used to beam a signal to a
satellite for reception across North America
• Sirius Canada did not contest liability respecting broadcasts
received in Canada
• Did Sirius Canada infringe the Canadian Act by authorizing
U.S. reproductions?
McCarthy Tétrault LLP / mccarthy.ca

7. CCIL Panel on Intellectual Property – Jurisdiction in the Internet Age 7
Sirius Canada v. CSI, 2010 FCA 348
• Federal Court of Appeal rejects argument that the “real and
substantial connection” test applies to reproductions.
• While CSI argued that rightsholders would suffer because
of lack of coverage, the FCA found it was wrong to “assume
that the making of the copy in these circumstances cannot be
subject to the copyright laws of the United States.”
• Tariff 22 case distinguished because it required a
determination of the location of a communication initiated in
one country and received in another. The principle does not
apply where the completed copy exists only in one location.
• Although the alleged acts of authorizing occurred
in Canada, they are not actionable under the Copyright
Act where the primary infringement occurs outside Canada.
McCarthy Tétrault LLP / mccarthy.ca

8. CCIL Panel on Intellectual Property – Jurisdiction in the Internet Age 8
SAIF v. Google (Paris Court of Appeal, Jan. 2011)
• Google indexed, cached and made visual works available
• Indexing and caching take place in U.S., which is also the
place of the transmission
• Google relied on U.S. law to assert fair use defences
• Court of First Instance interprets Art. 5(2) to require
application of the law of the place where the alleged harm was
produced
• Court of Appeal reverses, requiring application of the law of
the place where the alleged harm was sustained
• Decision on choice of law does not impact result, as Google is
found to qualify as a neutral intermediary under French law
McCarthy Tétrault LLP / mccarthy.ca

9. CCIL Panel on Intellectual Property – Jurisdiction in the Internet Age 9
Google Inc v Copiepresse et al
(Belgian Court of Appeal, 9th Chamber, May 2011)
• Google claimed that U.S. law applied because it cached
articles in the U.S. and transmitted article titles and extracts to
Belgian readers from the U.S.
• Google relies on U.S. law to assert fair use and avoid moral
rights claims
• Authors and publishers claimed that Belgian copyright law
applied because Belgium had the closest connection to the acts
of infringement
• Court of Appeal finds that all acts are subject to Belgian
copyright law on test of closest connection
• Google found to have infringed copyright and moral rights
 Should the Court have distinguished between
reproductions and communications to the public?
McCarthy Tétrault LLP / mccarthy.ca

10. CCIL Panel on Intellectual Property – Jurisdiction in the Internet Age 10
Columbia v. Fung (Central Dist. Cal.)
“United States copyright law does not require that both parties
be located in the United States. Rather, the acts of uploading
and downloading are each independent grounds of copyright
infringement liability. Uploading a copyrighted content file to
other users (regardless of where those users are located)
violates the copyright holder‟s §106(3) distribution right.
Downloading a copyrighted content file from other users
(regardless of where those users are located) violates the
copyright holder‟s §106(1) reproduction right… Accordingly,
Plaintiffs need only show that United States users either
uploaded or downloaded copyrighted works; Plaintiffs need not
show that a particular file was both uploaded and downloaded
entirely within the United States.”
- Decision on Permanent Injunction, May 10, 2010
McCarthy Tétrault LLP / mccarthy.ca

11. CCIL Panel on Intellectual Property – Jurisdiction in the Internet Age 11
ALI Principles Governing Jurisdiction,
Choice of Law and Judgments
“These Principles endeavour to refine the connecting factors derived from
the Berne Convention and its article 5.2.… Earlier drafts… envisioned a
commercial environment in which the importance of national borders
would progressively wane. Given that impending future, the Principles
offered an opportunity to devise forward-looking rules… While
multinational distribution implicates many countries, to view the dispute as
a collection of local litigation sticks in a worldwide bundle is to overlook the
real scale of the enterprise.
“Nonetheless, territoriality remains a powerful intuition. It is difficult to
accept the proposition that an act unlawful in one territory should give rise
to liability in another, where that same act is permissible, even where that
territory is part of a global market.… These Principles thus retain the basic
rule of territoriality, but allow the parties to simplify the choice of applicable
laws by agreement, and when an infringement is instantaneous and
worldwide.”
• Applied in Lucasfilm v Ainsworth [2011] UKSC 39
• Considered in Columbia Pictures v. Wang, 2006 SKCA 97
McCarthy Tétrault LLP / mccarthy.ca

12. VANCOUVER MONTRÉAL
Suite 1300, 777 Dunsmuir Street Suite 2500
P.O. Box 10424, Pacific Centre 1000 De La Gauchetière Street West
Vancouver BC V7Y 1K2 Montréal QC H3B 0A2
Tel: 604-643-7100 Tel: 514-397-4100
Fax: 604-643-7900 Fax: 514-875-6246
Toll-Free: 1-877-244-7711 Toll-Free: 1-877-244-7711
CALGARY QUÉBEC
Suite 3300, 421 7th Avenue SW Le Complexe St-Amable
Calgary AB T2P 4K9 1150, rue de Claire-Fontaine, 7e étage
Tel: 403-260-3500 Québec QC G1R 5G4
Fax: 403-260-3501 Tel: 418-521-3000
Toll-Free: 1-877-244-7711 Fax: 418-521-3099
Toll-Free: 1-877-244-7711
TORONTO
Box 48, Suite 5300 UNITED KINGDOM & EUROPE
Toronto Dominion Bank Tower 125 Old Broad Street, 26th Floor
Toronto ON M5K 1E6 London EC2N 1AR
Tel: 416-362-1812 UNITED KINGDOM
Fax: 416-868-0673 Tel: +44 (0)20 7489 5700
Toll-Free: 1-877-244-7711 Fax: +44 (0)20 7489 5777
OTTAWA
Suite 200, 440 Laurier Avenue West
Ottawa ON K1R 7X6
Tel: 613-238-2000
Fax: 613-563-9386
Toll-Free: 1-877-244-7711
McCarthy Tétrault LLP / mccarthy.ca