MICHAEL GEIST
Thursday, September 6, 2001
To the casual observer, cyberlaw may appear to be little more than old wine in new bottles.
The issues that typify law on the Internet -- privacy, intellectual property rights, and competing jurisdictions among them -- have challenged jurists in the off-line world for many years.
Although it is true that the issues presented in cyberlaw cases are not unique to the Internet, the complexity of those cases, typically involving developing technologies, competing jurisdictions and a multiplicity of legal issues, should not be quickly dismissed.
Two recent Canadian cases illustrate the cyberlaw challenge. Guillot v. Istek Corp., a Federal Court decision released in late July, involved a copyright infringement claim over articles and links posted on a Web site.
The plaintiff, a U.S.-based trademark lawyer, claimed that a Canadian site had, without permission, copied both articles and a compilation of links posted on his site. He asked the court for an injunction to force the Canadian site to remove the allegedly infringing content immediately.
The judge in the case refused to issue the injunction. Although he acknowledged that the articles may have been copied, the judge also found that posting material on the Internet includes an implied licence to copy material to the extent necessary to make personal use of it.
In this case, there was no evidence that the Canadian site did anything that it was not implicitly authorized to do.
On the matter of the copied links, the judge added that there was no expert evidence presented indicating that the Canadian site's links were based on those compiled by the plaintiff.
While the decision highlights the challenge of applying traditional copyright principles to the Internet, it also demonstrates the difficulty of effectively explaining rapidly emerging technologies to those unfamiliar with the latest Internet developments.
In referring to the technology behind on-line linking and the downloading of documents, the clearly frustrated judge notes in the decision that "the technology involved in Internet publication is not a matter of judicial notice of knowledge. Many of the words used to describe what appears to be happening on the screen . . . are quite obviously metaphors and the Court cannot assume that they accurately describe what is actually taking place."
In Easthaven v. Nutrisystem.com, an Ontario court decision released in mid-August, a judge was faced with a range of issues including the legal rights associated with domain name ownership, the legal effect of ICANN's uniform domain name dispute resolution policy (UDRP), and Internet jurisdiction.
The facts of the case are particularly complex. Easthaven was a Barbados company that owned the domain name sweetsuccess.com. Nutrisystem.com, a Delaware company with its head office in Pennsylvania, owned trademarks in the name "sweet success," which it uses in connection with its weight loss products.
In the fall of 2000, Nutrisystem.com became aware that Easthaven owned the sweetsuccess.com domain and offered to purchase it. After Easthaven responded with an asking price of nearly $150,000 (U.S.), Nutrisystem.com launched a lawsuit in Pennsylvania under the U.S. anti-cybersquatting act as well as an ICANN UDRP action. The two-pronged approach worked -- although Nutrisystem.com lost its ICANN UDRP case, the Pennsylvania court asserted jurisdiction over the Barbadian company and eventually issued an injunction ordering the domain name transferred to Nutrisystem.com.
When that injunction was sent to Tucows, the Ontario-based domain name registrar, it became Easthaven's opportunity to launch a lawsuit as it asked the Ontario court to stop Tucows from transferring the domain.
It thus fell to an Ontario judge to decide the respective rights of a Barbadian and a U.S. company, while considering the effect of a Pennsylvania court order and an ICANN UDRP decision.
The judge ultimately refused to assert jurisdiction over the case, citing several reasons why Ontario was not the proper forum for the dispute.
First, he noted that this was a dispute over a domain name, which he characterized as an intangible property with no physical existence in Ontario.
Second, while lamenting the paucity of cases involving Internet jurisdiction, the judge concluded that there were insufficient ties to the province to merit asserting jurisdiction.
Finally, he argued that choosing between Ontario and Pennsylvania, the latter was the forum better suited to addressing the dispute.
Although it is hard to fault the judge for finding that Ontario was not the proper forum for this matter, the case is also illustrative of the complexity of cyberlaw. The judge appears somewhat perplexed at how the domain name system functions and how other courts have treated the question of Internet jurisdiction. Moreover, the relevance of the ICANN UDRP decision, in which a three-member panel refused to transfer the domain, is not discussed at all.
As Canadian courts face increasing numbers of cyberlaw cases, these issues will become more commonplace and therefore more easily resolvable. Until then, however, we can expect many more challenging cases that illustrate cyberlaw's complexity.
Michael Geist is a law professor at the University of Ottawa Law School and director of e-commerce law at the law firm Goodmans LLP. His Web site is http://www.lawbytes.com.
mgeist@uottawa.ca
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