As congressional lawmakers debate a sweeping anti-piracy bill, a United States judge has ordered Facebook, Google, Twitter, Yahoo and Microsoft to remove links to Websites selling counterfeit goods from their systems.
A federal judge in Nevada ruled in favor of luxury brand Chanel and allowed the company to seize more than 600 domain names it has identified as belonging to groups selling counterfeit Chanel items over the past few months. In the most recent order, issued Nov. 14, Judge Kent Dawson of the U.S. District Court for the District of Nevada also ordered that search engines and social media Websites must “de-index” those domain names and remove them from search results. The judge specifically requested that Facebook, Twitter, Google+, Bing, Yahoo and Google remove the links.
“I’m sympathetic to the ‘whack-a-mole’ problem rights owners face, but this relief is just extraordinarily broad and is on shaky procedural grounds,” Venkat Balasubramani, a lawyer focusing on media, technology and the Internet for Focal, a Seattle-based law firm, wrote on the Technology & Marketing Law blog Nov. 28.
Under the seizure order, the registrars who manage these domains are required to transfer them to domain registrar GoDaddy, who would point all the sites to a page that would notify users that the domain had been seized and was no longer accessible.
The judge had also ordered companies that were not named in the lawsuit, such as the original domain registrars, GoDaddy, Facebook, Google, Twitter, Yahoo and Microsoft, to comply with the ruling and remove all links from their sites, which is “problematic,” according to Balasubramani.
“I’m not sure how this court can direct a registry to change a domain name’s registrar of record or Google to de-list a site, but the court does so anyway,” he wrote.
The Department of Justice and Immigration and Customs Enforcement took similar action over the Thanksgiving weekend when authorities seized more than 130 domains selling counterfeit apparel and software as part of “Operation in Our Sites.” The seized sites were redirected to a page with a banner notifying visitors of the federal action and that copyright infringement was a federal crime.
The judge’s ruling had several elements in common with the Stop Online Piracy Act (SOPA) currently under consideration in the House of Representatives.
Lack of Due Process for Website Owners Raises Red Flag
The injunction requiring Google to delist sites and ordering registrars to transfer domains to another and changing DNS records without the owner’s consent are two remedies that SOPA “expressly makes available,” according to Balasubramani. The only difference was that if SOPA is enacted, rights holders wouldn’t even need a court order in some cases.
While major Internet companies and consumer advocacy groups are opposed to SOPA, the bill has backers from Hollywood and the music industry.
In light of the opposition to SOPA, a bipartisan group of Senate and House members drafted an alternative approach to SOPA on Dec. 1. Under the draft proposal, copyright holders would petition the U.S. International Trade Commission to investigate the alleged counterfeiters and the commission would have the authority to issue cease-and-desist orders where necessary. The alternative proposal was signed by 10 lawmakers from both parties, including Sens. Maria Cantwell (D-Wash.) and Mark Warner (D-Va.), and Reps. Darrell Issa (R-Calif.), Jason Chaffetz (R-Utah), Anna Eshoo (D-Calif.) and Zoe Lofgren (D-Calif.).
Balasubramani called the fight against SOPA in Congress a “red herring” since brand-owners are getting similar remedies through the courts regardless of what the law states. Even if SOPA is defeated, “it may turn out to be a Pyrrhic victory,” he said.
Balasubramani was concerned about the fact that Chanel filed a lawsuit against a group of defendants, who are independent of each other and don’t seem to be part of a conspiracy. The court also allowed Chanel to keep adding more defendants “at its convenience.” He also questioned the location of the lawsuit, noting that none of the domains were registered in Nevada. The fact that the judge’s order was issued with “minimal (or no) notice to defendants” raised “red flags” regarding due process, he said.
The initial lawsuit listed a little more than 400 domain names, but Chanel has added on more domains since then, with 228 new sites added in November. Chanel conducted its own investigation to identify counterfeiters. For the 228 domains most recently seized by Chanel as part of the Nov. 14 order, a Chanel-hired investigator ordered from three of the 228 accused sites and passed the goods received to a Chanel official who determined they were fakes, according to court documents.
The other 225 sites were reviewed by a Chanel anti-counterfeiting specialist who browsed the Web looking for counterfeit sites. None of the groups operating the domains had the opportunity to defend themselves before the judge approved the request and the domains had already been seized, according to Balasubramani.