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Published: Fri, 02 Feb 2018
liability of search engines for copyright infringement
Summary: This essay is primarily constructed to analyze the legal issues surrounding the liability of search engines for copyright infringement under Indian laws. While at certain places comparing it with US laws, the author will also touch upon the Information Technology Act. The essay then puts to test the possible defenses available to the search engines.
“I DID NOT UPLOAD THAT; I DIDNT KNOW ABOUT THAT. WHY AM I LIABLE?” ‘SAFE HARBORS’, ‘DUE DILIGENCE OBLIGATIONS’ AND ‘POSSIBLE DEFENCES’ FOR ONLINE SERVICE PROVIDERS IN INDIA
“When individual interest competes with social interest, then they should be socially engineered in a manner to provide the maximum of people’s wants with the minimum of friction and waste.” 
Search Engines has widely been described as a “man on the moon” endeavor. Generally an Online Service Provider (OSP) is that person who on behalf of another person receives stores or transmits electronic data over the internet.  Search engines squarely fall in this category. The liability of these online service providers is perhaps the most controversial legal issue to emerge from Cyberspace. For understanding as to how these search engines are alleged to be liable we need to understand the working in a nutshell. Web search engines work by storing information about many web pages, which they retrieve by a Web crawler — an automated Web browser which follows every link on the site. The contents of each page are then analyzed to determine how it should be indexed. Data about web pages are stored in an index database for use in later queries. The purpose of an index is to allow information to be found as quickly as possible. In Google, copies of the scanned Web pages are stored in its cache memory, a temporary online storage bank while others as AltaVista, store every word of every page they find. When they display Web pages, it displays another link to the cached Web site as well, which directs users to the archival copy.  It is this temporary storage that copyright holders claim is viciously infringing on their copyright.
Copyright holders have perpetually claimed that “If you can’t protect what you own then you don’t own anything”  . At the same time net-izens have stressed that “To promote the progress of knowledge on the Internet, those who are building the Net itself need fair and predictable ground rules”  . The question then boils down to certain fundamental issues: Should the search engines be treated as electronic publishers, and thus made strictly liable for the terabytes of cached memory? Or are they merely those innocent people who get paid to show you directions in a movie theatre so you can find your allotted seat? In the realm of law, the answer always lies midway, in the form of ‘indirect infringers’.  This essay shall assess the liability of these search engines vis-à-vis Copyright infringement. Copyright Infringement is territorial in nature and hence although other laws have been referred to, the central focus remains the INDIAN COPYRIGHT ACT, 1957. Part II shall analyze the possible defenses.
Indian Copyright Laws: How It Is Relevant To Cyber-Land
Under US copyright law safe harbors are provided with statutory status whereby search engine is not liable if they don’t have the actual knowledge  , is absence of such knowledge is not aware of facts from which in infringing activity is apparent  or upon obtaining such knowledge or awareness, acts expeditiously to remove  or does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity and on notice removing the same.  General exemptions are covered by s 51 of the Copyright Act which talks about “had no knowledge” and “had no reasonable ground for believing” that the material is causing infringement which is highly narrow unlike US and incapable of including many other situations. Considering the rate at which search engines are alleged to infringe peoples’ copyright, it is time either copyright act is amended to incorporate a similarly broader clause or a reference is to be made to Information technology Act, 2000. Under section 79 of the IT ACT in India , “safe harbors” are created for general liability of OSPs by the IT ACT under section 79 as amended in 2008 which included “no knowledge” and “due diligence”. This means that irrespective of the applicability of other laws, the rules under section 79 shall apply. However, pursuant to section 81, there is specific exclusion of the applicability of this protection to the liabilities under the COPYRIGHT ACT and the PATENT ACT. 
Therefore, for copyright violations by these engines, one has to be redirected to the scheme of the COPYRIGHT ACT itself. Copyright protection extends to “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”  For a plaintiff to have a copyright infringement action, there are two elements that need to be shown: (i) ownership of the copyright by the plaintiff and (ii) copying by the defendant. However, a factual finding of copying is not dispositive, and a court will also need to find whether the defendant’s copy is substantially similar to the plaintiff’s original work resulting into infringement”  Now, the Under the COPYRIGHT ACT of India and US, the reproduction of any literary work, even in electronic form, is specifically recognized as an exclusive right of a copyright holder.  The law further proceeds into stating that doing something which is an exclusive right of the copyright holder is a violation of the copyright under the COPYRIGHT ACT [Hereinafter ‘Act’].  Section 51 of the Act spells out with clarity that if any person “permits for profit” “any place” to be used for the communication of a work to the public where such communication constitutes an infringement of the copyright; such a person shall also be liable for the infringement.  As discussed earlier, the search engines allow their servers for storing user’s material and for transmitting that material. The servers are physically located at their business premises and hence fall within the phrase “any place”.  For example, Google is of course as we know one of the foremost corporations of the world in terms of financial capabilities which are a direct result of their advertising returns; so there is profit involved. Therefore, they preliminarily satisfy both the requirements of section 51.  Let us take a look at the various theories of liability that can be applied to OSPs.
In India like in the USA, copyright infringement is an independent violation to be established under its own rules.  Under the Act, a direct infringer is strictly liable.  This liability requires the infringer to have practical control over the infringing material,  and to financially benefit from the principal infringement.  Under the US COPYRIGHT ACT also, a direct infringer is strictly liable.  However, there are exceptions [as discussed below] under the same law itself thereby indicating that ‘carriers’ or “cached infringers” are not per se directly liable.
Fault based liability
It’s a natural presumption that when a website of the nature of
Playboy v Frena 
The publisher of Playboy magazine successfully argued that George Frena, a bulletin board operator, was liable for copyright infringement when bulletin board subscribers were uploading and downloading unauthorized copies of Playboy’s copyrighted photographs. Frena contended that he was not liable because he had no knowledge of the infringing activity on his bulletin board system. Frena was held by the District Court for the Middle District of Florida to be directly liable for copyright infringement. The court stated that “intent or knowledge is not an element of infringement, and thus even an innocent infringer is liable for infringement.” This is of course a touchstone of primary copyright liability that is also found in the SCA.
Sega v MAPHIA 
In Sega, unauthorised copies of video game software for Sega products were uploaded onto the MAPHIA bulletin board and subsequently downloaded by system users. The case is distinguishable from Playboy v Frena in that unlike the defendant in Playboy, who claimed to have had no ‘knowledge’ of the infringing activity, the operator of the MAPHIA bulletin board knew of the infringement and even encouraged users to download copies of the pirated software. The defendants also sold hardware devices that permitted downloaded software to be used in Sega’s video game equipment. The Court said that there activity of facilitating by providing role in the copying, including provision of facilities, direction, knowledge and encouragement, amount[ed] to contributory copyright infringement.” To qualify for the § 512(c) safe harbor, the OSP must not have actual knowledge that it is hosting infringing material or be aware of facts or circumstances from which infringing activity is apparent.
Defending Neil Armstrong
If the search engine is a “man on the moon endeavor” then Microsoft and Google are no doubt the Neil Armstrong and Edwin Aldrin of the landing. In the following the paper discusses the possible defenses that are applicable to these search engines.
It is a settled principle of Indian law that usage of a copyrighted work that would otherwise infringe the copyright holder’s exclusive rights is not an infringement if it is determined to be a fair use.  International Copyright standards indicate that there are four non-exclusive factors to be considered in fair use analysis on a case-by-case basis. These are: (1) the purpose and character of the use (including if it is commercial in nature or a “transformative” use); (2) the nature of the copyrighted work; (3) the amount of the work used; and (4) the effects on the market for the original work.  While the statutory law requires all four factors be considered in fair-use determinations, the first and fourth factors have been identified as the most important. 
Due to the lack of any judicial history under Indian Laws, this paper shall analyze the leading cases on the point under US jurisdiction.
In Kelly, the defendant, in response to a user’s search terms, displayed thumbnail images which were downloaded from the third party websites licensed by Kelly, the owner of the images.  If a user clicked on the thumbnail images, the full-sized images were displayed on Arriba’s web-page through a process known as “in-line linking”. Therefore, Kelly sued the defendant for direct infringement of copyright in the images. While considering the first factor under fair use defense raised by the defendant, the court applied the “transformative use” which incorporates a use which rather than “merely superseding the object of the originals…adds “something new, with a further purpose or different character, altering the first with new . . . meaning or message”. The court reasoned that the search engine used the photographs in question to “improve access to information on the internet” while the original function of the work in question was artistic.
While considering the second factor, the court held that though Kelly’s images were creative in nature, it weighed only slightly in favour of plaintiff, as his works were already published.  Under the third factor, the Court found that although Arriba copied Kelly’s works in their entirety, this wholesale copying was reasonable in light of Arriba’s intended use.  Considering the fourth fair use factor, the Court held that Kelly’s use of images did not harm market for owner’s images or value of his images, as operator’s “thumbnail” images could not be enlarged without losing their clarity, and use of search engine would guide users to owner’s web site rather than away from it.  Eventually, after weighing all the four factors the Court determined that the display of thumbnail images by Arriba constituted fair use under section 107 of the COPYRIGHT ACT, despite its incidental commercial purpose and wholesale copying of Kelly’s creative works.
The Perfection of Perfect 10
Perfect 10, a provider of nude photographs of natural models, generated revenue from its copyrighted works through website subscriptions, and licensing agreements with Fonestarz Media Limited for reduced-size images for download and use on cell phones. Many of Perfect 10’s copyrighted images had been displayed without authorization on other third-party websites.  These third-party websites were indexed when a relevant Google Image Search was run, and thumbnails were generated and stored on Google’s servers. Unlike Kelly, Google derived huge revenue here through its AdSense advertising programme. AdSense allows pages on third party sites to carry Google-sponsored advertising and share with Google the revenue that flows from the advertising displays and click-throughs. The plaintiff brought actions against Google for infringement of copyrighted images.
The US District Court for the Central District of California held that, despite its similarity to the search engine in Kelly  and Field  , Google’s display of thumbnail versions of copyrighted images likely did not qualify as fair use. 
On appeal, the Circuit Judges partly affirmed and partly reversed the ruling of the lower court. On the issue of fair use the Court held that it was guided by Kelly v. Arriba Soft Corp.,  which considered substantially the same use of copyrighted photographic images as is at issue here.  The Court found Google’s use of thumbnails as highly transformative because a search engine provides social benefit by incorporating an original work into a new work, namely, an electronic reference tool.  The Court concluded that the transformative nature of Google’s use was more significant than the minor commercial aspects of Google’s search engine and website. While considering the second and third factor under fair use defense, the Court relied on the ratio of Kelly and held them not to be significantly effective on fair use determination. 
Under the fourth factor, the Court ruled, similar to Kelly, that the Google’s thumbnail images are not a substitute for full-sized images and hence they did not harm the photographer’s ability to sell or license his full-sized images.  Consequently, the Court restored the law laid down in Kelly and held that Perfect 10 was unlikely to be able to overcome Google’s fair use defense.
The ‘Publishers liability’ and ‘Good Samaritan’
An entity that exercises some degree of editorial control over the published material will be generally liable for its publication.  Under Indian law the OSPs are not classified as publishers pursuant to a joint reading of the explanation (a) to sec. 79 and sec. 81, because due to sec. 81 the meaning of OSP in the explanation shall apply to all laws except the Copyright and patent Act. However, as discussed above, the Copyright Act itself, has exemptions for “lack of knowledge” and “lack of reasonable belief” indicating that de facto publisher liability is not applicable in India. In USA, in the case of Cubby  the court held that distributor liability exemption applies because the OSP “did not know and had no reason to know of the statements.”  In Stratton Oakmont  the court, on finding that the service provider “exercised sufficient editorial control over its computer bulletin boards” found the OSP liable. However, the Stratton Oakmont decision was legislatively over-ruled by section 230 of the CDA.  ‘Good faith’ OSPs were to be protected from liability even if they monitored the web.
In US a ‘good samaritan’ obligation is cast on the OSPs to monitor their servers, in compliance with the US objectives of promoting self-regulatory mechanisms.  The ‘good samaritan’ defense protects and merely encourages monitoring unlike imposing an obligation to monitor as under the Indian Law. It is indeed happy for India that it does not discourage monitoring, but even more perturbing is that India imposes the “obligation to monitor” by virtue of the ‘due diligence’ clause, which is fundamentally against the pro-internet development policies of US.
“Opt Out” Defense
In the context of the “Library Project” of Google, it is believed that copyright still subsists in 80% of the material Google is planning to digitize.  If Google were to request licenses for scanning and digitizing every print work from the work’s copyright holder, not only might Google find it difficult to get a copyright holder’s permission, it would also not be economical to do so.  Therefore, in response to criticism from groups such as the Authors Guild and American Association of Publishers, Google announced in August 2005 an ‘opt-out’ policy.  According to this policy copyright holders should notify Google if they do not want their work to be included in Google’s library database. In other words, Google offered to not reproduce books that copyright owners ask Google not to reproduce if the copyright owners register with Google and comply with the opt-out procedures.  In fact, Google suspended scanning of books from August 2005 to November 2005 and announced that if a copyright holder were to provide it with it a list of books that the holder does not wish to be scanned, Google would respect that request even if the books were in the collection of Google’s library partners.  Thus, Google is placing the burden on copyright holders to opt their works out of the Google Library search engine.
Whenever an issue arises with regard to popular search engines like “google” there would be a natural inclination towards the assumption that there is always a “reasonable belief” that there could be copyright infringement. The same is applied in the issues surrounding the suits file against “Youtube” by T-series in the Delhi High Court. In this regard the strongest defense available to these websites is the “Opt Out defense”. This defense was substantially applied in the leading case of Field v. Google where the court dealt with the implied license argument while stating that every website had the freedom to opt-out.
Field v. Google
The 2006 decision of the District Court of Nevada in Field v. Google  throws substantial light on the scope of this defense. Plaintiff Field filed a complaint against Google for copyright infringement based on Google’s alleged copying and distribution of his copyrighted work published on his personal web site. Field contended that, by allowing users to view this archival copy, Google violated his exclusive right to distribute and reproduce his copyrighted works. However, the Court also found as that Web site owners are able to prevent caching by placing ‘no archive’ meta-tags within their site. The Court further found that ‘Field was aware of these industry standard mechanisms, and knew that the presence of a “no archive” meta-tag on the pages of his Web site would have informed Google not to display “Cached” links to his pages. Despite this knowledge, Field chose not to include the no-archive meta-tag on the pages of his site. The court found that ‘his [Field’s] conduct is reasonably interpreted as the grant of a license,  since field could have but chose not to opt out of the google search. Google does not provide “cached” links to any page if the owner of that page does not want them to appear, it manifests Google’s good faith in operating its search engine. 
The “Mootness” Defence
The doctrine of ‘mootness’ prevents courts from hearing cases when events subsequent to the institution of the lawsuit have deprived the plaintiff of a stake in the action.  Courts are without power to decide questions that cannot affect the rights of litigants in the case before them.  In cases like Google where “no archive” is anyway a solution, the defense becomes quite relevant. When the Plaintiffs file their complaint, they provide a list of works that are allegedly infringed upon by search engines. They may well treat this as sufficient notification for removing the rag on the website.
Notice-and-take down regime
One of the exceptions to contributory infringement is the ‘notice-and-take-down regime’. The attribution of liability to an OSP shall be done considering the material that is available after the take down done pursuant to notice of infringement being given.  Under US laws a specific provision states that an OSP will not be liable if, upon notification, the OSP responds expeditiously to remove or disable access to the infringing material.  A similar approach can be carved out in India because of the ‘knowledge’ test. It is implied that since knowledge would make an OSP liable, necessary remedial actions need to be taken for avoiding post-knowledge liability, such action inevitably being the ‘removal of relevant material’.
Ordinarily, even if a search engine treats this as sufficient notification to take down the relevant content or remove it from the search parameter then also this should not be enough. This is because ‘voluntary cessation of allegedly illegal conduct does not make the case moot as long as the plaintiff has a cause of action for damages’.  However, the ordinary rule should not apply in this case because it is in the very nature of search engines that they tag websites to make life for the end-users a little easier.
A larger question therefore faces us: Are search engines illegal per se? There is only one way search engines can perform better, that is by tagging more and more websites so that the task of the researcher using the engine becomes more and more easy. So if we were to say that tagging itself is illegal then we would also have to find that search engines are illegal in their existence itself. That’s an answer we don’t want to find. That’s a solution which would take us back many years in terms of freedom and comfort in online researching. The solution therefore, it can be quite confidently stated involves asking the websites to say yes to the “no-archive” tag. It’s a small and almost insignificant effort being asked of the web owners compared to the enormity of the loss man would have to suffer if we start holding search engines liable for tagging websites. If Roscoe Pound is to be believed, we would reach the same conclusion with the route of social engineering.
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