Striking a blow against the continuing effort to force service providers to serve as IP police, CloudFlare and EFF have pushed back against a court order that would have required CloudFlare to monitor its service to enforce a trademark held by a group of music labels. Last week, Judge Alison J. Nathan of the U.S. District Court for the Southern District of New York ruled that CloudFlare does not have to search out and block customers who use variations on the name “grooveshark.” Instead, CloudFlare must take action only if it has “knowledge of an infringement” (for example, when the labels send a takedown notice). Given that this is essentially what US law already requires, Judge Nathan’s order puts paid to the latest strategy to institute trademark- and copyright-related filtering – at least in this case.
The dispute started in May, as record labels sought to disappear a website that called itself Grooveshark and appeared to be a clone of a popular music-sharing site those same labels had shut down in April after settling a copyright lawsuit. That settlement left the labels in control of the original Grooveshark’s trademarks. Claiming trademark infringement, the labels applied to the U.S. District Court for the Southern District of New York for a secret order to shut down the site, which was then located at grooveshark.io. Judge Deborah A. Batts granted the order in secret.
Three weeks later, Judge Nathan ruled that the order also applied to CloudFlare, a content delivery network and “reverse proxy” service. The order apparently required CloudFlare to block all of its customers from using domain names that contained “grooveshark,” regardless of whether those domains contained First Amendment-protected speech, or had any connection with the “New Grooveshark” defendants who were the targets of the actual lawsuit.
That ruling spelled trouble. Laws like Section 512 of the Digital Millennium Copyright Act, Section 230 of the Communications Decency Act, and court decisions on trademark law such as Tiffany v. eBay, protect Internet intermediaries from legal responsibility for the actions of their users, including the responsibility to proactively block or filter users. That protection has been vital to the growth of the Internet as a medium for communication, innovation, and learning. The original order against CloudFlare, if it had become the norm, would put service providers in the uncomfortable position of having to figure out who’s allowed to use terms like “grooveshark” and who isn’t—or of having to block them all. Turning Internet companies into enforcers of who can say what on the Internet is exactly what laws like the DMCA were meant to avoid.
With help from EFF and Goodwin Procter, CloudFlare asked the court to modify the order so that its responsibilities would be limited to blocking users identified by the music labels as being affiliated with the “New Grooveshark” defendants, or if CloudFlare knew of that affiliation through other means. CloudFlare told the court that the music labels shouldn’t be able to “parlay the happy accident (for them) of CloudFlare’s having unknowingly and unintentionally provided its services to a single trademark infringer into a means of compelling CloudFlare to enforce [the labels’] trademark against all comers, potentially permanently.” Judge Nathan apparently agreed. She issued a new order making clear that CloudFlare does not have to police the “grooveshark” trademark proactively. In fact, the new order tracks existing trademark law very closely.
Although this dispute involved just one provider and a relatively small number of sites, it could have significant implications for Internet speech. Major entertainment distributors, including music labels, want the ability to make websites disappear from the Internet at their say-so. The failed Internet blacklist bills SOPA and PIPA were part of that strategy, along with the Department of Homeland Security’s project of seizing websites based on unverified accusations of copyright infringement by entertainment companies. Entertainment distributors are also lobbying ICANN, the nonprofit organization that oversees the domain name system, to gain the power to censor and de-anonymize websites without a court order. Attempts to impose new policing or filtering responsibilities on infrastructure companies like CloudFlare are another facet of this strategy. Last week’s order should help to close off this avenue towards a website-blocking power and all of the harms to free speech it would cause.
