Google, as Non-Party, Not Subject to Injunction That Expressly Ordered It to Take Down YouTube Posts

In Future Motion, Inc. v. Lai, decided Jan. 7 by Judge Michael Simon (D. Or.) (appeal filed Wednesday), plaintiff sued defendant for patent infringement, and Judge Simon issued an injunction that purported to bind not just defendant but others:

[I]n accordance with the Court's inherent equitable power to issue provisional remedies ancillary to its authority to provide final equitable relief, any internet service provider including but not limited to any web hosting company, domain name registry, domain name registrar, e-commerce service provider, and/or video platform provider having notice of the Court's Order must (1) take any and all action necessary to remove the infringing content from websites having content controlled by Defendant, or alternatively to disable access to the website; and (2) provide notice of compliance to Future Motion's counsel within five (5) business days of receipt of notice of this Order. This includes but is not limited to the following specific examples: …

[6.] Any video platform provider, including but not limited to Google LLC doing business as YouTube, must promptly upon receipt of a copy of this Order either disable public access to (i) the entire Floatwheel YouTube channel at https://www.youtube.com/floatwheel or (ii) to all individual videos teaching viewers how to make and/or use a product that infringes Future Motion's patents, including but not limited to … 48 videos [listed below with titles and URLs] currently hosted at the YouTube channel https://www.youtube.com/floatwheel….

[8.] Pursuant to this Court's inherent powers, any person or entity failing to comply promptly with this Order, including but not limited to any domain name Registrar, e-commerce service provider, video platform service provider (including Google LLC doing business as YouTube), freight forwarding service provider, or logistics company (including but not limited to those enumerated above) shall be subject to sanctions for civil and/or criminal contempt

(As is not uncommon, the text of the injunction was submitted as a proposed order by the plaintiff, which the judge accepted.) Later, Judge Simon issued a follow-up injunction (again based on a proposed order) stating, in part,

Google LLC, doing business as YouTube, shall promptly upon receipt of a copy of this Order remove or disable Defendant's entire "Floatwheel" YouTube channel at www.youtube.com/floatwheel, along with any other YouTube channel Defendant operates now or in the future that publishes videos and/or information about the Floatwheel Adv and/or Floatwheel Adv Pro products; …

Google had blocked the videos, and later the channel's landing page, for "U.S.-based users," but not (as the injunction seemed to demand) for "all users." Plaintiff sought to have Google held in contempt for not fully complying, but the court concluded the injunction wasn't enforceable against Google, because under Federal Rule of Civil Procedure 65(d)(2),

[An] order binds only the following who receive actual notice of it by personal service or otherwise:

[A] the parties;

[B] the parties' officers, agents, servants, employees, and attorneys; and

[C] other persons who are in active concert or participation with [the above].

The court reasoned,

Courts typically interpret "active concert or participation" to mean "aiding and abetting." In 2023, the Supreme Court adopted the D.C. Circuit's three-step framework to determine civil aiding-and-abetting liability: (1) "the party whom the defendant aids must perform a wrongful act that causes an injury"; (2) "the defendant must be generally aware of his role as part of an overall illegal or tortious activity at the time that he provides the assistance"; and (3) "the defendant must knowingly and substantially assist the principal violation." See Twitter, Inc., v. Taamneh (2023) (quoting Halberstam v. Welch (D.C. Cir. 1983)). The Supreme Court emphasized that persons should be held liable for aiding and abetting only "when they consciously and culpably 'participate[d] in' a tortious act in such a way as to help 'make it succeed.'" A party seeking contempt sanctions must prove aiding and abetting by "clear and convincing evidence." …

Google argues that the Court never had jurisdiction over Google to issue an injunction encompassing any conduct of Google. The issue here is whether Google was in active concert or participation with, or aided and abetted, Defendant's infringing conduct….

Google merely hosted Defendant's channel as it would any other of its channels. It did not contract with Defendant, nor has Plaintiff presented any evidence that Google "had any contact with [Defendant] after the injunction was issued." Moreover, just because Google was "technologically capable of removing [Defendant's videos] does not render its failure to do so aiding and abetting." The Court finds that Google's passive involvement of hosting does not support—especially not by clear and convincing evidence—that it consciously and culpably participated in Defendant's infringing conduct.

In this, the court followed Blockowicz v. Williams (7th Cir. 2010) and Clark Equipment Co. v. Walls (W.D. Wash. 2023), and declined to follow cPanel, LLC v. Asli (D. Or. 2024) ("After receiving notice of this opinion and the terms of this Court's injunction, a non-party that continues to provide services to Defendants here could possibly qualify as an 'aider or abettor' under Rule 65(d)(2)(C).") and Arista Records, LLC v. Tkach (S.D.N.Y. 2015) ("holding that a third-party that hosted infringing websites and 'merely provid[ed] the same service to Defendants that it would provide to anyone else' was subject to an injunction"). This was also one of the issues in Hassell v. Bird (Cal. 2018); the plurality there avoided it by focusing on § 230.

Readers of the blog might find some of this analysis familiar from my own brush last Fall with a takedown injunction that appeared to bind me, see here and here.

Julia Markley, Ryan Spear & Margot Loken (Perkins Coie LLP) represent Google.