Google, as Non-Party, Can't Be Subjected to All Writs Act Injunction Ordering It to Take Down YouTube Posts
A decision by Judge Michael Simon (D. Or.) today in Future Motion, Inc. v. Lai denies plaintiff's request for an All Writs Act injunction against nonparty Google:
Plaintiff develops, manufactures, markets, and sells a line of self-balancing electric skateboards and related items. In November 2023, Plaintiff brought this lawsuit against Defendant Tony Lai, doing business as Floatwheel. Plaintiff alleges that Defendant is infringing four of Plaintiff's patents on its skateboard technology by manufacturing, importing, and selling Floatwheel-branded, self-balancing electric skateboards to customers in the United States.
Earlier, Judge Simon had issued an injunction purporting to bind third parties, including domain name registrars and video platform providers:
[4.] Any Registrar of record of an internet domain hosting a website that advertises or sells the Floatwheel Adv and/or the Floatwheel Adv Pro products, or any colorable imitation thereof, including but not limited to GoDaddy.com, LLC, must promptly upon receipt of a copy of this Order disable public access to the domain until further notice;
[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 … shall be subject to sanctions for civil and/or criminal contempt.
A follow-up injunction also ordered that:
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 "blocked 48 videos from view by identifiable U.S.- based users," but declined to block them for "users that Google's systems identified as outside the United States, including users who implement VPN technology to 'mask' their true location." Plaintiff sought sanctions against Google, but in January, Judge Simon concluded that the injunction couldn't permissibly bind Google, because Federal Rule of Civil Procedure 65(d)(2)(C) allowed injunctions against third parties only when they were aiding and abetting the defendant, and Google "did not aid and abet Defendant, as that phrase is used under Rule 65(d)(2)(C)."
Future Motion then sought the All Writs Act injunction "ordering Google to remove or disable Plaintiff's entire YouTube channel, 'including disabling access to the channel through all mirror sites Google controls,'" or at least "to remove the 48 specific infringing videos" (and not just hide them from U.S. users).
The court today said no. First, the court concluded that it lacked jurisdiction to order nonparty Google around in this context:
As a threshold matter, the Court cannot grant a preliminary injunction under the All Writs Act if the relief is beyond the Court's jurisdiction because that Act does not enlarge the Court's jurisdiction. A court may issue an injunction against a nonparty only where the nonparty is "in active concert or participation" with an enjoined party. Fed. R. Civ. P. 65(d)(2)(C). As the Court held in its Order denying Plaintiff's motion for sanctions against Google, Google is not in active concert or participation with Defendant. Thus, the Court lacks jurisdiction to issue a preliminary injunction against Google, and the requested injunction under the All Writs Act is not "in aid" of the Court's jurisdiction."
(Readers who recall my adventure with the Florida judge who seemed to briefly order various third parties, including me, to remove certain posts, may correctly infer that I think this result is right.)
In the alternative, the court argued that the injunction was also unnecessary because:
Plaintiff could obtain Chinese intellectual property rights and enforce them in China against Defendant and … Plaintiff can obtain relief against other parties that are engaging in patent infringement or aiding and abetting Defendant. Because Google has blocked the infringing videos for all U.S.-based users, the Court agrees that Plaintiff has obtained sufficient relief and thus a preliminary injunction against Google is neither necessary nor appropriate….
Finally, and relatedly, the court reasoned that patent law is generally not extraterritorial:
Google notes that the Supreme Court has held that "[t]he traditional understanding that our patent law operates only domestically and does not extend to foreign activities is embedded in the Patent Act itself." Google also argues that Plaintiff has no indisputably clear right permanently to suspend Defendant's channel and prevent Defendant from posting any videos in the future, even ones that do not infringe on Plaintiff's patent.
And it seemed to disagree with some district court copyright and trademark cases that reasoned otherwise:
Plaintiff cites copyright and trademark cases where district courts, including district courts in the Ninth Circuit, have granted injunctions ordering an internet service provider completely to disable a website. See, e.g., Entrepreneur Media, Inc. v. Alfonso, 2021 WL 2941983, at *6 (C.D. Cal. July 12, 2021); Microsoft Corp. v. Tu, 2024 WL 4516416, at *3-4 (S.D.N.Y. Aug. 29, 2024); United King Film Distrib. Ltd. v. Doe, 2022 WL 2473430, at *4 (S.D.N.Y. July 6, 2022); DISH Network LLC v. Khalid, 2021 WL 765709, at *8-9 (S.D. Tex. Feb. 23, 2021). Although these cases did not involve the Patent Act, the copyright and trademark laws have also been held to operate only domestically.
In the absence of controlling or even persuasive appellate authority, the Court does not find that Plaintiff has shown that it has an indisputably clear right to worldwide injunctive relief pursuant to a statute that applies only domestically….