Wednesday, 17 April 2019

DSM Directive Series #4: Article 17 obligations ... in a chart

As reported by The IPKat, earlier this week, like the European Parliament, also the Council adopted the latest version of the the Directive on copyright in the Digital Single Market (DSM Directive).

One of the seemingly most complex -if nothing else, due to its length - provisions is what is now Article 17 (formerly, Article 13) of the DSM Directive, on "Use of protected content by online content-sharing service providers".

The final text reads as follows:
1. Member States shall provide that an online content-sharing service provider [as defined in Article 2(6)] performs an act of communication to the public or an act of making available to the public for the purposes of this Directive when it gives the public access to copyright-protected works or other protected subject matter uploaded by its users.
An online content-sharing service provider shall therefore obtain an authorisation from the rightholders referred to in Article 3(1) and (2) of Directive 2001/29/EC, for instance by concluding a licensing agreement, in order to communicate to the public or make available to the public works or other subject matter.
2. Member States shall provide that, where an online content-sharing service provider obtains an authorisation, for instance by concluding a licensing agreement, that authorisation shall also cover acts carried out by users of the services falling within the scope of Article 3 of Directive 2001/29/EC when they are not acting on a commercial basis or where their activity does not generate significant revenues.
3. When an online content-sharing service provider performs an act of communication to the public or an act of making available to the public under the conditions laid down in this Directive, the limitation of liability established in Article 14(1) of Directive 2000/31/EC shall not apply to the situations covered by this Article.
The first subparagraph of this paragraph shall not affect the possible application of Article 14(1) of Directive 2000/31/EC to those service providers for purposes falling outside the scope of this Directive.
4. If no authorisation is granted, online content-sharing service providers shall be liable for unauthorised acts of communication to the public, including making available to the public, of copyright-protected works and other subject matter, unless the service providers demonstrate that they have:
(a) made best efforts to obtain an authorisation, and
(b) made, in accordance with high industry standards of professional diligence, best efforts to ensure the unavailability of specific works and other subject matter for which the rightholders have provided the service providers with the relevant and necessary information; and in any event
(c) acted expeditiously, upon receiving a sufficiently substantiated notice from the rightholders, to disable access to, or to remove from, their websites the notified works or other subject matter, and made best efforts to prevent their future uploads in accordance with point (b).
5. In determining whether the service provider has complied with its obligations under paragraph 4, and in light of the principle of proportionality, the following elements, among others, shall be taken into account:
(a) the type, the audience and the size of the service and the type of works or other subject matter uploaded by the users of the service; and
(b) the availability of suitable and effective means and their cost for service providers.
6. Member States shall provide that, in respect of new online content-sharing service providers the services of which have been available to the public in the Union for less than three years and which have an annual turnover below EUR 10 million, calculated in accordance with Commission Recommendation 2003/361/EC, the conditions under the liability regime set out in paragraph 4 are limited to compliance with point (a) of paragraph 4 and to acting expeditiously, upon receiving a sufficiently substantiated notice, to disable access to the notified works or other subject matter or to remove those works or other subject matter from their websites .
Where the average number of monthly unique visitors of such service providers exceeds 5 million, calculated on the basis of the previous calendar year, they shall also demonstrate that they have made best efforts to prevent further uploads of the notified works and other subject matter for which the rightholders have provided relevant and necessary information.
7. The cooperation between online content-sharing service providers and rightholders shall not result in the prevention of the availability of works or other subject matter uploaded by users, which do not infringe copyright and related rights, including where such works or other subject matter are covered by an exception or limitation.
Member States shall ensure that users in each Member State are able to rely on any of the following existing exceptions or limitations when uploading and making available content generated by users on online content-sharing services:
(a) quotation, criticism, review;
(b) use for the purpose of caricature, parody or pastiche.
8. The application of this Article shall not lead to any general monitoring obligation.
Member States shall provide that online content-sharing service providers provide rightholders, at their request, with adequate information on the functioning of their practices with regard to the cooperation referred to in paragraph 4 and, where licensing agreements are concluded between service providers and rightholders, information on the use of content covered by the agreements.
9. Member States shall provide that online content-sharing service providers put in place an effective and expeditious complaint and redress mechanism that is available to users of their services in the event of disputes over the disabling of access to, or the removal of, works or other subject matter uploaded by them.
Where rightholders request to have access to their specific works or other subject matter disabled or those works or other subject matter removed, they shall duly justify the reasons for their requests. Complaints submitted under the mechanism provided for in the first subparagraph shall be processed without undue delay, and decisions to disable access to or remove uploaded content shall be subject to human review. Member States shall also ensure that out-of-court redress mechanisms are available for the settlement of disputes. Such mechanisms shall enable disputes to be settled impartially and shall not deprive the user of the legal protection afforded by national law, without prejudice to the rights of users to have recourse to efficient judicial remedies. In particular, Member States shall ensure that users have access to a court or another relevant judicial authority to assert the use of an exception or limitation to copyright and related rights.
This Directive shall in no way affect legitimate uses, such as uses under exceptions or limitations provided for in Union law, and shall not lead to any identification of individual users nor to the processing of personal data, except in accordance with Directive 2002/58/EC and Regulation (EU) 2016/679.
Online content-sharing service providers shall inform their users in their terms and conditions that they can use works and other subject matter under exceptions or limitations to copyright and related rights provided for in Union law.
10. As of …[date of entry into force of this Directive] the Commission, in cooperation with the Member States, shall organise stakeholder dialogues to discuss best practices for cooperation between online content-sharing service providers and rightholders. The Commission shall, in consultation with online content-sharing service providers, rightholders, users' organisations and other relevant stakeholders, and taking into account the results of the stakeholder dialogues, issue guidance on the application of this Article, in particular regarding the cooperation referred to in paragraph 4. When discussing best practices, special account shall be taken, among other things, of the need to balance fundamental rights and of the use of exceptions and limitations. For the purpose of the stakeholder dialogues, users' organisations shall have access to adequate information from online content-sharing service providers on the functioning of their practices with regard to paragraph 4.
As part of both The IPKat DSM Directive Series [see further below for previous episodes] and my collection of study aid materials [available here], I have created a *simplified* (and non-exhaustive) chart of the obligations for online content sharing services providers (OCSSPS) as arising from Article 17 in relation to user-uploaded content (UUC):

The chart can be also downloaded here

Any feedback and comments welcome!

***

The IPKat's DSM Directive Series

[Originally published on The IPKat on 17 April 2019]

Tuesday, 9 April 2019

DSM Directive Series #3: How far does Article 14 go?

DSM-fatigue also for @CultureDoug's Pushka
As IPKat readers know, a few days ago the European Parliament adopted the latest version of the draft Directive on Copyright in the Digital Single Market ('DSM Directive'). In a few days' time, the Council will cast the last vote on it and, after that, it will be published on the EU Official Journal. Individual Member States will then have 24 months to transpose this new piece of EU legislation into their own laws.

The IPKat is now running a DSM Directive Series [previous episodes, here and here], to address a number of points raised by the provisions contained in the directive. 

Today I would like to address a provision, Article 14, that was not present in the original proposal, and was inserted quite late in the legislative process. It relates to "Works of visual art in the public domain":
Member States shall provide that, when the term of protection of a work of visual art has expired, any material resulting from an act of reproduction of that work is not subject to copyright or related rights, unless the material resulting from that act of reproduction is original in the sense that it is the author's own intellectual creation.
The rationale of this provision is explained in Recital 53:
... In the field of visual arts, the circulation of faithful reproductions of works in the public domain contributes to the access to and promotion of culture, and the access to cultural heritage. In the digital environment, the protection of such reproductions through copyright or related rights is inconsistent with the expiry of the copyright protection of works. In addition, differences between the national copyright laws governing the protection of such reproductions give rise to legal uncertainty and affect the cross-border dissemination of works of visual arts in the public domain. Certain reproductions of works of visual arts in the public domain should, therefore, not be protected by copyright or related rights. All of that should not prevent cultural heritage institutions from selling reproductions, such as postcards.
Three questions may arise - inter alia - in relation to Article 14. The first is whether, insofar as copyright is concerned, this provision represents a change in the law or, instead, a mere clarification thereof. The second is whether this provisions provides any broader teachings as regards copyright subsistence. The third is what relationship there is between Article 14 and Article 6 in the Term Directive.

Article 14: a change or a clarification?

This blog has discussed on a number of occasions, eg here, whether the concept of originality as mandated by the Court of Justice of the European Union (CJEU) in Infopaq and its progeny allows Member States to protect - by means of copyright - verbatim reproductions of public domain artworks.

The answer appears to be in the negative: to satisfy the required originality it is necessary that a work be its 'author's own intellectual creation', as resulting from 'free and creative choices' so that the 'personal touch' of the author is visible in the creative result [see here for a recent application in the Netherlands].

In this sense, therefore, Article 14 is a clarification - rather than a change - in the law as it already exists or - rather, as it has been developed by the CJEU. A simple reproduction of a work in the public domain is not sufficient to create a new copyright. 

Hence, copyright notices like those below will - hopefully - disappear:


Broader teachings: a codification of CJEU case law on originality

The provision is also important because it somewhat codifies CJEU case law on originality. In fact , Article 14 relates the standard of originality required for copyright protection to the concept of 'author's own intellectual creation' in relation to 'any material resulting from an act of reproduction' (emphasis added).

So far, there has been a formal harmonization of the standard of originality only for computer programs, databases, and photographs. In its landmark Infopaq decision, the CJEU de facto harmonized this requirement for copyright protection and made the 'author's own intellectual creation' threshold applicable also to works falling within the scope of the InfoSoc Directive.

Article 14 of the DSM Directive - though within the (limited) remit of reproductions of works of visual art - appears to assume that, under EU copyright, protection only arises when a work  - 'a material' - is sufficiently original in the sense clarified by the CJEU.

This is in any case a welcome clarification, especially for those Member States (like the UK) that have traditionally envisaged a lower standard of protection, ie 'sufficient skill, labour or effort', and whose courts have showed a certain resistance towards the embracing the CJEU-mandated concept of originality

Relationship with Term Directive

The Term Directive is a piece of EU legislation that the DSM Directive neither leaves unaffected (see Article 1 and Recital 4), nor does it amend explicitly (see Article 24).

Article 6 of the Term Directive so provides:
Photographs which are original in the sense that they are the author's own intellectual creation shall be protected in accordance with Article 1. No other criteria shall be applied to determine their eligibility for protection. Member States may provide for the protection of other photographs.
This provision explicitly allows EU Member States to protect both original photographs (by means of copyright) and sub-original photographs (by means of related rights; recently this blog reported on the German Federal Court of Justice's decision concerning protection of digitzed images of works in the public domain: here and here).

With the introduction of Article 14 of the DSM Directive, the question that arises is whether and to what extent the possibility made available by the Term Directive of related rights in sub-original photographs has been affected by this new provision.

It would appear that a related right (if any) recognized by a certain Member State is due to become unavailable insofar as the photograph at issue is of a work of visual art in the public domain, but it might not go beyond that.

So, for instance, the Italian Copyright Act recognizes a 20-year right over simple photographs. With the implementation in Italy of the DSM Directive, something like my dinner:


might continue enjoying protection for the next 20 years (as the photograph is not, arguably, of a work of art), while this:


would be outside the scope of the right (to be noted that, already now, the Galleria degli Uffizi - unlike, eg, the National Portrait Gallery or Musée d'Orsay - does not claim to hold any copyright over the digitized image of this masterpiece by Botticelli).

***
The IPKat's DSM Directive Series

[Originally published on The IPKat on 9 April 2019]

Monday, 1 April 2019

DSM Directive Series #2: Is the press publishers' right waivable?

The IPKat after the introduction 
of the press publishers' right: 
dream and ...
As reported by The IPKat, last week the European Parliament approved the latest version of the Directive on copyright in the Digital Single Market (DSM Directive) which, once approved one last time by EU Member States and published on the Official Journal, will officially come into effect and will then require transposition at the national level.

Still last week, The IPKat launched a 'DSM Directive Series' of posts to comment on certain key aspects of this forthcoming piece of EU legislation. The first post of the series, "Do Member States have to transpose the value gap provision and does the YouTube referral matter?" is available here.

Today, I shall be focusing on a different provision, that is what is now Article 15 of the DSM Directive (formerly, Article 11) and the new press publishers' right envisaged therein.

The wording of this new related right is quite interesting for a number of reasons, including the fact that:
  1. It will be enjoyed by press publishers established in an EU Member State: this means that press publishers established outside the EU would not be eligible for protection under Article 15. The UK withdrawal from the EU would likely mean that - by default - UK-based publishers would not be eligible for Article 15 protection, in a way similar to other situations that the EU Commission itself highlighted in a note sent to stakeholders last year [Katpost here], and that the UK IPO reiterated [Katpost here].
  2. It will be enforceable against information society service providers in relation to online uses, not individual users in relation to private or non-commercial uses of press publications.
  3. It will not encompass linking [but, of course, linking remains an activity that might fall within the scope of copyright protection - so it would be incorrect to think that linking to press content would be always allowed: see here].
  4. It will not encompass use of individual words or very short extracts [again, copyright might be potentially relevant in relation to 'very short extracts', insofar as those extracts are sufficiently original as per Infopaq].
  5. The right will last for 2 years (to be calculated from the date of publication) and will not have retroactive effect.
  6. Authors of works incorporated in a press publication shall be entitled to an 'appropriate share' of the revenues as deriving from licensing online uses of press publications.
However, there is something that is potentially more interesting than the above and is something that the directive fails to tackle.

It is the issue of waivability of the right, ie one of the key issues arisen in respect of national initiatives in, respectively, Germany (sections 87f, 87g and 87h of the German Copyright Act) and Spain (Article 32 of the Spanish Intellectual Property Law).

German and Spanish initiatives

As readers know, the new EU press publishers' right somewhat builds upon earlier national experiences. In the Impact Assessment (IA) accompanying the proposal for a DSM Directive, the EU Commission indeed recalled that a number of Member States had already intervened to remedy or reduce – whether by means of ad hoc initiatives or as part of broader arrangements – the negative impact of reduced revenue in the press publishing sector. Such copyright-related initiatives have included:
  • the introduction of neighbouring rights (as it happened in Germany); 
  • provisions on collective works; 
  • provisions on presumption of transfer; 
  • copyright protection of the typographical arrangement of published editions; and
  • mandatory fair compensation requirements (as is the case in Spain). 
Focusing specifically on the German and Spanish experiences, the IA itself acknowledged that these had been somewhat 'ineffective', and linked such ineffectiveness to 'the lack of scale of national solutions.' (p 161)

One of the actual reasons why the German initiative [currently under scrutiny of the Court of Justice of the European Union, due to lack of notification to the EU Commission; see here for the Opinion of Advocate General Hogan] has not been too successful is also due to the fact that a substantial number of German press publishers have opted to waive their right in order to be indexed by, eg, news aggregation services. In this sense, on the very day that the German right became enforceable, Google News became opt-in (rather than opt-out) in Germany: see IPKat post here.

Things are different in Spain, as the entitlement to compensation does not stem from a new right, but rather from the reformed language of quotation exception within Article 32 of the Ley de Propiedad Intelectual. Despite relying on a mechanism different from the one envisaged under German law, Article 32 as reformed has introduced a right to ‘equitable remuneration’ that, in its substance, is not dissimilar from the German press publishers’ right. There is however a significant difference, ie that – unlike the German right – the Spanish ‘right’ cannot be waived. The result of this is that, for instance, Google News is currently unavailable in Spain [Katpost here].

... reality
The new EU right

Considering its national predecessors, it is quite astonishing intriguing that the DSM Directive does not tackle the issue of waivability of the right in Article 15.

This silence raises a number of issues, two of which in particular stand out. 

The first is whether beneficiaries of the right will be able to waive it, lacking a specific prohibition to the contrary. The answer appears to be in the affirmative.

The second, and possibly currently more pressing, is what effect all this will have on transposition debates. It appears likely that different Member States might opt for different ways to implement the directive into their own laws, and that lobbying at the national level might lead to diverging languages of the new press publishers' right. The result might be that the right ends up being waivable in certain countries but not others (eg because national law explicitly excluding waivability). 

The CJEU has explicitly excluded the possibility for EU Member States to alter the scope of harmonized rights: it did so, eg, in relation to Article 3 of the InfoSoc Directive, in both Svensson and C More. However, while this is the truth and the CJEU was correct in its assessment, it is not excluded that in fact certain Member States would include language as regards the waivability of the right or - more likely - lack thereof. 

Litigation will then likely ensue in a few years' time, the CJEU might be given the possibility to assess the appropriateness of resulting national transpositions, deem them compatible or incompatible with EU law, concerned Member States will need to change their own laws, etc. 

In all this, unfortunately, one thing seems at least clear: The IPKat will not start making any money. Blogs are in fact expressly ineligible for Article 15 protection (see Recital 56). This means that, if nothing else, it will not need to worry about de-indexing from search engines or news aggregation services ...


***
[Originally published on The IPKat on 1 April 2019]

Friday, 29 March 2019

DSM Directive Series #1: Do Member States have to transpose the value gap provision and does the YouTube referral matter?

A change or just a clarification?
As reported by The IPKat, earlier this week the European Parliament adopted the latest version of the new Directive on Copyright in the Digital Single Market (DSM Directive).

The IPKat will now run a series of posts discussing some of the key aspects of this new instrument which, following publication in the Official Journal of the EU, will need to be transposed by EU Member States within 2 years.

Today I begin with a provision or, rather, a recital that, at least in certain respects, makes national transpositions somewhat redundant. It relates to the 'value gap' provision in what is now Article 17 of the Directive (formerly Article 13).

Article 17(1) states:
Member States shall provide that an online content-sharing service provider performs an act of communication to the public or an act of making available to the public for the purposes of this Directive when it gives the public access to copyright-protected works or other protected subject matter uploaded by its users. [...]
In addition, Article 17(3) provides:
When an online content-sharing service provider performs an act of communication to the public or an act of making available to the public under the conditions laid down in this Directive, the limitation of liability established in Article 14(1) of Directive 2000/31/EC [that is the E-commerce Directiveshall not apply to the situations covered by this Article.
Is the idea that an online content-sharing service provider (OCSSP) communicates to the public and is ineligible for safe harbour protection a change in the law, which will require EU Member States to change their approach to platform liability and the construction of the right of communication to the public under Article 3 of the InfoSoc Directive?

This question of of no little importance, at least on two levels.

The YouTube referral

First of all, as reported by The IPKat, last September the German Federal Court of Justice made a referral to the CJEU (YouTube, C-682/18) asking, among other things, whether "the operator of an internet video platform on which videos containing content protected by copyright are made publicly accessible by users without the consent of the rightholders carry out an act of communication within the meaning of Article 3(1)" of the InfoSoc Directive, insofar as certain conditions are satisfied.

The YouTube referral was made amidst the uncertainties arisen in the aftermath of the CJEU decision in Ziggo (The Pirate Bay case; Katposts here and see also here), which held that the operators of a platform could be directly responsible for users' infringing activities.

Could the conclusion achieved in relation to The Pirate Bay be applied also to YouTube considering, as the German court did, that:
  • the operator earns advertising revenue by means of the platform,
  • the upload process takes place automatically and without material being seen in advance or controlled by the operator,
  • in accordance with the conditions of use, the operator receives a worldwide, non-exclusive and royalty-free licence for the videos for the duration for which the videos are posted,
  • in the conditions of use and during the upload process, the operator points out that copyright-infringing content may not be posted,
  • the operator provides tools with which rightholders can take steps to block infringing videos,
  • on the platform, the operator prepares search results in the form of rankings and content categories, and displays to registered users an overview that is oriented towards previously seen videos and that contains recommended videos which can be displayed to registered users,
if the operator is not specifically aware of the availability of copyright-infringing content or, after having become aware, expeditiously deletes that content or expeditiously disables access thereto?

The German court also asked the CJEU to say (Question 2) whether, in the event that Question 1 is answered in the affirmative (ie YouTube communicates to the public), the doing of an act of communication to the public rules out the availability of the safe harbour within Article 14 of the E-commerce Directive.

Dreaming of a blue passport?
Kats already have blue EU ones
Brexit

The second reason why the question asked is relevant relates to Brexit: if the UK leaves the EU after the DSM Directive enters into force but before the deadline for national transpositions has passed, will it have to transpose the DSM Directive into its own law?

This is a matter of discussion and, lacking precedent, might become quite contentious.

Why neither matters or matters too much

This said, the DSM Directive - at least insofar as Article 17(1) and (3) is concerned - might not require Member States to do much.

The reason is found in Recital 64 of the Directive:
It is appropriate to clarify in this Directive that online content-sharing service providers perform an act of communication to the public or of making available to the public when they give the public access to copyright-protected works or other protected subject matter uploaded by their users. Consequently, online content-sharing service providers should obtain an authorisation, including via a licensing agreement, from the relevant rightholders. This does not affect the concept of communication to the public or of making available to the public elsewhere under Union law, nor does it affect the possible application of Article 3(1) and (2) of Directive 2001/29/EC to other service providers using copyright-protected content.
So, Article 17 would not change the law as it already exists under the InfoSoc Directive and as transposed at the national level: it would merely clarify it.

This recital likely has the effect of rendering the YouTube referral irrelevant or diminish substantially its relevance. As the answer to Question 1 would be 'Yes', the other questions - which depend on a negative answer to that question - would not need to be considered. 

The additional implication of the recital is making Brexit and the issue of transposition less of a pressing matter: if Article 17(1) and (3) is a clarification of the law as it already exists, then there is no need to change one's own law: only the interpretation should change and be in accordance with what the DSM Directive 'clarifies'.

The further effect of Recital 64 is that initiatives against user-uploaded content platforms - whether by means of licensing demands and/or contentious initiatives - might be taken already now, without the need to wait for national transpositions of the DSM Directive: according to the DSM Directive, it is the law already ...

[Originally published on The IPKat on 29 March 2019]

Monday, 25 March 2019

Italian Supreme Court confirms approach to damage determination in image rights cases

Mirror, mirror on the wall,
who's the fairest of them all?
When it comes to the violation of one's own image rights, what damages can be awarded? Is it just the damage due to the moral prejudice caused or also damages for the economic prejudice suffered by the person whose rights have been violated? Does the fact that the claimant ruled out any possibility for third parties to use their image influence at all the identification of what damages are due, eg because there is no actual market for the licensing of the claimant's image?

These are all issues that the Italian Supreme Court recently considered in a case (sentenza 1875/19) concerning the violation of a well-known actor's image rights.

Unsurprisingly, the court confirmed its earlier approach that, when it comes to image rights violations, the damage that can be compensated is both of a moral and economic nature.

Let's see how the court reasoned.

Background

The Milan Court of First Instance accepted the request for compensation made by an actor in the context of proceedings brought against a magazine for publishing, without his consent, a number of photographs taken of him. 

Some of these photographs portrayed the claimant in an intimate setting together with a TV personality whom, at that time when the pictures were taken, he was in a relationship with. 

The court found that the defendant had violated the claimant’s image rights ex Article 10 of the Italian Civil Code and Article 96 of the Italian Copyright Act, thus rejecting the argument made by the defendant that publication of the pictures had been in the public interest, since the actor and his girlfriend were celebrities. The judge found that this behaviour was also against the Italian Privacy Code, and amounted to an undue interference with the claimant's private life (this being punishable as a crime under Article 615-bis of the Italian Criminal Code). 

The compensation had both an economic and moral component. The former (EUR 80,000) was calculated on the basis of the price of a hypothetical licence that the actor would have granted for the publication of the pictures in question. The latter (EUR 40,000) took into account the non-economic damage caused by the undue invasion of the claimant’s private sphere, which had caused him distress and psychological suffering. 

The defendant appealed. 

The Milan Court of Appeal upheld the decision at first instance, but found that this had erred in awarding also an economic damage. There could be no economic damage, as the claimant had expressly stated – through his spokesperson – that he excluded any consent to the publication of images of him in a private setting, thus ruling out any possibility of economic exploitation of his image. As such, there would be no market for licensing use of the images published by the magazine. As regards the non-economic component, the appellate court reduced it, on consideration that the intrusion would be less painful than what the first instance court had established. 

The actor appealed to the Italian Supreme Court (as IPKat readers may know, appeal to this court is only on points of law, not fact), over the exclusion – by the appellate court – of compensation of the economic damage, and the reduced compensation of the non-economic damage. With particular regard to the former, the appellant stated that, if not the ‘price of consent’ (for the hypothetical licence), the Milan Court of Appeal should have at least considered the number of copies that the magazine had sold, the profits made or the licensing fee requested by the actor in more recent instances.

What damages will be awarded?
The Supreme Court's decision 

The Supreme Court began its analysis by reviewing its earlier case law on violation of image rights. 

It started by noting that the unauthorized publication of a well-known person’s image causes a damage that requires compensation based, not on the undue invasion of one’s own private sphere, but rather the reasons why the claimant is well-known, in that it is because of that that there is a market for licensing use of one’s own image. 

It follows that the unauthorized publication of one’s own image causes an economic damage, which consists of missed licensing opportunities. 

The fact that the claimant excluded any consent whatsoever to the use of images of him in a private setting did not exclude that the unauthorized publication of that person’s images caused them a damage. 

The Supreme Court had already established this principle back in 2004. On this occasion, the Court added that the refusal to license the use of one’s own image is not tantamount to a waiver or even an abandonment of one’s own image rights. 

In addition, the economic character of the damage cannot be considered limited to the loss of hypothetical licensing revenue, but should also take into account the possible damage to one’s own professional reputation. 

In conclusion, in the event of unauthorized publication of one’s own image, the economic damage can be calculated by taking into account the price of an hypothetical licence that the claimant would grant for the use of their image or, lacking this, it can be determined equitably.

Comment

The decision of the Supreme Court appears correct. The very fact that one had denied licensing of their own image in the past does not mean that there is no market for such licensing activities or that in the future that person would not license use of their image. In this sense, it is not that because one has not given permission to undertake a restricted activity - the use of their image - they would lose the right to control all third-party interferences.

In addition, the economic damage suffered for the violation of one's own image rights is not limited to the loss of licensing revenues, but also the actual or potential harm to one's own professional reputation which, in turn, might have an effect on the licensing market for one's own image.

One might draw a parallel with the well-known Rihanna case in the UK (this being a country where self-standing image rights are not recognized). At first instance, Birss J found [Katpost here] that the unauthorized use of Rihanna's image on T-shirts sold by the defendant (Topshop) would amount to passing off. One of the (cumulative) requirements for an action in passing off is the subistence of a damage. According to the judge, this would lie not just in "sales lost to [Rihanna's] merchandising business", but also in the "loss of control over her reputation in the fashion sphere." 

The decision was upheld in appeal [Katpost here], which also cited extensively Laddie J's take in Irvine, in which the learned judge considered that "The law will vindicate the claimant's exclusive right to the reputation or goodwill. It will not allow others to so use goodwill as to reduce, blur or diminish its exclusivity."

[Originally published on The IPKat on 25 March 2019]

Wednesday, 20 March 2019

Italian Supreme Court clarifies availability of safe harbours, content of notice-and-takedown requests, and stay-down obligations

Yesterday, the Italian Supreme Court issued two key decisions concerning the liability of intermediaries for third-party IPR infringements.

The judgments are: Decision 7708/19 Reti Televisive Italiane SpA v Yahoo! Inc and Decision 7709/19 Reti Televisive Italiane SpA v Yahoo! Inc. The former relates to Yahoo!’s videosharing service, while the latter concerns Yahoo!’s search engine. 

The Yahoo!'s videosharing service decision is particularly important in that it:
  • clarifies at what conditions a hosting provider would be eligible (and ineligible) for the safe harbour under Italian law (where the divide passive/active host has been subject to extensive discussions in case law and scholarly literature alike);
  • holds that a notice-and-takedown request does not necessarily have to indicate the URLs at which infringing content is to be found (this being yet another contentious issue under Italian law); and
  • finds that a notice-and-takedown request imposes on the provider at which it is addressed a stay-down obligation (also this is a major point, both under Italian law and the law of other EU Member States).
Let’s see more in detail how the Court reasoned. 

Yahoo!’s videosharing service decision 

In 2001 the Milan Court of First Instance found Yahoo! liable for hosting user-uploaded unlicensed audiovisual content owned by Radio Televisive Italiane (RTI) on its videosharing portal. 

In 2015 the Milan Court of Appeal reversed the first instance decision and held that Yahoo! would qualify as a hosting provider eligible for the safe harbour protection under the relevant national provision corresponding to Article 14 of the E-commerce Directive

RTI appealed to the Supreme Court (it should be noted that an appeal to this court is only possible insofar as the lower court has erred in its application of legal provisions: in this sense, the Italian Supreme Court is not a court on the merits), claiming - among other things - that Yahoo! could not qualify for protection under the safe harbour, it being an ‘active host’. 

The Supreme Court reviewed relevant case law of the Court of Justice of the European Union (CJEU), including the most recent decision on Article 14 of the E-commerce Directive – that is SNB-REACT [commented on The IPKat here– and the decision in Ziggo [The Pirate Bay case, commented here], in which the CJEU acknowledged the possibility for a provider to be directly liable for copyright infringement. 

The Italian court also recalled the fairly recent Communication from the Commission on Illegal Content Online, in which the Commission noted that - as per Recital 42 in the preamble to the E-commerce Directive, as well as the CJEU decision in Google France and L'Oréal - the safe harbour only applies to hosting providers that do not play an ‘active role’ of such a kind as to give them knowledge of, or control over, unlawful information

Interestingly, the Supreme Court also mentioned the initial proposal for a Directive on Copyright in the Digital Single Market [Katposts here], notably the attempted ‘codification’ [the language actually employed omitted to mention that the CJEU held that the active role must be such as to give the provider knowledge of or control over the infringing content] made by the Commission concerning safe harbour eligibility in the original version of Recital 38.

Having somewhat criticized EU law for lacking sufficient theoretical strength (“tendenziale sottoteorizzazione”), the Supreme Court said that there is a need to ensure the certainty of the law and bring also EU-derived norms within an “effective conceptual system”. 

When does a provider lose the safe harbour? 

Following this rant these considerations, the Supreme Court held that a provider would be active and, therefore, ineligible for the safe harbour, when it would perform activities like, eg: 
  • Filtering 
  • Selection 
  • Indexing 
  • Organization 
  • Classification 
  • Aggregation 
  • Evaluation 
  • Use 
  • Modification 
  • Extraction, or 
  • Promotion 
of content as performed through an entrepreneurial management of the service and the adoption of tools aimed at evaluating user behaviour to enhance the ‘retention’ thereof.

As such, any refusal in abstracto to consider Yahoo! as a hosting provider would be incorrect. The Milan Court of Appeal performed a well-reasoned assessment of why Yahoo! would qualify as a ‘passive’ host. The provider would become liable only when, upon becoming aware of the users' infringing activity, it would fail to act expeditiously to bring the infringing activity to an end. 

How to write a
notice-and-takedown request?
How should the notice and take-down request be made and what should it contain? 

The Supreme Court held that, for a provider to become aware, it is not required that the rightholder send a formal cease-and-desist letter: a simple communication suffices.

The Court also tackled an issue that in Italy has been contentious for a long time: what should the notice include?

While some courts have required the indication of the relevant URLs [see, eg, here and here], other courts – notably those in Rome – have considered the indication of the mere title of the work sufficient [see, eg, here]

The Supreme Court found that this is something for a judge on the merits to determine (and this was something that, according to the Court, the lower court had failed to do). However, it did not exclude that simple indication of the title of the work could be enough, especially for those works whose title consists of “words combined in an original way, so that they can be distinguished from common language”. A URL is required only when "indispensable" to identify the infringing content.

Is a notice-and-takedown enough to trigger a notice-and-stay-down obligation?

The Court also tackled the issue whether a notice-and-takedown request imposes on the relevant provider an obligation of ‘stay-down’, ie an obligation to prevent the re-uploading of the same infringing content. 

The Supreme Court answered: YES. 

An obligation to prevent the re-uploading of the same infringing content has nothing to do with imposing a general monitoring obligation (which would be contrary to Article 15 of the E-commerce Directive). The Supreme Court found that this conclusion would be also in line with CJEU case law, notably the decisions in UPC Telekabel and L’Oréal

In conclusion, the Supreme Court sent the case back to the Milan Court of Appeal for it to re-assess whether, at the time when the infringing activity occurred, it was possible for Yahoo! to identify the infringing videos through mere indications of the titles of the works. 

Yahoo!’s search engine decision 

In 2014, the Milan Court of First Instance considered RTI’s claim that Yahoo! would have failed to comply with the injunction granted in the 2011 decision mentioned above, for allowing the re-posting of infringing content. Also, by providing hyperlinks and embedded links to said infringing content, also made discoverable through suggest search, Yahoo! would have directly infringed RTI’s copyrights. 

The Milan court dismissed the action, and found that Yahoo! would qualify as a caching provider and would be eligible for the safe harbour as available under Article 13 of the E-commerce Directive and the corresponding provision under Italian law. 

RTI appealed, but with no success. So, it lodged a further appeal to the Supreme Court, claiming wrongful application of law provisions by the Milan Court of Appeal. 

The Supreme Court found that the Milan court had correctly applied the legal principles on caching providers to Yahoo! Italia Search. As regards the linking activities performed by Yahoo!, the Supreme Court held that these would not remove Yahoo! from its condition of neutrality and would be also in line with the content of Recitals 42 to 44 in the preamble to the E-commerce Directive.


[Originally published on The IPKat on 20 March 2019]