Thursday, 26 November 2020

TPM circumvention and website blocking orders: An EU perspective

Blocking application

Website blocking orders in IP cases (mostly, though not solely, in relation to copyright-infringing websites) are routinely granted in several jurisdictions, whether in Europe or third countries. The availability of such relief has been established in case law, administrative frameworks and academic studies alike.

The Court of Justice of the European Union ('CJEU') expressly acknowledged the compatibility of such a remedy with EU law in its 2014 decision in UPC Telekabel. Also the European Court of Human Rights recently found that, although it is necessary that this particular remedy is available within a balanced and carefully drafted legislative framework which contains a robust and articulated set of safeguards against abuse, website blocking orders are not per se contrary to the provision in Article 10 ECHR.

Over time, courts and other authorities (including administrative authorities in certain EU Member States) have dealt with applications which have: been based on different legal grounds; been aimed at protecting different types of rights; and resulted in different types of orders against internet service providers ('ISPs').

An interesting recent development concerns website blocking orders in relation to websites that market and sell devices and software aimed at circumventing technological protection measures (‘TPMs’). TPMs offer rights holders an ancillary right of protection and are deployed to protect against infringement of copyright in works that subsist in multimedia content such as video games. TPMs are a cornerstone in copyright protection in the digital age where large-scale copying and dissemination of copyright-protected content is so prevalent.

So far, in Europe there have been some instances – including in Italy, Spain, and the UK – in which an application based inter alia on the protection against TPM circumvention has been granted.

What is the broader significance of this further evolution of website blocking order jurisprudence? And, more generally: should we expect to see more decisions ordering ISPs to block access to websites providing TPM circumvention devices? As it will be illustrated in what follows, such an evolution of website blocking order jurisprudence is hardly surprising and, yes, we should expect to see more of these orders being granted across Europe.

Intermediary injunctions under EU IP law: rationale, scope and evolution

The reason why intermediaries are involved in the enforcement process by means of injunctions against them – and why this proves particularly helpful in the online context – is explained in Recital 59 in the preamble to the InfoSoc Directive:
In the digital environment, in particular, the services of intermediaries may increasingly be used by third parties for infringing activities. In many cases such intermediaries are best placed to bring such infringing activities to an end. (emphasis added) 
The EU IP framework (Article 8(3) of the InfoSoc Directive and Article 11, third sentence, of the Enforcement Directive) expressly requires Member States to ensure that rightholders are in a position to apply for injunctions against intermediaries under their national laws. This possibility is without prejudice to the provisions of the E-commerce Directive and subsists irrespective of any liability of the intermediary targeted by the injunction. Whilst conditions for and modalities of such injunctions are a matter of national law, competent courts and authorities need to inter alia comply with Article 3 of the Enforcement Directive and general principles of EU law, as well as the provisions of the EU Charter of Fundamental Rights.

Through a number of decisions – notably those in L’Oréal and Others (2011), Scarlet Extended (2011), SABAM (2011), UPC Telekabel (2014), Mc Fadden (2016), Tommy Hilfiger (2016), and Ziggo (2017) – the CJEU has articulated a number of key standards in relation to intermediary injunctions. Among other things, the notion of ‘intermediary’ is both loose and broad: for an economic operator to be considered as ‘intermediary’, it is sufficient that they provide – even among other things – a service capable of being used by one or more other persons in order to infringe one or more IP rights. In addition, as the CJEU clarified in L’Oréal and Others, injunctions may be aimed at repressing existing infringements and also preventing further infringements. This conclusion is also in line with the overall framework established by the E-commerce Directive.

As mentioned, website blocking legislation and jurisprudence have evolved. First, some EU Member States have adopted enforcement models in which administrative authorities are also competent to issue website blocking orders (an example is Italy and its Communication Authority’s Copyright Regulation, which has been applied with overall satisfactory results so far). Secondly, courts and authorities have been issuing increasingly tailored and effective injunctions, characterized by dynamism and the collaboration between rightholders and the relevant ISPs. Thirdly, injunctions have been granted in relation to different IP rights, including copyright and trade marks. Related to the latter point, as mentioned, a further evolution is the one concerning blocking of access to websites offering devices and software that allow for the circumvention of TPMs.

Website blocking in cases concerning TPM circumvention

Article 6 of the InfoSoc Directive mandates upon Member States to “provide adequate legal protection against the circumvention of any effective technological measures, which the person concerned carries out in the knowledge, or with reasonable grounds to know, that he or she is pursuing that objective.” The notion of TPM encompasses “any technology, device or component that, in the normal course of its operation, is designed to prevent or restrict acts, in respect of works or other subject matter, which are not authorised by the rightholder of any copyright or any right related to copyright”. TPMs “shall be deemed “effective” where the use of a protected work or other subject matter is controlled by the rightholders through application of an access control or protection process, such as encryption, scrambling or other transformation of the work or other subject matter or a copy control mechanism, which achieves the protection objective.” Article 6(2) also requires Member States to provide adequate legal protection against the manufacture, import, distribution, sale, rental, advertisement for sale, possession for commercial purposes of circumvention devices and/or software or the provision of services which are promoted, advertised or marketed for the purposes of circumvention:
Member States shall provide adequate legal protection against the manufacture, import, distribution, sale, rental, advertisement for sale or rental, or possession for commercial purposes of devices, products or components or the provision of services which: 

(a) are promoted, advertised or marketed for the purpose of circumvention of, or 

(b) have only a limited commercially significant purpose or use other than to circumvent, or 

(c) are primarily designed, produced, adapted or performed for the purpose of enabling or facilitating the circumvention of, 

any effective technological measures. 
Variety of Kats ... 
variety of website blocking orders

It is thus apparent that the protection offered by this provision is wide-ranging: not only does it encompass the manufacture and distribution of devices, but it does also include, among other things, the advertising thereof and the provision of services (i.e. modding services).

The CJEU has also clarified that the legal protection referred to in Article 6 is broad. This said, it only relates – as Advocate General Szpunar also recalled in his recent VG Bild Kunst Opinion – to the protection of the rightholders against acts which require their authorization.

In the copyright enforcement context, one may wonder whether rightholders are entitled to seek injunctions against intermediaries, not only when the target websites directly engage in the doing of copyright-restricted acts, but also when they provide devices aimed at circumventing TPMs and, thus, allow one to perform acts that copyright does restrict. If so, what could the legal basis for such applications be?

Last year, the High Court of England and Wales (Arnold J (as he then was)) issued a website blocking order against 5 of the main UK retail ISPs to block access to 4 websites advertising, distributing, offering for sale and/or selling devices that allowed TPMs on Nintendo Switch games console to be circumvented. Considering the longstanding UK website blocking jurisprudence, the novel issue in that case was the legal basis actioned by Nintendo, this being (besides trade mark rights) the rights under ss 296 and 296ZD CDPA 1988, that is the provisions through which the UK had transposed Article 6 into its own law. Arnold J noted that the rights conferred by section 296ZD are designed to protect UK copyrights. Eventually, the order sought by the applicant company was granted based on the jurisdiction of the High Court under s37(1) of the Senior Courts Act 1981.

Availability of website blocking orders in TPM circumvention cases in EU Member States

Adopting a broader, European perspective, in a case concerning TPM-circumventing devices, the jurisdiction to grant a website blocking order could be also rooted within the domestic provisions implementing Article 8(3) of the InfoSoc Directive. Article 8(3) of the InfoSoc Directive (as transposed) could be indeed the legal basis for such orders, in that it is apparent (as it was in the English case) that the operators of the target websites use the ISPs’ services “to infringe copyright”. As Arnold J acknowledged, the operators of the websites dealing with such devices were infringing Nintendo’s rights in the UK, including its copyrights.

The circumvention of TPMs results – as it was in the English case – in the unauthorized reproduction and other unlawful uses of copyright content (in that case: videogames, including their artwork, text, and soundtracks). Such a situation appears to fall squarely within the scope of application of both Articles 6 and Article 8(3) of the InfoSoc Directive. As Arnold J found, the TPMs installed by the applicant were aimed at protecting against acts which required its authorization. As such, the making available of devices that allowed for the circumvention thereof entitled such copyright holder to inter alia request an injunction against an intermediary whose services were used to infringe – through such devices – copyrights and other rights.


In light of the foregoing, copyright owners appear entitled to seek injunctions against intermediaries to also block access to websites dealing with TPM-circumventing devices. The legal basis for that can also be, subject to satisfying all the other requirements under EU and national law, the domestic provision implementing Article 8(3) of the InfoSoc Directive.

All in all, it appears likely that we will see more blocking orders in the future, including orders – issued by courts and competent authorities around Europe – targeting websites that provide TPM-circumventing devices. This is an unsurprising and natural evolution of website blocking jurisprudence. It also serves to show the very flexibility of this type of remedy and, matched inter alia with the loose notion of ‘intermediary’, its inherently broad availability. 

[Originally published on The IPKat on 26 November 2020]

Tuesday, 15 September 2020

Copyright is for losers … and so are trade marks: Banksy’s EUTM declared invalid due to bad faith

 Can a sign representing an artwork be registered as a trade mark? Can trade mark registration be used to monopolize artworks? If so, can any such intention and behaviour be repressed?

The answer to all these questions is in the affirmative, as Pest Control – a handling service acting on behalf of elusive artist Banksy – learned yesterday, when the Cancellation Division of the European Union Intellectual Property Office (EUIPO) ordered that its EU trade mark (EUTM) registration representing one of Banksy’s best known artworks, the Flower Thrower, be declared invalid on the ground of bad faith.


In 2014, Pest Control obtained the registration of the figurative mark represented below as an EUTM in relation to goods and services in classes 2, 9, 16, 18, 19, 24, 25, 27, 28, 41, and 42.

In 2019, Full Colour applied to obtain a declaration of invalidity for all relevant goods/services on grounds of bad faith under Article 59(1)(b) EUTMR and also pursuant to Article 59(1)(a) EUTMR in connection with Article 7(1)(b) and (c) EUTMR.

The parties’ arguments

The registered trade mark represents one of Banksy’s most iconic artworks. According to the applicant, the trade mark proprietor has never used the sign as a trade mark and Banksy himself has only ever reproduced the sign as an artwork.

Furthermore, the artwork at hand is a graffiti sprayed in a public place, which has been widely photographed and disseminated also thanks to Banksy’s personal stand that "copyright is for losers". According to the applicant, Banksy would be seeking trade mark protection to avoid protecting his rights under copyright law, which would require him to lose his anonymity [though it should be noted that some copyright enforcement attempts have been made in the recent past].

In sum, the trade mark – argued the applicant – was registered without any intention other than to monopolize this and other registered images (Pest Control does hold other figurative EUTMs for Banksy's artworks) for an indefinite period, contrary to the principles of copyright law. It would also seek to use the EU registrations as the basis for obtaining US trade mark registrations. As such, the present registration would have been done in bad faith.

In turn, the trade mark proprietor submitted that the applicant had failed to demonstrate bad faith. Furthermore, the evidence provided would not demonstrate that Banksy has given ‘free reign’ to the general public to use his works for purposes other than non-commercial ones. In any case, what Banksy said or did would neither change the law nor prohibit him or the proprietor from seeking rights and protections available under the law. Holding otherwise would be inter alia contrary to the principles of freedom of expression and equality before the law under, respectively, Articles 11 and 20 of the EU Charter of Fundamental Rights.

In addition, in accordance with NEUSCHWANSTEIN, a party that registers a trade mark in pursuit of a legitimate objective to prevent another party from taking advantage by copying the sign would not be acting in bad faith. The recent Sky decision [Katposts herewould also support this conclusion.

The decision: bad faith (Article 59(1)(b))

The Office recalled that, as Advocate General (AG) Sharpston noted in her Lindt Goldhase Opinion, for a finding of bad faith there must be:

  1. some action by the EUTM proprietor which clearly reflects a dishonest intention, and
  2. an objective standard against which such action can be measured and subsequently qualified as constituting bad faith.

In accordance with KOTON, bad faith subsists when the trade mark owner lacked any intention to use a trade mark or engaging fairly in competition. Rather, they acted with the intention to undermine the interests of third parties, in a manner inconsistent with honest practices, or with the intention to obtain, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin.

The Office noted that, in 2019, that is after the date of filing of the application for a declaration of invalidity, Banksy launched a shop - Gross Domestic Product – which, while not not opened to the public, would allow customers to look at the window displays and buy the products online, after a vetting procedure to ensure that they were not going to re-sell the items and were not art dealers. The motivation for this venture was "“possibly the least poetic reason to even make some art” – a trademark dispute", ie to show use of the registered signs as trade marks.

According to the Office, this behaviour shows that the EUTM proprietor never had any intention to use the contested EUTM as a trade mark in relation to the relevant goods and services. As a result, it concluded that the trade mark should be declared invalid under Article 59(1)(b). Since the applicant succeeded on this ground, the Cancellation Division did not examine the request based on the other grounds.


This is an interesting decision for several, different reasons.

Starting from the trade mark-related ones, the decision seems to adopt quite a generous reading of the concept of bad faith, by treating in the same way situations in which one seeks to use trade mark law to 'extend' an expired copyright and situations in which one seeks to use trade mark law in parallel to an existing copyright. 

In this sense, it elaborates further - without mentioning it - on the suggestion already advanced in case law – including recently in the EFTA Court’s decision in Vigeland [Katposts here(referring to the AG Opinion in Shield Mark) – that “a trade mark based entirely on copyright protected work carries a certain risk of monopolisation of the sign for a specific purpose, as it grants the mark’s proprietor such exclusivity and permanence of exploitation which not even the author of the work or his estate enjoyed”. As a result, “[t]he interest in safeguarding the public domain … speaks in favour of the absence of individual protection for, or exclusive rights to, the artwork on which the mark is based.”

One may wonder whether bad faith is the right tool to employ to purse such public interest goals or whether, instead, a simple assessment made on, e.g., distinctiveness (or lack thereof) would avoid casting a 'judgement' on the trade mark owner’s overall intentions and behaviour, while allowing for more straightforward approaches.

Moving on to copyright, the decision has some (patronizing) notes which deserve more careful consideration. Two in particular stand out.

The first one concerns Banksy’s “disdain for intellectual property rights”. Thankfully, the Cancellation Division concluded that what the author thinks is irrelevant to determine copyright subsistence. In any case, the Office could have not held differently, as CJEU case law – including the recent judgment in Brompton Bicycle [Katposts here– suggests that no subjective considerations find place in the context of inter alia determining copyright subsistence.

The second, and possibly more concerning one, relates to the consideration – not elaborated in any way – that, since the Flower Thrower is a piece of street graffiti placed on a wall on the side of a garage in Jerusalem,

There is an argument that street graffiti, which is not carried out with the express permission of the owner of the property on which it is placed, is carried out in commission of a criminal act. To such extent, no copyright rights might accrue from such a work (or there is an argument that the copyright may be assumed to be gifted to the owner of the property). Moreover, graffiti is normally placed in public places for all to view and photograph, which might also possibly annul any ownership rights in copyright, although this is expressly denied by the proprietor.

Conflicts between real and intellectual property are not novel, and there is interesting case law on this point. However, it would be problematic to hold in principle that only works realized out of legality, and not also works realized out of illegality, would be eligible for copyright protection. Possibly even more problematic is the Office’s suggestion that the public display location of an artwork may “annul” any ownership rights in copyright. Both are unacceptable conclusions.

In any case, let's stay tuned for the next episodes in the ‘Banksy in IPland’ saga …

[Originally published on The IPKat on 15 September 2020]

Thursday, 3 September 2020

AG Hogan advises CJEU to rule that disclosure of evidence containing protected content to a court is not a communication to the public

IPKat posts as evidence in court? Why not!
Image credits: Riana Harvey
Does the disclosure in court proceedings of a work protected by copyright or related rights amount to InfoSoc Directive? Is the notion of ‘public’ in the right of communication/making available to the public in Article 3 therein to be intended in the same way as the notion of ‘public’ in the right of distribution in Article 4? How can copyright protection be reconciled with transparency obligations?
a ‘communication to the public’ and/or a ‘distribution to the public’ within the meaning of the 

These, in a nutshell, are the issues that the Court of Justice of the European Union (CJEU) will have to address when it decides BY, C-637/19, a referral made by the Svea Court of Appeal, Patent and Market Court of Appeal, Stockholm, Sweden.

This morning, Advocate General (AG) Hogan issued his Opinion, in which he advised the Court to rule that the electronic transmission by a litigant or a party to proceedings of protected materials as evidence to a court does neither constitute a communication nor a distribution to the public. In any case, the mere fact that a document qualifies as a public document does not entail that the underlying material is also in the public domain.

Let’s see more in detail how the AG reasoned.


This request for a preliminary ruling was made in the context of a dispute between two private persons, each of whom operates a website. One of them (CX) sent a copy of a page of text, including a protected photograph, from the other party (BY)’s website as evidence in the court proceedings. BY holds the rights to the photograph and claimed that the disclosure made by CX amounted to infringement of copyright and/or related rights.

At first instance it was ruled that such disclosure did not qualify as a rights infringement in light of Swedish constitutional law on access to documents. 

BY appealed. 

The appellate court stayed the proceedings, as it considered it unclear whether:
  1. a court could be considered a ‘public’ for the purpose of copyright law (the referring court would be inclined to say no, although it should be noted that under Swedish law anyone has a right of access to documents received by a court) and
  2. the concept of public should be intended in the same way between Articles 3 and 4 of the InfoSoc Directive. The uncertainty is due to certain earlier CJEU case law, notably Dimensione [Katpost here], in which the Court held that – for there to be ‘distribution to the public’ – it is sufficient that the protected work has been delivered to a member of the public.
The AG Opinion

AG Hogan noted at the outset that this case “raises issues of some importance regarding the interaction of EU copyright legislation and national freedom of information, together with the right to an effective remedy and a fair trial” (as also guaranteed under Article 47 of the EU Charter of Fundamental Rights).

Notion of ‘public’

The AG (correctly) found that it would not be necessary to answer the question concerning the notion of ‘public’ between Articles 3 and 4, since it is apparent that the activity at issue in the background national proceedings would qualify as communication to the public, rather than distribution. 

As the CJEU confirmed in Tom Kabinet [Katpost here], the right of distribution is concerned with physical copies. In this case, the protected photograph was sent by email. Hence, there would be no need to engage Article 4 of the InfoSoc Directive.

Disclosure to a court of protected content

Turning to the other questions, the AG considered them as akin to asking – in a nutshell – whether the disclosure of protected content to a court by email would qualify as an act of communication to the public. 

According to the AG, whilst the communication of protected content to third parties performing administrative or judicial functions may very well surpass ‘a certain de minimis threshold’ (required for that communication to be to a public), it would still fail to be a communication to the public within Article 3(1) of the InfoSoc Directive “precisely because those persons, while not a private group per se, would nonetheless be constrained by the nature of their official functions. In particular, they would not be entitled to treat the copyrighted material as being free from copyright protection.” 

In addition, the exploitation at issue would not have any independent economic significance and would not be directed at an indeterminate number of potential recipients:
The communication would instead be aimed at a clearly defined and limited or closed group of people who exercise their functions in the public interest and who are, subject to verification by the referring court, bound by legal and ethical rules concerning, inter alia, the use and disclosure of information and evidence received in the course of court proceedings.
Court clerks on a break
The fundamental rights angle

The AG further added that, if copyright law were to prevent the disclosure as evidence of protected material, this would seriously compromise the right to an effective remedy and the right to a fair trial as guaranteed by Article 47 of the Charter.

In addition, while IP is protected under Article 17(2) of the Charter, its protection is not absolute and it must be fairly balanced or weighted against other Charter rights.

In any case, also under the Swedish transparency principle, it is not that a protected material enters the public domain “simply because it has been disclosed or exhibited or otherwise made available in evidence during the course of court proceedings.” In sum: “Swedish law does not envisage or permit copyright protection to be lost merely because one of the parties has exhibited that material in the course of civil proceedings and a third party can subsequently gain access to that material by virtue of Swedish freedom of information law.” If the contrary was true, then Sweden would be in breach of its obligations under EU law, including with regard to the InfoSoc Directive and Article 17(2) of the Charter.


The Opinion of AG Hogan follows a logical approach and the outcome appears to be a sensible one.

This said, despite the rather peculiar factual background, the referral in BY has the potential to allow the Court to reflect on the elusive notion of 'public' in at least the right of communication to the public (it does not in fact appear possible to consider, as the referring court did, that the situation at issue could qualify as distribution. In this sense, the AG was correct in saying that there is no need to address whether the notion of 'public' differs between Articles 3 and 4 of the InfoSoc Directive).

With regard to Article 3, the ‘public’, according to the CJEU and also considered by AG Hogan, in principle refers to an indeterminate and more than de minimis number of people; it thus excludes groups of persons which are too small or insignificant. Elaborating further, the ‘public’ requires “several unrelated persons”. 

This said, what or who qualifies as a ‘public’ still poses interpretative challenges. For instance, in STIM and SAMI (another referral from Sweden), one of the questions referred to the CJEU was whether the volume and characteristics of the defendant’s business activity (car rental companies and the duration of individual car rentals) would be relevant to the determination of whether there is an act of communication to the public. AG Szpunar held in the negative in his Opinion [Katpost here]. In the resulting decision, the CJEU did not consider it necessary to answer this question, having concluded that the activity at issue would not constitute an act of communication. 

The forthcoming BY decision might allow the Court to detail who and what the public is, thus contributing further to the construction of the right of communication to the public and the delineation of its scope.

[Originally published on The IPKat on 3 September 2020]

Monday, 31 August 2020

The legal nature of Article 17 of the Copyright DSM Directive, the (lack of) freedom of Member States, and why the German implementation proposal is not compatible with EU law

Article 17 of the Copyright DSM Directive
and the InfoSoc Directive:
a special relationship?
What is the legal nature of Article 17 of the Copyright DSM Directive? What is the relationship InfoSoc Directive?
between that provision and the 

These questions, which might look at first sight academic in both nature and significance, are actually of great practical relevance, including to determine the room for manoeuvre enjoyed by EU Member States during the (ongoing) national transposition phase.

In this sense, it is notable that the German Government has been moving from the idea that the freedom accorded under Article 17 is such that Member States are inter alia entitled to decide whether to introduce exceptions or limitations beyond both those specifically referred to in Article 17(7) and those listed in Article 5 of the InfoSoc Directive (see the proposed ‘de minimis’ remunerated ‘authorized use’ in §6 of the German Discussion Draft Act).

The different views

Recently, the Kluwer Copyright Blog has hosted some though-provoking analyses – both building on more extensive papers – suggesting either that approaches like the German one would not be correct (Nordemann and Waiblinger: here and here, and also here) or that, instead, they would be compatible with EU law (Husovec and Quintais: here and here, and also here). The latter would be because of the nature of Article 17 as either a special right or even a new sui generis right.

As argued by Husovec and Quintais, Article 17 could be a special right because – even if the scope of the acts it covers is within the pre-existing scope of the right of communication to the public in Article 3 InfoSoc Directive – it would follow a separate regime with its own particular rules. Article 17 could be even characterized as a new sui generis right in that it would be a wholly new right of communication to the public, which extends the concept beyond Article 3 InfoSoc Directive as interpreted by the Court of Justice of the European Union (CJEU). Either characterization, in turn, means that national legislatures would not be bound to comply with the list of exceptions and limitations in Article 5 of the InfoSoc Directive.

This commentary does not agree that Article 17 could be considered and, therefore, treated as a special or even a sui generis right. The reasons are detailed below and can be summarized as follows: Article 17 does neither provide a wholly special regime from that already envisaged under the pre-existing acquis nor does it provide a new right of communication/making available to the public.

What is special about Article 17

What is special – if anything – about Article 17 of the Copyright DSM Directive is neither the characterization that certain providers perform acts restricted by copyright (this is already the law under Article 3 of the InfoSoc Directive and CJEU case law) nor the notion of communication/making available to the public referred to therein.

Rather, what is special is the treatment that the Copyright DSM Directive reserves to the providers that qualify as online content sharing service providers (OCSSPs). To put it like Nordemann and Waiblinger, what is special about Article 17 is not the exploitation level, which is the same as inter alia Article 3 of the InfoSoc Directive. It is rather the liability level.

In this sense, it is not possible to contemplate any freedom of Member States beyond what both Article 17 of the Copyright DSM Directive and Article 5 of the InfoSoc Directive allow. As a result, exceptions or limitations – like the proposed German one – that go astray from what EU law contemplates would be incompatible with EU law if they were adopted.

The relationship between the Copyright DSM Directive and the InfoSoc Directive

Three key considerations may be provided in support of the conclusion above.

First, save for what is stated in Article 24 therein and what is provided by Article 17 itself, Article 1(2) of the Copyright DSM Directive lists the InfoSoc Directive among the EU legislation that is left intact and in no way affected by it.

Secondly, despite the reservations expressed by Advocate General Øe in his recent YouTube/Cyando Opinion [Katpost here], recital 64 is clear in saying that the Copyright DSM Directive clarifies that providers the meet the definition of OCSSP do perform copyright-restricted acts, including acts of communication/making available to the public. Of course, that recital does not in any way suggest – nor could it - that not only providers that fall under the notion of OCSSPs may perform acts of communication/making available to the public. As also correctly noted by Nordemann and Waiblinger, it is not that if one falls outside the scope of application of Article 17, there is no risk of liability whatsoever for the doing of acts of communication/making available to the public. Liability under other directives – including, but not necessarily limited to, Article 3 of the InfoSoc Directive – might be established.

Finally, still from recital 64 it appears that the concept of communication/making available to the public referred to – and not defined – in the Copyright DSM Directive does neither alter the corresponding notion in other EU legislation nor does it affect the application of Article 3 of the InfoSoc Directive (or, eg, Article 8 of the Rental and Lending Rights Directive). Indeed, the concept of communication/making available to the public in Article 17 is to be interpreted in accordance with the corresponding concept in inter alia the InfoSoc Directive. Article 3 of the InfoSoc Directive is not ‘suspended’. Settled case law indicates that identical concepts in different directives should be attributed the same meaning (for examples specifically in the copyright field, see the CJEU decisions in LuksanFAPLUsedSoftMc Fadden). It follows that the one in Article 17 is not a ‘sub-right’ of Article 3 of the InfoSoc Directive: it is the same right. Above all, attempts to provide a ‘special’ definition of communication/making available to the public – as is the case of, again, the German Discussion Draft and seemingly also the position of the Commission (which, it is worth recalling, is not the EU legislator) – are both unnecessary and incorrect.

All the above suggests that the one in Article 17 is neither a special nor a sui generis right: instead, it is a provision that is rooted within and depends on the InfoSoc Directive. To summarize, what is special about it is:
  • the liability treatment envisaged therein for OCSSPs (including new OCSSPs);
  • the default scope of the authorization obtained by OCSSPs also in respect of certain users of their services;
  • the obligations of Member States with regard to the implementation of certain exceptions or limitations in Article 5 of the InfoSoc Directive insofar as activities covered by Article 17 are concerned. (In this sense, it would be incorrect to think that the optional character of the InfoSoc exceptions/limitations allowing quotation, criticism, review, and uses for the purpose of caricature, parody or pastiche has been turned by Article 17 into a generally mandatory one).
Based on a literal reading of Article 17, basic canons of legal interpretation and general principles of EU law (as also consistently applied in CJEU case law), what does not fall within the special liability regime of the provision shall remain subjected to the general regime, including Article 5 of the InfoSoc Directive.

The prescriptive language of Article 17 and the (lack of) freedom of Member States

Unlike other provisions in the Copyright DSM Directive, the language of Article 17 is highly prescriptive and does not leave Member States any particular freedom in the transposition phase.

With regard to exceptions and limitations, this means that Member States are, on the one hand, required to introduce of maintain national exceptions or limitations allowing quotation, criticism, review, and uses for the purpose of caricature, parody or pastiche in relation to activities within the scope of Article 17. A Member State does not enjoy the freedom to, say, introduce an exception for quotation but refrain from also introducing an exception for parody insofar as the activities referred to in Article 17 are concerned. At the same time, all those concepts (quotation, criticism, review, parody, caricature, pastiche) are autonomous concepts of EU law, which must be interpreted uniformly throughout the EU and in accordance with CJEU case law, without any possibility for Member States to alter the scope thereof.

On the other hand, Member States do not have the discretion to introduce any exceptions or limitations beyond those expressly allowed under Article 5 of the InfoSoc Directive, which maintain – save for Article 5(1) and what has been stated above – their optional character. In this sense, Article 25 of the Copyright DSM Directive means that the exceptions or limitations adopted in accordance with that directive do not trump the availability of exceptions and limitations under the InfoSoc Directive, not that exceptions and limitations to harmonized rights may be introduced beyond the InfoSoc Directive. So, for instance, a Member State may still rely on Article 5(3)(a) of the InfoSoc Directive to legislate in relation to text and data mining, without that possibility being precluded by the provisions in Articles 3 and 4 of the Copyright DSM Directive.

Just because you are not told you cannot do it, it does not mean you can

A reading that suggests that, since Article 17 does not expressly prohibit it, there is a freedom of Member States to introduce their own exceptions – even outside the catalogue of Article 5 of the InfoSoc Directive – cannot be endorsed. Such interpretation would be also contrary to the principle of EU preemption, the rationale of EU harmonization, and settled CJEU case law. Several examples could be cited in support.

If we consider the case of exclusive rights, including Article 3 of the InfoSoc Directive, it is not written anywhere in the text of that provision that Member States cannot alter the scope of the rights harmonized therein. Does it mean that they are entitled to do so? No. The CJEU spelled it out clearly in decisions such as Svensson and C More.

The same applies to exceptions and limitations. First, unless EU law expressly allows it, Member States are not entitled to introduce or maintain any copyright exceptions and limitations to harmonized rights beyond those allowed under EU law. A clearer confirmation of this could not be found than in the 2019 Grand Chamber decisions in Funke Medien and Spiegel Online. Secondly, unless EU law expressly leaves it to Member States to fine-tune the resulting national exceptions and limitations, it is not possible for them to alter the scope of the exceptions and limitations that they have decided to transpose into their national regimes. As early as in Padawan, the CJEU clarified that an interpretation according to which EU Member States that have introduced into their national law an exception pursuant to EU law are free to determine the limits in an inconsistent and un-harmonized manner, which may vary from one Member State to another, would be incompatible with the objective of EU harmonization.

Overall, those mentioned above are examples of how the principle of EU preemption works in practice and has found application in the copyright field. IP, including copyright, is an area of shared competence between the EU and its Member States. This means that, once the EU has exercised its competence in a certain field and adopted rules on a particular matter, EU Member States may no longer legislate in relation to the elements of the EU action in question and, in so doing, undermine the action of EU legislature. This is also the case of Article 17. Holding otherwise would defeat the very purpose of EU harmonization.


In conclusion, Article 17 of the Copyright DSM Directive is neither a special nor a sui generis right. The history of the provision, its actual content and objectives, the content of other provisions in the Copyright DSM Directive, general principles of EU law and settled CJEU case law all lead to the conclusion that the thing that is special about Article 17 is how it treats the liability of certain providers (OCSSPs) and certain users of their services. The concept of communication/making available to the public does not differ from that found in the rest of the acquis, nor do Member States have the freedom to determine what falls within the scope of such exclusive right and what does not. Furthermore, the wording and content of Article 17 is highly prescriptive. To employ language that the Court itself has used in the past in other areas of copyright, it is a measure of ‘full harmonisation’. It leaves Member States no freedom to alter the scope of the provision, including with regard to exceptions and limitations referred to therein (they are all autonomous concepts of EU law), and precludes the possibility to introduce exceptions and limitations beyond that directive and the rest of the acquis, including the InfoSoc Directive.

[Originally published on The IPKat on 31 August 2020]

Monday, 27 July 2020

The AG Opinion in YouTube/Cyando: a regressive interpretation of the right of communication to the public

AG Saugmandsgaard Øe
A few days ago, The IPKat reported on Advocate General (AG) Saugmandsgaard Øe’s Opinion in YouTube and C-683/18 Cyando. When the Court of Justice of the European Union (CJEU) issues its judgment, it will have the opportunity to determine:
Joined Cases C-682/18 
  • Whether user-uploaded content (UUC) platforms like YouTube and Uploaded (the latter is a cyberlocker) do perform acts of communication to the public under Article 3(1) of the InfoSoc Directive [according to the AG, in principle, they do not];
  • Whether the hosting safe harbour in Article 14 of the E-commerce Directive is in principle available to these platforms [according to the AG, it is];
  • How to interpret Article 14(1)(a) of the E-commerce Directive and Article 8(3) of the InfoSoc Directive.
Possibly (though no questions have been expressly referred on this point), the CJEU will also consider a central aspect of the AG Opinion, that is the relationship between Article 17 of the DSM Directive (not applicable to the facts at hand) and the pre-2019 acquis. According to the AG, Article 17 has introduced into EU law a new liability regime for what the DSM Directive calls ‘online content sharing service providers’, which is not merely a clarification of the pre-existing law as, instead, suggested by recital 64 in the preamble therein.

In light of the foregoing, it is apparent that the resulting CJEU judgment in YouTube/Cyando has the potential to be key to different areas of copyright law and, more generally, the online intermediary regime (currently also under discussion on a policy level, in the context of the forthcoming EU Digital Services Act).

Having read (and digested) the 256-paragraph AG Opinion (if you print it, it’s a mere 62 pages), one also realizes that it would be quite challenging to summarize it in a single blog post. That is why the Court’s press release is so great.

This said, in this blog post I will share my initial thoughts regarding the AG’s construction of the right of communication to the public under Article 3(1) of the InfoSoc Directive.

The starting points

The Opinion appears premised upon two key considerations.

The first is that the present referrals are relevant to users and the expression of their creativity online (see [42]-[43] and also, later on, [241] in respect of Article 13 of the EU Charter). Whilst it is true that both matter in the context of the online construction of copyright’s exclusive rights and online platforms’ responsibilities and liabilities, neither appears key to the background national proceedings. In fact, in both YouTube and Cyando what had been uploaded on the relevant platforms were unmodified full-length versions of, respectively, music tracks from an album and recordings of concerts produced by Mr Peterson and books published by Elsevier.

The second is the refusal, by the AG, to acknowledge that - as matter of fact – the CJEU has absorbed the (formally unharmonized) secondary liability regime into the (harmonized) primary liability regime for copyright infringement (see how he titles Section 2 of his Opinion ...). To this end, as it will be also discussed below, the AG characterizes the earlier CJEU rulings in GS MediaFilmspeler, and Ziggo as a sui generis group of decisions without broader applicability beyond particularly egregious scenarios. 

In addition, like the AG had done in his Opinion in Constantin Film [here and here], the Opinion expressly rejects what it calls a ‘dynamic’ interpretation of the law (in respect of intermediaries’ stay down obligations: see [194]).

Let’s now move on to the core of the AG’s construction of liability under Article 3(1) of the InfoSoc Directive. 

The AG’s view of the right of communication to the public

During last week’s Joint IPKat/BLACA Live Webinar, I called the Opinion ‘regressive’ in this respect. I also stated that I would use ‘regressive’ in a neutral fashion: what I mean by this adjective is that the AG Opinion appears to hold a critical view of how the CJEU has progressively construed the right of communication to the public over the past several years (the AG seems to think that things began going wrong as early as SGAE in 2006, that is the first CJEU decision in the right of communication to the public …) and invites the CJEU to take a step back and (re-)consider what it has ‘done’ all this time.

In this respect, the Opinion echoes – though it does not expressly refers to it – the Opinion of AG Wathelet in GS Media [here], in which he warned the CJEU that the approach taken in Svensson with regard to linking to protected content was – put it bluntly – all wrong.

This said, the following appear to be the key points in relation to which the Opinion can be considered ‘regressive’ from the perspective of Article 3(1) of the InfoSoc Directive.

Transmission v accessibility

First, the AG does not seem to be a huge fan of the ‘accessibility’ approach in the construction of the notion of ‘act of communication’, at least if accessibility is considered in unqualified terms. 

At various points in the Opinion (notably [56] and [97]), he suggests that a communication to the public “corresponds to the transmission of a work”. If a work is simply made available, then – to be an ‘act of communication’ – something more is required: the access in questions must make it “possible for that work to be transmitted, at the request of a member of the public.”

Sui generis decisions

Secondly, as mentioned above, the Opinion considers GS MediaFilmspeler, and Ziggo as belonging to a sui generis group of decisions. The presumption of knowledge established in GS Media would not even have applicability beyond the particular case of linking to unlicensed content (see [113]).

Indispensable/essential intervention

Thirdly, the question of whether the user plays an indispensable/essential role should not be intended as akin to whether the user facilitates access to protected content. Rather, the question of indispensability should be who plays the “more fundamental” role: see [73]. 

In the case of a UUC platform, the user-uploader would play a role that is more fundamental (since they make the content available in the first place) than that of the platform.

Mere provision of facilities

Fourthly (and in turn), the AG adopts a rather generous reading of recital 27 of the InfoSoc Directive and the notion of “mere provision of facilities”. 

In his view, the mere provision of facilities would not mean mere provisions of mere facilities (at [82]). The fact that a platform has some or a significant degree of sophistication (as it is for instance the case of YouTube) should not mean that the platform is not a mere facility.

Watching Grey's Anatomy 
of studying (on a lawful copy of)
Gray's Anatomy
Primary v secondary liability 

Fifthly (also this follows from point 3 above), the AG rejects the idea that secondary liability has now been absorbed within the harmonized primary liability regime. 

To this, one may point out to what AG Szpunar wrote in the very opening of his Opinion in Ziggo [at [3]; Katpost here], an approach which the CJEU subsequently endorsed:
The European Commission, whose opinion appears to me to be shared by the United Kingdom of Great Britain and Northern Ireland, contends that liability for sites of this type is a matter of copyright application, which can be resolved not at the level of EU law but under the domestic legal systems of the Member States. Such an approach would, however, mean that liability, and ultimately the scope of the copyright holders’ rights, would depend on the very divergent solutions adopted under the different national legal systems. That would undermine the objective of EU legislation in the relatively abundant field of copyright, which is precisely to harmonise the scope of the rights enjoyed by authors and other rightholders within the single market. That is why the answer to the problems raised in the present case must, in my view, be sought rather in EU law. (emphasis added)
Article 17 of the DSM Directive

Sixthly, as mentioned, the liability regime in Article 17 of the DSM Directive would be a novel regime, which does not have retroactive application. 

In this regard, it is also worth noting that, unlike both Article 17 (which excludes the availability of hosting safe harbour in relation to situation covered by that provision) and what the referring court appears to think by looking at how the referred questions have been phrased, the AG considers that the hosting safe harbour is available irrespective of the type of liability at hand.

All in all

In conclusion, when it comes to UUC platforms, the AG considers that liability for unauthorized acts of communication to the public would subsist in two situations: when the platform is a piracy-focused one (so that decisions like Ziggo would apply) or when the platform presents the content as its own. Let’s now see whether the CJEU agrees.

The full recording of the Joint IPKat/BLACA Live Webinar is available here.

[Originally published on The IPKat on 27 July 2020]