Wednesday, 13 June 2018

BREAKING: UK Supreme Court rules that ISPs do NOT have to pay implementation costs in Cartier case

Overturning the decisions at first instance [IPKat report here and hereand on appeal [IPKat report here], this morning the UK Supreme Court has ruled that the ISPs (internet access providers) do NOT have to bear the costs of implementation of the injunction (in this case, a blocking injunction) issued against them pursuant to section 37(1) of the Senior Courts Act 1981 (SCA), requiring them to block access to a number of websites making available for sale goods infringing trade mark rights.

As explained in this post, the appeal to the UK Supreme Court focused indeed on the issue of cost allocation. 

The previous episodes

Although Kitchin LJ (writing for the Court of Appeal) acknowledged that "the ISPs are not guilty of any wrongdoing”, nor do they owe a common law duty of care to take reasonable care to ensure that their services are not used by the operators of the offending websites, the operators of the infringing websites need the services of the ISPs in order to offer for sale and sell their counterfeit goods to UK consumers. It followed that "the ISPs are therefore inevitable and essential actors in those infringing activities." 

The Court of Appeal confirmed that the High Court (Arnold) J "was entitled to require the ISPs to bear the costs of the implementation [while the costs of application should be borne by the rightholders] of the orders in issue." 

Similarly to Arnold J at first instance, Kitchin LJ in the Court of Appeal observed that it was implicit in Recital 59 of the InfoSoc Directive and Recital 23 of the Enforcement Directive that it would be “entirely appropriate for a national court to order that the costs of implementation of any such injunction should be borne by the intermediary”. 

The Court of Appeal also approved of Arnold J's proper consideration of the economic impact of website blocking orders upon the businesses of the ISPs, and that these could either bear these costs themselves or pass them on to their subscribers in the form of higher subscription charges.

The decision of the Court of Appeal contains however the dissent of Briggs LJ (as he then was) on the issue of cost allocation. In his view, “the cost burden attributable to the implementation of a particular blocking order should fall upon the rightholder making the application for it." The reason why that should be that case is a domestic one. 

It is true that both the Enforcement Directive and the InfoSoc Directive provide that rightholders should have the possibility of applying for an injunction against an intermediary who either carries a third party's infringement of a protected work in a network (in copyright cases) or whose services are being used by a third party to infringe the rightholder's industrial property right (in relation to trade marks). In both cases, however, the conditions and modalities relating to such injunctions, or the conditions and procedures relating to such injunctions should be left to the national law of the Member States. 

Briggs LJ noted that jurisdiction within section 37(1) SCA in substance reflects an originally unfettered jurisdiction exercised by the Court of Chancery on equitable principles. In the case of orders against innocent third parties, the law has evolved so to ensure that a standard condition or 'modality' for the grant of an injunction is that the cost reasonably incurred by the innocent respondent should be reimbursed by the applicant. In his view the Norwich Pharmacal jurisdiction should be intended as applicable in the case of intermediary injunctions and shield intermediaries from any responsibility for costs of injunctions against them. 

- You pay!
- No, you pay!
Today's judgment

This morning the Supreme Court held that neither EU directives nor judgments of the Court of Justice of the European Union (notably, the ones in L'Oréal and Telekabel) really set any rules as regards the allocation of costs of intermediary injunctions. 

It follows that this is a matter for individual Member States to decide. According to Lord Sumption (writing for the Court),
the incidence of compliance costs is a matter for English law, within the broad limits set by the EU principles of effectiveness and equivalence, and the requirement that any remedy should be fair, proportionate and not unnecessarily costly. [para 31]
It follows [still at para 31] that
As a matter of English law, the ordinary principle is that unless there are good reasons for a different order an innocent intermediary is entitled to be indemnified by the rights-holder against the costs of complying with a website-blocking order. The position in relation to website-blocking orders is no different in principle from the established position in domestic law in the case of Norwich Pharmacal orders, freezing orders and other injunctions granted to require an innocent party to assist the claimant in the assertion of its rights against a wrongdoer.

A more detailed analysis will be provided once I have read the judgment more carefully. However, there seems to be little doubt that a key question raised by the UK Supreme Court decision is whether its take on allocation of costs should be intended limited to orders granted under section 37(1) SCA, that is injunctions in trade mark cases (at least for now), or could be intended - instead - as having broader applicability, notably with regard to injunctions in copyright cases pursuant to section 97A CDPA

Since the first blocking injunction [in Newzbin 2] the rule in copyright website blocking case law has  been in fact that ISPs pay the costs of implementation of the injunction, while rightholders bear the costs of application. The High Court and the Court of Appeal deemed it appropriate to extend it to trade mark injunctions, although relying on a different legal basis [the UK did not provide a specific implementation of the third sentence in Article 11 of the Enforcement Directive]

Whether things should now change also in copyright cases and how far the Supreme Court judgment goes is likely to give rise to lively debates ... what do readers think?

[Originally published on The IPKat on 13 June 2018]

Tuesday, 12 June 2018

BREAKING: CJEU rules that Louboutin red sole mark does NOT fall within absolute ground for refusal

The Louboutin mark
Is the Louboutin red sole mark a valid trade mark or not? At last - the moment all IP aficionados were waiting for has come! 

The Court of Justice of the European Union (CJEU) has just issued its much-awaited judgment in Louboutin C-163/16, ruling that a mark consisting of a colour applied to the sole of a shoe is NOT covered by the prohibition of the registration of shapesSuch a mark does not consist ‘exclusively of the shape’.

The question that the Rechtbank Den Haag referred to the CJEU was the following:
Is the notion of ‘shape’ within the meaning of Article 3(1)(e)(iii) of [the 2008 Trade Mark Directive, ie the absolute ground for refusal concerning signs consisting exclusively of "the shape which gives substantial value to the goods"] (‘Form’, ‘vorm’ and ‘forme’ in the German, Dutch and French language versions of the Trade Marks Directive respectively) limited to the three dimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non three-dimensional) properties of the goods, such as their colour?
As readers will remember, this case has featured: a first Opinion of Advocate General (AG) Szpunar [reported by The IPKat here]; the reopening of the oral procedure and the assignment of the case to the Grand Chamber, so that the CJEU would rule with a greater (13) number of judges than the ordinary chamber procedure (3 or 5 judges), on consideration of the topicality of the issues underlying this reference for a preliminary ruling; and a second Opinion of AG Szpunar [which has sparked some controversy regarding its actual interpretation: see Katpost here].

A pair of Louboutin pumps
The text of the judgment is not yet available, but according to the press release:

In today's judgment, the Court takes the view that, since the trade mark directive provides no definition of the concept of ‘shape’, the meaning of that concept must be determined by considering its usual meaning in everyday language. The Court points out that it does not follow from the usual meaning of that concept that a colour per se, without an outline, may constitute a ‘shape’. 
Furthermore, while it is true that the shape of the product or of a part of the product plays a role in creating an outline for the colour, it cannot, however, be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product. 
In the present instance, the mark does not relate to a specific shape of sole for high-heeled shoes since the description of that mark explicitly states that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red colour covered by the registration. 
The Court also holds that a sign, such as that at issue, cannot, in any event, be regarded as consisting ‘exclusively’ of a shape, where the main element of that sign is a specific colour designated by an internationally recognised identification code."
A more detailed analysis will follow as soon as the judgment becomes available: stay tuned!

Wednesday, 6 June 2018

Respect of family life cannot be abused to trump copyright protection, says AG Szpunar

Clearly looking at something very interesting
While it is true that Member States retain significant freedom in devising relevant procedures for repressing copyright infringements and awarding damages, Article 8 of the InfoSoc Directive requires resulting sanctions and remedies be effective, proportionate and dissuasive. This provision is in line with what also Article 3 of the Enforcement Directive mandates.

In this sense, the question that arises – and has actually arisen – is whether it is compatible with EU law to provide that the owner of an internet connection, through which copyright infringements have been committed, may escape liability thereof by indicating, without the need to provide any further details, a family member that has also had access to such connection.

In a nutshell, this is the issue at stake in Bastei Lübbe C-149/17, a reference for a preliminary ruling from the District Court Munich I (Germany) arisen in the context of litigation between Bastei Lübbe, a German phonogram producer, and Michael Strotzer, the owner of an internet connection through which an infringement was committed in 2010. 

The latter submitted that he had not committed the infringement himself and that his internet connection was sufficiently protected. He also argued that his parents, with whom he lived, also had access to the connection but, as far as he was aware, they had not committed the infringement either. Following dismissal of Bastei Lübbe’s action at first instance on grounds that the defendant could not be deemed to have committed the relevant infringement, the case reached the District Court Munich I.

The Munich court appeared keen on holding Strotzer liable by means of a presumption under German law. However, doubts subsisted in light of certain decisions of Germany’s Federal Court of Justice. Hence, the court decided to refer the case to the Court of Justice of the European Union (CJEU) for guidance.

This morning Advocate General Szpunar delivered another interesting Opinion [not yet available in English], in which he advised the CJEU to rule that EU law does not require to provide, at the national level, a presumption of liability of the owner of an internet connection for copyright infringements committed through such connection. However, if national law envisages such presumption to ensure the protection of copyright, this shall be applied coherently to guarantee effective copyright protection. In this sense, the right to family and private life under Article 7 of the EU Charter of Fundamental Rights may not be interpreted in such as way as to deprive copyright owners of any possibility of effective protection of their own intellectual property, the protection of which is mandated by Article 17(2) of the EU Charter.

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

The EU framework

First, AG Szpunar observed that Article 8 of the InfoSoc Directive is rather laconic when it comes to measures aimed at guaranteeing the respect of the economic rights harmonized therein. However, it would be a mistake to consider Article 8 of the InfoSoc Directive in its isolation, because it is [the translation from Italian is mine] “part of the harmonized system of protection of intellectual property rights provided by Directive 2004/48. Such system goes beyond the mere procedural freedom of Member States, imposing on them concrete obligations the respect of which, including their procedural aspects, falls within the control of the Court, which goes beyond the traditional control of the principles of equivalence and effectiveness.” [para 27]

It follows that, if Article 8(2) of the InfoSoc Directive, complemented and clarified by Article 13(1) of the Enforcement Directive, envisages the right of the copyright owner to seek damages, this implies an obligation for Member States to provide procedural mechanisms that concretely allow rightholders to obtain such compensation.

Family life ...
The case at issue

In the particular context of online copyright infringements, it is difficult for copyright owners to identify the subjects responsible for such infringements and prove their involvement. Only the IP address through which the infringement has been committed may be used as a hint. However, the IP address alone is not proof of the liability of a certain person, especially if the relevant internet connection is accessible to more than one person.

It is essentially because of these difficulties that national laws tend to relax the burden of the proof in such cases. The introduction of a presumption of liability (like the one under German law) is not mandated by EU law. However, where it exists, such presumption must be applied in a coherent and effective fashion: such measure could not fulfil its objective if it were too easy to overcome the presumption of liability, thus leaving the subject damaged by the infringement without any other possibility to enforce his rights and claim compensation for the damage suffered.

Fundamental rights

Turning to fundamental rights, the AG recalled that the status of the Charter is that of primary source of EU law. The application of the provisions through which Member States have transposed the InfoSoc and Enforcement Directives into their own legal regimes is thus bound to respecting the provisions of the Charter.

In a scenario like the one at issue, in which different fundamental rights are in conflict with each other, it is for the national courts to provide an appropriate balance. In any case, it is necessary to guarantee the respect of the “essential content of the fundamental rights at issue” [para 38].

At this point the AG drew an interesting parallel with banking secrecy, when he recalled that in Coty Germany the CJEU held that a bank cannot invoke secrecy to avoid disclosing the details of an account holder, when such details would allow one to enforce his own IP rights.

... IP protection
The same reasoning may be applied here: if one was able to invoke Article 7 of the Charter to avoid having to disclose the names of those who might have used the connection, then the copyright owner would be deprived of his IP right. In any case, should a national court deem such intrusion into one’s own right to family life inadmissible, then the owner of the internet connection should be presumed liable for the relevant infringement, insofar as the copyright owner has not other means to identify the actual infringers.

The AG also touched upon the issue of abuse of rights within Article 54 of the Charter, noting that it is for the national court to determine whether Strotzer has abused his right to family life by invoking it, not to protect his own family members, but rather to elude his own liability for the infringement.


The most interesting aspect of the Opinion is probably the part in which the interplay between different fundamental rights is discussed.

In the CJEU case law on copyright the fundamental rights angle has become increasingly relevant, though it has arguably not been subject to particularly in-depth analysis by the Court. Decisions like Luksan and Telekabel refer for instance to the EU Charter, but in such a way that extracting guiding principles is not straightforward.

In this sense, this latest Opinion of AG Szpunar is helpful in understanding how IP protection should be seen and balanced against conflicting fundamental rights.

While the AG confirmed that different rights are ranked on the same level, he focused his attention on two key aspects: first, that any assessment should consider whether the rights at stake would be deprived of their essential content; secondly, that a fundamental right might not be invoked to safeguard a legitimate and genuine right, but rather to avoid liability towards a third party whose fundamental right has been infringed. A behaviour of this kind should be deemed an abuse of rights and, as such, be considered not deserving of protection. 

[Originally published on The IPKat on 6 June 2018]

Monday, 4 June 2018

Dutch court rules that for-profit provision of links to unlicensed content is an infringement

Ready for some licensed TV?
Can the making available – following payment of an IPTV subscription fee – of streams to unlicensed content amount to an infringement of copyright/related rights?

This is the issue that the District Court of Limburg (in Maastricht, The Netherlands) had to address in a recent case that anti-piracy foundation Brein brought against Leaper (also acting as ‘Flickstore’, ‘Dump Die Deal’ and ‘Live TV Store’).

Unsurprisingly, the court answered in the affirmative. The judgment (in Dutch) is available here.

What is interesting is the reasoning of the court, which also reviewed the interpretation of Article 3 of the InfoSoc Directive as provided by the Court of Justice of the European Union (CJEU) in its fairly rich case law.

Leaper’s service

The service offered by Leaper was structured as follows: further to payment by the consumer of the subscription fee, Leaper would send him a unique activation code (this, according to Brein, would involve the provision of a hyperlink in a shortened and user-friendly form) that would need to be inserted into a special Live TV app on the TV Box. This would allow the consumer to obtain an .m3u file and access thousands of TV channels on Leaper’s ‘FlickStore’, including subscription and film channels. The subscription would also grant access to over 1,000 links to unlawful offering of films.

The judgment

According to the court the key issue was whether Leaper itself would make an act of making available to the public (which is part of the broader right of communication to the public ex Art 3(1) of the InfoSoc Directive) within the meaning of Art 3(2) of the InfoSoc Directive or whether instead, as Leaper claimed, it merely acted as an intermediary between the wannabe users and those who make the content freely and unlawfully available in the first place.

The court noted that the notion of communication to the public is not defined in the directive. The CJEU held that the concept should be interpreted broadly, so to comply with the objective of that directive, which is to grant authors a high level of protection.

The court then referred to CJEU case law which has stressed – amongst others – the relevance of considering whether the defendant has made an ‘indispensable intervention’ and pursues a profit-making intention.

Both were found to subsist in the case at issue, including Leaper’s awareness that the content linked to was not licensed (one of the slogans used was “Also being fed up with the limited channel offer and complicated television subscriptions that cost tons of money?”). The court concluded that Leaper would be making unauthorized acts of communication/making available to the public.

Also the argument that there would be no public because the activation codes were sent to individual users was rejected by the court: with its actions, against payment, Leaper would reach an indefinite number of potential recipients who can access the protected content and constitute therefore a new public.


As mentioned at the beginning of this post, this new Dutch decision is not surprising, in that it correctly applies the CJEU decisions on linking and communication/making available to the public, including the one that is probably most similar – as far as its factual background is concerned – to this case: Filmspeler [on which see further here]

In that case the CJEU adopted a relaxed notion of what constitutes an ‘indispensable intervention’ on the side of the user/defendant, which it subsequently confirmed in its Ziggo decision [Katposts here]

To determine whether the user/defendant has played an essential role, when he intervenes, in full knowledge of the consequences of his action (ie accepting the possible consequences thereof), to give access to a protected work to his customers and does so, in particular, where, in the absence of that intervention, his customers would not, in principle, be able to enjoy the broadcast work. In this sense an intervention is indispensable not just when it is the sine qua non condition to access certain protected content, but also when it merely facilitates access to such content.

[Originally published on The IPKat on 4 June 2018]

Saturday, 26 May 2018

Coreper agrees common position on text of draft DSM Directive

Compromising on
copyright issues ...
a stable equilibrium?
After months of discussion, yesterday the Council’s permanent representatives committee (Coreper) common position on the text of the draft Directive on Copyright in the Digital Single Market (DSM Directive).
agreed a 

The text thus approved will serve as a mandate for the presidency of the Council [currently Bulgaria, but Austria as of 1 July] to start negotiations with the European Parliament, once this has also agreed its own position.

As readers may know, following the proposal for a DSM Directive by the EU Commission [on which see Katposts here] the Council and the European Parliament are now the EU institutions tasked with adopting the draft directive and making it EU law [if you wish to learn more about how the EU law-making process works, click here].

So, what are the key points of the text agreed within Coreper, particularly with regard to the provisions that have attracted the most attention?

Here’s a summary of the most notable elements, with some notations:

Text and data mining (Art 3)
  • The beneficiaries would only be research organisations (the term is loose but appears to encompass those entities the primary goal of which is to conduct scientific research or to do so together with the provision of educational services: see Recital 11 and Art 2(1)) and cultural heritage institutions (as defined in Recital 11a and Art 2(3)) [Coreper has not opted for an exception without a restricted catalogue of beneficiaries; from this standpoint the EU position would be different from the one envisaged in some Member States, which have legislated using Art 5(3)(a) of the InfoSoc Directive as a basis];
  • The purposes of text and data mining activities should be ‘scientific research’ (Art 3(1));
  • The availability of the exception would be subject to the beneficiaries having lawful access to the content in respect of which the mining activities are to be carried out;
  • Considering the ‘minimal harm’ caused by the exception to rightholders, Member States should not provide for fair compensation mechanisms;
  • Member States would be free to implement also a ‘neighbouring’ exception (which, unlike the one for text and data mining, would be optional) for temporary reproductions and extractions of works and other subject-matter, insofar as these form a part of the text and data mining process and the copies made are not kept beyond that process (Art 3a);
  • It appears possible for Member States to adopt their own non-commercial text and data mining exceptions for different types of beneficiaries, in line with what is stated in Recital 5 and Art 17 [already discussed here].

Press publishers’ right (Art 11)
  • The right should be only available to publishers established in the EU [should this aspect be part of the final text of the directive, depending on the timeframe for national implementations, this might be a Brexit-relevant issue for the UK];
  • Also The IPKat could be eligible for the right, in that its content seems to fit within the definition of ‘press publication’ as provided for in Recital 33;
  • The draft Directive clarifies that the use of insubstantial parts of press publications should not fall within the scope of the right. It is left to Member States to determine the ‘insubstantial’ nature of parts of press publications: to this end they may take into account whether these parts are the expression of the intellectual creation of their authors [hence, sufficiently original as per Infopaq - Coreper's press release suggests that Member States have their own standards of originality, which is questionable after a long string of decisions of EU's highest court] or whether these parts are limited to individual words or very short excerpts, without independent economic significance, or both criteria [Recital 34a and Art 11(1) – this new rule does not appear particularly clear in that the text seems to conflate concepts that belong to copyright with concepts that are found in respect of, eg, the protection of the investment in the sui generis database right … In any case, leaving this choice to Member States might lead to a rather unharmonised framework ...];
  • The duration of this new right would be 1 year [instead of 20 years, as originally proposed by the Commission] from the publication of the press publication (Art 11(4));
  • The new right would not have retroactive effect (Art 11(5)).

Value gap proposal (Art 13)
  • Unlike the initial Commission’s text, the Coreper version explicitly refers to the E-commerce Directive (Recital 4), clarifying that the DSM Directive is based upon and complements the rules contained also therein;
  • The notion of ‘online content sharing service provider’ is one that encompasses providers whose “main or one of the main purposes … is to provide access to a large amount of copyright-protected content uploaded by their users with the purpose of obtaining profit therefrom, either directly or indirectly, by organising it and promoting it in order to attract more audiences” [this is potentially a very broad definition, and the text of the Directive does not really clarify what is to be meant as ‘profit']. One can however read that (Recital 37a):
  • Organising and promoting content involves for example indexing the content, presenting it in a certain manner and categorising it, as well as using targeted promotion on it;
  • The notion of ‘online content sharing service provider’ (see Art 2(5)) does not include services whose main purpose is not to provide access to copyright-protected content with the purpose of obtaining profit from this activity, eg internet access providers, cloud providers or online marketplaces. It would thus seem that The IPKat be out of the scope of the provision, in that – similarly to online non-for-profit encyclopaedias – it does “not store and give access to content for profit making purposes” [phewww, says Merpel];
  • Whether an online content sharing service provider stores and gives access to a large amount of copyright-protected content needs to be made on a case-by-case basis;
  • The directive is said to clarify without changing the concept of ‘communication to the public’ and ‘making available to the public’. In accordance with Art 13(1) “an online content sharing service provider performs an act of communication to the public or an act of making available to the public when it gives the public access to copyright protected works or other protected subject matter uploaded by its users.” [I wonder whether it would be more appropriate, instead of attempting a definition of what qualifies and who makes an act of communication to the public, to say that “an online content sharing service provider performs an act of communication to the public or an act of making available to the public in accordance with the case law of the Court of Justice of the European Union”].
  • If an online content sharing service provider is deemed to engage in acts of communication to the public/making available to the public, then it should not enjoy the safe harbour protection within Art 14 of the E-commerce Directive in relation to copyright-relevant acts (Recital 38b and Art 13(3)) [this seems correct to me, as I discuss more at length here]. However, this subject might escape liability in a number of situations as per Art 13(4). Online content sharing service providers are in fact subject to a ‘diligent operator’ obligation (Recital 38c) [this appears in line with the L’Oréal and Ziggo judgments of the Court of Justice of the European Union]. This means that: “they should not be liable if some unauthorised content is available on their services despite their best efforts to prevent its availability by applying effective and proportionate measures based on the information provided by rightholders.” In addition, the directive refers to a duty to act expeditiously to remove or disable access to content upon being notified by rightholders, and also a subsequent obligation to “make their best efforts to prevent their future availability” (how this is to be done depends on the type of content: see Recital 38e);
  • licence granted to online content sharing service providers should also cover the copyright-relevant acts in respect of uploads by the users but only in cases where the users act in their private capacity and for non-commercial purposes (Recital 38d);
  • Applicable exceptions and limitations shall remain unaffected [also note that Recital 45 mandates an interpretation and application of the Directive in accordance with the rights and principles found in the EU Charter of Fundamental Rights].

The next step will be now to see the position of the European Parliament (the JURI Committee Rapporteur has yet to issue his report) ... Stay tuned!

[Originally published on The IPKat on 26 May 2018]

Monday, 21 May 2018

Intermediaries and IP: 5 key principles of EU law

Marcus felt slightly challenged
after reading all those CJEU IP decisions ...
It is a truth universally acknowledged, that online IP enforcement must be (increasingly) in want of an effective involvement of intermediaries in the enforcement process. 

The topic thus turns to intermediary injunctions, ie something that at the EU level is substantially enshrined in two pieces of legislation, these being: the InfoSoc Directive (Art 8(3)), as far as injunctions in copyright cases are concerned; and the Enforcement Directive (Art 11, third sentence), with regard to the other IP rights. 

The relevant provisions have similar content. 

Art 8(3) states that "Member States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right."

The third sentence of Art 11 provides that "Member States shall also ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of Directive 2001/29/EC [that is the InfoSoc Directive]."

Intermediary injunctions are available irrespective of whether the intermediary targeted by it has any liability for the infringement committed by users of its services and is therefore distinct from both issues of safe harbours protection as per the E-commerce Directive and issues of primary (direct) liability or the intermediary itself.

Having said this, it seems fair to say that the actual EU framework for intermediary injunctions and, more generally, intermediary liability has been shaped through the wealth of cases that have reached the Court of Justice of the European Union (CJEU) over the past few years by means of references for a preliminary ruling.

But what core principles can be extracted from the resulting CJEU decisions?

In my view, of course by means of a simplification that I prepared with IP students in mind [for more of my IP materials see here; and here's my Facebook IP group for more 'informal' IP-related discussions], there are 5 key principles that emerge from CJEU case law. They are the following:

And here's a short explanation [for a more detailed account, see here and here]:

Principle #1 - In its case law - including the recent judgments in Tommy Hilfiger [here] and Mc Fadden [Katposts here- the CJEU has clarified that 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.

Principle #2 - This is a principle that the CJEU provided in its landmark decision in L'Orèal when it held that the injunctions referred to in the third sentence of Article 11 differ from those referred to in the first sentence of that provision: while the latter are addressed to infringers and intend to prohibit the continuation of an infringement, the former are addressed to the “more complex” situation of intermediaries whose services are used by third parties to infringe one's own IP rights. Also taking into account the overall objective of the Enforcement Directive, ie to ensure an effective protection of IP rights, alongside the provision in Article 18 of the E-commerce Directive and Recital 24 in the preamble to the Enforcement Directive, the court concluded – contrary to the more limited view expressed by Advocate General (AG) Jääskinen in his Opinion – that the jurisdiction conferred by the third sentence in Article 11 of the Enforcement Directive allows national courts to order an intermediary to take measures that contribute not only to terminate infringements committed through its services, but also prevent further infringements.

Principle #3 - In respect of this principle it should be noted that, while EU law leaves the conditions and modalities of injunctions to EU Member States, the CJEU has referred to the need of complying with different types of sources that include, inter alia: the Charter of Fundamental Rights of the European Union (notably copyright protection, freedom of expression/information, freedom to conduct a business, protection of personal data), the Enforcement Directive (in particular Arts 2(3) and 3 therein), the E-commerce Directive (including Art 15 therein).

Principle #4 - In UPC Telekabel [Katposts here] the CJEU held that this particular type of injunction is indeed available under EU law. Importantly, and contrary to the view expressed by AG Cruz Villalón, a blocking injunction does not have to be specific: its addressee should determine the specific measures to be taken in order to achieve the result sought.

Principle #5 - The final principle, which the CJEU has adopted in the context of a reference also concerning the availability of intermediary injunctions (The Pirate Bay case [Katposts here]), serves to note that - when we speak of intermediaries - we should not (or perhaps, no longer) think about them solely as addressees of injunctions or as subjects that might lose (if the relevant conditions are satisfied) their safe harbour protection, but also as subjects that - in certain contexts - might be directly liable for the infringement of third-party IP rights. The decision in The Pirate Bay has potentially begun a new chapter in the topic of intermediary liability (and also injunctions), the relevant implications of which are currently being worked out. While it is true that the CJEU case concerned a rather 'rogue' platform (The Pirate Bay), are the considerations made in that decision more broadly applicable? In this sense, a case pending before the German Federal Court of Justice and concerning the primary liability of YouTube [reported by The IPKat here] might assist in understanding more fully the implications of CJEU case law.

[Originally published on The IPKat on 21 May 2018]

Monday, 14 May 2018

Can YouTube be primarily liable for users' infringements?

Who's responsible for making
this video available:
(a) the user-uploader
(b) YouTube
(c) both of them
(d) Merpel
(e) no one
Can YouTube be considered primarily responsible (and, therefore, potentially liable) for the making available of user-uploaded content through its platform? In other words: can YouTube be considered as directly making acts of communication to the public?

This is the crucial question Germany’s Federal Court of Justice (BGH) will need to address in a case (I ZR 140/15) that was heard last week. The decision is due on 13 September.

The case

As summarized by the BGH press office, the claimant in this case is a music producer who has sued Google/YouTube over the unauthorized making available, on the defendants’ platform, of videos containing musical works from the repertoire of soprano Sarah Brightman. The claimant had signed an exclusive contract with this singer in 2006, allowing him to exploit recordings of her performances.

In 2008 unauthorized videos featuring Brightman’s performances were made available on YouTube. Apparently, following a takedown request, a number of videos was removed from YouTube, but infringing material was made available once again shortly afterwards.

In 2010 the first instance court sided with the claimant in respect of three songs, and dismissed the action for the remaining claims. 

Both the producer and Google/YouTube appealed the decision and in 2015 the appellate court only partly sided with the producer. Most importantly, it rejected the idea that YouTube could be regarded as primarily liable for the making available of infringing content, although it found that liability would subsist under the typically German Störerhaftung’ doctrine (a form of accessory liability) under §97(1) of the German Copyright Act.

The case is now pending before the BGH and the decision is keenly awaited. As far as I know (but please correct me if I am mistaken), a platform like YouTube has never been found primarily liable for the infringement of copyright or a related right by a German court. However, the decision of the BGH – no matter in what sense - will be of great importance, also outside Germany, for two essential reasons.

First, it will be an opportunity to reflect upon and test the effect of the (rather expansive) case law of the Court of Justice of the European Union (CJEU) on the right of communication to the public within Article 3 of the InfoSoc Directive. It should be noted that the appellate court decided the case in 2015, ie before key judgments like GS Media [Katposts here]Filmspeler [Katposts here] and Ziggo (ie The Pirate Bay case) [Katposts herewere even issued.

Sarah Brightman
Secondly, it will serve to appreciate whether and to what extent the policy discourse around the so called ‘value gap’ proposal within Article 13 of the draft Directive on copyright in the Digital Single Market [Katposts herewould signal a departure from the existing legal framework.

CJEU case law on the right of communication to the public

So far the CJEU has decided nearly 20 cases on the right of communication to the public [see here for my map offering a ‘simplified’ version of the construction of this exclusive right], the latest instalment being last year’s decision in Ziggo (The Pirate Bay case). There the CJEU held that the operators of a platform that makes available to the public third-party uploaded copyright content and provides functions such as indexing, categorization, deletion and filtering of content may be liable for copyright infringement, jointly with users of the platform. For a finding of liability it is not required that the operators possess actual knowledge of the infringing character of the content uploaded by users.

The judgment, which I discuss more at length here, is rather short and leaves certain points ambiguous. Crucially, it is not entirely clear to what extent conclusions which are valid (and sensible) for a ‘rogue’ platform like The Pirate Bay can be extended to other platforms.

What seems however self-evident is that CJEU case law on Article 3 of the InfoSoc Directive has adopted a broad approach to the definition of what constitutes an ‘act of communication to the public’, stressing – among other things –the centrality of the notion of ‘indispensable intervention’ of the user/defendant. We now know, at least since GS MediaFilmspeler and Ziggo, that ‘indispensable intervention’ should be intended as an intervention aimed at facilitating access to content that would be otherwise more difficult to locate. 

Germany’s Federal Court of Justice
The policy discourse

In parallel with developments at the CJEU level, the policy discourse has unfolded in such a way that Article 13 of the proposed DSM Directive is rooted within the idea that operators of platforms – no matter how you wish to call them – that give access to user-uploaded copyright content make in fact acts of communication to the public, together with users of their services.

In the latest versions of the DSM Directive – both at the Council [this should be the latest compromise proposal of the Bulgarian presidency] and EU Parliament levels [here for MEP Voss's compromise proposal] – it is clarified that this idea would not be a departure from what the law already says, in that it is based on case law on Article 3 of the InfoSoc Directive. Hence, it would be just a consolidation and clarification of what the law already is.


As things currently stand, it seems that the BGH will decide this case without making a reference for a preliminary ruling to the CJEU. 

In any event, the resulting decision will add an additional piece to the (complex) construction of the right of communication/making available to the public. 

What has become central is no longer (or rather, not just) what constitutes an act of communication to the public, but rather who is responsible/liable for such act. 

The BGH decision might help refine further the terms of such fundamental debate.

[Originally published on The IPKat on 14 May 2018]