Tuesday, 13 November 2018

The Levola Hengelo CJEU decision: ambiguities, uncertainties ... and more questions

As announced earlier today, the Court of Justice of the European Union (CJEU) has finally issued its (short) judgment in Levola Hengelo, C-310/17, holding that copyright cannot vest in the taste of a food product (a spreadable cheese in the background Dutch proceedings).

The case is important for a number of reasons, and especially because it is probably the first time that the CJEU has been given directly the chance to tackle the notion of 'work' under the InfoSoc Directive (but, I would say, the overall EU copyright acquis).

Let's see how the CJEU reasoned.

'Work' under the InfoSoc Directive

The Court started by noting that the InfoSoc Directive harmonizes a number of economic rights and related exceptions and limitations, which concern the exploitation of 'works'. Yet, that piece of legislation does not define what is to be intended as 'work', nor does it make any reference to the laws of individual Member States.

This means, unsurprisingly, that the notion of 'work' is an autonomous concept of EU law, that is to be given an autonomous and uniform interpretation throughout the EU.

With particular regard to the taste of a food product, this means that copyright protection may only vest in said subject matter if it can be regarded as a 'work' in a EU sense. According to the CJEU, this means that two cumulative criteria must be satisfied:
  1. The subject matter concerned must be original in the sense clarified in Infopaq and its progeny;
  2. The subject matter must be a 'work' 
This part of the judgment appears rather tautological as the CJEU suggests that a 'work' is a 'work'. But that is not all: the Court also appears to (oddly) suggest that only something that is original is a work, as if originality was a requirement for a certain subject matter to be classified as a work:
only something which is the expression of the author’s own intellectual creation may be classified as a ‘work’ within the meaning of Directive 2001/29
'Work' under Berne

Moving on from this headache-inducing part of the judgment, having clarified (?) what a work is under the InfoSoc Directive, the CJEU turned to Article 2(1) of the Berne Convention. By adopting the InfoSoc Directive, the EU implemented into the EU legal order the WIPO Internet Treaties and Article 1(4) WCT requires compliance with Articles 1 to 21 of Berne.

This means that:
  • the notion of 'work' must be intended having regard to Article 2(1) of Berne.
  • the idea/expression dichotomy, as found in Articles 2 WCT and 9(2) TRIPs must be also taken into account.
According to the CJEU, it follows from these two considerations (?) that 
for there to be a ‘work’ as referred to in Directive 2001/29, the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.
And even if the Court did not refer (as instead the AG had done) to the Sieckmann criteria in relation to the graphic representation requirement in trade mark law, it appeared to have them very much in mind when it used substantially the same language of that ruling in holding that:
first, the authorities responsible for ensuring that the exclusive rights inherent in copyright are protected must be able to identify, clearly and precisely, the subject matter so protected. The same is true for individuals, in particular economic operators, who must be able to identify, clearly and precisely, what is the subject matter of protection which third parties, especially competitors, enjoy. Secondly, the need to ensure that there is no element of subjectivity –– given that it is detrimental to legal certainty –– in the process of identifying the protected subject matter means that the latter must be capable of being expressed in a precise and objective manner.
All this served the Court to conclude that the taste of a food product cannot be identified with precision and objectivity. This would make it different from "a literary, pictorial, cinematographic or musical work, which is a precise and objective form of expression". All this appears rather questionable, especially because the Court associated such presumed 'objectivity' to the way in which one appreciates those works, rather than how they perceive them:
the taste of a food product will be identified essentially on the basis of taste sensations and experiences, which are subjective and variable since they depend, inter alia, on factors particular to the person tasting the product concerned, such as age, food preferences and consumption habits, as well as on the environment or context in which the product is consumed.
Spreadable Kat
But isn't the same be true for other types of copyright works as well? If what the Court suggests was true, then we would all like the same music, novels, and films ...

According to the Court the problem also relates to the current state of scientific development, ie to the same problem occurred for trade mark registration of less conventional signs, that is "to achieve by technical means a precise and objective identification of the taste of a food product which enables it to be distinguished from the taste of other products of the same kind."

Because of all these considerations, the taste of a food product is not a work and cannot be protected under EU copyright law (and it would seem, international copyright law).


Despite being a fan of the CJEU, this time I have to admit that I am not sold. And that is not because of the particular outcome of the case (which, in a way, appeared necessitated), but because of the reasoning of the court in relation to the following points:

  • First, conflating the notions of works and originality (which the CJEU did to a certain extent, when it tried to define the notion of 'work' under EU law, and is something problematic that it had done already in cases like InfopaqBSA, and FAPL);
  • Secondly, deriving from the idea/expression dichotomy a requirement that a 'work' satisfies something that - let's put it bluntly - mirrors the graphic representation requirement in trade mark law, as interpreted in Sieckmann;
  • Thirdly, suggesting that copyright protection is subject to a requirement of 'objective' perception (and judgment).
All this said, however, the judgment is important and requires closer scrutiny. There are two additional, key points that deserve attention.

An EU fixation requirement

First, even if the CJEU denied that [at para 40], as a matter of fact, it mandated (as the AG had done before it) a fixation requirement in EU copyright law. Reference to the need for precision and objectivity of the subject matter appears in fact to imply that some sort of fixation is present. Would it be in fact possible to have subject matter that is precise and identifiable without it being also fixed in some material form? All this raises question marks in relation to Berne, as in principle member states are free to determine whether fixation should be or not a requirement in their own copyright laws.

Unconventional Kat
Subject matter categorization

The second point of interest, which I discuss more at length in this forthcoming book, relates to the fact that, under EU law, copyright protection under EU law arises when (1) there is an intellectual creation, that is (2) a work.

The CJEU could have not stated that more clearly.

The implications of all this are that the same type of subject matter is to be protected across the EU. On the one hand, this would prevent protection by means of copyright of subject matter that does not fall within the EU notion of ‘work’ and, on the other hand, it would prevent Member States from excluding protection for works that, instead, fall within the EU notion. 

In this sense, closed national systems of protectable works (as is the case in Europe of the UK, Ireland, and Austria) would unlikely be compatible with EU law. This conclusion is in fact also prompted by the following consideration: if, on the one hand, we accept that solutions like the one of the Dutch Supreme Court in Kecofa v Lancôme, ie that copyright could vest in a perfume, may not be tolerated then, on the other hand, protection could not be denied in a certain work just because it does not belong to one of the categories envisaged by a certain Member State’s list of protectable works. At the time when the Dutch judgment was issued (2006) some commentators noted that disparities in the protection tout court of certain subject matter across the EU would raise, inter alia, free movement issues:
Dutch law is now out of step with that of all other EU member states. Parfumeurs welcomed the Dutch ruling, believing their work to be indubitably artistic. Such thinking sits comfortably with the Romantic vision of the author as uniquely entitled to proprietorship of created works, but this paradigm has been seriously challenged in post-modern times. It also draws on an aesthetic discourse of originality which cries loudly for protection but has a tendency to forget its own debts. TRÉSOR itself owes much to two earlier perfumes: Calvin Klein's ETERNITY and Sophia Grosjman's EXCLAMATION. In addition to the philosophical difficulties, there are practical problems. It will require considerable creativity to apply certain acts of copyright infringement (e.g. distribution, making available to the public) to fragrance, whose fundamental purpose is that it will perceived not only by the wearer, but also by those in the vicinity. Furthermore, the ruling creates an unacceptable impediment to the free movement of goods within the EU. Harmonisation will be essential if the Dutch approach is maintained.
The same would be true for works, possibly of a less conventional type, that are regarded as protectable in certain EU jurisdictions but not others. As a result, protection across the EU should be based on the same requirements and be subject to the same limitations.

[Originally published on The IPKat on 13 November 2018]

Friday, 2 November 2018

Criminal conviction over disparaging religious doctrines not a violation of freedom of expression: potential IP implications of the latest ECtHR ruling

A few days ago the European Court of Human Rights (ECtHR) issued yet another interesting judgment, which - albeit not directly related to IP - might be nonetheless relevant for the interpretation and application of public policy/morality exclusions, especially in the case of blasphemous and offensive subject matter.

The decision is the one in E.S. v Austria, Application No 38450/12.


The case related to the applicant's criminal conviction in Austria for disparaging religious doctrines (Articles 188 and 283 of the Austrian Criminal Code), and her claim that this violated her freedom of expression under Article 10 of the European Convention on Human Rights (ECHR).

More specifically, the conviction resulted from a series of public seminars entitled 'Basic Information on Islam' that the applicant had delivered at the right-wing Freedom Party Education Institute.

One of these seminars was attended by an undercover journalist, whose publication requested that a preliminary investigation be instituted against the applicant.

Eventually, the applicant was convicted due to her statements suggesting that Muhammad - because of his marriage to a six-year old child (Aisha) - had paedophilic tendencies, and would not be, as such, a worthy subject of worship. Austrian courts found that it could not be established that the applicant had intended to decry all Muslims. Rather, she had meant to criticize the unreflecting imitation of a role model. According to the courts at first instance and on appeal, it would not be correct to consider child marriage as akin to paedophilia. In particular, because paedophilia is behaviour which is ostracized by society and outlawed, it would be evident that the applicant’s statements were capable of causing indignation. According to the first instance court,
the applicant had intended to wrongfully accuse Muhammad of having paedophilic tendencies. Even though criticising child marriages was justifiable, she had accused a subject of religious worship of having a primary sexual interest in children’s bodies, which she had deduced from his marriage with a child, disregarding the notion that the marriage had continued until the Prophet’s death, when Aisha [with whom the marriage was consummated when she was 9] had already turned eighteen and had therefore passed the age of puberty. In addition, the court found that because of the public nature of the seminars, which had not been limited to members of the Freedom Party, it was conceivable that at least some of the participants might have been disturbed by the statements.
According to the Austrian courts, freedom of expression is not limitless, and is subject to duties and responsibilities, such as refraining from making statements which hurt others without reason and therefore do not contribute to a debate of public interest. A balancing exercise between the rights under Article 9 ECHR (religious freedom) on the one hand and those under Article 10 ECHR on the other needs to be carried out.

The Austrian Supreme Court also sided with the lower courts, holding that the aim of the interference with the applicant' freedom of expression had been to protect religious peace and the religious feelings of others and was therefore legitimate. The court concluded that the applicant:
had not aimed to contribute to a serious debate about Islam or the phenomenon of child marriage, but merely to defame Muhammad by accusing him of a specific sexual preference, based on the assumption that he had had sexual intercourse with a prepubescent child, in order to show that he was not a worthy subject of worship.
Having exhausted all internal remedies, the applicant decided to bring her case before the ECtHR, claiming that her conviction under Austrian law had violated her Article 10 ECHR freedom of expression by wrongfully considering her statements are value judgments. Furthermore, she submitted that Austrian courts had overlooked to consider that religious groups have to be regarded as public institutions and therefore have to tolerate severe attacks, including those based on untrue facts, insofar as said attacks do not incite to violence.

The ECtHR analysis

The ECtHR admitted that the applicant's criminal conviction had interfered with her freedom of expression. However, any such interference would not violate Article 10 ECHR if it is
  • prescribed by law [which was the case here]
  • pursues one or more of the legitimate aims referred to in Article 10(2) ECHR [in this case, the aim would be to protect religious peace], and
  • is “necessary in a democratic society” in order to achieve the aim or aims in question.
"Necessary in a democratic society"

With particular regard to the latter, the Court highlighted how, on the one hand, those who choose to exercise the freedom to manifest their religion under Article 9 ECHR cannot expect to be exempt from criticism; on the other hand, freedom of expression does not extend to gratuitously offensive and profane remarks addressed at objects of veneration [readers might recall that the ECtHR made these very remarks in the recent decision in Sekmadienis Ltd v Lithuania, discussed here]:
Where such expressions go beyond the limits of a critical denial of other people’s religious beliefs and are likely to incite religious intolerance, for example in the event of an improper or even abusive attack on an object of religious veneration, a State may legitimately consider them to be incompatible with respect for the freedom of thought, conscience and religion and take proportionate restrictive measures . . . In addition, expressions that seek to spread, incite or justify hatred based on intolerance, including religious intolerance, do not enjoy the protection afforded by Article 10 of the Convention. 
The discretion of individual contracting parties

All this said, individual states enjoy a wide margin of appreciation when regulating freedom of expression in relation to matters liable to offend personal convictions within the sphere of morals or religion. In any case, they also have a positive obligation under Article 9 ECHR to ensure the peaceful co‑existence and mutual tolerance of all religions and those not belonging to a religious group.

Statements of fact and value judgments

The ECtHR then recalled that a distinction should be made between statements of fact and value judgments. As regards the latter, 
the proportionality of an interference may depend on whether there exists a sufficient factual basis for the impugned statement, since even a value judgment without any factual basis to support it may be excessive.

In light of all these principles, the ECtHR concluded that, although Austria would enjoy a wide margin of appreciation, the fact that the applicant had made her statements in public in the context of seminars entitled in such a way as to convey the impression of objectivity, meant that the seminars were attended by different groups of people. As such, she should have been aware that "her statements were partly based on untrue facts and apt to arouse (justified) indignation in others."

As such, Austrian courts did not unduly interfered with the applicant's freedom of expression.

Iconic photograph:
commuter reads 
Lady Chatterley's Lover
on the London Tube the day
the book went on sale to the general public

This latest ECthR decision is substantially in line with the approach taken in Sekmadienis Ltd v Lithuania, a case whose national proceedings related to advertisements using Jesus look-alike models and phrases referring to him. The difference between the two cases is that, while in Sekmadienis the expression found to be against public morals was arguably used in a humorous context, here the intent of the applicant was to criticize.

Whether one agrees or not with the analysis of the ECtHR in either case, both might be helpful when it comes to interpreting public policy/morality exclusions in IP law, especially with regard to trade mark applications and copyright enforcement.

With regard to trade marks, the test advanced by the ECThR in E.S. v Austria appears in line with the one that the Appointed Person has suggested for UK trade mark applications. Signs which "justifiably cause outrage or would be the subject of justifiable censure as being likely significantly to undermine current religious, family or social values" (Ghazilian's Application) would not be eligible for registration. This was for instance the case of JESUS for clothing, on grounds that branding that amply words or images with a religious significance can have a "seriously troubling effect on people with religious beliefs".

In the literary and artistic field, issues of alleged immorality or obscenity have been considered on a number of occasions. Under UK copyright law there remains a provision (section 171(3) CDPA) that leaves unaffected affects any rule of law preventing or restricting the enforcement of copyright, on grounds of public interest or otherwise.

Furthermore, in the past courts have considered copyright subject matter under the lens of obscenity. One of the best-known obscenity trials in the recent history of literature is probably the one concerning DH Lawrence's Lady Chatterley's Lover.

After the book was finalized in 1928, it did not have an easy life and was at the centre of obscenity proceedings both in the US and in the UK. As regards the latter, prosecution was brought under the Obscene Publications Act 1959 (R v Penguin Books Ltd [1961] Crim LR 176). Eventually, the jury found in favour of the defendant Penguin Books. This was arguably the beginning of new, more permissive era, for literature. Only a few days ago, a copy of Lady Chatterley’s Lover used by the judge who presided over the trials was sold for £56,250 at Sotheby’s auction house.

[Originally published on The IPKat on 2 November 2018]

Tuesday, 30 October 2018

What can be the main events in the life of a copyright work in Europe? Here's another map

A few weeks ago, I published a map - that I created for my students - detailing the main potential events in the life of an EU/national trade mark.

Today I have prepared a new student map, this time devoted to the main potential events in the life of a copyright work in Europe. The map should be read in combination with other copyright materials I have produced, including:
This new map, which is not meant at all as exhaustive, can be downloaded here and is reproduced also below. Other students materials are available here.

As always, any feedback is very welcome!

[Originally published on The IPKat on 30 October 2018]

Sunday, 28 October 2018

AG Szpunar advises CJEU to rule that copyright cannot subsist in military report in important fundamental rights case

Freedom of the press
Last year The IPKat reported on two new important referrals to the Court of Justice of the European Union (CJEU) from Germany. One of them, known as the Afghanistan Papers case [it is now Funke Medien NRW GmbH v Federal Republic of Germany, C-469/17] is asking about the interplay between copyright protection and freedom of expression and freedom of the press.


The reference was made in the context of litigation between the German Government and German newspaper WAZ over the unauthorized publication by the latter of the so called 'Afghanistan Papers', ie confidential military reports on the operations of German armed forces in that region in the period 2005-2012.

The German Federal Court of Justice (BGH) stayed the proceedings, and asked the CJEU to clarify whether and to what extent the assessment of prima facie copyright infringement and the applicability of the exceptions in favour of the press (Article 5(3)(c) of the InfoSoc Directive) and for quotation (Article 5(3)(d) of the same directive) is informed by a fundamental rights analysis. 

As readers will know, the Charter of Fundamental Rights of the European Union (Charter) has status of primary source of EU law (on the same foot of the Treaties), and the number of cases in which the CJEU has had to consider the interplay between various fundamental rights (intellectual property is protected under the right to property in Article 17(2)) has increased over the past few years.

What is at stake in the Afghanistan Papers case is whether copyright protection can be trumped by the need to safeguard freedom of the press and freedom of information, and whether fundamental rights may be directly invoked to prevent enforcement of copyright.

AG Szpunar's Opinion

This morning Advocate General (AG) Szpunar delivered yet another thoughtful Opinion that begins with a quote from Erich Maria Remarque's masterpiece, All Quiet on the Western Front.

AG Szpunar highlighted how that novel contains what is probably the best-known military report in literature: 'All quiet on the Western front' [and here's already something interesting: the AG stated that not just the novel, but also that phrase, is entitled to copyright protection. All this is important because in certain countries - including the UK - titles and short phrases have been traditionally considered excluded from the scope of copyright protection. In addition, after Infopaq it has remained uncertain how short a phrase can be to be still regarded as eligible for protection and sufficiently original].

This said, the present case concerns - not a fictional report - but rather an 'entirely real' report. The issues for the Court to tackle are the following:
  1. Does a military report satisfy the requirements for copyright protection?
  2. Must other factors such as freedom of expression, protected by the Charter, be taken into account in order to minimize, or even rule out, such protection? 
The AG advised the Court to reformulate the questions referred and move - not from the German Government's copyright - but rather from the newspaper's freedom of expression/information under Article 11 of the Charter. The question for the CJEU to address would thus be whether Article 11 precludes a Member State from relying on its copyright over documents in order to curtail the freedom of expression laid down in that article.

Copyright protection in a military report

Starting from the former, in order to provide his response, AG Szpunar deemed it necessary to consider, first, copyright protection in the report. To this end, he noted three crucial elements of this IP right:
  • Copyright only vests in the expression of ideas, facts and information, not ideas, facts or information per se (idea/expression dichotomy). This means that 'raw' information, that is information in its unaltered state, is not eligible for protection. This conclusion is in line with Article 1(8) of the Berne Convention.
  • Copyright vests in 'works'.
  • Works must be sufficiently 'original', in the sense of being 'their author's own intellectual creation'. The AG revisited CJEU case law on the point, notably Infopaq and its progeny, and recalled that "[e]lements such as intellectual work and the skill of the author cannot as such justify the protection of the subject matter at issue by copyright if such work and skill do not express any originality."
At this point the AG expressed his doubts that a military report could be original in the sense clarified by the CJEU:
It seems to me to be rather unlikely that the author or authors of those documents, whose identity is unknown but who are probably civil servants or officers of the federal armed forces, were able to make free and creative choices in order to express their creative abilities when drafting those documents. The content of purely informative documents that are inevitably drafted in simple and neutral terms is entirely determined by the information they contain, so that such information and its expression become indissociable, thus precluding all originality. A degree of effort and skill is required to draw them up, but those elements on their own cannot justify copyright protection. During the discussions in that regard at the hearing, the parties also argued that the structure of the documents at issue could itself be protected by copyright. However, that structure consists in setting out evenly spaced information concerning each foreign mission in which the federal armed forces are participating. Therefore, I do not think that the structure of those reports is more creative than their content.
Freedom of expression
In my view, there can be little doubt that the AG was correct in this part of the analysis, and made appropriate considerations in light of CJEU case law on originality [I discuss all this a bit more at length in this Katpost]

But the AG did not stop here. He in fact advised the CJEU to rule out that copyright protection would subsist in the military report also on fundamental rights grounds and the provision of Article 51 of the Charter.

Copyright and fundamental rights

The AG noted how copyright itself contains internal mechanisms allowing possible conflict between fundamental rights, including freedom of expression, and copyright to be resolved. These include the idea/expression dichotomy and exceptions and limitations:
Those exceptions enable works to be used in different situations which may fall within the scope of different fundamental rights and freedoms, without at the same time depriving authors of the substance of their rights, namely respect for the relationship linking them to their works and the possibility of exploiting those works economically.
Copyright, however, is also subject to external limitations:
[t]he application of copyright law, like any other body of law, remains subject to the requirement of respect for fundamental rights, respect which may be reviewed by the courts. If it became apparent that there were systemic shortcomings in the protection of a fundamental right vis-à-vis copyright, the validity of copyright would be affected and the question of legislative amendment would then arise. However, there may be exceptional cases where copyright, which, in other circumstances, could quite legitimately enjoy legal and judicial protection, must yield to an overriding interest relating to the implementation of a fundamental right or freedom.
The AG recalled how the European Court of Human Rights (ECtHR) has addressed the relationship between copyright protection and freedom of expression in cases like Ashby Donald and The Pirate Bay. In neither case did the ECthHR find that freedom of expression had been infringed, due to the nature of the unauthorized acts at issue (respectively, the making available of photographs of fashion shows and the operation of the infamous The Pirate Bay). 

However, the case at hand is different, in that the unauthorized communication of the allegedly protected work (the military report) contributed to a public interest debate and the work consists of official documents of a State of an informative nature.

Copyright protection should be denied/restricted on fundamental rights grounds

The AG considered that the provisions of the Charter are addressed at Member States as per Article 51 therein. The result would be, according to the AG, that copyright protection in a military report should be denied in order not to contravene the spirit and substance of the Charter.

It is true that freedom of expression is not limitless (the European Convention of Human Rights explicitly refers to national security as a possible ground to restrict it), and it is also true that the publication of confidential documents falls within the scope of freedom of expression.

However, national security is not what the background national proceedings are about: the German Government, in fact, has been relying on copyright, not national security, in its litigation.

According to the AG, copyright should not be acknowledged in the military report for the following reasons.

First, it is true that copyright and freedom of expression are fundamental rights. But Member States do not enjoy them: the rationale of fundamental rights is to protect individuals from the State, not vice versa: "If the State were able to invoke its individual rights, other than the public interest, in order to limit fundamental rights, the result would be the destruction of those fundamental rights."

The only ground on which a State could rely upon to justify the limitation of a fundament right would be the public interest, ie something that Germany did not do in the present case.

In addition, the ECtHR has clarified that a restriction on freedom of expression must be necessary: is it necessary in this case to protect copyright by preventing the publication of a military report?

Copyright has two main objectives. The first is to protect the personal relationship between the author and his work as his intellectual creation and therefore, in a sense, an emanation of his personality. This primarily involves the area of moral rights. The second objective is to enable authors to exploit their works economically and thus earn an income from their creative endeavours. This involves the area of property rights, subject to harmonisation at EU level. In order for a restriction on freedom of expression flowing from copyright to be characterised as necessary, it must meet those two objectives. However, it seems to me that the protection by copyright of military reports such as those at issue in the main proceedings meets neither.
Most importantly, copyright cannot be a substitute for lack of public interest: 
Thus, having considered that the interest in protecting the documents at issue as confidential information did not justify the resulting restriction on freedom of expression, the Federal Republic of Germany decided to achieve the same result by invoking its copyright over those documents, despite the fact that copyright pursues completely different aims and it is not even established that those documents are works for the purpose of copyright.
AG Szpunar
According to the AG, holding otherwise would mean that not only the restriction on freedom of expression is not necessary, but is also highly damaging:
One of the most important functions of freedom of expression and its constituent element, freedom of the media, specifically mentioned in Article 11(2) of the Charter, is to enable citizens to keep a check on power, a key aspect of any democratic society. That check can be exercised, for instance, by the disclosure of certain information or certain documents the content or even the existence (or inexistence) of which the authorities would like to conceal. Some information must of course remain secret, even in a democratic society, if its disclosure poses a threat to the essential interests of the State and, in consequence, society itself. Documents must therefore be classified and protected in accordance with the procedures established for that purpose, which should be applied subject to judicial oversight. However, outside the framework of those procedures or if the State itself declines to apply them, the State cannot be allowed to invoke its copyright over any document whatsoever in order to prevent scrutiny of its actions.

All the above considered, the AG advised the CJEU to rule that Article 11 of the Charter, read in conjunction with Article 52(1) thereof, must be interpreted as precluding a Member State from invoking copyright under the InfoSoc Directive in order to prevent the communication to the public, in the context of a debate concerning matters of public interest, of confidential documents emanating from that Member State. That interpretation does not prevent the Member State from applying, in compliance with EU law, other provisions of its domestic law, including those relating to the protection of confidential information.

It will be interesting to see, first of all, whether the CJEU follows the AG in his suggestion to reformulate the questions referred and, most importantly, in the assessment of the interplay between the Government's copyright claim and freedom of expression and of the press.

[Originally published on The IPKat on 25 October 2018]

Friday, 19 October 2018

CJEU weighs on liability of owner of internet connection used to infringe copyright

The face of someone keen to share
their Wi-Fi password ....
What can be the nature of the penalties and measures to be taken in copyright infringement cases? More specifically: Is it 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 who has also had access to such connection?

These were the issues at the centre of Bastei Lübbe, C-149/17, a reference for a preliminary ruling from Germany.


The referral was made 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 CJEU for guidance regarding the correct interpretation of: 
  1. Article 8(1) and (2) of the InfoSoc Directive, in connection with Article 3(1) thereof; and
  2. the meaning of 'effective' within Article 3(2) of the Enforcement Directive, in particular whether “effective” measures for the enforcement of IP rights are still provided for even when the owner of an internet connection used for copyright infringements is excluded from liability to pay damages if the owner of that internet connection can name at least one family member who, besides them, might have had access to that internet connection, without providing further details, established through appropriate investigations, as to when and how the internet was used by that family member.
The AG Opinion

In his Opinion back in June [Katpost here], Advocate General (AG) Szpunar advised the Court of Justice of the European Union (CJEU) to rule that 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 Charter.

The CJEU judgment

Yesterday, the CJEU delivered its judgment, and held that the owner of an internet connection used for copyright infringements through file-sharing cannot be exonerated from liability simply by naming a family member who might have had access to that connection (but read further).

Let's what a bit more in detail how the Court reasoned.

(Cutest) High level of protection
InfoSoc Directive: high level of protection

First of all (unsurprisingly), the Court noted how the primary objective of the InfoSoc Directive (see Recital 9) is to grant a high level of protection of copyright and related rights, since such rights are crucial to intellectual creation.

In order to achieve said objective, Article 8(1) mandates upon Member States to provide for appropriate sanctions and remedies in respect of infringements of the rights and obligations set out in the InfoSoc Directive. Such sanctions and remedies must be also effective, proportionate and dissuasive.

Article 8(2) also requires Member States to take the measures necessary to ensure that rightholders, whose interests are affected by an infringing activity carried out on its territory, may bring an action for damages.

Enforcement Directive: harmonization

Then the Court recalled that the objective pursued by the Enforcement Directive (Recital 10) is to approximate the laws of individual Member States in the area of enforcement, in order to ensure a high, equivalent, and homogeneous level of protection in the internal market.

It follows from all this the requirement in Article 3(2) thereof to provide that measures, procedures and remedies made available by the Member States be effective, proportionate, and dissuasive.

Obligations of Member States and national courts

Further to this introductory remarks, the CJEU turned to the specific questions referred. It highlighted how the core of the reference required the Court to explain how an appropriate balance may be struck between the needs of copyright protection (Article 17(2) of the Charter) and effective enforcement (including access to evidence, as per Article 6(1) of the Enforcement Directive) on the one hand, and other fundamental rights, including the right to the protection of private and family life (also protected by the Charter), on the other.

At this point, the Court turned to the obligations of Member States when transposing EU directives into national laws, and those of national courts when interpreting relevant provisions. While the former are required to rely on an interpretation of EU law which allows a fair balance to be struck between the various fundamental rights protected by the EU legal order, the latter have to interpret national law in a manner consistent with those directives, fundamental rights, and the other general principles of EU law.

Article 52(1) of the Charter mandates that any limitation on the exercise of the rights and freedoms recognized by the Charter must respect the essence of those rights and freedoms, and a fair balance be struck between the various fundamental rights.

Fair balance

It is indeed in light of said fair balance requirement that German legislation at issue in the background proceedings must be assessed.

Article 7 of the Charter provides that 'everyone' (not just family members, who may however enjoy special protection in certain circumstances) are entitled to private life protection. In addition, Article 8(3)(d) of the Enforcement Directive allows Member States to provide for the possibility that the perpetrator of an infringement refuses to provide information which would compel them to acknowledge their own involvement or that of their parents in an infringement of an IP right.

This said, if a national law has the effect of preventing a national court before which a tortious action has been brought from requesting and obtaining evidence relating to the defendant's family members and, thus, proving the alleged infringement of copyright and who was responsible for that infringement, then such law does not strike a fair balance.

The result, in fact, is that family members of the owner of an internet connection, through which copyright infringements were committed, would be granted absolute protection. On the contrary, copyright enforcement would be ineffective and so would be the sanctions against the actual infringer.

However, things would be different if the law provided that the owner of the internet connection could be held liable in tort. What EU prohibits is national legislation which provides the owner of an internet connection used for copyright infringements through file-sharing cannot be held liable to pay damages if they can name at least one family member who might have had access to that connection, without providing any further details as to when and how the internet was used by the relevant family member.


The CJEU judgment has several points of contact with the earlier AG Opinion. The parallel with  banking secrecy in Coty Germany has been instrumental to the particular outcome suggested, first, by the AG, and then achieved by the Court.

Besides the particular details of the case, from a broader perspective the judgment is interesting in that it reiterates some common topoi in CJEU copyright case law (I discuss all this more at length in this forthcoming monograph):
  • High level of protection
  • Interpretation of EU copyright provisions in light of fundamental rights
  • Need to strike a fair balance between different fundamental rights

First, the Court reiterated that copyright is deserving of a high level of protection. This is a standard that the CJEU has relied upon almost invariably every time when deciding a case concerning economic rights and enforcement/remedies, with the result that the outcome of the relevant case would favour an expansive approach to the scope of copyright protection. The principle that protection must be at a high level is stated explicitly in both the InfoSoc Directive (Recitals 4 and 9) and the Enforcement Directive (Recital 10).

Second, the judgment refers to the Charter of Fundamental Rights. Over time, the Court has increasingly referred to the need of interpreting relevant provisions in EU directives in light of fundamental rights. Since the 2007 Treaty of Lisbon the Charter has had status of primary EU law source, on the same foot as the Treaties. The result has been arguably a process of constitutionalization carried out by the CJEU also in the field of copyright, although some critics have considered such process merely cosmetic and underlying a de facto harmonizing agenda on the side of the Court instead.

Third, the obligation to strike a fair balance has also been referred in several cases. Said obligation is imposed on Member States when transposing relevant EU legislation and national authorities and courts when interpreting resulting national provisions. The CJEU made all this clear in decisions like PromusicaeLSG-Gesellschaft zur Wahrnehmung von LeistungsschutzrechtenBonnier Audio and OthersDeckmyn andVrijheidsfondsCoty Germanyand Mc Fadden.

[Originally published on The IPKat on 19 October 2018]