Wednesday, 31 August 2016

SUPER KAT-EXCLUSIVE: Here's draft Directive on copyright in the Digital Single Market

Further to the leaked draft version of the Commission Staff Working Document - Impact Assessment on the modernisation of EU copyright rules, here's a new leak from Brussels!

It is the draft version of the forthcoming [it should be presented next month as part of the second copyright package] Directive on copyright in the Digital Single Market.

Taking into account digital and cross-border uses of copyright content, this new piece of legislation will change the copyright acquis

More specifically, it will: introduce new exceptions and limitations, facilitate licences, and set rules aimed at ensuring a well-functioning marketplace for the exploitation of works and other subject-matter [translated: address the so called 'value gap'].

Mandatory exceptions (without freedom of panorama?)

Contrary to the general structure of Article 5 of the InfoSoc Directive which - with the exception of temporary copies in Article 5(1) - provides an optional list of exceptions and limitations that Member States are free to implement into their own legal system, the new directive [if adopted in its current form, ça va sans diremandates upon Member States to adopt the following exceptions or limitations:
  • [Article 3] Text and data mining for the benefit of research organisations [so, the beneficiaries are limited] in relation to works or other subject-matter to which they have lawful access for the purposes of scientific research [interestingly, the exception cannot be overridden by contract and is not limited to non-commercial uses]
  • [Article 4] Teaching on the premises of an educational establishment or through secure electronic network only accessible to staff and students, as long as the source is acknowledged and is for non-commercial purposes [but note that Member States can provide that exception does NOT apply if an adequate licence is easily available on the market] 
  • [Article 5] Preservation of cultural heritage [this is not really surprising, and in my opinion it already followed from the decision of the Court of Justice of the European Union in Ulmer, C-117/13]
Interestingly, despite everything [including a public consultation], it seems that freedom of panorama will not be part of the directive.

Out-of-commerce works

Title III of the draft directive is devoted to use of this type of works by cultural heritage institutions through a collective management mechanism. 

In other words, when a collective management organisation concludes a non-exclusive licence for non-commercial purposes with a cultural heritage institution, such a licence may be extended or presumed to apply to rightholders of the same category as those covered by the licence who are not represented by the collective management organisation, provided that a number of conditions are satisfied [whether this is actually OK is uncertain, especially further the Advocate General Opinion in the pending Soulier reference]

Rights in publications

Here it is: the much feared and criticised 'ancillary copyright'. 

Draft Article 11 introduces in fact a right for publishers of news publications to authorise the online use [reproduction and marking available] of their news publications. 

This new sui generis right is due to last for 20 years from the date of publication or the relevant news publication.

Value gap

Draft Article 15 addresses the so called 'value gap' by requiring intermediaries that store and provide access to large amounts of works uploaded by users of their services to "take appropriate and proportionate measures to ensure the functioning of agreements concluded with rightholders and to prevent the availability on their services of works or other subject-matter not covered by such agreements, including through the use of effective content identification technologies" [translated: intermediaries need to become licensed and implement filtering technologies. Mmm: how can this be achieved without also reforming Article 3 of the InfoSoc Directive (see here), and Articles 14 and 15 of the Ecommerce Directive?]

Fair remuneration for authors and performers

Articles 14 and 15 implement a mechanism by which Member States will be required to ensure that authors and performers are entitled to have their contract adjusted when the agree remuneration is disproportionately low compared to the subsequent revenues and benefits derived from the exploitation of the works or performances" 


The text of the draft Directive is available here.

[Originally published on The IPKat on 31 August 2016]

Milan Court of First Instance rejects application for 'blank' blocking order

Every woman's dream:
a decoder card to watch
Champions League matches with her beau
Can a blocking injunction concern a target website as well as any possible top-level domains and other sites - without specifying which - associated with it? 

This is the question that the Tribunale di Milano (Milan Court of First Instance) addressed and answered in the NEGATIVE in an interesting interim decision (an ordinanza, RG No 31892/2016 - Mediaset Premium v Orlando and Others) on 27 July 2016, as reported by and commented on very useful online resource Marchi & Brevetti.


In late May 2016 Mediaset Premium - which holds the exclusive broadcasting rights for the Italian territory of the football matches of some of the principal teams of the Serie A and UEFA Champions League - brought an action seeking an interim injunction against a number of major Italian internet service providers (ISPs) to block access to Calcion.

The latter (most recently operating as allowed users of its portal to watch in live streaming Mediaset Premium's broadcasts of relevant matches. Similarly to the Swedish ice hockey saga of C More as addressed by the Court of Justice of the European Union (CJEU) [here], Calcion did so by circumventing Mediaset Premium's paywall.

Mediaset Premium's action had been preceded by several applications for blocking orders with Italian Communication Authority AGCOM. AGCOM had ordered major Italian ISPs to block access to a number of top-level domains of Calcion, including .be, .xyz, .co, .in, and .md.

Just to use the slightly abused reference to a whac-a-mole game, despite Mediaset Premium's enforcement efforts Calcion kept resurrecting under new top-level domains. Hence, Mediaset Premium's action before the Tribunale di Milano, seeking an order to block Calcion, independently from the top-level domain used, and any site associated with it.

The ISPs objected to Mediaset Premium's request, arguing - among other things - that: 
  1. the remedy sought would impose on them a general monitoring obligation that would be contrary to the system envisage by the Ecommerce Directive (Article 15) as implemented into Italian law (Article 17 of D.Lgs. 70/2003); and
  2. the conditions for adopting an interim decision (in particular the urgency of it, ie the periculum in mora) were not present in the case at hand.
As such, the ISPs asked for Mediaset Premium's request to be dismissed or limited to the .at top-level domain of Calcion.

A Kat of the future
The decision

The judge (Pierluigi Perrotti) noted how Mediaset Premium's request - if granted - would result in imposing on ISPs a general monitoring obligation and this would be contrary to the system envisaged by the Ecommerce Directive/D.Lgs. 70/2003.

According to the judge, not even Mediaset Premium's suggestion to indicate relevant sites to ISPs would help, because its request "appears in contrast with some fundamental principles in the procedural system":
  • First, extending the order to any top-level domain and site that in the future would be associated with Calcion and whose content is still unknown would be tantamount to protecting from infringements that have yet to occur [this is true as far as interim proceedings are concerned, but for other types of proceedings the L'Oréal principles should apply].
  • Secondly, the law does not allow a private party (Mediaset Premium) to exert the kind of control that only a judicial authority could exert as regards which sites ISPs should block.
  • Thirdly, not all IP addresses indicated by Mediaset Premium would just concern Calcion. Currently some of those IP addresses host third-party sites that have nothing to do with Calcion. By referring to the CJEU decision in Telekabel [here], the judge recalled that IP protection must be balanced against other fundamental rights, including freedom to conduct a business and freedom of expression/information.
In conclusion, the judge only ordered ISPs to block the .at top-level domain of Calcion.

Overall, the judge acknowledged that "the illicit broadcasting of football matches in live streaming ... is a source of serious and irreparable harm for Mediaset Premium". Yet, this does not mean that Mediaset Premium can seek and obtain a blank blocking order whose content (ie the websites that ISPs should block) it is itself free to decide.


Small statistical tip for proceedings against ISPs in Italy: go to Rome if you are a rightholder [herehere, and here]; try to move all proceedings to Milan if you are an ISP!

[Originally published on The IPKat on 31 August 2016]

Saturday, 27 August 2016

Do passive hosting providers commit acts of communication to the public in relation to third-party content?

Still on the leaked IA ...
This may not be just a good exam question for undergraduate IP law students [note to self: something for next year], but also lawyers and policy-makers currently discussing EU copyright reform.

As reported by this blog, earlier this week Statewatch leaked a draft version of the Commission Staff Working Document - Impact Assessment on the modernisation of EU copyright rules [it is however unclear whether the one leaked is the version currently being considered by the Commission].

The document is extremely interesting for various reasons. Among the things, the Commission addresses the problem of right holders facing great difficulties, or being unable, "
to negotiate with online service providers that store and give access to large amounts of protected content uploaded by their users. This results in right holders having limited control over the use and the remuneration for the use of their content." [p 124, the so called 'value gap'].

After describing the terms of the problem, the Commission notes [pp 128-129] the following:

"Under copyright law, right holders can exercise their right to authorize and exploit commercially the communication to the public of their works or other protected subject-matter, by the conclusion of licenses in return for payment of remuneration, if they so choose. When content is disseminated online, an act of communication to the public [within Article 3 of the InfoSoc Directive] takes place which may, depending on the circumstances, involve more than one actor. The Court of Justice of the European Union (CJEU) has not addressed the specific case of online services giving access to content uploaded by their users. With some exceptions, national case law is not very clear either as to who engages into an act of communication to the public when content is uploaded on a sharing website. As a result, a case by case assessment is needed for deciding who is communicating to the public."

Is this true however?

In my view [elaborated in this article], the current legislative framework - including at the CJEU level - already provides a response in this respect: passive [in the L'Oréal sense] hosting providers cannot be held primarily responsible for acts of communication to the public in relation to content provided by third parties and made available through their services.

Exercising at Reha Training
The Reha Training decision

With particularly regard to the right of communication to the public, this conclusion (applicable by analogy to other exclusive rights) appears supported by relevant CJEU case law, including the recent decision in Reha Training [here]

There the CJEU held that, in assessing the existence of an act of communication to the public, several criteria – each of which non-autonomous but rather interdependent in nature – should be taken into account. These criteria may come into consideration differently in different scenarios. This said, the concept of 'communication to the public' combines two cumulative elements: (1) an 'act of communication' that is (2) directed to a 'public'.

The first criterion, ie an ‘act of communication’, includes any transmission of a copyright work, irrespective of the medium used or the technical means employed. Each transmission or retransmission of a work that uses a specific technical means should be in principle individually authorised by the relevant rightholder.

Turning to the second criterion (that the communication at issue be directed to a ‘public’), the term 'public' refers to an indeterminate number of potential recipients, and also implies a fairly large number of people (ie above de minimis). In addition, to fall within the concept of 'communication to the public' a work must be directed to a 'new public", ie an audience that was not taken into account by the relevant rightholder when he authorised the initial communication of the work.In this context, it is necessary to take into consideration the indispensable role of the user without whom the ‘new public’ would not have access to the copyright work in question. More specifically,  

“in order for there to be a communication to the public, that user must, in full knowledge of the consequences of its actions, give access to the … protected work to an additional public and that it appears thereby that, in the absence of that intervention those ‘new’ viewers are unable to enjoy the … works”. [para 46]

Although to have an act of communication to the public several criteria should be considered, it appears that the indispensable role of the user may be a conditio sine qua non for Article 3(1) of the InfoSoc Directive to apply, at least in the interpretation of Article 3(1) recently provided by Advocate General (AG) Wathelet in GS Media [here].

GS Media: where it all started ...
The AG Opinion in GS Media

GS Media is a reference for a preliminary ruling from the Dutch Supreme Court, seeking clarification on whether linking to unlicensed content is to be regarded as an act of communication to the public. 

In his Opinion AG Wathelet reviewed the two relevant cumulative criteria under Article 3(1) of the InfoSoc Directive: (1) an ‘act of communication’ of a work, (2) directed to a ‘public’. In relation to the former in particular, according to the AG in order to establish an act of communication, “the intervention of the ‘hyperlinker’ must be vital or indispensable in order to benefit from or enjoy works.”

Hyperlinks posted on a website that direct to copyright works freely accessible on another website cannot be classified as an ‘act of communication’: the intervention of the operator of the website that posts the hyperlinks is not indispensable to the making available of the works in question to users. It is rather the intervention of the operator of the website that posts the protected works that is indispensable within Article 3(1) of the InfoSoc Directive.


Further to the decision in Reha Training and the AG Opinion in GS Media [yet, it is to be seen whether the CJEU agrees with AG ...], it is arguable that – in the case of a copyright work made available through the service of a passive online intermediary (host) – the latter would not commit an act of (unauthorised) communication to the public (potentially giving rise to primary liability for copyright infringement), because the role that is ‘indispensable’ in the whole process is the one of the third-party/uploader, rather than that of the hosting provider. 

A passive hosting provider does not do any of the acts restricted by copyright per se, nor does it usually authorise others to do so. 

This conclusion is in line with relevant case law at the level of individual Member States.

The situation would be different if: (i) the provider at hand authorised – contrary to current practices and content of most terms of service – users to upload and share content independently from whether these acts would infringe third-party rights; (ii) the provider was aware of the infringing nature of the content uploaded; or (iii) the provider played an ‘active role’ in the L’Oréal sense. These scenarios would however lead to situations similar to the ones envisaged – and sanctioned – by the current wording of Article 14 of the Ecommerce Directive.


For those interested, a more detailed discussion is presented in this article of mine. 

[Originally published on The IPKat on 27 August 2016]

Is hosting providers' safe harbour the real problem of copyright owners? A new article

Finding a safe harbour?
A mission that can wait
The Ecommerce Directive envisages a number of immunities (known as safe harbours) that shield internet service providers (ISPs) from liability for third-party content that they transmit, cache or host.

In the context of its Digital Single Market Strategy [Katposts here] the EU Commission is currently engaged in a discussion of whether the liability principles and rules contained in that EU directive for the benefit of ISPs should be amended [the next EU copyright package is awaited for release in the second half of September - see here for a leaked version].

With specific regard to copyright, one of the principal concerns relates to a particular type of ISP, ie hosting providers. 

Unlicensed hosting providers have been increasingly said to invoke the relevant safe harbour immunity in the EU Ecommerce Directive [Article 14] lacking the conditions for its application. This alleged abuse has led to a distortion of the online marketplace and the resulting 'value gap' indicated by some rightholders.

proposal has been recently advanced in France advocating the removal – at the EU level – of the safe harbour protection for hosting providers that give access to copyright works. This would be necessary to enable the effective enforcement of copyright and related rights in the digital environment, particularly on platforms that disseminate protected content. In particular, the French document considers that the Court of Justice of the European Union (CJEU) has erred in its interpretation and application of relevant principles of online intermediary liability.

I have recently completed a new article [just released as a CREATe Working Paper and due for publication in the European Intellectual Property Review], in which I address some of the points raised by the French proposal. 

My main conclusions are that:
  • Contrary to the view of the French document, the CJEU has correctly applied relevant provisions in the Ecommerce Directive;
  • The removal of the immunity in Article 14 of the Ecommerce Directive for hosting providers that give access to copyright works would not provide rightholders with significantly greater protection than the one already enjoyed under the existing legislative framework, at least as far as their primarily liability is concerned. This is also because the current understanding of the right of communication to the public within Article 3 of the InfoSoc Directive does not seem to suggest that intermediaries otherwise protected by the Article 14 safe harbour could be held primarily liable for the doing of unauthorised acts of communication to the public.
Overall, the current framework already sets an adequate degree of protection: what is required is a rigorous application by national courts of the principles enshrined in the Ecommerce Directive, as interpreted by the CJEU.

Readers' feedback and views are very welcome! My piece is available here.

[Originally published on The IPKat on 26 August 2016]

Friday, 26 August 2016

SUPER-BREAKING NEWS: Leaked draft Impact Assessment shows that Commission intends to introduce new mandatory exceptions, address value gap and introduce related right for publishers

Brussels correspondent:
Mystery Kat
What does the EU Commission intend to propose when it releases its next copyright package next month?

This is a question that has been haunting EU copyright enthusiasts for a few months now. 

While we wait for the official documents, Statewatch has just leaked a draft version of the Commission Staff Working Document - Impact Assessment on the modernisation of EU copyright rules [here's the link].

While this draft document is composed of nearly 200 pages and IT IS UNCLEAR WHETHER IT IS THE VERSION CURRENTLY BEING CONSIDERED BY THE COMMISSION, these - in a nutshell - are the possible future moves of the Commission:

Access to content

Ensuring wider access to online transmissions of broadcasting organisations by applying country of origin rule to the clearing of rights for broadcasters' online services ancillary to their initial broadcast [this is not surprising: I had suggested something along these lines a while ago].


Introducing three new mandatory [!] exceptions: 
  1. an exception with a cross-border effect covering digital and online uses in the context of illustration for teaching, with the option for Member States to make this (partially or totally) subject to the availability of licences; 
  2. an exception for text and data mining applicable to public interest research organisations covering text and data mining for the purposes of both non-commercial and commercial scientific research; 
  3. an exception for preservation purposes by cultural heritage institutions.
Value gap

In relation to online services storing and giving access to user uploaded content, imposing an obligation on them to seek, in good faith, to conclude agreements with right holders for the use of their content and to put in place appropriate and proportionate measures, in cooperation with right holders, to avoid unauthorized content in their services.

Rights in publications

Introducing in EU law a related right covering online uses of news publications and introducing the possibility for Member States to provide that publishers may claim compensation for uses under an exception.


A more detailed analysis will follow soon [see here for an early response]: stay tuned!

[Originally published on The IPKat on 25 August 2016]

Wednesday, 24 August 2016

Singapore Government launches public consultation on major copyright reform

Beautiful Singapore
Singapore is currently engaged in a significant reform of its Copyright ActIn this context, yesterday Government launched a public consultation [open until 24 October 2016, 5 pm GMT+8] to seek feedback on proposed changes to this country's copyright regime. This is the full consultation paper.

In particular, views are sought on the following issues:

Formalities: whether Singapore should have a voluntary system of copyright registration, and details associated with such a copyright registry [it is important to recall that the no formalities rule contained in Article 5(2) of the Berne Convention only applies in an international - not domestic - context].

First ownership: whether creators of certain commissioned works should have first ownership of the copyright in the works. 
Duration: whether the duration of copyright protection for unpublished works should be limited to : (i) 70 years after the death of the creator for literary, musical, dramatic and artistic works, and (ii) 70 years after first publication for sound recordings, cinematograph films and works with an unknown creator if they are published within 50 years of creation, failing which, they will only be protected for 70 years after creation. 
Moral rights: whether there should be a new right of attribution, and details associated with this right [the answer to this should be yes, at least to comply fully with Article 6-bis of the Berne Convention - Singapore joined the Berne Union in 1998].
Information: whether the relationship between creators and publishers/producers can be helped by an information website for creators. 
Exceptions and contractual override: whether certain exceptions in the Copyright Act should be allowed to be restricted by contractual terms, and which exceptions would those be [UK-based readers will promptly recall that the exceptions introduced into the Copyright, Designs and Patents Act in 2014 - including parodyquotation and the now defunct private copying - prevent contractual override]
Fair dealing [Singapore introduced an open-ended exception akin to fair use, yet called fair dealing, in 2010: see s35 of the Copyright Act]: whether the fifth factor (from the exception of “fair use”), which relates to obtaining a copy of the work within a reasonable time at an ordinary commercial price ["the possibility of obtaining the work or adaptation within a reasonable time at an ordinary commercial price"], should be removed.
Orphan works: whether orphan works should be addressed by a limitation of remedies approach, a registry approach with upfront fees, or a modified registry approach with fees paid direct to the copyright owner. 
Text and data mining [a specific exception for non-commercial exception was introduced into UK law in 2014, and is currently under discussion for introduction at the EU level]: whether there should be a new exception for copying of works for the purposes of data analysis to facilitate text and data mining. 
Billy has already started
working on his responses,
though he has not been 

too productive so far
Education: whether there should be a new exception for giving or receiving instruction in the educational context, and whether the threshold for copying by or on the premise of a non-profit educational institution should be changed from 5% to 10%. 
Libraries and archives: whether the current exceptions for libraries and archives should be simplified and redrafted. 
Museums and galleries: whether there should be new exceptions for museums and galleries.
Disabilities [again, in the UK context, the relevant exception was broadened in 2014; in this article, among other things, I had argued that the previous, limited, scope of the UK exception was contrary to EU law]: whether certain technical amendments should be made in relation to provisions benefiting those who are blind, visually impaired, or otherwise print disabled. 
IPOS: Whether there should be a new exception for use by the Intellectual Property Office of Singapore (IPOS) of non-patent literature in patent search and examination work. 
Government: whether there should be a new exception for materials on official government registers. 
TPMs: whether the current list of allowable circumventions of technological protection measures (TPMs) should be retained, and what new allowable circumventions of technological protection measures should be put in place [this is not a minor point of the consultation: under review by the Singapore Government there is in fact (and among other things) the lawfulness of using VPNs to circumvent geo-blocks to access copyright content; the debate on VPNs is not limited to Singapore, but it is rather being undertaken in several countries, eg - recently - Australia].

Those interested in answering the public consultation can do so here, or by post to the following address:

Intellectual Property Policy Division
Ministry of Law
100 High Street
#08-02, The Treasury
Singapore 179434

[originally published on The IPKat on 24 August 2016]

New IP law titles: from EU copyright to ISP liability

For some odd reasons, it seems that many good IP titles are being released at a time of the year when - at least in the Northern hemisphere - the attention for anything that relates to IP is increasingly and acutely replaced by a slightly stronger interest for holidays, sunshine, and the outdoors.

This has been also the fate of the following excellent titles:

The much-awaited second edition of Concise European Copyright Law, edited by Thomas Dreier and Bernt Hugenholtz (Kluwer:2016)

Despite the pretty appearance and title that might induce you into thinking that this is just concise overview of EU copyright law, be reassured that it's not [and not just because the tome exceeds 700 pages]

I first encountered this book (at that time in its first edition) as a student. It was hiding on a library shelf, pressed in between much heavier [in every sense] and thicker copyright books. The fame of the editors prompted me to open and read it: the contributors' ability to analyse relevant EU copyright directives in an essential yet thorough fashion left me very much impressed, and made me realise once again how those who truly master a certain discipline are able to say everything in a way that makes you think that the relevant concepts are actually easy to grasp. The truth is instead that it is not concepts per se which are easy, but it is rather their own explanation which possesses the clarity that can follow a complete understanding.

The second edition has retained this distinctive quality, which makes it a pleasure to read and consult. 

Bonus feature: In my own opinion, the commentary to the InfoSoc Directive (by Stefan Bechtold) is probably one of the most comprehensive and interesting ones currently available.

The Liability of Internet Intermediaries by Jaani Riordan (OUP:2016)

As the author observes in his preface, this is the first book dedicated to the doctrines and remedies which regulate the legal liability of internet intermediaries (or ISPs). 

Developed out Riordan's doctoral dissertation at Oxford, this book will appeal to academics and practitioners alike.

Also thanks to its rational and clear structure, the author has succeeded in a fairly challenging task (that few so far have completed successfully), ie explaining the law of ISP liability by showing also a thorough understanding of the functioning and ongoing development of underlying technologies.

Following an inquiry into relevant legal principles, the book also offers specific insights into topical areas of the law, including - amongst others - data protection, copyright, and defamation.

A particularly interesting section is the one devoted to Member States' case law in the area of website blocking. This is a must-read chapter that - if nothing else - shows how fragmented the relevant and seemingly harmonised ISP liability framework [and relevant remedies against ISPs] remains within the EU.  

                                                             [originally published on The IPKat on 22 August 2016]

Tuesday, 16 August 2016

Article 8(3) of the InfoSoc Directive mandates a substantive change, says Irish Court of Appeal

Mr Justice Gerard Hogan,
who delivered the Court of Appeal judgment
What (if any) steps may a court require internet service providers (ISPs) to take to assist copyright holders to identify customers who use the network provided by these providers to access the internet for the purpose of illegally downloading or uploading copyright material? What kind of jurisdiction does Article 8(3) of the InfoSoc Directive, as implemented into the laws of Member States, confer upon national courts?  

These are the very questions that the the Irish Court of Appeal (Hogan J) addressed in an interesting judgment issued at the end of July, further to the appeal brought by UPC against the 2015 judgment of Cregan J in the High Court. There, Cregan J had ordered this ISP to implement a form of graduated response system (GRS) within its network for the benefit of - amongst others - Sony Music. 

Apparently, the type of GRS order issued by the High Court was the first of its kind within the EU.

What is GRS?

As explained by Hogan J, "the term GRS is not a term of art, but it refers to types of steps which an ISP may be required to take against copyright infringers, ranging from warning letters at one end of the spectrum to orders blocking access to particular websites at the other." 

The GRS in this case

In the particular case at hand, the High Court had ordered UPC to send each relevant subscriber a cease-and-desist letter upon receipt of notification of the first and second copyright infringement notifications received from relevant rightholders. 

On receipt of the third copyright infringement notice, UPC would then be required to send the relevant rightsholders a notification that the particular subscriber had been the subject of three such notifications. 

The rightsholders would then be entitled to apply to court for an order terminating the subscriber’s internet broadband service. 

Not only did the High Court impose a monthly limit of 2,500 notifications and exclude business users from the GRS, but also mandated upon rightholders to pay 20% of any capital expenditure incurred by UPC (with a cap of €940,000 on each such expenditure). 

Finally, while the order could potentially last indefinitely, the High Court provided that it would be reviewed within in five years from the date of its perfection. 

GRS explained:
(1) User engaging
in copyright-infringing activities
The appeal

Hogan J noted how the appeal concerned, specifically, the jurisdiction of the High Court to grant GRS injunctions of the kind described above and, more generally, "issues of enormous importance so far as the effective protection of copyright is concerned."

After highlighting the changes brought about by technological evolution and resulting challenges for the music industry, Hogan J noted how over time seeking remedies against ISPs has been also prompted by the ineffectiveness of remedies against primary infringers. Paraphrasing the content of Recital 59 in the preamble to the InfoSoc Directive, the judge observed that ISPs, "after all, are the entities who are far better placed than anyone to identify the customers who have used their services for infringing activities. It is they alone who can match the internal protocol addresses of consumers with infringing activities or take steps to block access to websites who specialise in copyright infringement activities."

This said, the judge deemed it necessary to address the rights and remedies available to rightholders under Irish and EU laws, respectively.

The position under national law: has implementation of Article 8(3) of the InfoSoc Directive changed the law?

With particular regard to the former, the judge undertook an analysis of relevant authorities by noting that a number of basic juristic realities are to be considered, including that ISPs are non-infringing entities. In this respect the question becomes whether Article 8(3) of the InfoSoc Directive as transposed into Irish law by s40(5A) of the Copyright and Related Rights Act (CRRA) has changed the general principle that Irish courts have no jurisdiction to grant an injunction against a defendant who has committed no cognisable legal wrong or where such a wrong is not threatened. 

This question was also prompted by awareness that (as noted by Cregan J in his first instance judgment), prior to the insertion of the new s40(5A) CRRA in 2012 Irish courts had not been able to provide effective remedies to ensure an adequate protection of copyright in the online environment. Indeed, in his 2010 judgment in EMI Records, Charleton J had concluded that Irish courts lacked jurisdiction to order non-infringing ISPs to take action against customers who used their services for the purposes of copyright infringement. In this respect, Charleton J had found that, because of the absence of any legal power for the “blocking, diverting or interrupting of internet communications intent on breaching copyright”, Ireland was not “yet fully in compliance with its obligations under European law.”

(2) The innocent ISP
Following this decision, relevant rightholders commenced proceedings against the Irish State for failure to give effect to the requirements of Article 8(3) of the InfoSoc Directive [this is known as Francovich or state liability principle: in relation to the UK, I suggested this as possibility in case the Court of Appeal had reversed the decision of Arnold J in Cartier and denied the availability of blocking injunctions in trade mark cases: see here], but before the litigation could be resolved the Irish Government adopted s40(5A) CRRA.

The position under EU law 

Hogan J turned to considering relevant case law of the Court of Justice of the European Union (CJEU) in relation to Article 8(3) of the InfoSoc Directive [in particular, ScarletNetlogand Telekabel] and the third sentence in Article 11 of the Enforcement Directive [L'Oréal]

He noted how "it is ... hard to avoid the conclusion that the drafting of both Article 8(3) of the 2001 Directive and the third sentence of Article 11 of the 2004 Directive left a good deal to be desired". Indeed, "[i]f the language of Article 8(3) ... is taken at face value, then, at least so far as Ireland is concerned, Article 8(3) changed nothing since copyright holders were always in a position to apply for injunctions against ISPs." [the problem, as EMI Records demonstrates, was however obtaining an injunction against non-infringing ISPs]

However, a face value interpretation does not appear correct: in fact, "it is ... clear from a series of decisions of the Court of Justice that Article 8(3) of the 2001 Directive (and the companion provisions of Article 11 of the 2004 Directive) have, in fact, changed the law, by mandating the creation of a new form of injunction directed against non-infringing parties which finds no real counterpart in our [read: Irish] system of civil procedure. Again, the essential question in the present case is the extent to which Article 8(3) of the 2001 Directive has effected such a change."

While Article 8(3) has mandated a substantial change, the EU framework provides some in-built limitations to the scope of any such injunctions against ISPs, notably those contained in Articles 15(1) of the Ecommerce Directive [no general obligation to monitor], 3 of the Enforcement Directive, 8 of the InfoSoc Directive, and 1(3a) of the Framework Directive 2002/12.

(3) The notifications
The substantive change brought about by Article 8(3) of the InfoSoc Directive

Having reviewed relevant CJEU decisions, Hogan J concluded that [para 49] Article 8(3) of the InfoSoc Directive "does not simply seek to fill a jurisdictional lacuna in the systems of civil procedure of the Member States by allowing rightholders to apply for an injunction against non-infringing ISPs. This provision is not simply procedural, but it potentially changes the substantive law by requiring Member States to provide their judicial systems with the authority to grant injunctions of this kind, subject only to certain safeguards (such as the prohibition against general monitoring of users contained in Article 15(1) of the Electronic Commerce Directive)."

More specifically [para 52], "Article 8(3) (as transposed by s. 40(5A) of the 2000 Act) certainly changed the substantive law in relation to injunctions so far as this jurisdiction is concerned. While it is true that Article 8(3) did not quite do so in express terms, a series of judgments of the CJEU – ranging from L’Oréal onwards – has clearly confirmed that Article 8(3) has had this effect by requiring national courts in appropriate cases to grant injunctions against non-infringing ISPs. Certainly, by virtue of this Court’s duty of loyal co-operation and the general principle of interpretation conformé reflected judgments such as Case C-106/89 Marleasing S.A., it is necessary for this Court to construe s. 40(5A) of the 2000 Act as having had this effect."

Article 8(3) injunctions as a regulatory order

This said, and having thus crossed the "legal Rubicon of vesting the High Court with a jurisdiction to grant an injunction against a non-infringing ISP" [para 63], "then what follows is really all merely a matter of degree. It could be said that any order made in those circumstances begins to take on the character of a regulatory solution to the problem, precisely because the order is no longer directed to an infringing party and also because the court is no longer applying purely traditional legal principles such as might have been applicable to determine, for examine, whether to grant an injunction or damages against a defendant who in appropriate civil proceedings had been found guilty of copyright infringement."

Compatibility of the injunction actually granted with Article 8(3) of the InfoSoc Directive

Having exhausted the issue of jurisdiction, Hogan J turned to the consideration of whether the injunction granted by the High Court was: (i) necessary; (ii) that the costs involved were not excessive or disproportionate and that the order itself should not be unduly complicated; (iii) that the cost sharing proposals were fair and reasonable; (iv) that the order respected the fundamental rights of the parties affected, including internet users; and (v) that the duration of the proposed injunction and the provisions for review were reasonable.

In upholding the GRS injunction granted by the High Court, Hogan J agreed with the findings of Cregan J, except on two issues, ie: review after five years, and the costs of future applications. With particular regard to the latter, Hogan J did not think that it would be appropriate for the High Court to make anticipatory orders in relation to future proceedings. 

(4) Patience has reached its limits

This decision is particularly interesting in that it highlights the substantive breadth of Article 8(3) of the InfoSoc Directive: this provision does not merely mandate the availability of injunctions against intermediaries, but it does so independently from a finding of their liability.

This conclusion appears in line with the relevant EU framework, as interpreted by the CJEU. To the judgments reviewed by the Court of Appeal, it is worth adding a mention of the pending reference in Mc Fadden, C-484/14 [the decision on which is expected on 15 September].

This is a reference for a preliminary ruling from the Regional Court, Munich I (Germany), and was made in the context of proceedings between Sony and a person (Tobias Mc Fadden) who operates a business selling and renting lighting and sound systems for various events.

Mc Fadden owns a Wi-Fi connection that is open to anyone to use as it not protected by any password. In 2010 that connection was used by someone other than Mc Fadden to download unlawfully a musical work to which Sony owns the copyright. Following Sony’s formal notice, Mc Fadden sought a negative declaration from the referring court. This dismissed it and upheld Sony’s counterclaim, granting an injunction against Mc Fadden on the ground of his direct liability for the infringement at issue and ordering him to pay damages, the costs of the formal notice, and costs. Mc Fadden appealed that decision, arguing that the provisions of German law transposing Article 12(1) of the ECommerce Directive would shield him from liability for third-party infringements. The Regional Court held the view that Mc Fadden would not be directly liable, but rather indirectly liable according to the German doctrine of Störerhaftung, on the ground that his Wi-Fi network had not been made secure. This court decided nonetheless to stay the proceedings and seek guidance from the CJEU on a number of issues.

In his Opinion [here] on 16 March last, Advocate General (AG) Szpunar held [para 68] that  – also further to Recital 45 in the preamble to the Ecommerce Directive – "it is clear from a combined reading of paragraphs 1 and 3 of Article 12 of Directive 2000/31 that the provisions in question limit the liability of an intermediary service provider with respect to the information transmitted, but do not shield him from injunctions.”

While the conclusion of the Irish Court of Appeal and AG Szpunar appears correct from an EU law standpoint, it is not so straightforward within all EU Member States. For instance, in a post by Nedim Malovic this blog reported that a few months ago a Swedish court refused to grant an injunction against an ISP to block access to The Pirate Bay, on grounds that copyright law in Sweden requires that the addressee of an injunction (an ISP in this case) has aided and abetted a third-party infringement in a criminal sense, ie by providing some sort of direct assistance to the primary infringers. According to the Stockholm District Court this would not be the case of an access provider.

All in all, given the different approaches adopted across the EU, more than the substantive value of Article 8(3) of the InfoSoc Directive, in practice what can be seen is - in line with Hogan J - that the drafting of Article 8(3) has left a good deal to be desired ...

[originally published on The IPKat on 16 August 2016]