WIPO 20 (8) (DSM)

VS

Rebecka Jonsson v. Les Editions de L’Avenir

Attunda District Court, 13 October 2016

YouTube video was embedded on the website of L'Avenir, a Belgian media company.

According to the court, it was “obvious” that L’Avenir had published the link with the intention of pursuing a profit.

Johnson had sent cease-and-desist letters

L’Avenir therefore not able to rebut the presumption

The court also ruled that, by failing to acknowledge the name of author, the defendant had also infringed the claimant’s moral right of attribution

Bibliography

Bangoura

Vs

"Even if the connection is significant, however, the case for assuming jurisdiction is proportional to the degree of damage sustained within the jurisdiction. It is difficult to justify assuming jurisdiction against an out-of-province defendant unless the plaintiff has suffered significant damage within the jurisdiction"

Court of Appeal for Ontario 2005

2007

http://cyberlaw.stanford.edu/our-work/projects/world-intermediary-liability-map-wilmap

Let's go crazy!

I'll sue you!

2014

Stephanie Lenz v. Universal Music Corp. (9th Cir. 2015)

(1)

“the statute requires copyright holders to consider fair use before sending takedown notification.”

(2)

applicability of section 512(f) of the DMCA that allows for the recognition of damages in case of proven bad faith

(3)

which would occur if the copyright holder did not consider fair use or paid “lip service to the consideration of fair use by claiming it formed a good faith belief when there is evidence to the contrary.”

2012: Voluntary Demoted Pirate Sites

Yahoo! v. LICRA & UEJF (9th Cir. 2006)

Whether safe harbor applies to Veoh against vicarious and contributory copyright infringement claims

(A)

Storage v. Access

the DMCA must not be interpreted as meaning that hosting provider that provide access to files on top of storage disqualify themselves from safe harbor protection

(C)

Right and Ability to Control

"right and ability to control" infringing activity must logically encompass more than "the mere ability to delete and block access to infringing material" and "substantial influence on the activities of users", such as detailed control over content or active involvement in listings on sites such as eBay can constitute "the right and ability to control" infringing materials

Vs

(B)

Actual & Constructive Knowledge

(1)

the burden of identifying infringing material must fall on the rightholder and not the service provider

(2)

merely hosting a category of copyrightable content, such as music videos, with the general knowledge that one's services could be used to share infringing material, is insufficient to meet the actual knowledge

(3)

hints of infringement, such as tagging of videos with keywords which may imply infringement or news articles discussing illegal copies on Veoh, do not constitute apparent "red flag" knowledge

(9th Cir. 2012)

V.

"[Perfect 10] was unlikely to succeed in its claim that Google's in-line linking to full-size infringing images constituted a direct infringement [...] Google does not, however, display a copy of full-size infringing photographic images for purposes of the Copyright Act when Google frames in-line linked images that appear on a user's computer screen. Because Google's computers do not store the photographic images, Google does not have a copy of the images for purposes of the Copyright Act. In other words, Google does not have any material objects ... in which a work is fixed ... and from which the work can be perceived, reproduced, or otherwise communicated” and thus cannot communicate a copy."

Perfect 10, Inc. v. Amazon.com, Inc. (9th Cir. 2007)

Fonovisa

Vs

9th Cir. 1996

MGM Studios

Contributory Infringement

Vs

Sony v. Universal (1984)

(2005)

Vicarious Infringement

Tort Law

Case law

Requirements

Who directly contributes to a tort should be held liable along with the tortfeaser himself

• direct infringement
• knowledge (actual or constructive) by the defendant
• material contribution

Agency Law

Requirements

In re Aimster (7th Circ. 2003)

Respondiat Superior: a branch of the law of agency that governs responsibility of employers for misconduct of employees

• direct infringement
• financial interest in the infringement
• right or ability to supervise the direct infringement

AM Records v. Napster

(9th Cir. 2001)

Dart

V.

"brazen" and "massive" copyright infringement

(A)

DMCA safe harbor requires knowledge or awareness of specific infringements

"[we should grow] as aggressively as we can through whatever tactics, however evil [the site is] out of control with copyrighted material [if we remove] the obviously copyright infringing stuff, site traffic [would] drop to maybe 20% […] steal it!"

(B)

Doctrine of willfully blindness can be used to show A

(C)

The “right and ability to control” infringing activity does not require knowledge of specific infringements

2007-2014

Flava Works v. Gunter (7th Cir. 2012)

‘Someone who uses one of those addresses to bypass Flava’s pay wall and watch a copyrighted video for free is no more a copyright infringer than if he had snuck into a movie theater and watched a copyrighted movie without buying a ticket. The facilitator of conduct that doesn’t infringe copyright is not a contributory infringer.’

(B)

Termination Policy

The implementation of a policy to terminate accounts of users who repeatedly infringe copyright must be reasonable, not perfect

2014

(A)

Red Flag Knowledge

The mere fact that an employee of the service provider has viewed a video posted by a user (absent specific information regarding how much of the video the employee saw or the reason for which it was viewed), and that the video contains all or nearly all of a copyrighted song that is “recognizable,” does not establish 'facts or circumstances' giving rise to 'red flag' knowledge of infringement.

(SDNY, 31 December 2013)

(c) Protection for “Good Samaritan” blocking and screening of offensive material

No Liability, Even Upon Notice

No effect on IP law

(1) Treatment of publisher or speaker

(2) Civil liability

No provider or user of an interactive computer service shall be held liable on account of—

(A) any action voluntarily taken in good faith to restrict access to or availability of material that the provider or user considers to be obscene, lewd, lascivious, filthy, excessively violent, harassing, or otherwise objectionable, whether or not such material is constitutionally protected; or

(B) any action taken to enable or make available to information content providers or others the technical means to restrict access to material described in paragraph (1)

U.S. 107

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, [...] for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.

No effect on privacy law

In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

(1)

the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2)

the nature of the copyrighted work;

(3)

the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4)

the effect of the use upon the potential market for or value of the copyrighted work.

The Congress shall have the power "To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." (Article I, Section 8, Clause 8)

(1)

had been informed that their platform provides access to infringing content;

(2)

could not in any case have been unaware that the platform provides access to infringements, given that a very large amount of infringing content was shared using the platform;

(3)

had expressly displayed on blogs and forums on the platform their purpose to make protected works available to the users;

(4)

encouraged users to infringe; and

(5)

operated for profit.

[2016] IECA 231

"Because the defendant is the company which profits - albeit indirectly - because it derives revenue from its subscribers who are engaged in this practice, it is the defendant who should, in my view, be primarily liable for the costs."

80%

(1)

‘essential’ intervention, i.e. such that in the absence of that intervention, the public would not, in principle, be able to enjoy the work or would be able to do so only with difficulty

imposing an obligation to implement a "Graduated Response Strategy" (GRS):

Step 1

R would furnish all relevant infringement

Step 2

AP would send 1st letter requesting to cease and desist.

Step 3

AP would send 2nd letter to its subscriber requesting to cease and desist.

Step 4

AP would send to the plaintiffs a notification that a subscriber account has been the subject matter of three such notifications.

Step 5

R, having been informed of the relevant IP addresses etc, could make a Norwich Pharmacal type application to ascertain the subscriber’s identity and address and the could then seek an order for the suspension and/or termination of the subscriber’s service.

V.

Sony Music

(Ireland)

“That would undermine the objective of EU legislation in the relatively abundant field of copyright, which is precisely to harmonise the scope of the rights enjoyed by authors and other rightholders within the single market. That is why the answer to the problems raised in the present case must, in my view, be sought rather in EU law.”

AG Szpunar

Case C-610/15, Ziggo (14 June 2017)

Copyright Alert System

‘Trusted Notifier’ Copyright Enforcement Program

Falcon

V

‘The purchaser will not make unlawful copies because he has been induced or incited or persuaded to do so by Amstrad. The purchaser will make unlawful copies for his own use because he chooses to do so. Amstrad's advertisements may persuade the purchaser to buy an Amstrad machine but will not influence the purchaser's later decision to infringe copyright.’

Atkin LJ: “authorise” = “to grant or purport to grant to a third person the right to do the act complained of, whether the intention is that the grantee shall do the act on his own account, or only on account of the grantor.” (p. 499)

Bankes LJ: “authorise” = “sanction, approve and countenance” (p. 491)

[1926] 2 KB 474

Dramatico [2012] R.P.C. 27 [81]

CBS

V

Any ordinary person would, I think, assume that an authorisation can only come from somebody having or purporting to have authority and that an act is not authorised by somebody who merely enables or possibly assists or even encourages another to do that act, but does not purport to have any authority which he can grant to justify the doing of the act.’

‘In my judgment, the operators of TPB do authorise its users' infringing acts of copying and communication to the public. They go far beyond merely enabling or assisting. On any view, they "sanction, approve and countenance" the infringements of copyright committed by its users. But in my view they also purport to grant users the right to do the acts complained of. It is no defence that they openly defy the rights of the copyright owners. I would add that I consider the present case to be indistinguishable from 20C Fox v Newzbin in this respect. If anything, it is a stronger case.’

COMMON LAW

Authorisation ‘Mere Facilitation’

NO STRICT LIABILITY

must know or have reason to believe that the article is an infringing article.

Joint Tortfeasance

[1981] R.P.C. 407

“The underlying concept for joint tortfeasance must be that the joint tortfeasor has been so involved in the commission of the tort as to make himself liable for the tort. Unless he has made the infringing act his own, he has not himself committed the tort.”

Vs

‘Copyright in a work is infringed by a person who without the licence of the copyright owner does, or authorises another to do, any of the acts restricted by the copyright’

• importing infringing copies
• possessing or dealing with infringing copies
• providing means for making infringing copies
• permitting the use of premises for infringing performances
• providing apparatus for infringing performances

[2003] RPC 264 [59]

s. 16(2)

Common Design

Procurement &

Inducement

‘In the present case, the matters I have considered in relation to authorisation lead to the conclusion that the operators of TPB induce, incite or persuade its users to commit infringements of copyright, and that they and the users act pursuant to a common design to infringe. It is also relevant in this regard that the operators profit from their activities. Thus they are jointly liable for the infringements committed by users.’

‘[T]he defendant has intervened in a highly material way to make the claimants' films available to a new audience, that is to say its premium members. Furthermore it has done so by providing a sophisticated technical and editorial system which allows its premium members to download all the component messages of the film of their choice upon pressing a button, and so avoid days of (potentially futile) effort in seeking to gather those messages together for themselves. As a result, I have no doubt that the defendant's premium members consider that Newzbin is making available to them the films in the Newzbin index.’

(No. 1) [2010] FSR 21 [90]

No manufacturer and no machine confers on the purchaser authority to copy unlawfully. The purchaser or other operator of the recorder determines whether he shall copy and what he shall copy. By selling the recorder Amstrad may facilitate copying in breach of copyright but do not authorise it. […] Amstrad conferred on the purchaser the power to copy but did not grant or purport to grant the right to copy.’

Authorisation ‘Mere Facilitation’

The grant or purported grant to do the relevant act may be express or implied from all the relevant circumstances. In a case which involves an allegation of authorisation by supply, these circumstances may include [1] the nature of the relationship between the alleged authoriser and the primary infringer, [2] whether the equipment or other material supplied constitutes the means used to infringe, [3] whether it is inevitable it will be used to infringe, the [4] degree of control which the supplier retains and [5] whether he has taken any steps to prevent infringement. These are matters to be taken into account and may or may not be determinative depending upon all the other circumstances.’

[1988] RPC 567 [HL]

Voluntary Code of Practice

(9 February 2017

‘Generally speaking, the operators of the Target Servers are not merely linking to freely available sources of Premier League footage. Even if in some cases they do, the evidence indicates that they do so for profit, frequently in the form of advertising revenue, and thus are presumed to have the requisite knowledge for the communication to be to a new public’.

BT [2017] EWHC 480 (Ch)

Vs

"The question is: in a digital world, where copying and distribution are more or less free, what does an effective regime look like? No one doubts that a great deal of copyright piracy is taking place, but reliable data about scale and trends is surprisingly scarce. Estimates of the scale of illegal digital downloads in the UK ranges between 13 per cent and 65 per cent in two studies published last year. A detailed survey of UK and international data finds that very little of it is supported by transparent research criteria. Meanwhile sales and profitability levels in most creative business sectors appear to be holding up reasonably well. We conclude that many creative businesses are experiencing turbulence from digital copyright infringement, but that at the level of the whole economy, measurable impacts are not as stark as is sometimes suggested." (p. 10)

NOT IMPLEMENTED

Not necessary that the link itself be provided “for financial gain”, e.g. through cost-per-click calculations.

It is instead sufficient that the link is provided on a website that is operated for financial gain, i.e. run with the intention to realising profits, irrespective of the commercial impact of the particular link. 

(1) D was offering educational material via his website, therefore intended profit (2) D could not rebut the presumption due to notification

The applicant argued that imposing liability would infringe his fundamental rights. Court said that the CJEU had already struck the right balance.

LG Hamburg, Case no. 310 O 402/16,

18 November 2016 [47]-[48]

Speech

‘I woke up this morning in a bad mood and decided to kick them off the Internet’

GEMA

Vs

The act of making the work available to the public had been committed by the YouTube uploader, not by YouTube itself.

YT also had not ‘adopted’ the content as its own

(‘Zu-Eigen-Machen’, see BGH, marions-kochbuch.de, 12 November 2009, I ZR 166/07).

(1)

YouTube is a “service inclined to infringement”, but also has a business model “in the mainstream of society”

(2)

When YT receives notification of a clear infringement, not only take-down is necessary but also stay-down, incl. other infringements on the same work and other recordings

(3)

Word-based filter and Content ID necessary

Fundamental rights were not relevant

OLG Hamburg, 1 July 2015, 5 U 87/12

Carlos Sánchez de la Peña v. Google México, S. de R.L., PPD.0094/14 (National Institute for the Access to Information, January 2015)

Extra-territorial Application of Intermediary Liability Rulings

Graduated Response

Administrative Enforcement

Privacy & Data

This Article shall not affect the possibility for a court or administrative authority, in accordance with Member States' legal systems, of requiring the service provider to terminate or prevent an infringement, nor does it affect the possibility for Member States of establishing procedures governing the removal or disabling of access to information.”

Art. 21(2) - 2. In examining the need for an adaptation of this Directive, the report shall in particular analyse the need for proposals concerning the liability of providers of hyperlinks and location tool services, "notice and take down" procedures and the attribution of liability following the taking down of content.

8(3). 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.

Those measures shall consist of, as appropriate:

(a)

defining and applying in the terms and conditions for content concerned

(b)

establishing and operating mechanisms for users of video-sharing platforms to report or flag to the video-sharing platform provider concerned the content referred to in paragraph 1 stored on its platform;

(c)

establishing and operating age verification systems for users of video-sharing platforms with respect to content which may impair the physical, mental or moral development of minors;

(d)

establishing and operating systems allowing users of video-sharing platforms to rate the content referred to in paragraph 1;

(e)

providing for parental control systems with respect to content which may impair the physical, mental or moral development of minors;

(f)

establishing and operating systems through which providers of video-sharing platforms explain to users of video-sharing platforms what effect has been given to the reporting and flagging referred to in point (b).

“Video-sharing platform services” are defined in new Article 1(aa) AVMSD ‘… a service [...] which meets the following requirements:

(i)

the service consists of the storage of a large amount of programmes or user-generated videos, for which the video-sharing platform does not have editorial responsibility;

(ii)

the organisation of the stored content is determined by the provider of the service including by automatic means or algorithms, in particular by hosting, displaying, tagging and sequencing;

(iii)

the principal purpose of the service or a dissociable section thereof is devoted to providing programmes and user-generated videos to the general public in order to inform, entertain or educate;

(iv)

the service is made available by electronic communications networks within the meaning of point (a) of Article 2 of Directive 2002/21/EC.’

Without violating Art 14/15 ECD providers shall take appropriate measures to:

(a)

protect minors from content which may impair their physical, mental or moral development;

(b)

protect all citizens from content containing incitement to violence or hatred directed against a group of persons or a member of such a group defined by reference to sex, race, colour, religion, descent or national or ethnic origin.

Article 11 - Injunctions - Member States shall ensure that, where a judicial decision is taken finding an infringement of an intellectual property right, the judicial authorities may issue against the infringer an injunction aimed at prohibiting the continuation of the infringement. [...]

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.

Where provided for by national law, non-compliance with an injunction shall, where appropriate, be subject to a recurring penalty payment, with a view to ensuring compliance.

Störerhaftung

= ‘interferer liability’ or ‘disturber liability’

i.e. liability of persons who knowingly and causally contribute to an infringement by another

2 conditions:

(1)

have adequately contributed to that infringement

through

(2)

the violation of a reasonable duty to review possible infringements (Prüfpflicht)

‘online content sharing service provider’

means a provider of an information society service of which the main or one of the main purposes is to store and give the public access to a large amount of copyright-protected works or other protected subject matter uploaded by its users, which it organises and promotes for profit-making purposes.

Online Content Sharing Service Provider

(OCSSP)

Art. 823

Liability in Damages

BUT NOT

Providers of services, such as not-for-profit online encyclopedias, not-for-profit educational and scientific repositories, open source software-developing and-sharing platforms, providers of electronic communications services as defined in Directive (EU) 2018/1972, online marketplaces, business-to-business cloud services and cloud services that allow users to upload content for their own use, [...].

(1)

Complaint and Redress Mechanism

(cooperation cannot result in unavailability of lawful content)

(1)

(4)

Public Interest Safegards

Directly Liable

(3)

provide adequate information to rightholders on functioning of OCSSP practices

(2)

inform users in T&Cs they can use protected content under exceptions and limitations

(1)

A person who, intentionally or negligently, unlawfully injures the life, body, health, freedom, property or another right of another person is liable to make compensation to the other party for the damage arising from this.

(2)

The same duty is held by a person who commits a breach of a statute that is intended to protect another person. If, according to the contents of the statute, it may also be breached without fault, then liability to compensation only exists in the case of fault.

(2)

made best efforts to ensure the unavailability of protected content

(1)

made best efforts to secure a licence**

(3)

(2)

Secure a Licence

Otherwise, OCSSP are liable, UNLESS

ineligible for the liability exemption

(4)

made best efforts to prevent future uploads**

(3)

acted expeditiously, upon receiving sufficiently substantiated notice to take down content**

Limitations

(a)

service available in the EU for less then 3 years and (1,3)

(b)

with an annual turnover below €10M (1,3) and

(c)

average number of monthly visitors above 5M (1,3,4)

Art.  830

Joint tortfeasors and persons involved

In order to ensure the functioning of any licensing agreement, information society service providers storing and providing access to the public to large amounts of copyright protected works or other subject-matter uploaded by their users should take appropriate and proportionate measures to ensure protection of works or other subject-matter, such as implementing effective technologies. This obligation should also apply when the information society service providers are eligible for the liability exemption provided in Article 14 of Directive 2000/31/EC.

(1)

If more than one person has caused damage by a jointly committed tort, then each of them is responsible for the damage. The same applies if it cannot be established which of several persons involved caused the damage by his act.

(2)

Instigators and accessories are equivalent to joint tortfeasors.

called to adopt effective voluntary ‘proactive measures to detect and remove illegal content online’ by using automatic detection and filtering technologies (3.3.2)

Filtering

and Monitoring

Obligations

Licensing

"economic impacts are mostly assessed from a qualitative point of view, considering how the different policy options would affect the negotiations between those creating or investing in the creation of content and those distributing such content online. The limited availability of data in this area [. . .] did not allow to elaborate a quantitative analysis of the impacts of the different policy options." (p. 136)

Vs

Cross-border portability of online content services

Pie Theory

Member States shall ensure that authors receive an appropriate share of the additional revenues press publishers receive for the use of a press publication by information society service providers

Non

Retroactive

20 March 2018

Scope

Empirical Evidence

enable their subscribers who are temporarily present in a Member State to access and use the online content service in the same manner as in the Member State of residence

Online services such as

(1) video-on-demand platforms (such as Netflix, HBO Go, Amazon Prime, Mubi, Chili TV);

(2) online TV services (such as Viasat's Viaplay, Sky's Now TV, Voyo)

(3) music streaming services (such as Spotify, Deezer, Google Music) or

(4) game online marketplaces (such as Steam, Origin).

Press Publishers' Neighbouring Rights for Digital Uses

DSM Reform

LICRA & UEJF v. Yahoo! T.GL Paris, 22 May 2000

Enforcement

“we are disappointed to see that the proposals are not grounded in any solid scientific (in particular, economic) evidence.”

to take such measure as will dissuade and render impossible any and all consultation on Yahoo.com of the auction service of Nazi objects as well as any other site or service which makes apologies of Nazism or questions the existence of Nazi crimes

"[T]he very purpose of hyperlinks is, by directing to other pages and web resources, to allow Internet‑users to navigate to and from material in a network characterised by the availability of an immense amount of information. Hyperlinks contribute to the smooth operation of the Internet by making information accessible through linking it to each other. Hyperlinks, as a technique of reporting, are essentially different from traditional acts of publication in that, as a general rule, they merely direct users to content available elsewhere on the Internet. They do not present the linked statements to the audience or communicate its content, but only serve to call readers’ attention to the existence of material on another website. A further distinguishing feature of hyperlinks, compared to acts of dissemination of information, is that the person referring to information through a hyperlink does not exercise control over the content of the website to which a hyperlink enables access, and which might be changed after the creation of the link – a natural exception being if the hyperlink points to contents controlled by the same person. Additionally, the content behind the hyperlink has already been made available by the initial publisher on the website to which it leads, providing unrestricted access to the public."

Art. R645-1: prohibits insignias and emblems which "recall those used" by an organization declared illegal by Art. 9 of the Nuremberg Statute

General Monitoring

Specific Monitoring

No Proactive Monitoring

Online Search Manipulation

The ECJ decided that European law must be interpreted as precluding a national court from issuing an injunction against a hosting (or access) service provider which requires it to install a system for filtering:

(1) information which is stored on its servers by its service users;

(2) which applies indiscriminately to all of those users;

(3) as a preventative measure;

(4) exclusively at its expense; and

(5) for an unlimited period,

(6) which is capable of identifying electronic files containing musical, cinematographic or audio-visual work in respect of which the applicant for the injunction claims to hold intellectual property rights, with a view to preventing those works from being made available to the public in breach of copyright.

Vs

"[l]iability rules are more appropriate, since they do not fundamentally change the decentralised nature of the internet by giving trade mark proprietors general – and virtually absolute – control over the use in cyberspace of keywords which correspond to their trade marks. Instead of being able to prevent, through trade mark protection, any possible use – including, as has been observed, many lawful and even desirable uses – trade mark proprietors would have to point to specific instances giving rise to Google’s liability in the context of illegal damage to their trademarks."

“the term “hate speech” shall be understood as covering all forms of expression which spread, incite, promote or justify racial hatred, xenophobia, antisemitism or other forms of hatred based on intolerance, including: intolerance expressed by aggressive nationalism and ethnocentrism, discrimination and hostility against minorities, migrants and people of immigrant origin.”

(1)

Not bound by national definitions

(2)

Three basic grounds: race, religion, other forms of intolerance “expressed by aggressive nationalism and ethnocentrism”

(3)

"balancing"

(4)

Margin of appreciation: tighter for incitement to hatred Vs wider for morals/religion

(5)

Intent is crucial: context & content

BGH, Vorschaubilder III, 21 September 2017, I ZR 11/16

‘This assumption does not apply to search engines and to hyperlinks leading to a search engine because of the particular importance of Internet search services for the functionality of the Internet. The provider of a search function cannot be expected to check whether the images found by the search engine in an automated process have been legally posted on the Internet in first place before listing them as thumbnails on its website.’

Monitoring

&

Filtering

Voluntary Measures

Courts

what “technically possible” and “reasonable.”

(1)

precautions against clearly noticeable infringements—such as blatant counterfeit items—reasonable

(2)

it would be unreasonable a filtering obligation questioning the business model of the intermediary.

(3)

manually checking and visually comparing each product offered in an online auction against infringement—which was not clear or obvious would be unreasonable.

(4)

obligations are unreasonable if due to the substantial amount of products offered, the platform’s business model would be endangered

“Kerntheorie”, i.e. infringements similar in their core (Kern)

trigger a duty to review & notice-and-stay-down

‘consideration must be given to the fact that the defendant participates in the sale of the pirate goods in the form of the commission payable […] Whenever the defendant's attention has been drawn to a clear infringement of rights not only is it obliged to block access to the specific offer […], it must also ensure that such trade mark infringements will as far as possible not occur in the future. […] The defendant is obliged to react to these cases by subjecting offers of Rolex watches to a special examination.’

‘A business that, like the defendant, operates a platform on the internet for third-party auctions cannot reasonably be expected to examine every offer for sale for a possible infringement of rights before publication on the internet. Such an obligation would jeopardise the entire business model.’

Internet Auction I-III

Remedies:

(1)

expeditious removal;

(2)

word filter;

(3)

subsequent manual reassessment for the avoidance of over-blocking;

(4)

general “Marktbeobachtungspflicht”, i.e. market monitoring duty through Google, Facebook or Twitter for illegal links to its service

NTD

R’s business model not a priori designed to facilitate infringement, i.e. deserving of protection,

but

R increased risk of the illegal use of its services, i.e. significantly facilitated copyright infringement.

• R advertised the fact that certain files on its platform had been downloaded 100.000 times
• R’s services could also be used anonymously
• points awarded to users depending on number of downloads

As a result it had lost its neutrality.

Professional but “offensive and vulgar” rather than hate speech

(1)

a duty could only arise once R made aware of a clear infringement through notification.

(2)

Once notification received the provider can not simply rest at deleting existing infringing files, but must go further and perform searches for future infringements of the notified content, as well as take all reasonable measures to make sure users could not proceed with such infringements in the first place, as long as these did not threaten Rapidshare’s business model.

(3)

This could include automatic word filters supplemented by subsequent manual controls.

Non Professional (Blog)

(1)

In a situation of higher than-average

risk of defamation or hate speech,

(2)

if comments from non-registered users are allowed,

(3)

a professionally managed and commercially based

Internet news portal

should exercise the full extent

of control at its disposal and must go beyond automatic keyword-based filtering or ex-post notice-and-take-down procedures to avoid liability

NTD

BGH, 12 July 2012, I ZR 18/11

“[d]defamatory and other types of clearly unlawful speech, including hate speech and speech inciting violence, can be disseminated like never before, worldwide, in a matter of seconds, and sometimes remain persistently available online.”

Voluntary Measures

Payment Blockades

and

Rethinking Copyright Law: Online Enforcement, Platforms and Algorithms

WIPO LLM, Turin

(Spring 2020)

by Giancarlo Frosio

cost of enforcement

Urt. v. 6.7.2017 (Nr. 909; SFR, Orange, Free, Bouygues télécom et al. / Union des producteurs de cinéma et al.)

Knowledge and Take Down

“given that the internet service provider is an inevitable actor in any transmission of an infringement over the internet between one of its customers and a third party, since, in granting access to the network, it makes that transmission possible ( . . . ), it must be held that an internet service provider ( . . . ) is an intermediary whose services are used to infringe a copyright or related right within the meaning of Article 8(3) of Directive 2001/29.”

Private DNS Content Regulation

"[an injunction] constrains its addressee in a manner which restricts the free use of the resources at his disposal because it obliges him to take measures which may represent a significant cost for him.”

legitimate and in accordance with the principle of proportionality that [ISPs and search engines] contribute to blocking and delisting measures” because they “initiate the activity of making available access to this websites” and “derive economic benefit from this access (especially by advertising displayed on their pages).”

Nevertheless, these provisions do not prevent the costs of the measures strictly necessary for the safeguarding of the rights in question [...] from being borne by the technical intermediaries, even when such measures may present significant costs for the intermediaries. The aforementioned Directives 2000/31 and 2001/29, [...] foresee that notwithstanding the principle of non responsibility of the intermediaries, the ISPs and hosting providers are required to contribute to the fight against the illegal content and, in particular, against the infringement of copyright and related rights, when they are best positioned to put an end to such violations.

Articles 11(1)(ii), 11bis(1), 11ter(1)(ii), 14(1) and 14bis(1)

Right of communication to the public

the authors of literary works, artistic works, dramatic and dramatico-musical works, musical works and cinematographic works

communication to the public by wire, communication to the public by wireless means & communication to the public by loudspeaker or analogous instruments, broadcasting, rebroadcasting

Blocking Orders

Intermediary Liability

Art. 8 - The right of communication to the public is the right to authorize any communication to the public

• by wire or wireless means,
• including the making available to the public of their works
• in such a way that members of the public may access them from a place and at a time individually chosen by them

Agreed statement concerning Art. 8 WCT: ‘It is understood that the

mere provision of physical facilities

for enabling or making a communication does not in itself amount to communication within the meaning of this Treaty or the Berne Convention. It is further understood that nothing in Article 8 precludes a Contracting Party from applying Article 11bis(2).’

On demand, interactive communication through the Internet

Copyright Treaties

Cour de cassation

(09-67.896), 17 February 2011

Sté Nord-Ouest

C.

(1)

the sale of advertising space

(2)

the implementation of technical means ensuring the content’s compatibility with the viewing interface and limiting the size of posted files for reasons of optimisation of the server’s integration capacity

(3)

the provision of presentation frames and of tools for the classification of content, which are necessary for the organisation of the service and in order to facilitate user access to the content

are mere technical operations that are part of the essence of a hosting service do not imply that the provider is involved in the selection of uploaded content.

“Les enfants perdus de Tranquility Bay“, TGI de Paris, 19 October 2007

Notice-and-take-down notice-and-stay-down

Diligences approprieés

the three main obligations incumbent on service providers that it declared derive from the general duty of care

Article L.335-2-1

Anyone who does the following is punished by three years of imprisonment and a fine of 300.000 euros:

(1)

Publishes, makes available to the public or communicates to the public, knowingly and in any form whatsoever, software obviously intended for making available to an unauthorized public protected works or other subject matter;

(2)

Knowingly incites, including through an advertisement, the use of software mentioned under 1.

According to the court, once Google had been informed of the existence of infringing copies of the film, it was under an obligation to implement any means necessary to avoid future dissemination

Lacoste, TGI de Nanterre, 8 December 1999

Delicts and Quasi-Delicts

(1) to bring the need to respect the rights of others to the attention of users (obligation d’information);

(2) to remain vigilant against infringement along a standard of professional care (obligation de vigilance); and

(3) to act against verified infractions by removing the unlawful material and impeding its future re-posting (obligation de réaction).

Article 1382

Every act whatever of man that causes damage to another, obliges him by whose fault it occurred to repair it.

Article 1383

We are responsible not only for the damage occasioned by our own act, but also by our own negligence or imprudence.

Article L.122-4

“Any complete or partial communication to the public or reproduction made without the consent of the author or of his successors in title or assigns is unlawful.”

Primary liability applicable not just to the material acts of infringement, but also to the provision of means for their commission

BUT: No systematic and general examination of all content. Only due diligence checks once the intermediary acquires knowledge of or reason to suspect unlawfulness.

bon père de famille = prestataire diligent et avisé

Cour d’appel de Paris, 14 January 2011

Article 15 ECD irrelevant, as the obligation was specific to the documentary in question and notice as to its copyright status had already been given

“Le génocide arménien”, “L’affaire Clearstream”, “Les dissimulateurs” and “Mondovino”

Cour de cassation, 12 July 2012

(1) The obligation would have forced Google to seek out infringements, as well as implement a blocking mechanism with no limitation in time, which would have disproportionate general monitoring.

(2) Google should have been allowed to benefit from the hosting safe harbour.

(3) Right-holders must themselves monitor the internet and notify intermediaries of each new infringement of protected content

Cour d’appel de Paris

2 December 2014

TF1

C.

Dailymotion did not comply with its obligation to remove promptly the unlawful content upon proper notification – some videos were still available on Dailymotion 7 to 13 days after the notice. Other videos were still on line around 100 days after the notice.

Preventive filtering measure incompatible with a general monitoring obligation

What?

C-494/15

“Nor can the intermediary be required to exercise general and permanent oversight over its customers. By contrast, the intermediary may be forced to take measures which contribute to avoiding new infringements of the same nature by the same market-trader from taking place.”

Broad Notion of Intermediary

Delta Center

Vs

How?

English Learning Diary of Koala Xiaowu – to Those Fighting for Their Dreams

Syllabus

(1)

reasonable for Baidu to exercise a duty to monitor and examine the legal status of an uploaded work once it has been viewed or downloaded more than certain times

(2)

Baidu needs to inspect the potential copyright status of the work by contacting the uploader, checking whether the work is originally created by the uploader or legally authorized by the copyright owners

(3)

failed to set a clear indication of how many views or downloads are enough to trigger the duty

Plan, Materials & Goals

Why?

Art. 14 applies to ISPs who do not play an active role that give it knowledge or control over the data stored

but not an active monitoring of all the data of each of its customers in order to prevent any future infringement

The intermediary must be neutral

Adwords

injunctions ex Art 11 Dir. 04/48/EC to take measures that contribute not only to bringing to an end infringements committed through that marketplace, but also to preventing further infringements would be available

ISP can be ordered (injunction) to suspend the perpetrator of the infringement of intellectual property rights in order to prevent (1) further infringements of that kind (2) by the same seller (3) in respect of the same trade marks

(Keyword=Trademark)

the operator has provided assistance which entails, in particular, optimising the presentation of the offers for sale in question or promoting those offers, it must be considered not to have taken a neutral position between the customer-seller concerned and potential buyers but to have played an active role

The mere facts that (1) Adwords is subject to payment, (2) Google sets the payment terms, or (3) provides general information to its clients do not deprive from the liability exemption

Trademark

Comisión de Propiedad Intelectual, Sección Segunda

BSkyB

Vs

"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"

Centralization

(1)

right-holders will be able to file complaints for online copyright infringement with AGCOM’s Directorate by using an online form available on AGCOM’s website (art. 6).

(5)

Decisions over the complaints will be taken by an AGCOM decision body, which will receive the results of the investigation from the Directorate (art. 8). If the collegial body is satisfied that the alleged infringement has occurred, it will adopt – within 35 days from the filing of the initial complaint – the following measures to prevent further infringement:

(1) if the infringing website is hosted in a server located in Italy, the decision body will order hosting service providers to selectively remove the infringing digital works; in case of massive copyright infringement, the decision body may order the service providers to disable access to infringing works, in lieu of the selective removal (art. 8, par. 3);

(2) if the infringing website is hosted outside Italy, the decision body will order mere conduit (Internet) service providers to block access to the website (art. 8, par. 4);

(3) in any event, when access to content or website is disabled, the service providers must automatically redirect users to a courtesy page, which will be set up according to AGCOM’s instructions (art. 8, par. 4).

(2)

The administrative procedure before AGCOM will not target users (art. 2, par. 3). Instead, it will focus exclusively on service providers, uploaders of the infringing content, and website operators hosting infringing material (art. 7).

(3)

The relevant parties will be informed that a procedure has been started against them and they will have the possibility to immediately comply with the right-holders’ request by removing or blocking access to the infringing materials (art. 7, par. 2-3).

(4)

If the party receiving the notice decides to resist the right-holders’ requests, it must do so by presenting counterarguments within five days of receiving the notice. Special terms and deadlines may apply if AGCOM’s Directorate deems the case especially complex (art. 7, par. 5).

a copyright bill establishing a statutory safe harbor for online service providers for copyright infringement, provided that OSPs meet certain prescribed conditions, including the taking of reasonable steps to limit or stop copyright infringement when being notified

(Copyright Amendment Bill 2014, C2957, Clause 50)

(6)

Service providers must comply with these measures within three days. If, upon a discretionary evaluation of the Directorate, the case is deemed to be a severe infringement of the economic right of exploitation of a digital work or a massive violation, the procedural terms may be shortened (art. 9).

Taxonomy

"could potentially undermine freedom of information, since that system might not distinguish adequately between unlawful content and lawful content, with the result that its introduction could lead to the blocking of lawful communications. Indeed, it is not contested that the reply to the question whether a transmission is lawful also depends on the application of statutory exceptions to copyright which vary from one Member State to another. In addition, in some Member States certain works fall within the public domain or may be posted online free of charge by the authors concerned." (Netlog, 50)

monitoring all the electronic communications made through the network, without any limitation in time, directed to all future infringements of existing and yet to create works “would result in a serious infringement of the freedom of the hosting service provider to conduct its business.” (Netlog 46)

Online Intermediaries

Fundamental Rights

ICANN-Registry Agreement (2013) 2.17 Specification 11 (requiring registry operators to include in their contracts with registrars a provision requiring registrars to include in their contracts with registrants “a provision prohibiting Registered Name Holders from […] piracy, trademark or copyright infringement […] and providing [...] consequences for such activities including suspension of the domain name.”

ICANN Registrar Accreditation Agreement (2013) 3.18.

Communication to the Public

What is communication to the public?

Authorization Liability

Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works,

(a)

by wire or wireless means,

(b)

including the making available to the public of their works

(c)

in such a way that members of the public may access them from a place and at a time individually chosen by them.

History

Hyper-history

Prehistory

(A)

Recital 27: The mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Directive.’

(B)

Recital 23: ‘This Directive should harmonise further the author's right of communication to the public. This right should be understood in a broad sense covering all communication to the public not present at the place where the communication originates. This right should cover any such transmission or retransmission of a work to the public by wire or wireless means, including broadcasting. This right should not cover any other acts.’

Right of communication to the public of works

and

right of making available to the public other subject-matters

Member States shall provide for the exclusive right to authorise or prohibit the making available to the public, (a) by wire or wireless means, (b) in such a way that members of the public may access them from a place and at a time individually chosen by them:

(a)

for performers, of fixations of their performances;

(b)

for phonogram producers, of their phonograms;

(c)

for the producers of the first fixations of films, of the original and copies of their films;

(d)

for broadcasting organisations, of fixations of their broadcasts, whether these broadcasts are transmitted by wire or over the air, including by cable or satellite.

Intra-copyright solutions

Why not primary liability?

The rights referred to in paragraphs 1 and 2 shall not be exhausted by any act of communication to the public or making available to the public as set out in this Article.

When is one person liable for a copyright infringement where the material act of infringement was performed by somebody else?

(i)

(ii)

(aka accessory liability, indirect liability, third party, i.e. cases where the defendant is held liable for the infringement of somebody else)

esp. intermediary liability

‘broadcasting’

‘making available’

History, Theory

and Jurisdiction

Each member of the public at a time and place of their own choosing

for all members of the public simultaneously

‘linear transmissions’ or

‘push services’

‘on-demand’ or

‘pull’ services or

‘non-linear’ transmissions

Secondary Liability

Tort and

Extra-Contractual Liability

Conditions

Svensson v. Retriever Sverige

Deep Linking

Penalties should be imposed on intermediaries in hopes of suppressing infringing behaviors by users only if:

(1)

otherwise, the incidence of infringement would be unacceptably high, because direct infringers cannot be controlled by socially acceptable sanctions;

(2)

the intermediaries, on their own, would not intervene to curb infringement—and instead, might foster it;

(3)

the intermediaries can effectively suppress infringement with minimal capacity for direct infringers to circumvent them;

(4)

the social and economic cost of penalizing intermediaries are not unacceptably high. *

* This last cost benefit analysis would be especially relevant in the case of so called dual-use technologies—technologies that can be used both to infringe others’ rights and facilitate social beneficial uses

From Liability to Responsibility

Hyperlinking

an ‘act of communication’, as it ‘affords users of the [site with the hyperlink] direct access’ to the works’

Utilitarian/Welfare

Theories

SGAE v. Rafael Hoteles, C-306/05

Airfield NV v. SABAM, Joined Cases C-431/09 and C-432/09

Società Consortile Fonografici v. Marco del Corso, C-135/10

Is linking communication to the public?

Strict Liability v. Negligence Standards

(1)

Installation of facilities that allow distribution of a TV or radio signal (not mere provision of physical facilities)

(1)

‘indispensable’ intervention, i.e. such that in the absence of that intervention, the public would not, in principle, be able to enjoy the work

‘[I]n order to assess whether a user is making a communication to the public […] the situation of a specific user and of all the persons to whom he communicates the protected phonograms must be assessed. For the purposes of such an assessment, account must be taken of several complementary criteria, which are not autonomous and are interdependent. Consequently, they must be applied individually and in the light of their interaction with one another, given that in different specific situations, they may be met to varying degrees.’

(2)

in the case of satellite broadcastings,

when the initial communication to the public is not carried out by the copyright holder,

the “new public” is the “public which was not taken into account by the authors of the protected works within the framework of an authorization given to another person”.

History & Theory

Linking

The 4th Revolution and the Infosphere

(1)

The provision of physical or digital phonograms and apparatus on which these may be played

(1)

the defendant must make a ‘intervention’ to give access to or experience of works to a public that is not present at the place where the work or subject matter originate

(2)

cumulative effects are important: must consider not only for how many persons have access to the same work at the same time, but also how many of them have access to it in succession.

GS Media v Sanoma, C-160/15, 8 September 2016

(2)

private nature of hotel room does not preclude cttp

(1)

that is ‘deliberate’ i.e. done in full knowledge of the consequences of the action

(2)

• indeterminate and fairly large number of people
• private dental practice is not a public space

(2)

There is a de minimis threshold  must be a fairly large number of people, not groups of persons which are too small or insignificant

(3)

• profit-making nature (equitable remuneration)
• there was no communication for profit

(1)

Role of the user:

intervention necessary for consumers to enjoy the works

(2)

There must be an indeterminate number of potential users, i.e. not ‘specific individuals belonging to a private group’

(2)

new public

Phonographic Performance (Ireland) v General, C-162/10, 15 March 2012

(7 Mar)

2013

(24 Nov)

2011

(4 Oct)

2011

‘[W]here it is established that [the linker] knew or ought to have known that the hyperlink he posted provides access to a work illegally placed on the internet, for example owing to the fact that he was notified thereof by the copyright holders, it is necessary to consider that the provision of that link constitutes a “communication to the public”’

‘[W]hen the posting of hyperlinks is carried out for profit, it can be expected that the person who posted such a link carries out the necessary checks to ensure that the work concerned is not illegally published on the website to which those hyperlinks lead, so that it must be presumed that that posting has occurred with the full knowledge of the protected nature of that work and the possible lack of consent to publication on the internet by the copyright holder. In such circumstances, and in so far as that rebuttable presumption is not rebutted, the act of posting a hyperlink to a work which was illegally placed on the internet constitutes a ‘communication to the public’

General Principles of Private (Tort) Law

BestWater Int'l v. Michael Mebes and Stefan Potsch, C-348/13, 21 October 2014

Moral Theories

ITV v. TV Catch-up, C‑607/11

FAPL v. QC Leisure,C-403/08 and C-429/08

(26 April 2017)

2006

(7 Dec)

Circul Globus Bucuresti v. UCMR - ADA, C-283/10

2012

(15 Mar)

2011

(12 Oct)

Case C-527/15,

(1)

streaming is a cttp: any transmission or retransmission of TV broadcast over the Internet

(1)

intentional transmission

Does a link to materials that the copyright holder DID NOT authorize infringe communication to the public?

May the Member States give wider protection to the exclusive right of authors by enabling ‘communication to the public’ to cover a greater range of acts than provided for in Article 3(2) of the Information Society Directive?

(1)

covering transmission of the broadcast works, via a television screen and speakers

(2)

New public ? even though those subscribers are within the area of reception of that terrestrial television broadcast and may lawfully receive the broadcast on a television receiver.

(1)

Dir. 2001/29 only refers to communication to a public which is not present at the place where the communication originates

(2)

Communication carried out in a place open to the public by public performance or direct presentation of the work is not harmonised.

(2)

to customers present in a public house

(3)

it is not irrelevant that a communication is of profit-making nature

Why 3(2), rather than 3(1)?

(3)

it is irrelevant whether the retrasmission

• is funded by advertizing and is therfore of a profit-making nature or
• is made by an organization which is acting in direct competition with the original broadcaster.

(2)

unless different means of transmission are used

C More Entertainment AB v Linus Sandberg, C-279/13, 26 March 2015

Contributory, Vicarious, and Inducement Liability

Vertical

Horizontal

Conditions

From

the Single Market

to

the Digital Single Market

Why were liability exemptions given to intermediaries?

Copyright

Committee on Internet Violations of Intellectual Property (CIVIP)

Digitization

&

Territoriality

.com

International Private Law

Liability

Liability Exemptions

Google Brazil v Dafra, Special Appeal No. 1306157/SP (Superior Court of Justice, Fourth Panel, 24 March 2014)

From

the Digital Single Market

to

the Digital Global Forum

Exemptions

Negligence

Strict Liability

Vs

Technical impossibility defense!

lack of a technical solution for fixing a defective new product does not exempt the manufacturer from liability, or from the obligation of providing a solution [...] If Google created an untameable monster, “it should be the only one charged with any disastrous consequences generated by the lack of control of the users of its websites.”

(1)

the Argentinian Supreme Court repudiated a strict liability standard and adopted a test based on actual knowledge and negligence;

(2)

requested judicial review for issuing a notice to take down content except in a few cases of “gross and manifest harm”; and

(3)

rejected any filtering obligation to prevent infringing links from appearing in the future

“a teaspoon solution to an ocean problem.”

University of New South Wales v. Moorhouse [1975] HCA 26 (High Court of Australia 1975)

finding the University of New South Wales liable for authorizing the infringements of those who used the photocopiers it provided in its library

Roadshow Films Pty Ltd v iiNet Limited [2012] HCA 16

holding that iiNet, Australia’s second largest ISP, was not liable for authorizing its customers’ infringement of copyright films downloaded over BitTorrent

200. [...] what the appellant seeks to do, is to impose upon Australian residents for the purposes of this and many other cases, an American legal hegemony in relation to Internet publications. The consequence, if the appellant's submission were to be accepted would be to confer upon one country, and one notably more benevolent to the commercial and other media than this one, an effective domain over the law of defamation, to the financial advantage of publishers in the United States, and the serious disadvantage of those unfortunate enough to be reputationally damaged outside the United States. A further consequence might be to place commercial publishers in this country at a disadvantage to commercial publishers in the United States.

Universal Music Australia Pty Ltd v Sharman License Holdings Ltd [2005] FCA 1242 (Federal Court of Australia 2005)

finding Sharman, who operated the Kazaa filesharing platform, liable for authorizing the infringements of its users