Sunday, November 29, 2015

BGH Accepts Website Blocking Injunctions

Just on this Thursday, the German Federal Supreme Court issued a press release informing that it has decided two long-excepted website blocking cases (I ZR 3/14, I ZR 174/14). Although we still have to wait couple of months for the text of the decision, there are several interesting aspects that are clear already:
  • First, the Court accepted privately litigated IP website-blocking in Germany. Even more, the Court - similarly as the Austrian Supreme Court in UPC Telekabel and the English High Court in Cartier v Sky - recognized that the availability of this remedy is compulsory under Art. 8(3) InfoSoc Directive. 
  • Second, the Court has effectively corrupted its own previous case-law on adequately-causal contribution to the infringements, since it seems to claim that even an access provider contributes to infringements of third parties. The German scholars who (for many good reasons) argued that Stoererhaftung converges with the tort-law might get unpleasantly surprised by this proposition. Just try to imagine that this broadly read adequate-causality is one day implemented in tort-law ..
  • Third, the Court seems to have decided that the injunction is only reasonable if the access provider is the last enforcement resort, i.e. the right holders tries to enforce his rights against the real infringers first (websites or its hosts) or if such direct enforcement seems without any success from the outset ("Nur wenn die Inanspruchnahme dieser Beteiligten scheitert oder ihr jede Erfolgsaussicht fehlt und deshalb andernfalls eine Rechtsschutzlücke entstünde, ist die Inanspruchnahme des Access-Providers als Störer zumutbar."). For these purposes, the right holder should take all reasonable steps, including commissioning of the investigation by a specialized firm or instituting an investigation before the state authorities ("Bei der Ermittlung der vorrangig in Anspruch zu nehmenden Beteiligten hat der Rechtsinhaber in zumutbarem Umfang - etwa durch Beauftragung einer Detektei, eines Unternehmens, das Ermittlungen im Zusammenhang mit rechtswidrigen Angeboten im Internet durchführt, oder Einschaltung der staatlichen Ermittlungsbehörden - Nachforschungen vorzunehmen."). Since this effort could not have been shown in these cases, the Court eventually rejected the injunction.
  • Fourth, unlike the Dutch court(s), BGH seems to fully follow the CJEU on the low requirement for the effectiveness of the website blocking measures.
Above all, I am really curious how the Court will make this operational in the German context where claims for injunctions have their consequences even prior to a court decision, so the obligation of the access provider to block would be usually created prior to an order (upon a cease and desist letter). If this would be the case, huge potential issues with the freedom of expression of the users and website owners lie ahead. Stay tuned!

Wednesday, October 28, 2015

New CJEU Case On Injunctions Against an Operator of an (Offline) Marketplace

UKIPO informs that the Supreme Court of the Czech Republic just referred the following questions to the Court of Justice of the European Union (Tommy Hilfiger Licensing C-494/15):

Is a person with a lease of premises in a market, who provides stalls and pitches on which stalls may be placed to individual market-traders for their use, an intermediary whose services are used by a third party to infringe an intellectual property right within the meaning of Article 11 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights?

Is it possible to impose on a person with a lease of premises in a market, who provides stalls and pitches on which stalls may be placed to individual markettraders for their use, measures, as provided for in Article 11 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, under the same conditions as those formulated by the Court of Justice in its judgment of 12 July 2011 in Case C-324/09 L’Oréal and Others v eBay and Others with regard to the imposition of measures on the operators of an online marketplace?
This sounds like a very interesting case. The website of the Czech Supreme Court unfortunately does not contain any detailed information at this point, so I need to file a formal request for information. I will report more details as soon as I obtain them. In any case, from the questions referred, I consider the second to be a more interesting one. Unlike some other esteemed colleagues, I don't have a slightest doubt that the CJEU will accept that even an operator of an offline market place is an intermediary in sense of Art. 11 of the Enforcement Directive. In Frisdranken, one of the Advocates General already accepted that even an offline intermediary such as technical manufacturer who fills cans with the beverage can be seen as such an intermediary.

Stay tuned!

Friday, September 18, 2015

Personal Update (Blogging Continues)

Dear readers,
as you might have noticed, the last couple of months were rather quiet on this blog. But don't worry, I am still alive (actually, more sporty than ever!) and plan to continue blogging. It was just the time of running my doctoral thesis finish line, which 'sucked' all my free time and sometimes even my usual craving to write. The thesis was submitted and when the resulting publication is out, I will surely let you know. In any case, the big news is that beginning the next month, I am moving on to a new academic role and thus step-by-step even to a new country. I will be joining the great team of researchers at the University in Tilburg in the Netherlands, where I was offered the position of Assistant Professor in Intellectual Property as a joint appointment of the Tilburg Institute for Law, Technology and Society (TILT) and the Tilburg Law and Economics Center (TILEC). So, of course, I will continue to focus on technologies, intellectual property and innovation.
Please stay tuned!
Best Wishes from Tokyo,

Thursday, July 9, 2015

BGH: (Some) Framing Does Not Infringe Copyright

Following BestWater C-348/13 preliminary reference, the German Federal Supreme Court today decided that the framing of a third party content does not amount to copyright infringement in the situations when the content was authorized on the source. The Court, however, explicitly left open what happens if the source is not authorized, referring to the pending CJEU case of GS Media C-160/15 (although its reading seems to be that such constellation would lead to an infringement). So far, only the press release is available.

Interestingly enough, the Court also seem to have considered the question I posed on this blog just after BestWater decision was handed by the CJEU. Namely, may the German court provide for exclusive rights beyond the European Union law? The German Federal Supreme Court seems to think it may not. Here is what the PR says:

"Eine solche Verknüpfung verletzt auch bei einer im Blick auf Art. 3 Abs. 1 der Richtlinie 2001/29/EG zur Harmonisierung bestimmter Aspekte des Urheberrechts und der verwandten Schutzrechte in der Informationsgesellschaft*** gebotenen richtlinienkonformen Auslegung des § 15 Abs. 2 UrhG* grundsätzlich kein unbenanntes Verwertungsrecht der öffentlichen Wiedergabe."
This can be roughly translated as follows:

"Such a link, in the view of Article 3 para. 1 of Directive 2001/29/EC and the required Union-conform interpretation, also does not infringe any unnamed exploitation right of public communication based on § 15 Abs. 2 German Copyright Act ."
This could (we need to see the full text first) mean the German Federal Supreme Court is reading the second part of the Svensson ruling as pre-empting extension of such national exploitation rights; the reading that I advocated several times on this blog.

Wednesday, June 17, 2015

ECtHR: Imposing Strict Liability for User Comments is Compatible with Freedom of Expression

Yesterday, the European Court of Human Rights delivered its Grand Chamber ruling in Delfi AS v Estonia (64569/09), a case involving an online publisher (Delfi) who was sued for third party anonymous comments on his website. 

Delfi complained to ECtHR that Estonia allegedly infringed upon its freedom of expression when Estonian courts hold it fully liable for illicit comments of unknown users, even prior to any notification about their existence. The ECtHR now confirmed that the finding of the First Section, which found no violation of the Convention, is just fine and dandy also with the Grand Chamber. According to the Grand Chamber, imposing strict liability on intermediaries such as news portal for third party comments is completely proportionate interference with their freedom of expression and does not set any wrong incentives.

There is much to be said about the decision, but maybe next time. Needles to say, I find it deeply disappointing, not only because of the outcome, but for its utterly unconvincing argumentation, selective reasoning, one sided view and complete ignorance of legitimate concerns of the third party interventions.

In the spirit of the judgement, therefore I only reproduce below those passages that I found telling.

On this basis, and having regard to the freedom to impart information as enshrined in Article 10, the Court will thus proceed on the assumption that the Supreme Court’s judgment must be understood to mean that the subsequent removal of the comments by the applicant company, without delay after publication [not notification], would have sufficed for it to escape liability under domestic law. Consequently, and taking account of the above findings (see paragraph 145) to the effect that the applicant company must be considered to have exercised a substantial degree of control over the comments published on its portal, the Court does not consider that the imposition on the applicant company of an obligation to remove from its website, without delay after publication, comments that amounted to hate speech and incitements to violence, and were thus clearly unlawful on their face, amounted, in principle, to a disproportionate interference with its freedom of expression. [§ 153]

The Court attaches weight to the consideration that the ability of a potential victim of hate speech to continuously monitor the Internet is more limited than the ability of a large commercial Internet news portal to prevent or rapidly remove such comments. [§ 158]

that the rights and interests of others and of society as a whole may entitle Contracting States to impose liability on Internet news portals, without contravening Article 10 of the Convention, if they fail to take measures to remove clearly unlawful comments without delay [after their publication, not notification], even without notice from the alleged victim or from third parties [Yes, this means that imposing strict liability on printers for content of books also appears just fine]. [§ 159]
The Grand Chamber decided this with 15 [for] : 2 [against]. The two voices of sanity are Judge Sajó and Judge Tsotsoria. I hope that their dissent, in the test of time, will prove more convincing in shaping the debate. Just to illustrate why they disagreed with the majority:

The duty to remove offensive comments without actual knowledge of their existence and immediately after they are published means that the active intermediary has to provide supervision 24/7. For all practical purposes, this is absolute and strict liability, which is in no sense different from blanket prior restraint. No reasons are given as to why only this level of liability satisfies the protection of the relevant interests. [§ 35]

Congrats Strasbourg! I am sure that the Russian censor is already keen on testing the boundaries of the ruling.
  • More information on the case here and here.

Monday, June 8, 2015

Why Open WiFi is Endangered in Europe? And Why it Matters? An Open Letter

Technology that helps to save human lives is now endangered by the copyright enforcement.
In World Disasters Report 2013, the Red Cross celebrated an innovation developed by Dr. Paul Gardner-Stephen from Flinders University. His invention was designed to ease decentralized communications between individuals in absence of any usual connectivity. This radically helps to improve on-the-ground fight against humanitarian crises occurring in the aftermath of disasters. The new mode of communication is based on a simple technology that is widely available - open WiFi. Open wireless allows for free flow of data between rescue teams and/or victims, even in absence of any “outside-world connection”, such as Internet or mobile networks, that are often unavailable.

But even if the regular connectivity is available, open wireless can be crucial. During 2012 earthquake in northern Italy, local authorities requested the general public to remove passwords from their private WiFi networks in order to allow the widest possible emergency access to communications networks. Similarly when in 2007, the 40-year old bridge in Minneapolis collapsed into the river, open WiFi played an important role in managing the response and recovery efforts. In 2012, when Hurricane Sandy wreaked havoc in New York, open wireless networks again became a crucial form of communication infrastructure.

But saving lives goes beyond “mere” disaster management. General Motors, for instance, is working on Wi-Fi-equipped cars to detect pedestrians and cyclists as way of preventing accidents. “This new wireless capability could warn drivers about pedestrians who might be stepping into the roadway from behind a parked vehicle, or bicyclists who are riding in the car’s blind spot,” noted Nady Boules from General Motors for Gizmag yet in 2012.

These and other similar innovations are now under threat in Europe. And this is no exaggeration. European sky of wireless hotspots might soon become password-protected by default in order to prevent copyright infringements (German one already is for a while). It is the Luxembourg judges at the Court of Justice of the European Union who hold the keys from future.

In a recent preliminary reference of McFadden C-484/14, the judges have to decide whether password-protection is a legitimate enforcement technique and whether it is to be expected from the operators of open wireless or not. Since the procedure before the CJEU (unlike ECtHR) does not allow participation of third parties, the broad coalition of organizations is now publicly addressing an open letter to the CJEU demonstrating that general requirement of password protection of open wireless would constitute an obstacle to legitimate trade (Art. 3(2) of the Enforcement Directive, Article 41(1) TRIPS Agreement) and should be outlawed. The brief (co-authored by me) gathers very strong evidence of socially beneficial uses of open wireless that will be entirely crippled or at least partially prevented if password locking becomes a standard.

The decisive legal framework is in Article 8(3) of the InfoSoc Directive prescribing the Member States to grant copyright holders a right to assistance against intermediaries whenever are their services used by third parties to infringe. In answering the demands of right holders, it does not matter whether an intermediary misbehaved. His factual and legal position to prevent third party wrongdoing alone suffices to establish a course of action. Whether a particular type of assistance is permissible or not, thus does not turn on much else than how good policy it is for the society at large. Fighting copyright infringements is surely legitimate, but as any optimal enforcement policy, it should not be carried out at all costs, especially when the social costs outweigh private benefits. The Luxembourg judges have undeniably a track record of understanding this basic proposition of optimal enforcement (e.g. Sabam C-360/10, Scarlet Extended C-70/10).

Our 21st century needs 21st century infrastructure. Closing open WiFi would be a step back, and not a leap forward. Intellectual property enforcement should spur economic progress and not lead to devaluation of the society. It is hoped that the Court of Justice of the European Union will be again mindful of this when giving its answers in McFadden. Please readthe open letter yourself to consider whether also your organization (commercial, academic or non-profit) would like to support it by joining the signatories.

Cross-posted with Stanford's CIS blog.

Wednesday, March 25, 2015

Tank Man hits the Constitutional Court: Copyright and Freedom of Expression

Regular readers of Kluwer Copyright blog would be familiar with an earlier decision by the Slovak Supreme Court about unauthorized use of a famous Tank Man picture in the Slovak media. Now the case hit the Slovak Constitutional Court, thus providing it with the first ever opportunity to discuss the interface of copyright and freedom of expression.

Some background first. In 1968, when Soviets invaded Czechoslovakia following the Prague Spring, the Tank Man picture splashed across the front page of major newspapers globally. It showed a bare-chested man in front of the occupiers tank who was ready to be shot for his freedom (see on the left). Decades later, the Slovak courts had to decide if a local tabloid newspaper – Nový Čas – could use the “Tank Man” picture repeatedly in 2003 and 2005 without permission and attribution when reporting on ’68 events.

Heirs of Mr. Bielik’s sued jointly for an infringement of their father’s economic and moral rights to the picture, claiming 4000 EUR as a non-material satisfaction and right to information. Newspaper Nový čas, the defendant, disputed even the copyright protection of the “Tank Man”, arguing that the photography constitutes “daily news”, which is excluded from copyright protection. Secondly, the defendant argued that even if the photo is protected as a work of art, newspapers shall be free from using it based on exception for news reporting (Section 35, Article 5(3)(c) of InfoSoc Directive).

The newspaper has lost in all the instances, including the Supreme Court. The courts  basically rejected all the arguments of the defendant. The photo does, in their opinion, constitute a protected work of art because it “provides a testimony” and its uniqueness comes from “capturing immediate reaction of E.G. [person standing in front of the tank]” and showing his “expression of anger, despair and helplessness”. The courts further rejected the applicability subject matter exclusion for daily news and of the news reporting exemption, arguing that photos, unlike news per se or public speeches, were not intended as a subject matter covered by this exemption. In the flow of denouncing the behavior of the defendant, the second instance court found that not only wrong attribution constituted an infringement upon moral rights, but also the quality changes made to photograph and setting in which their appeared – a tabloid newspaper – did .

The newspaper did not give up and decided to file a compliant with the Constitutional Court, arguing that these court decisions infringed upon its freedom of expression. Not very surprisingly, the newspaper lost again. This time, however, leaving behind an interesting case-law on the interface of the copyright and freedom of expression (II. ÚS 647/2014-22). The Constitutional Court, similarly as other courts, accepted that “since the author acquires a possibility to prohibit third parties from sharing his work, his rights must be viewed as a general form of restriction on freedom of expression” (§ 30).

It then went on to examine whether the interference was “prescribed by the law” following closely copyright norm and its application in order to find out whether a) time-relevant norm was applied, b) the photograph falls under the subject matter, c) none of the exclusions, such as one for daily news, applies, d) the defendant acted within the scope of rights, e) and none of the exceptions and limitations, especially exception for informing on current events, applies.

The Court explained the two-fold rationale of this step-by-step approach as follows: “If the ordinary court would rely on plausible interpretation in the step of legality, but the proportionality test would subsequently unveil the conflict of the result of such interpretation with the Constitution, the Constitutional Court could impose the interpretation of the copyright law that is more compliant with the Constitution. The detailed analysis of an interference on the level of legality therefore also serves the aim of identifying the possible points of leakage of the fundamental rights into the ordinary law of copyright, which could then accommodate the constitutionally conform interpretation” (§ 27).

Having come to the conclusion that interpretation of the Courts was plausible, the Court then turned to the proportionality exercise, i.e. whether an interference: a) pursues a legitimate aim, b) is necessary and c) proportionate in the strict sense.

The Court identified the legitimate interest in the copyright protection in Article 43 of the Constitution, which provides that
Article 43
(1) Freedom of scientific research and in art are guaranteed. The rights to the results of creative intellectual activity are protected by law.
(2) The right of access to the cultural heritage is guaranteed under conditions defined by law.  

Here is how it explained at length the meaning of the clause (§§ 43-45):
“The Constitution, in its Article 43(1), creates a framework for freedom of scientific research and freedom of art. Unlike foreign legislations, but also the federal Charter, the systematics of the Constitution clearly and progressively formulates a strong bond between protection of intellectual creations on one hand, and freedom of scientific research, freedom of art and right to cultural participation on the other. The Constitution thus binds the state to create certain material conditions for inventors and creations, in order to promote freedom of art and scientific research. It does so by lending them various rights to the results of their intellectual creations in the public interest. It is up to the state to decide how it will materialize this obligation. The copyright law is just one of the possible means. In any case, any provided protection is not the aim in itself, but only means to achieve the societal goal of progress of science and art [..] If respecting the constitutional minimum of this protection, it is up to the legislator to determine the exact contours of rights to the results of intellectual creations. In case of moral rights, next to Article 43, it is important to keep in mind also possible application of the authors interest in protection of his human dignity, honour, reputation and name according to Article 19(1) of the Constitution. [..] The Constitution, by means of Article 43, does not guarantee a possibility to benefit from any use of such creations [..] Article 43(2) of the Constitution limits the means of protection provided by guaranteeing the right of public to access of its cultural heritage. The provision is a reflection of Article 27(1) of the Universal declaration on human rights, according to which everyone has the right freely to participate in the cultural life of the community, to enjoy the arts and to share in scientific advancement and its benefits. The public interest is thus not only the reason for creation, but also a source of limitation of the protection provided to inventors and creators. The legislative formulation of this principle in the copyright law is time limitation of the rights of the author, their clear scope and also exceptions and limitations.”

The Court then recognized that after a grant by legislator, the economic exclusive rights also enjoy the protection as a form of property within the contours prescribed by the legislator (§ 45). The decision thus curiously coincides with similar ideas within the recent UN Special Rapporteur Farida Shaheed’s report on copyright policy and the right to science and culture, which was, however, published several months after the decision of the Constitutional Court was decided, but not yet made public.

Looking at the Copyright Act, the Court noted that the exclusion of the daily news has its basis in the freedom of expression. “The aim is to exclude, from an exclusive right of a single person, the kind of objects, which by their nature, could unreasonably choke the public discussion”, since “the freedom of expression here emanates into the ordinary law of copyright” (§ 35).

The Court also found the values of the freedom of expression behind the copyright limitation for reporting on current news. It held that “The Copyright Act limits, in favor of the freedom of expression, the rights of an author to object to the copyright relevant use of its photographs whenever the society needs to inform about the current events, provided that some other conditions are met. Since this provision is a point where the freedom of expression emanates into the copyright law, the interpretation used does not have to be anyhow restrictive, but to the contrary, must follow a societal aim, which it is supposed to serve” (§ 39).

After establishing that the interference was justified, the Court examined also whether it was necessary in the democratic society. It opined that an obligation to pay for use of the picture helps the author to secure his living because he does not need to rely on the support from “the powerful”, but can freely exploit his creations on the market. In a situation where the right holder was willing to license it and there was no issue of time pressure, the freedom of informing about the events of 1968 will not be jeopardized by the fact that the newspapers need to secure a consent from the respective right holder before they use one of the iconic pictures of the happenings. Given that non-material satisfaction of 4000 EUR is not high and other obligations imposed by the court are not excessive, the interference was deemed proportionate and the complaint rejected as unfounded.

The Court also noted, however, that the interpretation of the second instance court, according to which moral rights could be infringed by mere inclusion in the tabloid newspaper, should be viewed critically. It stressed that: “Post-mortal protection of an author may not prevent any use of a work, which the author would not wish to see. He can object only to those kind of uses of his work, which have detrimental effect to his work objectively, and not only according to his subjective feeling. The extent of the post-mortal protection, and also means of its realization have to be interpreted in light of the freedom of expression. Its aim should be to enable the widest possibility of an honest societal discourse”. Given that the complainant infringed the rights already by not attributing the author, there was no need for the Court to step in.

The Court concluded by reminding that “In assessing the proportionality, it is important to take into account also how did the copyright law restrict the freedom of expression. An interference is of a different systematic intensity, if it occurs “only” by situational grant of constitutionally non-conform remedies than in case of repeated grant of protection over the object, which constitutionally unacceptably limits the freedom of expression in every circumstances. Multi-layered construction of the copyright law suitably allows to balance the individual cases of constitutional unreasonableness on its several levels”. Thus hinting that if simple situational denial of remedies can help to satisfy the Constitutional guarantees of the freedom of expression, there is no need to put the entire subject matter into the question.

Only the time will tell the value of this decision.