Copyright: communication to the public

The Advocate General (AG) has opined that peer-to-peer (P2P) file-sharing search engine operators communicate copyright works to the public if they fail to prevent access to a work despite being aware the copyright holder has not consented to its availability.

Background

EU member states must provide authors with the exclusive right to authorise or prohibit any communication to the public of their works 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 (Article 3(1), Copyright Directive (2001/29/EC)).

Article 11 of the Intellectual Property Enforcement Directive (2004/48/EC) provides that EU member states shall also ensure that rights holders 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.

Article 8(3) of the Copyright Directive (Article 8(3)) contains a provision to the same effect.

The European Court of Justice (ECJ) has given guidance on the availability of injunctions under Article 8(3) in Svensson and others v Retriever Sverige AB and GS Media BV v Sanoma Media Netherlands BV and others (see News briefs "Linking and framing copyright material: guidance at last"; "Hyperlinking to unauthorised content: ECJ imposes conditions").

Member states must ensure that the service provider is not liable for the information stored at the request of a recipient of the service, on condition that one of the following applies:

• The provider does not have actual knowledge of illegal activity or information.
• The provider, on obtaining this knowledge or awareness, acts expeditiously to remove or to disable access to the information (Article 14(1), E-commerce Directive (2000/31/EC)) (Article 14(1)).

Facts

A Dutch foundation, B brought proceedings in the Netherlands against two internet service providers (together, Z), seeking an order that they should block their subscribers from using a website, T, which was a search engine for P2P file-sharing. B alleged that T was facilitating large-scale copyright infringements.

The Dutch Supreme Court referred to the ECJ on whether there was a communication to the public in these circumstances so that T was a primary infringer, and if not, if an injunction could be granted against an intermediary facilitating the acts of third parties in this way.

Decision

The AG considered that T was a primary infringer so it was not necessary to consider the intermediary question.

When a website operator made it possible to find copyright works that were offered for sharing on a P2P network, it was communicating a work to the public within the meaning of Article 3(1) of the Copyright Directive, as long as the operator was aware that a work was made available on the network without the rights holder's consent and it failed to take action to make access to that work impossible.

P2P networks operated by means of a de-centralised structure, with each peer (the computer of a network user) acting not only as a recipient of information, but also as a server which stored information. Not all of files were being shared unlawfully, but about 90-95% were being made available in infringement of copyright. Although technically possible to find such files without using a search engine such as T, the average internet user would need to use one.

Potential users of this kind of network were a "public", being an undefined and significant number of people. Where the rights holder had not consented to the work being communicated to that group of people, they constituted a new public.

Although users were intentionally making works available to each other, this was only made possible by search engines like T. Intermediaries did not control whether a particular file appeared on the network and had no decisive role if the search engine was unaware that a work was being made available illegally or if, having been informed of this, acted in good faith to rectify the matter. However, if it was aware and failed to block access to the work, it might be regarded as intending expressly to allow the illegal making available of that work to continue.

Actual knowledge was necessary, for example because the rights holder had notified the search engine that works were appearing illegally on the site. The site should not be presumed to have this knowledge, as this would amount to imposing an obligation on it to actively monitor the indexed content.

Here, the intervention of the search engine was necessary and deliberate in accordance with the criteria laid down in GS Media and therefore the search engine operator should be considered as, together with the network users, originating the making available of copyright works to the public without authorisation from the rights holders, provided they were aware of the illegality and took no action to block access to those works.

Search engines such as T were used by third parties to infringe copyright and so fell within the concept of intermediaries in Article 8(3). Blocking access to the T site would affect T as well as its users.

Article 8(3) was designed to remedy a situation where the website operator itself had been held liable for copyright infringement using the services of the intermediary to which the injunction was addressed. T was not in this position, as it was not itself making works available to the public without copyright authorisation. It was therefore only indirectly liable. This liability was a matter for national law, as it had not been the subject of EU harmonisation. Although T might have fallen within Article 14(1), if it was merely hosting the offending information and had no knowledge of it, the evidence showed that it did have knowledge and chose not to remove or disable access to the information. So, Article 14(1) did not apply.

Z had argued that blocking the site would be ineffective because it could easily be circumvented by informed internet users by using other search engines. However, blocking would make it difficult or impossible for most users to find and download the infringing content. The same blocking measures could also be taken against other search engines. Whether the blocking was proportionate to the seriousness of the copyright infringements was for the national court to determine.

Comment

The AG distinguished this case from Svensson and GS Media because those cases concerned hyperlinking where the works had already been placed on the internet with the consent of the copyright owner. In contrast here the user's sharing on the P2P network was an original communication to the public. To the extent that T was aware that a work was made available on the network without the rights holder's consent and failed to take action to make access impossible, it participated as a primary infringer in the user's communication to the public.

In GS Media the ECJ held that those who post hyperlinks for profit should be presumed to be aware of the possibility that the linked-to copies are unauthorised. Here, the AG considered that the presumption of knowledge should not apply to P2P indexers, but they should be held to a knowledge and removal standard similar to that in the hosting provisions of Article 14(1).

Case: Stichting Brein v Ziggo BV and another C-610/15.

First published in the April 2017 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.