In a significant series of three decisions handed down on 12 July 2012, the French Supreme Court ruled that an operator offering a hosting service has no obligation to ensure that hosted content that has been previously notified is not later re-posted online by its users[1]. At first sight, the solution adopted by the French Supreme Court seems simple and sensible as it merely draws the consequences of applicable legal provisions[2], i.e. items 2°, 5° and 7° of Paragraph I of Article 6 of Law no. 2004-575 of 21 June 2004 on Confidence in the Digital Economy (“LCEN”). To rule otherwise would lead to imposing on website operators a general obligation to monitor that is prohibited by the LCEN and by Directive no. 2000/31/EC of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (“e-commerce Directive”) that the LCEN transposed into French law.
Yet, the message of the French Supreme Court becomes all the more relevant and significant when it is placed in its context. The re-posting of content that is identical or similar to content which was previously notified and deleted was, indeed, one of the topics giving rise to the most uncertainties before the decisions of 12 July 2012.
1. Situation before 12 July 2012
First, one ought to recall that the LCEN did not identically transpose the e-commerce Directive. Pursuant to Article 14 of the Directive, “the provider, upon obtaining […] knowledge or awareness [of the illicit content], [must act] expeditiously to remove or to disable access to the information“. Yet, the e-commerce Directive does not specify how the provider becomes aware of the illicit nature of content.
This gap was filled in by the LCEN which established a presumption according to which the operator is aware of the illicit nature of the content when such content is notified to it. Going even further, Article 6-I 5° of the LCEN has very precisely set the conditions to be met by such a notice[3]. These obligations imposed on the rights owners wishing to have videos or images removed from a website compensate for the obligation imposed on the hosting providers to promptly remove content.
In this respect, it is important to provide hosting providers with the means to meet their obligation to act promptly.[4] Failure to do so was sometimes strictly punished when content is removed after more than a few days[5]. One of the requirements for a complete notice under Article 6-I 5° of the LCEN relates to the precise location of the notified content because, without this information, the hosting provider cannot in most cases identify and remove the litigious content.
But what is the exact effect of a notice complying with the legal requirements? Is the obligation to remove content promptly met as soon as the provider removes the notified content or must the provider also ensure that the same content is not later re-posted? On websites hosting videos in particular, some Internet users did not hesitate to re-upload videos deemed to be infringing on the website from which they had just been removed.
Various decisions held hosting providers liable for letting users re-post online content identical to the content that had previously been notified and that allegedly infringed the same intellectual property rights without requesting a new notice[6]. Some courts even blamed hosting providers for not having implemented sufficient measures that would have prevented the re-posting of the litigious content on the ground that, without such measures, access to the litigious content was not really blocked[7].
However, this position is questionable insofar as it contradicts the very wording of Article 15 of the e-commerce Directive, which prohibits Member States of the European Union from imposing on hosting providers a general obligation to monitor the content of their website[8]. Furthermore, these decisions may result in “disproportionate burdens on intermediaries“[9], which would also be unrealistic in light of the volume of information to be filtered and what is technically feasible.
French case law was, in fact, not unanimous on this point as other courts, observing differences between the re-posted content and the similar content that had initially been notified, refused to hold the hosting provider liable for not having prevented the re-posting[10]. These were notably cases where the videos were not entirely identical (for instance, complete videos instead of trailers or extracts).
2. Contribution of the decisions of 12 July 2012
Between the two positions, the French Supreme Court ruled in a symbolic manner by quashing in light of this sole ground some of the decisions mentioned above, which had held the technical intermediaries liable for letting notified content be re-posted online. These cases concerned either films that could be viewed or downloaded through links available on the Google Videos service or reproductions of photographs on the website aufeminin.com and used by Google Images, in both cases without the consent of the rights owners concerned.
Pursuant to the decisions of 12 July 2012, the obligation imposed on hosting providers to promptly remove or block access to re-posted content can only result from a new notice meeting the requirements of Article 6-I 5° of the LCEN. Indeed, the French Supreme Court recalls that such a notice is required for the hosting provider to have actual knowledge of the illicit nature and location of the content in question, without which no action can effectively be implemented.
Thus, the French courts cannot impose on hosting providers obligations meant to prevent the re-posting of allegedly illicit and previously notified content. The Supreme Court confirms that these injunctions fall under the scope of the prohibition of general obligations to monitor laid down in Article 6-I 7° of the LCEN, which transposed into French law Article 15 of the e-commerce Directive. Even though this is merely a reminder of the law, the French Supreme Court mentions that intermediaries do not have any obligation to actively seek illicit content (even though a lot of them do so anyway).
This being said, there is no doubt that rights owners will continue to request the broadest possible injunctions against website operators by relying on the possibility that the French Supreme Court allowed the lower courts to “order a measure of such a kind as to prevent or end the damage related to the current content of the website in question“. Nevertheless, the decisions of 12 July 2012 should encourage lower courts to limit the extent of the injunctions which they may possibly order. The concept of “current content” that has been introduced has a restrictive purpose and should impede preventive measures that would not only concern the content displayed on the day the injunction is imposed on the website in question.
The French Supreme Court seems to seek an acceptable and feasible compromise for both rights owners and website operators. The lower courts will have to implement a proportionality criterion when ordering a blocking measure. Such a measure, which will necessarily be temporary, must remain proportionate to its purpose.
The French Supreme Court thus follows the indications of the Court of Justice of the European Union, which refers to Directive no. 2004/48/EC of 29 April 2004 concerning the measures and procedures aiming at ensuring compliance with intellectual property rights, in ruling that injunctions that aim to prevent infringements of intellectual property rights must be effective, proportionate and dissuasive. The European Court held that the European regulations do not allow national courts to enjoin an Internet access provider to implement a preventive filtering system of all the electronic communications passing through its services that would indistinctly apply to all its customers, at its exclusive expense and without any limitation in time. National authorities are thus prohibited from adopting measures that would force an operator to actively monitor all the data of all its users to prevent any future infringement of intellectual property rights[11].
3. What’s next?
One may have to fight a battle more than once to win it. This seems the case here, whether from the standpoint of the rights owners (who have to send a notice each time content infringing their rights is posted online) or of the website operators (who must remove the content upon obtaining actual knowledge of its existence on the website). In this respect, the fight against infringements of intellectual property rights is a never-ending process as it is very difficult to prevent Internet users from infringing intellectual property rights by re-posting content that was previously removed by operators.
A significant number of hosting providers already implement proactive measures to fight against the illicit activities of the users of their websites. It is generally possible to easily and quickly report online the existence of content that may infringe intellectual property rights and request such content to be removed. Exceeding these measures, the main online video platforms offer the possibility for rights owners to provide the print of the videos concerned for the operator to attempt to prevent the re-uploading of content it may identify as illicit by comparing it to the print.
The decisions of 12 July 2012 confirm the fact that hosting providers do not have the obligation to implement such measures as it is the rights owners’ duty to send the necessary notices. Nevertheless, these measures are welcome when they are technically possible and show the good faith of the operators of websites which do not seek to benefit from counterfeiting. These decisions should thus not be interpreted as encouraging website operators to stop applying such measures. They are, indeed, frequently mentioned by courts as being positive and lead courts to refuse to order against responsible and diligent operators unnecessary injunctions due to them being redundant with these measures, or less efficient[12].
Furthermore, European authorities are seeking to reduce, if not definitively end, the practices of intellectual property rights infringement. The European Commission launched, on 4 June 2012, a public consultation on procedures for notifying and acting on illegal content hosted by online intermediaries, the purpose of which was to gather the opinion of the different parties concerned on the best practices in this field[13]. The way rights owners should inform hosting providers of illicit content and the reaction that these intermediaries should adopt are part of the addressed issues. This consultation closed on 11 September 2012 but its results are not yet known. A legislative development on this point, in particular a revision of the e-commerce Directive, should not be excluded.
Christine Gateau is a Partner at Hogan Lovells. She is a Litigation partner in the firm’s Paris office. Christine specialises in product liability litigation and in claims arising from commercial contracts, especially in the TMT and energy sectors.
Christelle Coslin is a Senior Associate at Hogan Lovells. She is part of the Litigation practice of the Paris office of Hogan Lovells and regularly advises clients on jurisdiction, choice-of-law and international litigation issues.
This article was first published in the Hogan Lovell’s Global Media and Communications Quarterly.
[1] French Supreme Court, 1st Civil Chamber, 12 July 2012, no. 11-13.669 (Google Inc. and others v. Bac Films and others), no. 11-13.666 (Google Inc. and others v. Bac Films and others) and no. 11-15.165 and 11-15.188 (consolidated appeals, Google Inc. and Aufeminin.com and others v. André Rau, H & K)
[2] “the prevention imposed on the Google companies to prevent the infringing videos from being re-uploaded, without them having been informed through another regular notice that is yet required for them to obtain actual knowledge of its illicit nature and location and be required to promptly act to remove it or block access to it, leads to imposing on them, beyond the mere possibility to order a measure of such a kind as to prevent or end the damage related to the current content of the website in question, a general obligation to monitor the images they store and seek illicit postings and ordering them, in a disproportionate manner compared to the objective sought, to implement a blocking device without any limitation in time, [as a consequence] the Court of Appeal breached the abovementioned provisions” (Quotation taken from decision no. 11-13.669, 2nd ground, identical to decision no. 11-13.666, 2nd ground)
[3] Pursuant to Article 6-I 5° of the LCEN, “awareness of the litigious facts is presumed to be obtained by the persons referred to in point 2 when they are notified the following elements: – the date of the notice; – if the notifying party is a natural person: last name, first names, profession, domicile, nationality, date and place of birth; – if the claimant is a legal entity: its corporate form, name, registered office and legal representative; – the name and domicile of the recipient or, if it is a legal entity, its corporate name and registered office; – the description of the litigious facts and their specific location; – the reasons why the content must be removed, including the relevant legal provisions and factual justifications; – the copy of the correspondence sent to the author or editor of the litigious information or activities requesting their interruption, removal or modification, or proof that the author or editor could not be contacted“
[4] The French courts frequently recall the importance of this provision and the necessity to include specific indications in the notice; see, in particular, French Supreme Court, 1st Civil Chamber, 17 February 2011, no. 09-67.896, Nord-Ouest Production and others v. Dailymotion
[5] For a recent example, see Paris Civil Court, 29 May 2012, TF1 and others v. YouTube
[6] Paris Court of Appeal, 9 April 2010, Google v. Flach Films and others; Paris Court of Appeal, 3 December 2010, Dailymotion v. Zadig Production; Paris Court of Appeal, 14 January 2011, Google Inc. v. Bac Films and others; Paris Civil Court, 11 June 2010, La Chauve Souris and 120 Films v. Dailymotion; Paris Civil Court, 13 January 2011, Calt Production v. Dailymotion; Créteil Civil Court, 14 December 2010, INA v. YouTube
[7] Paris Court of Appeal, 4 February 2011, Google Inc. and Aufeminin.com and others v. André Rau, H & K
[8] Pursuant to Article 15(1) of the e-commerce Directive, “Member States shall not impose a general obligation on providers, when providing the services covered by Articles 12, 13 and 14, to monitor the information which they transmit or store, nor a general obligation actively to seek facts or circumstances indicating illegal activity“
[9] Report of the European Commission of 21 November 2003 on the application of the e-commerce Directive, COM(2003) 702 final, p. 15
[10] See, notably, Paris Commercial Court, 27 April 2009, Davis Film v. Dailymotion; Paris Civil Court, 3 June 2011, SACEM v. Dailymotion; Paris Civil Court, 22 September 2009, ADAMI and others v. YouTube
[11] CJEU, 24 November 2011, Scarlet Extended SA v. SABAM, no. C-70/10; CJEU, 26 February 2012, SABAM v. Netlog NV, no. C-360/10
[12] See Paris Civil Court, 13 September 2012, TF1 and others v. Dailymotion, which acknowledges the reliability of the solutions implemented by the website; see also, Paris Civil Court, 29 May 2012, mentioned above
[13] See http://ec.europa.eu/internal_market/e-commerce/notice-and-action/index_fr.htm and
