Graham Smith offers his take on the CJEU decision in UPC Telekabel v Constantin Film
The CJEU has issued its decision on copyright site blocking injunctions in UPC Telekabel v Constantin Film (Case C-314/12). The Court's core rulings are in some respects relatively uncontroversial. However some of its comments may have implications for national court procedures in site blocking cases, particularly around allowing interventions by internet users. The judgment also appears to place a responsibility on ISPs, where they have the ability to choose, to consider whether the site blocking methods that they adopt are compatible with the fundamental rights of users.
The case was referred to the CJEU by the Austrian Supreme Court. The first question was whether someone who makes infringing material available on a web site 'uses' the services of an ISP whose customers seek access to that content, even though the web site itself is not a customer of the ISP.
This is important because under Article 8(3) of the Copyright in the Information Society Directive (2001/29) the national court can grant a blocking injunction only against an intermediary whose services are used by a third party to infringe copyright or a related right. Since in some circumstances the ISP's own customer who accesses the target site may not infringe by doing so, the jurisdictional basis for granting an injunction can rest on showing that the target web site is using the ISP's services to infringe.
The Court had no difficulty in finding that the target web site used UPC Telekabel's services. It relied especially on Recital (59) of the Copyright Directive, which refers to 'an intermediary who carries a third party's infringement'. Nothing in the Directive indicated that a specific relationship between the infringer and the intermediary was required. Therefore an ISP such as UPC Telekabel, which allowed its customers to access protected subject matter made available to the public on the internet by a third party was an intermediary whose services were used to infringe a copyright or related right within the meaning of Article 8(3) of the Copyright Directive. This answer is consistent with English site blocking cases.
The second question that the Court considered arose out of the particular form of injunction that the Austrian court was considering granting against the ISP. In contrast with English blocking injunctions (which always specify the technical method(s) that the ISP must use), the Austrian court was considering an injunction that specified the result to be achieved (forbidding the ISP's customers access to the site) but left it to the ISP to decide what method to use to achieve it. Under Austrian procedure if the rightsowner challenged the ISP's compliance with the order then the ISP could avoid penalties for breach by showing that it had taken all reasonable measures. The Austrian court asked whether such an injunction was compatible with EU law.
It also asked a more general question, whether it was compatible with EU law to require an ISP to take specific measures to make it more difficult for its customers to access a web site containing infringing material if those measures require not inconsiderable costs and can easily be circumvented without any special technical knowledge.
The Court gave a combined answer to these questions. In doing so it differed from the Advocate General, who had considered that an injunction had to specify particular methods. The Court held that the fundamental rights recognised under EU law did not preclude an injunction that specified the result to be achieved where the ISP can avoid incurring coercive penalties for breach of the injunction by showing that it has taken all reasonable measures, providing that:
(i) the measures do not unnecessarily deprive internet users of the possibility of lawfully accessing the information available; and
(ii) those measures have the effect of preventing unauthorised access to the protected subject matter or, at least, of making it difficult to achieve and of seriously discouraging internet users who are using the services of the ISP from accessing the infringing subject matter made available to them, that being a matter for the national authorities and courts to establish.
The Court made clear that, even though measures may not be not capable of leading, in some circumstances, to a complete cessation of the infringements, that did not of itself result in incompatibility with the required fair balance between all applicable fundamental rights. There may be debate in future cases about whether 'serious' discouragement sets a higher efficacy threshold than has been applied hitherto.
The Court considered whether an injunction that specified the result to be achieved rather than specifying specific blocking methods infringed the right to conduct a business guaranteed under the EU Charter.
It constrained the ISP in a manner which restricted the free use of the resources at its disposal because it obliged it to take measures which might represent a significant cost, have a considerable impact on the organisation of its activities or require difficult and complex technical solutions.
However, the Court considered that such an injunction did not seem to infringe the very substance of the freedom of an ISP to conduct a business.
First, the 'results' form of injunction left the ISP to determine the specific measures to be taken in order to achieve the result sought, with the result that the ISP could choose to put in place measures which were best adapted to the resources and abilities available to it and which were compatible with the other obligations and challenges which it would encounter in the exercise of its activity.
Second, such an injunction allowed its addressee to avoid liability by proving that it had taken all reasonable measures. That possibility of exoneration clearly had the effect that the ISP would not be required to make unbearable sacrifices, which the Court considered seemed justified in particular in the light of the fact that the ISP was not the author of the infringement.
However the Court was clearly concerned that the 'results' form of injunction could, because the ISP was free to choose what methods to adopt to comply with the injunction, result in the ISP adopting methods, without the supervision of the court, that drew an inappropriate balance between the rights of copyright owners and those of users.
In order to prevent this, the Court laid down principles which, while directed specifically at the 'results' form of injunction, may have wider implications for court scrutiny over blocking methods, even in jurisdictions such as the UK where the norm is for the court to make orders specifying the blocking method(s) to be adopted.
The Court said that:
· when an injuncted ISP chooses the measures to be adopted in order to comply with that injunction, it must ensure compliance with the fundamental right of internet users to freedom of information.
· in this respect, the measures adopted by the ISP must be strictly targeted, in the sense that they must serve to bring an end to a third party's infringement of copyright or of a related right but without thereby affecting internet users who are using the provider's services in order to lawfully access information. Failing that, the provider's interference in the freedom of information of those users would be unjustified in the light of the objective pursued.
· it must be possible for national courts to check that that is the case. In the case of a 'results' injunction, if the ISP adopted measures which enabled it to achieve the required prohibition, the national courts would not be able to carry out such a review at the stage of the enforcement proceedings if there is no challenge in that regard.
· accordingly, in order to prevent the fundamental rights recognised by EU law from precluding the adoption of an injunction such as that at issue in the main proceedings, the national procedural rules must provide a possibility for internet users to assert their rights before the court once the implementing measures taken by the internet service provider are known.
There is a clear concern here on the part of the Court that there should be sufficient transparency in the procedure to enable internet users to challenge inappropriate blocking methods.
That is less of an issue in English practice, where the court considers what specific type of block should be ordered and explicitly balances the competing fundamental rights. However the procedure is not ideal since the ISPs typically do not contest the application, so the court only hears submissions from the applicant rightsholders.
Perhaps more significantly, it is common practice in English blocking orders, in order to avoid circumvention by the target site, to permit rightsholders to submit direct to the ISP further URLs or IP addresses used by the target site, it being the rightsholders' responsibility accurately to identify IP addresses and URLs to be notified. Although the original blocking order will be publicly available on the court file, there is no public record of these further blocks. Following this CJEU decision there may be more focus on full transparency around all aspects of site blocking injunctions.
Graham Smith is a partner in Bird & Bird LLP and specialises in IT, internet and intellectual property law. His Cyberleagle blog is at www.cyberleagle.com. This article first appeared on the Bird & Bird site.