Kluwer Copyright Blog (KCRB) is a publication of Kluwer Law International, providing information and news on European copyright law. They have assembled a group of leading experts, comprising practising lawyers and academics to report on the latest developments.
The global research community generates over 1.5 million new scholarly articles per year. Text and data mining (TDM) enables individuals to analyse such large amounts of data, to categorise that data, and to unravel the underlying patterns in order to attain new knowledge, and to create new databases. That being said, utilisation of TDM in research and innovation is possible only if the applicable legal framework delivers precise rules that promote adoption of TDM for researchers, businesses and other beneficiaries.
The Proposal for a Directive on Copyright in the Digital Single Market, published on 14 September 2017, addresses legal uncertainty as regards TDM practices within the European Union by introducing a mandatory exception for TDM in Article 3. The proposed exception applies only to non-commercial research organisations that mine content to which they have lawful access for scientific research purposes. Article 3(2) of the Proposal further stipulates that the exception shall not be overridden by contracts.
This blog post briefly analyses the proposed exception and its legislative trail, including the amendments proposed by several committees of the European Parliament.
Licensing often causes barriers to successful mining, as researchers and research institutions face unreasonable terms and additional costs. These include limitations on the number of articles or prohibitions against doing so in the first place. Licensing also fails to solve the problem of legal uncertainty, as it requires dealing with a wide variety of complex contractual terms and conditions.
Beyond licensing, TDM could benefit from either the temporary reproduction exception in Article 5(1) of the InfoSoc Directive, or the scientific research exception in Article 5(3)(a) of the same Directive. However, these exceptions do not sufficiently address the copyright-related restrictions faced by scientists using TDM techniques, as some of their activities do not fall within the scope of those provisions. Because some mining involves permanent reproductions, Article 5(1) of the InfoSoc Directive does not apply. Other exceptions in Article 5 are not mandatory and do not refer to TDM, rendering their application to these activities difficult.
In contrast to countries where ‘fair use’ (or similar doctrines) can be invoked against copyright infringement claims for using TDM techniques (like the U.S., Israel, Republic of Korea, Singapore and Taiwan), in Europe, the use of such techniques will for the most part require the permission of the rights holder. Because of this complex, and at times vague, legal framework, European scholars occasionally have to outsource their text and data mining needs. Against this background, there appears to be a need for a clear legal framework for TDM in order to promote European scientific progress, technological innovation, and economic growth.
Finally, on 9 December 2015, the Communication from the Commission set out a long term agenda for modernisation of EU copyright rules. It asserted that the Commission would consider legislative proposals in order to “allow public interest research organisations to carry out text and data mining of content they have lawful access to, with full legal certainty, for scientific research purposes”.
The Proposed Directive and proposed legislative amendments
It is possible to identify three main problems with the proposed provision on TDM. First, the beneficiaries of the exception are limited to non-commercial research organisations. Second, TDM is allowed only for scientific research purposes. Third, TDM techniques can be used only in relation to content to which there is lawful access.
Over the course of the legislative process, different Committees of the European Parliament have taken varying approaches to these problems.
The draft opinion of The Culture and Education Committee (CULT) stipulates for a fair compensation for the harm incurred by rights holders due to the use of their works, limits the scope of the exception to certain areas of scientific research and requires research organisations to delete the reproduced subject matter after the mining.
The Industry, Research and Energy Committee (ITRE) takes an extensive approach, similar to that of the IMCO. Most notably, in its draft opinion, the beneficiaries of the limitation are identified as “public entities, private entities and individuals”.
Finally, the draft report of the Committee on Legal Affairs (JURI) provides for a comprehensive set of amendments. Beneficiaries are amended to “anyone”, and it abandons the purpose limited approach of the Proposal. The JURI Committee addresses the “lawful access” restriction by introducing an obligation on the part of the right holders to allow research organisations to access datasets containing works marketed by them for TDM purposes. Member States may adopt a right to request compensation for the right holders in return for the access permission, on the condition that the compensation relates to “the cost of formatting these datasets”. Furthermore, it provides for establishment of storage facilities for datasets used for TDM, to be accessed only for verification of the research.
On balance, it seems that the Proposal does not come close to offering a sound solution to the problems faced by the users of TDM techniques in the EU. The amendments proposed by JURI and IMCO on the removal of the distinction between commercial and non-commercial research organisations is promising. This is because the limitation on beneficiaries does not support commercial application of research findings and collaborative approach to research. Moreover, TDM should be allowed for any purpose. In fact, if the aim is to make the EU’s single market fit for the digital age, it can be argued that the legislative framework should promote these activities by making them available not only for universities but also for research and innovation across the modern economy and in society at large. Nevertheless, and somewhat alarmingly, JURI is the only committee to address the “lawful access” restriction on the subject matter that can be mined. This aspect is strongly criticised by the European Copyright Society for good reason: the refusal of access by the right holder or the imposition of a conditional access may have detrimental effects, such as an increase in subscription fees, thereby frustrating the realisation of the full potential of TDM for research and innovation, and more broadly for the European economy.
In sum, the proposed exception for TDM should be clarified and broadened. As argued in a recent in depth expert analysis for the European Parliament, there are good arguments supporting an exception that is mandatory in nature, applies to commercial and non-commercial use, and cannot by overridden by contract or technological measures.
On 27 February 2018, the European Union (EU) adopted the EU geo-blocking regulation (the Regulation), which will enter into force by the end of the year. The Regulation prohibits unjustified geo-blocking, and other forms of discrimination, based on customers’ nationality, place of residence, or place of establishment.
The Regulation is particularly relevant to all businesses selling online in different EU Member States, whether or not they are located in the EU. Before the end of the year, businesses should carefully review their online interface mechanisms, terms and conditions, payment mechanisms, and distribution agreements to assess whether unjustified geo-blocking practices are in place, and, if necessary, adjust their terms and sales organization to ensure compliance with the Regulation.
What is geo-blocking?
Geo-blocking refers to practices where traders offering services in one EU Member State block or limit access to their online interfaces, such as websites and apps, by customers from other EU Member States wishing to engage in cross-border transactions. Geo-blocking also occurs when traders apply different general conditions based on geo-factors, such as nationality, place of residence, or temporary location. Geo-blocking can occur as a result of a trader’s unilateral decision, but also pursuant to clauses in a bilateral agreement (distribution agreement).
Combating geo-blocking is central to the EU’s Digital Single Market (DSM) strategy. The concern is that geo-blocking potentially limits online shopping and cross-border trade, and leads to undesirable geographical market segmentation. The European Commission’s (EC’s) final e-commerce sector inquiry report identified the widespread use of geo-blocking, highlighting that 38% of responding retailers selling consumer goods and 68% of responding digital content providers implement geo-blocking measures.
What does the Regulation cover?
Traders must not block or limit a customer’s access to the trader’s online interface (website, mobile app, etc.) for reasons related to the customer’s nationality, place of residence, or place of establishment. Traders must also refrain from automatic redirecting to affiliates located in the customer’s territory without the customer’s consent. The bans do not apply if geo-blocking is necessary to ensure compliance with legal requirements.
Access to goods or services
Traders must not apply different trading conditions (including net sale prices) for reasons related to a customer’s nationality, place of residence, or place of establishment in three specific scenarios if a customer seeks to:
Buy goods from a trader who under its general conditions offers delivery to a Member State or collection by customers in a Member State.
Receive electronically supplied services from a trader (such as cloud services, data warehousing services, website hosting and the provision of firewalls, use of search engines, and internet directories).
Receive services other than electronically supplied services in a Member State where the trader operates (such as hotel accommodation, sports events, car rental, and entrance tickets for music festivals or leisure parks).
There are some important carve-outs from the geo-blocking ban.
Electronically supplied services offering copyrighted content are excluded from the Regulation. For this reason, the Regulation does not affect online television, films, e-books, music, online games, and streamed sports. However, the EC will first evaluate the Regulation’s impact two years after its entry into force, to assess a possible extension of the new rules to electronically supplied services offering copyrighted content.
Traders are not forced to deliver goods across borders. A trader that in its general terms and conditions has established that it only delivers domestically can continue to do so. Customers from other Member States can order the goods, but they will have to pick up the goods in the trader’s Member State (if the trader offers a pick-up option), or provide a delivery address in the trader’s Member State.
There is no requirement to offer a single EU shopfront. Traders are not precluded from offering goods or services in different Member States, or to certain groups of customers, by means of targeted offers and differing general conditions of access, including through the setting-up of country-specific online interfaces.
Traders are not precluded from offering, on a non-discriminatory basis, different conditions, including different prices, in different points of sale, such as shops and websites, or to make specific offers only to a specific territory within a Member State. However, they cannot prevent consumers in other Member States from availing themselves of these offers.
Traders must not discriminate against customers by refusing certain transactions, or by applying different conditions or payment, for reasons related to customers’ nationality, place of residence, place of establishment, the location of the payment account, the place of establishment of the payment service provider, or the place of issue of the payment instrument. This obligation is subject to certain limitations, such as that the payment transaction is made through an electronic transaction, strong customer authentication is available, and the payment transactions are in a currency that the trader accepts.
Passive sales clauses (for example, in distribution agreements) requiring traders not to respond to unsolicited demand from consumers in other Member States will be automatically void and unenforceable. While passive sales restrictions will often infringe EU competition law in any event, the Regulation renders the prohibition of passive sales absolute — irrespective of the trader’s market position. The relevant article of the Regulation relating to passive sales (Article 6) will apply 24 months from the Regulation’s date of entry into force.
The Regulation’s scope is aligned with that of the Services Directive.[i] However, if conflicts arise, the rules of the Regulation prevail. The Regulation aims to clarify the non-discrimination obligations in Article 20 of the Services Directive. For this reason, a number of important service industries are excluded from the Regulation’s scope, including financial, transport, electronic communication, healthcare, audio-visual, and broadcasting services.
The Regulation covers B2B transactions, but only if a consumer or business receives a service or purchases a good for the sole purpose of end use.
Entry into force
The Regulation will be published in the EU’s official journal before the end of March 2018, and will take effect nine months after its publication.
The bigger picture
The Regulation forms part of the EU’s wider DSM strategy. EU legislators are also introducing a broader e-commerce package, which includes a multitude of legislative initiatives. These include a new regulation on the portability of digital services across the EU, which will come into force on 1 April 2018. Under this new regulation, consumers who paid for online content services in their home country will be able to access these services when visiting another EU country. Other proposals include more transparent and affordable cross-border parcel deliveries, and the modernization of value-added tax rules for e-commerce.
In parallel to its legislative initiatives, the EC has challenged geo-blocking measures under the EU competition rules (Articles 101 and 102 TFEU). The EC has launched a number of individual antitrust investigations in the consumer electronics, video game, hotel industry, clothing, and licensed merchandise sectors, as well as into the licensing and distribution practices of movie studios. Some of these enforcement actions target copyrighted content, and thus may reach beyond the Regulation’s scope.
[i] Directive 2006/123/EC of the European Parliament and of the Council of 12 December 2006 on services in the internal market.
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The Spanish court has recently given judgment in proceedings brought by various audiovisual producers belonging to the Motion Picture Association of America (MPAA), against a number of telecommunications companies who provide Internet access. The proceedings were aimed at having the latter take measures to block Internet access to certain websites that were making protected audiovisual content available to the public without the rightholders’ mandatory consent.
Numerous cinematographic works and television series that have been uploaded to the Internet without the rightholders’ consent can be streamed via the websites HDFULL.TV and REPELIS.TV. Both websites contain video content from third companies and use the services of a company called Cloudfare to conceal the specific location of the sites that they use. Both websites order, classify and advertise the content that they offer via an interface that not only enables users to search for the content that they wish to view but also provides them with recommendations and content suggestions. Both websites feed off third-party advertising.
In its judgment, the court concluded that making content available to the public via links on the HDFULL and REPELIS websites infringes the claimants’ copyright. It held that the websites constitute databases of links to illegal content which, moreover, do not merely “store or list” links but prompt users to view the content by classifying it and presenting it in an attractive way, making specific viewing recommendations. The fact that this activity is carried out for financial gain (the websites in question feed off advertising) and that the owners of the domain names have voluntarily opted to conceal their identity are significant circumstances which point to the unlawful nature of the conduct.
The interesting aspect of this judgment is that the action was not directed against the owner of the links platform or website but against the telecommunications companies who provide Internet access. This type of action is possible thanks to the reform brought about by Act 21/2014, of 4 November, aimed, inter alia, at “strengthening the tools for reacting against rights infringements”.
In reaching the conclusion that the claimants were entitled to bring injunctive action against companies which merely grant Internet access to the owners of websites that provide links to protected content in a systematic and ordered manner, the court considered that: (i) the defendants are information society intermediaries, as defined in Act 34/2002; (ii) Articles 138 and 139.1.h) of the Spanish Copyright Act expressly state that such intermediaries have standing to be sued; (iii) CJEU case-law (Scarlet Extended) and some recent decisions from the Spanish courts recognise Internet access providers’ standing to be sued in injunctive actions for copyright infringement; and (iv) such injunctions may be requested not just against the access provider of the owner of the websites containing the infringing content, but also against “intermediaries who transmit” the infringement online.
Lastly, the Court concluded that such an injunction was proportional, on the basis that any less forceful measure (for instance, partial blocking) would not be effective or sufficient in order to achieve the end pursued, which is to block access to the infringing websites, the owners of which cannot be identified or located.
A full summary of this case has been published on Kluwer IP Law. For a free trial of Kluwer IP Law please click here.
On 14 September 2016, a proposal for a Directive on Copyright in the Digital Single Market saw the light of day. The proposal is part of the EU copyright reform package, which has as its objective to modernise EU Copyright rules for the digital age, thereby attaining the objectives set out earlier in the Digital Single Market Strategy. Against this background, the proposal is the result of a strong desire to achieve four well-defined goals outlined by the Commission: ensuring wider access to content across the EU; adapting exceptions to digital and cross-border environments; achieving a well-functioning marketplace for copyright; and providing an effective and balanced enforcement system. Notwithstanding the Commission’s quest to strike a fair balance with policy interests such as innovation, education and research, this new framework also seeks to ensure the continuity of a high level of protection for right holders. In this context, the proposed Directive provides for a new category of right holders, namely press publishers.
Under Article 11 of the proposal, press publishers are given the exclusive right of reproduction and making available to the public for the digital use of their press publications. The scope of protection of the right would be similar to that enjoyed by authors under Article 2 of the InfoSoc Directive and that granted to related right holders under Article 3(2) of the same instrument. This controversial new right has been referred to variously as an ‘ancillary copyright’, a ‘link tax’ or a ‘Google tax’.
What would it mean in practice? News aggregators – such as Google news – wishing to link to publishers’ content or to use snippets from journalistic online content would first have to conclude licences with press publishers. This new right would last for 20 years after publication and be subject to the existing exceptions and limitations in Article 5 of the InfoSoc Directive.
Having said this, curious readers might ask the question: why such a new right? The justifications for the right can be found in the explanatory memorandum and recitals 31 to 36 of the proposed Directive. According to these, recognising such a right for press publishers would enable them to obtain fair revenues for the value their press publications generate online. This is particularly important due to the economic struggles of publishers caused by the switch from print to digital press, and the related challenges they face in entering into licences with online services. Consequently, the argument goes, the sustainability of the press publications sector is at risk, threatening quality journalism, pluralism, and ultimately jeopardising citizens’ access to information as well as public debate.
By introducing this new right, the legislator seeks to improve legal certainty and the bargaining position of press publishers. The right would facilitate online licensing of press publications and give press publishers an enforcement mechanism to obtain compensation in the case of unlawful online publication.
Despite its purported benefits, the proposed right has been met with fierce criticism, in some cases even voiced before the legislative proposal, as was the case in 2015 by members of the European Parliament.
Various objections have been raised. For instance, the European Copyright Society’s opinion on the proposal advances several points of criticism. First, it points out the failure by the Commission to conduct an economic assessment and impact study on the proposal. As it turns out, it is more accurate to say that the Commission failed to publish such a study, namely a study conducted by its own research centre (JRC) containing empirical evidence against the adoption of the new right. Indeed, according to that report, the goal behind such a right would not be attained since ‘the available empirical evidence shows that news aggregators have a positive impact on news publishers’ advertising revenue [which] explains why publishers are eager to distribute their content through aggregators’.
A second criticism is that the proposed right would distort competition by favouring large online news providers with deep pockets, to the detriment of small European start-ups, which are financially unable to conclude enough licences for entrance into the market. In fact, the new right might actually lead to an inverse effect, as was shown in the case of Google News in Spain. When Spanish law was changed to include a comparable right, the news-linking service was terminated in Spain by Google. The ineffectiveness of such right at national level was again highlighted in a recent panel discussion between policy-makers and academics.
A further criticism is the likely otiose nature of the new right, as most press publishers obtain copyright protection based on licences or transfer of author’s rights by journalists. Based on such a practical scheme, licensing arrangements are not per se needed. This was also made clear in an open letter to the European Parliament and the EU Council arguing that ‘the proposal in effect establishes a double layering of rights for the same creation’.
That same open letter contains additional objections to the new right that are worth mentioning. Among them is the question of whether the new right will lead to a change in consumer behaviour and to better media pluralism? This need, it is noted, was mentioned by the JRC’s unpublished study. On the topic of media pluralism, the study notes that ‘evidence suggests that news aggregators promote diversity because they facilitate access to news across different sources’.
Building on these lines of criticism, yet another expert study, this time commissioned by the European Parliament, concludes against the adoption of the right and proposes instead its replacement ‘with a presumption that press publishers are entitled to copyright/use rights in the contents of their publications’. This presumption would be in line with the Committee of Legal Affairs’ opinion which supports the concept that press publishers should be able to sue in their own name against online infringement of works in their press publications. More drastically, the Committee on the Internal Market and Consumer protection proposed to solve the issue by amending the enforcement rules instead of the copyright rules. Yet another solution, proposed by the Committee on Culture and Education is to limit the new right to digital uses for commercial purposes.
In my opinion, the most adequate solution to address this issue would be adapting enforcement rules by inserting a legal presumption in favour of press publishers. Such a presumption would make sense since, in practice, press publishers are often assignees of the rights of authors in press publications. In light of this, the new right for press publishers should be removed from the proposal. Taking into account evidence from the Commission’s unpublished report, as well as the German and Spanish experiences in this field, the adoption of the proposed right would not serve the intended goals and might even worsen the situation of press publishers. Moreover, as noted by the Rapporteur of the IMCO Committee: ‘there is no guarantee provided that any rise in publisher remuneration would flow through to authors’. Consequently, such a right might affect – not protect – content creators, resulting in further decline in quality journalism. To sum up, what the EU should do in order to provide press publishers with the most forceful weapon is, as indicated by the word itself, improve enforcement rules.
Decision of the German Bundesgerichtshof of September 21, 2017, file no. I ZR 11/16: “Vorschaubilder III” (“Thumbnails III”).
In this decision, the Bundesgerichtshof (“BGH”) applies the latest CJEU case law on liability for linking, namely Svensson (C-466/12), GS Media (C-160/15), Filmspeler (C-527/15) and BREIN/Ziggo (C-610/15) to search engines and in particular to Google’s picture search. The CJEU established full liability for linkers in cases where they knew or ought to have known that the link went to copyright protected content illegally communicated to the public (CJEU GS Media C-160/15, para. 49). The BGH interprets the requirement of “knew or ought to have known” for infringement of the right of communication to the public as a flexible model of duties of care.
The case concerns a claim by the exclusive owner of rights to certain erotic photos against a web service providing a picture search. This picture search was not provided with own tools, but through a mere link to Google’s picture search. The pictures at trial could be found on Google’s picture search and thus also via the defending internet service. It was in dispute between the parties whether the pictures at trial were freely accessible on the website of the claimant or if they were only available with access restrictions. The results on Google’s picture search came from websites, where the pictures were illegally communicated to the public.
The BGH Decision
The BGH applies the latest CJEU case law on full liability for linking, in particular Svensson, GS Media, Filmspeler and BREIN/Ziggo, to search engines and in particular to Google’s search services. In this line of cases, the CJEU had developed the requirements for full liability of linkers, in cases where their link went to copyright protected content illegally communicated to the public. According to the BGH, the scenario at trial is within the scope of the fully harmonised right of communication to the public pursuant to Art. 3 (1) Copyright Directive 2001/29 (para. 25 et seq.).
The link by the defending internet service to Google’s picture search would be a “communication” within the meaning of the aforementioned CJEU case law (para. 31). Therefore, the BGH had to assess whether the communication was also “to the public”. Here, the BGH relied on GS Media and Filmspeler to conclude that the communication was “to the public” where the linker “knew or ought to have known” that the link went to works illegally published on the internet (see e.g. CJEU GS Media C-160/15, para. 49).
The CJEU also established a rebuttable presumption that for profit linkers knew that the link went to such illegal content. The BGH applied this rebuttable presumption as well (para. 46). Commercial search engines were held to be for profit linkers. Consequently, the burden of proof was on the defendant to establish that the pictures at trial had been published on the claimant’s website without any access restrictions. The BGH confirmed that if this were the case (making available without access restrictions) no communication to the public, even through illegal offers on third party websites, could have been established. But such a scenario would be an exception to the rule that every communication to the public needs the consent of the right holder (para. 48). With the burden of proof on the defendant (to prove that the pictures at trial were freely accessible on the claimant’s website), the BGH came to the conclusion that there was insufficient proof from the defendant for this. Therefore, the defendant could not rely on the argument that no new public was reached, because the photos at trial were freely made publicly available on the claimant’s own website.
Nevertheless, the BGH did not find the defendant to be communicating to the public in the sense of Art. 3 (1) Copyright Directive, read together with the case law from the CJEU. The BGH came to the decision that the defendant did not know and should not have known that the link to Google’s search services led to illegal photos. The defendant was not in a position to know or have reasonably known about the infringement (paras. 53 et seq.). Here, the court used a model of balancing of interests and in particular took into account the fundamental right of freedom of speech and freedom of information pursuant to Art. 11 EU Charter. Without search services, a sensible use of the internet would not be possible in practice (para. 56). The Court emphasised the role and function of search services. No general obligation to check all indexed content could be imposed on search engines, as they could not handle such a general monitoring duty (para. 61 et seq.). Rather, the standard for a search engine would have to be as follows: “For a search engine, it would have to be positively confirmed that the search engine knew or ought to have known about a missing consent from the rightholder” (para. 63). Only after knowledge about the illegality, would the search engine provider have a duty in good faith to stop providing its services (para. 67).
It is also interesting to note the specific duties that the BGH applied to search engines after notification and gaining knowledge:
(1) Word filters could be a suitable tool even if the infringing activity could not be stopped entirely (para. 69).
(2) Picture recognition was held by the BGH not to be a proportionate tool, as the claimant did not fulfill its burden of proof to substantiate the technical possibility for search engines to use such picture recognition technology (para. 70).
(3) The take down of the pictures after notification had deleted all use of the pictures from Google’s picture search. The claimant had not sufficiently proven that further pictures appeared in the picture search after the notification and Google’s take down (para. 71).
At the end of the decision (para. 72 et seq.) the BGH assesses whether Stoererhaftung applies and concludes that it does not. Stoererhaftung is a German legal tool to find secondary liability for an injunction only. Generally speaking, Stoererhaftung requires a causal contribution and a breach of duty of care. The BGH found that no breach of duty of care could be seen; here, the BGH refers to its arguments with respect to the full liability for infringement of the right of communication to the public. Obviously, the BGH thinks that both duties (to find full liability and to find Stoererhaftung) run parallel.
Comment and Outlook
The CJEU’s case law in GS Media, Filmspeler and BREIN/Ziggo establishes full liability for linkers that knew or ought to have known that the link went to content illegally communicated to the public. The BGH seems to be of the opinion that the CJEU case law in GS Media, Filmspeler and BREIN/Ziggo also applies to search engines.
The BGH decision shows that German courts will be ready to apply this knowledge requirement of GS Media, BREIN/Ziggo and Filmspeler within a flexible model of duties of care for linkers.
However, for search engines, more generous duties apply than for ordinary linkers. This is due to recognition of the role of search engines for the fundamental rights of internet users. Search engines need to be aware of a rights infringement before they have a duty to act. After notification they will have to use a word filter. The threshold for content recognition filters seem to be higher; here, the burden of proof is on the rightholder to substantiate the possibility of using such content recognition filters.
It remains open from the judgment whether duties can go as far as delisting, in particular in cases where a rogue website is notified to a search engine which merely produces links to illegal content. A lot speaks in favour of such a duty following the BGH decision, as the BGH emphasised duties in good faith by the search engine. As a result, it seems to be worth considering using the BGH case law to request from Google the delisting of rogue websites from its ordinary text search.
An artist’s illustration of two dolphins crossing underwater was an idea that was found first in nature and was not protectable under copyright law, the U.S. Court of Appeals in San Francisco has held. The court affirmed a district court’s grant of summary judgment in favor of another artist who created a painting with a similar concept. Although the artist held a thin copyright in his expression of unique details in his illustration, those protectable details were not present in the defending artist’s painting, so the works could not be deemed substantially similar (Folkens v. Wyland Worldwide, LLC, February 2, 2018, Gould, R.).
The Court of Appeal of Lisbon confirmed that it is mandatory to have a licence and to pay for performing broadcast works to clients via TV sets in hotel rooms as this constitutes communication of the works to the public.
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The Court of Appeal of Lisbon held that the violation of the right to publish a work post mortem, against the will of the author or of his/her heirs, is a serious and irreparable infringement of the author’s moral rights and provides sufficient justification to order an interim injunction.
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According to article 50 (1) of the draft agreement, the holder of a EU trade mark, design or plant variety right, ‘which have been registered or granted before the end of the transition period shall, without any re-examination, become the holder of a comparable registered and enforceable intellectual property right in the United Kingdom, as provided for by the law of the United Kingdom’. There is a similar provision, article 50 (2), for geographical indications, designations of origin and traditional specialities.
The draft agreement also covers the registration procedure (article 51), the continued protection in the United Kingdom of international registrations designating the Union (52), the continued protection in the United Kingdom of unregistered Community designs (53), the continued protection of databases (54), the right of priority with respect to pending applications for European Union trade marks and Community plant variety rights (55), pending applications for SPCs in the UK (56) and exhaustion of rights (57).
The system of European Patents is based on the European Patent Convention. Therefore patents are not mentioned in the draft Brexit agreement, nor the future Unitary Patent system, which is based among others on two EU Regulations.
The draft Withdrawal Agreement consists of six parts – including introductory provisions, citizens’ rights, other separation issues such as goods placed on the market before the withdrawal date, the financial settlement, transitional arrangements, and institutional provisions – and a protocol on Ireland / Northern Ireland.
It has been presented by the European Commission ‘to first allow for time for consultation with the Member States and the European Parliament and, subsequently, for negotiation with the United Kingdom’.
In an in-depth analysis for the European Parliament, the author has looked at liability of online service providers with regard to infringements concerning copyright protected content. In particular, the paper tries to answer the question of whether regulatory action is needed in relation to the liability of online service providers for copyright protected content.
The liability privileges in Articles 12 to 15 E-Commerce Directive can remain unchanged; they seem to be sufficiently flexible to adopt to new business models, which also makes them, in general, future-proof.
These privileges do not, however, establish liability.
With regard to injunction claims, Article 8(3) Copyright Directive provides for a satisfactory pan-EU solution.
EU rules establishing liability beyond injunctions (e.g. damages) should be harmonised to incorporate the requirements of (1) sufficient intervention by the internet provider; and (2) breach of an adequate duty of care by the internet provider.
The study comes to the following conclusions:
Articles 12 to 15 E-Commerce-Directive
The first part of the analysis is dedicated to the assessment of the necessity of a reform of the liability privileges in the E-Commerce Directive. Although Articles 12 to 15 E-Commerce Directive are more than 15 years old, there seems to be no pressing need for a reform. The provisions seem to be sufficiently flexible to adopt to new business models, which also makes them, in general, future-proof. Of course, certain legal questions arising with regard to Articles 12 to 15 E-Commerce Directive have not yet been finally answered by the CJEU. But such open legal questions do not in themselves justify a reform, as it can be expected that the case law will answer the questions in a way that adequately respects the different rights and interest at stake.
While false hosting providers (Article 14 E-Commerce-Directive) may have emerged as a new category of hosting providers, not envisaged at the time of the adoption of the E-Commerce Directive in 2000, the E-Commerce Directive has proven fit to treat the issue adequately. The delineation between passive service providers caught by Article 14 and active role providers remains an issue for the Court, without it being necessary to change the article.
In relation to insufficiently collaborative hosting providers, running a dangerous business model which fosters infringements, the case law still has to find final answers as to whether, and to what extent, such hosting providers should profit from the liability privilege. But the concept and wording of Article 14 E-Commerce Directive seems to be sufficiently flexible to allow an adequate case by case result in such scenarios. No change of Article 14 E-Commerce Directive is deemed necessary.
Concerning access providers, there seems to be no need to change the liability privilege of Article 12 E-Commerce Directive. Upstream providers, which operate at the borderline between access and hosting providers, may be adequately treated by the liability privilege.
Cache Providers (Article 13 E-Commerce Directive)
The liability privilege for caching providers (Article 13 E-Commerce-Directive) lacks practical importance. Therefore, there is no pressing need to change it.
Linking providers, and more particularly search engines, are important players on the internet, and in principle deserve regulatory attention. So far, it has only been clarified by the CJEU that search engines may enjoy the liability privilege of Article 14 E-Commerce Directive in as far as they provide links against remuneration for advertising purposes. It can be expected that the CJEU will clarify in the near future whether Article 14 also applies to editorial links provided by search engines. As the Court has developed a flexible system of adequate duties of care to establish liability of linking providers in case of links to illegal content, there seems to be no need, however, to further refine the liability privileges of the E-Commerce Directive to linking providers. The system of duties of care seems to be sufficiently flexible to provide for just results in all different linking scenarios.
Prohibition on imposing general monitoring duties (Article 15 E-Commerce Directive)
On the prohibition on imposing general monitoring duties (Article 15 E-Commerce Directive) the CJEU case law is abundant. But it still lacks a final word from the Court with regard to such an important question as the delineation between general monitoring obligations (prohibited by Article 15 E-Commerce Directive) and specific monitoring duties, which may be imposed on providers, in particular to prevent infringements notified.
But as Article 15 E-Commerce Directive, pursuant to the CJEU case law, is strongly dominated by a balancing of fundamental rights, it can be expected that any solution provided by case law will respect all relevant interests in an appropriate way. No legislative action seems to be necessary concerning Article 15 E-Commerce Directive.
Need for pan-EU Liability rules
The second part of the paper analyses the existence of a need for pan-EU liability rules. The EU legal framework provides for harmonised law concerning liability privileges in Articles 12 to 15 E-Commerce-Directive. They do not, however, establish liability. The EU system does not seem particularly developed yet so far as rules to establish liability are concerned.
With regard to injunction claims, Article 8(3) Copyright Directive provides for a flexible
and satisfactory solution with regard to internet providers.
Damages Claims: New CJEU case law
With regard to other claims, in particular damages claims, EU law only provides for a harmonised answer in cases of primary infringement, i.e. unauthorised use of the harmonised exploitation rights in copyright. For the (secondary) liability of other persons, until now different national secondary liability concepts have applied, which may lead to different results from member state to member state. This is unsatisfactory against the background of European harmonisation; in particular, this does not create a level playing field, e.g. for damages claims for right holders in the EU. But there is a development from CJEU case law which may harmonise secondary liability within the primary liability rules of EU law, in the series of judgments in GS Media/Sanoma, Filmspeler and BREIN/Ziggo.
Proposal for pan-EU liability rules
The last part of the paper consists of a proposal for a copyright sector specific regulation of liability. The liability of internet providers for damages would typically be seen as a form of secondary liability. Nevertheless, the CJEU is already starting to develop such an EU liability rule within the harmonised field of primary liability. Further development in Luxembourg at the CJEU could be awaited. Or the legislator could also take the initiative, but any such legislative initiative should go in the same direction as the CJEU: EU rules establishing liability beyond injunctions, and in particular establishing liability for damages, should require
(1) a sufficient intervention by the internet provider; and
(2) a breach of an adequate duty of care by the internet provider.