Communication to the public: how much involvement is required?

Facts
Effectiveness of blocking measure
Does The Pirate Bay communicate to the public?
ECJ questions

The Supreme Court has referred another question to the European Court of Justice (ECJ) regarding 'communication to the public' – as defined by Article 3 of the EU Infosoc Directive (2001/29/EC).

Facts

On November 13 2015 the Supreme Court ruled on the dispute between anti-piracy association the BREIN Foundation and internet service providers (ISPs) Ziggo and XS4ALL.

This dispute started with the notorious online index of digital content The Pirate Bay, which allows visitors to search, download and upload magnet links and torrent files, facilitating peer-to-peer file sharing among users of the BitTorrent protocol.

The dispute covers two separate acts of copyright infringement:

• BREIN accused The Pirate Bay of making available images of artwork from the covers of music albums, games, books and movies on its website. The Supreme Court ruled that the ISPs had not sufficiently contested the fact that The Pirate Bay communicates these art works to the public (and therefore infringes the copyright of the artwork).
• The main issue was whether making BitTorrent files available on The Pirate Bay constitutes a communication to the public executed by The Pirate Bay. It is clear that its users (and the subscribers of the ISPs) that upload and download copyrighted content communicate to the public as defined in Article 3(1) of the EU InfoSoc Directive. However, the ISPs have consistently maintained that the acts of The Pirate Bay itself do not constitute communication to the public.

Effectiveness of blocking measure

The Pirate Bay was not a party in the case in question, which deals with the question of whether the court may allow a blocking action initiated by BREIN against the ISPs. BREIN wanted the ISPs to block their subscribers' access to The Pirate Bay. This blocking action was requested on the basis of Article 26(d) of the Copyright Act. This provision allows measures directed against an intermediary whose services are used by a third party to infringe an IP right (similar to Article 11 of the EU Enforcement Directive (2004/48/EC) and Article 8(3) of the InfoSoc Directive). The Hague District Court allowed the blocking order; the Hague Appeal Court ruled to the contrary.

In its decision, the Supreme Court held that the appeal court erred by disallowing the blocking of The Pirate Bay. The main reason that the appeal court had rejected BREIN's claim was that the requested measure was insufficiently effective: internet users were likely to circumvent the blockade. However, the Supreme Court ruled that these findings were contrary to ECJ case law. The appeal court was correct in finding that the effectiveness of the requested measure should be assessed, in accordance with ECJ decision L'Oréal/eBay (C-324/09), with reference to Article 52(1), in fine, of the Charter of Fundamental Rights of the European Union. However, the appeal court had applied the effectiveness test incorrectly. The mere possibility that the blockade could be circumvented does not mean that the measure should be rejected as ineffective.

The Supreme Court referred to Paragraphs 62 and 63 of the ECJ decision in UPC/Telekabel Wien (C-314/12, March 27 2014), which held that:

"the measures which are taken by the addressee of an injunction… must be sufficiently effective to ensure genuine protection… that is to say that they must have the effect of preventing unauthorized 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 addressee of that injunction from accessing the subject-matter made available to them in breach of that fundamental right."

Consequently, while in some circumstances a blocking measure may be incapable of leading to a complete cessation of the infringement, the measure is still compatible with the requirement of finding a fair balance between all applicable fundamental rights if it discourages internet users from accessing infringing materials.

Does The Pirate Bay communicate to the public?

Although the Supreme Court resolved the mere issue of the blocking measure as far as it relates to the application of the effectiveness test, it has referred the case to the ECJ for a preliminary ruling regarding the principal question of whether The Pirate Bay itself infringes the copyright of the authors whose content is made available by its users by means of BitTorrent files by providing a platform on which the user content could be shared and transferred.

There is no doubt that The Pirate Bay enables copyright infringement by its users (and the users of the ISPs). However, it neither controls the website's content nor has involvement in the uploading or downloading of infringing content. Whether the activities of The Pirate Bay qualify as communication to the public under Article 3 of the EU InfoSoc Directive is likely to be important, because the answer may carry weight regarding whether the blocking measure against the ISPs should be allowed. Since the blocking action is requested on the basis of Article 26(d) of the Copyright Act, which allows measures directed against an intermediary whose services are used by a third party to infringe an IP right, the Supreme Court wishes to know first, whether The Pirate Bay uses ISPs' services to infringe the IP right itself, and second whether the outcome of that question is decisive for allowing the blocking measure.

The decision to refer shows that the parties to the proceedings all agree that the question of whether The Pirate Bay itself infringes the copyright of the authors can be answered based on existing ECJ case law.

The ISPs argue that following the ECJ decision in SGAE (C-306/05), the mere provision of physical facilities does not result in communication to the public. However, BREIN holds that it follows from the ECJ decision in Airfield (C-431/09) that an "operator [that] expands the circle of persons having access to a communication and thereby renders the protected subject-matter accessible to a new public" may qualify as a party performing a communication to the public under Article 3 of the EU InfoSoc Directive. BREIN further refers to the case law regarding hyperlinks (eg, Svensson, C-466/12) from which it follows that a party that supplies a clickable link to a copyrightable work that refers to content available elsewhere may perform a communication to the public. BREIN argues that the activities of The Pirate Bay are very similar to hyperlinking, since The Pirate Bay makes it easy to access the copyrightable work.

According to the Supreme Court, this case differs from the others brought before the ECJ because it is not The Pirate Bay that decides which content will be made available, but the users of its website (being the subscribers of the ISPs). However, the Supreme Court is aware of the fact that The Pirate Bay forms an essential link in the eventual infringing act of communication.

ECJ questions

The questions that the Supreme Court has referred to the ECJ are as follows:

• Does it constitute communication to the public under Article 3(1) of the EU InfoSoc Directive by the manager of a website when no protected works are present on that website, but a system exists whereby meta data regarding protected works is available, indexed and categorised in such a manner that the users can trace, upload and download protected works?
• If that is not the case, does Article 8(3) of the EU InfoSoc Directive and Article 11 of the EU Enforcement Directive (48/2004/EC) allow an order to an intermediary (as defined in those provisions), if that intermediary facilitates the actions of third parties in the manner described above?

For further information on this topic please contact Roderick Chalmers Hoynck van Papendrecht​ at AKD by telephone (+31 88 253 50 00) or email (rchalmers@akd.nl). The AKD website can be accessed at www.akd.nl.