A commercial court in Madrid has recently addressed for the first time in Spain a claim against the use of someone else’s trademark as a keyword within the Google Adwords program. While the ruling was actually handed down last December, it has not been until very recently that it has become publicly known. The case is Maherlo Iberica S.L. v. Calzados Fernando García S.L. (Commercial Court #9 of Madrid, December 22, 2011). The plaintiff is a company that commercializes elevator shoes for men—shoes with raised insoles that make people look taller—and holds several trademarks bearing the word MASALTOS and MASALTOS.COM. The defendant is a competitor company who sells as well elevator shoes for men, who was using the word MASALTOS in several allegedly infringing ways—in its web site, both visible and hidden as metatags, and also as a keyword in Google’s Adwords.
A grammatical remark must be made before going into more detail. The word MASALTOS is actually a mix of two words. The Spanish word “más” (bearing this orthographic accent) means “more”. The adjective “altos” means “tall”, specifically for substantives which are masculine and plural, such as “hombres” (men). Using the words “más altos” as a trademark for shoes that make men look taller has the obvious problem that these words actually serve to design the intended purpose of the goods and hence such a sign could not constitute a trademark according to article 3(1)(c) of Directive 2008/95/EC – and article 5(1)(c) of the Spanish Trademark Act.
As a matter of fact, the defendant filed a counterclaim asking the court to declare that plaintiff’s trademarks were void in the first place because of their descriptive character. The court began by analyzing this claim; as if the trademarks were in fact void the action brought by the plaintiff would lack merit. The court found, however, that the plaintiff’s trademarks had some distinctive character and thus were not void, particularly due to the fact that those two words are written together and without the orthographic accent (MASALTOS), and that the trademarks are not just denominative but also graphic, as the words are presented with a particular shape. The court thus concluded that while the trademark owner cannot prevent a third party from using the two separate words (más altos), the use of the expression MASALTOS as such could indeed constitute a trademark infringement.
The defendant actually used this expression in several ways. It runs a website under the domain name “hiplus.com”. At the time the lawsuit was filed, the homepage featured the slogan “Hiplus – Hombres MAS ALTOS. Zapatos con alzas para ser MAS ALTOS” (Hiplus – Taller men. Shoes with raised insoles to be taller). In an interior webpage, though, the two words appeared written together: ““Hiplus – Hombres MASALTOS. Zapatos con alzas para ser MASALTOS”. This webpage was located at “hiplus.com/masaltos” – hence again one could see the sign written as a single word.
What makes the case more interesting is that the defendant had as well selected those words—both “más altos” and “masaltos” as keywords to trigger sponsored links within Google’s Adwords program. It also he word “masaltos” as a metatag in the webpage source code in the hope of appearing in the organic search results as well.
The ruling relies on the interpretation offered by the EUCJ in Google France (joined Cases C-236/08 to C-238/08) and its progeny (namely L’Oréal and Interflora). Accordingly, it holds that an advertiser who purchases a referencing service and chooses as a keyword a sign identical to a third party’s trademark is actually using the mark in the course of trade (see Google France, 51). When this use is intended to make internet users aware of the goods offered by the advertiser, it constitutes a use in relation to those goods or services (see Google France, 71). The court quotes again from Google France stating that a trademark owner is entitled to prohibit advertising based on such a keyword “where that ad does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party” (see Google France, 99). It quotes as well from the Interflora judgment regarding the adverse effect on the ‘investment’ function of the mark.
Interestingly, the ruling maintains that while the EUCJ holdings relate to cases of identical signs, they can “without any doubt” be applied to the use of similar signs for identical or similar products that cause confusion, provided that one or more of the trademark functions is affected. Moreover, it holds that this doctrine can be applied as well to the use of identical or similar signs as metatags.
The court concludes that, in this case, the use of the expression “MASALTOS” as a keyword by the defendant cannot be justified on account of the need to describe his products. Rather, it is a use that adversely affects the origin indication function of the plaintiff’s trademark, particularly taking into account the fact that the defendant’s website uses as well the same sign. The court is convinced that the only purpose of this conduct is to mislead users.
Accordingly, the ruling grants the injunction asked for by the plaintiff. In addition, the plaintiff is awarded 6,059.25 Euros in statutory damages pursuant article 43(5) of the Spanish Trademark Act.
More info (in Spanish) here
A Spanish Court has made today a referral to the European Union Court of Justice regarding the so-called right to be forgotten.
The issue is in essence whether individuals have the right to oblige search engines to erase or block search results that point to personal information.
The Court making the referral is the Audiencia Nacional. Some 130 cases are pending before it, in which Google is appealing injunctions issued by the Spanish Data Protection Authority against the search engine.
The specific case considered in the referral relates to an official notice of foreclosure, derived from an outstanding debt with the Social Security, which appeared in La Vanguardia (a Catalan newspaper) in January 19, 1998. The debt was later on paid by the debtor and the foreclosure never took place. However, if you type the name of the concerned person on Google, the first result links to the page of the newspaper’s archive showing that old notice of foreclosure.
The affected person resorted to the Spanish Data Protection Authority (AEPD), asking for an injunction against both the newspaper and the search engine. The AEPD dismissed the claim against the newspaper (who was under the legal obligation of publishing the official notice), but issued an injunction against Google Spain SL and Google Inc. to delete the data from the search engine’s index. Google appealed this injunction to the Audiencia Nacional.
The court is referring nine questions to the ECJ, which can be summarized as follows.
a) Regarding the applicable law, the problem is whether the data protection Directive 95/46/EC and the national law transposing it apply to Google—being Google Inc. a US company. What the national court is asking the EJC in this respect is in essence:
(i) Whether Google Spain SL can be deemed an “establishment” under Article 4(1)(a) of the Directive.
(ii) Whether Google “makes use of equipment, automated or otherwise, situated on the territory of” Spain under Article 4(1)(c) of the Directive.
In this regard, the court asks if this can result from the fact that Google uses its crawlers to gather information from websites hosted in Spain, or from the fact that it uses a Spanish country code TLD (Google.es) and directs Spanish users to searches and results relevant for them in terms of language or location.
Moreover, the court asks whether that “use of equipement” can be inferred from the fact that Google stores the indexed information in servers whose location is kept undisclosed.
(iii) Whether, if the previous questions are to be answered in the negative, still the Directive should apply taking into account that Data Protection is a fundamental right according to Article 8 of the Charter of Fundamental Rights of the European Union.
b) As to the search engine’s activity, the court asks in essence:
(i) Whether the functions of a search engine fall under the notion of “processing of personal data” as defined in Article 2(b) of the Directive 95/46/EC.
(ii) If the previous question is to be answered in the affirmative, the court asks whether the company running the search engine can be deemed to be the “data controller” according to Article 2(d) of the Directive, with all the obligations the Directive imposes on such controllers.
(iii) If the previous question is to be answered in the affirmative, the court asks whether the National Data Protection Authority, enforcing the rights laid down in Articles 12(b) and 14(a) of the Directive, may directly require the search engine to remove the data form its index, without previously or simultaneously requiring this removal to the origin website where the information is published. And whether search engines would be exempted from the obligation to remove the data when the publication of that information was licit is maintained in the origin website (as it was in this case).
c) Finally, regarding specifically the so-called “right to be forgotten”, the court asks whether the rights to the erasure or blocking of data [art. 12(b) Directive 95/46/EC], and to object to the processing of data [art. 14(a) Directive 95/46/EC] allow the data subject to prevent search engines from indexing personal information of her, on the basis that she doesn’t want this information to be known by Internet users because she thinks it may harm her or because she want it to be forgotten, even if that information was lawfully published by third parties.
The referral is certainly timely and interesting, not just for Spain but for all Member States.
Read more: The court ruling making the referral (PDF) (in Spanish)
A civil court in Spain handed down last Thursday a ruling dismissing plaintiff’s claims against Google Spain over the so called “right to be forgotten”. The case is Alfacs Vacances SL v. Google Spain SL (ruling of February 23, 2012, issued by the Court of First Instance of Amposta).
While the right to be forgotten is being the subject of heavy litigation in Spain, this is one of few judicial rulings on the matter. Indeed, most claims have been brought before the Spanish Data Protection Authority, its orders being subsequently challenged before the Audiencia Nacional (the court with the power to reverse the orders issued by the DP Authority). About 130 cases are thus pending before the AN, which might be about to refer the issue to the EUJC.
The plaintiff in this civil case, Alfacs Vacances SL, runs a campsite near Tarragona. In 1978, the campsite was hit by a terrible accident with more than 200 people killed and many others severely burned when a tanker truck loaded with flammable liquid got on fire on the highway just in front of the campsite. While the accident happened more than 30 years ago – and the campsite was acquitted of any liability – it still springs out as the first search result when you search for the Alfacs campsite (Alfaques, in Spanish) on Google, including horrifying thumbnails of burned corpses. This is certainly not the kind of publicity you want for attracting new clients.
Alfacs Vacances SL filed a lawsuit against Google Spain SL, claiming that the way Google chooses to order and present its search results violates the plaintiff’s right to honor and damages its reputation. The complaint sought moral damages, as well as an injunction to stop showing those results.
Though Alfacs Vacances had sent some notices to Google Inc., the complaint was finally filed exclusively against Google Spain SL, its Spanish subsidiary, whose activity is limited to marketing and advertising services. As the entity actually running the search engine is Google Inc. – the American company – Google Spain SL alleged lack of standing to be sued. The judge accepted this contention and dismissed the case for lack of standing. Hence, and though it is a clear win for Google Spain, the ruling doesn’t address any of the underlying issues, which is somewhat disappointing.
The controversial Spanish bill that aims to block allegedly copyright infringing websites continues to be in the center of a hot public debate. The bill, widely known as “Ley Sinde” –Sinde Act, after the Minister of Culture’s name– was rejected by Congress last 21 December. The Government is now trying hard to move it forward in the Senate.
But, what is this bill exactly all about and how is it different from the legislative measures taken in other European countries? I will try to clear it up in this post.
The “Sustainable Economy Bill”
The so-called Ley Sinde was actually proposed as part of the Sustainable Economy Bill (SEB), a bill addressing a wide range of issues in response to the present scenario of economic recession. The SEB included –almost hidden as a final provision– this new legal mechanism conceived to tackle online copyright infringement (hereinafter, the “Ley Sinde”).
When the whole SEB was finally voted in the House of Representatives (Congreso de los Diputados) on December 21, this particular piece was rejected, and so the bill was sent to the Senate without the “Ley Sinde” provision. What the Governement is trying to do now is to reintroduce is as an amendment to the SEB in the Senate.
Not targeting individual file-sharers
Unlike other legislative measures taken by Member States such as France or the United Kingdom, the Spanish Ley Sinde (at least in its original form) doesn’t aim at users that illegally make available copyrighted material. Rather, it focuses exclusively on information society service providers—whether or not acting as intermediaries—who may violate copyright.
While it covers all kinds of information society service providers, the main purpose behind the Ley Sinde—as publicly stated by its promoters—is fighting against websites that provide links to copyrighted material located in P2P networks or on public servers, whether for downloading or streaming.
The Ley Sinde grants to an administrative body—the newly created Second Section of the Intellectual Property Commission—the power to assess whether an information society service is violating copyright. It also grants this administrative body the power to order the provider of that service to stop providing it or to remove the infringing material.
Amending the Law on Information Society Services and Electronic Commerce
As it deals specifically with the freedom to provide information society services, the new rule is drafted primarily as an amendment to the Law on Information Society Services and Electronic Commerce (LSSICE) –the Spanish Act transposing the E-Commerce Directive– particularly to its Art. 8.
Let us then start by presenting the content of this provision and its links to the E-Commerce Directive (ECD), and then we will see how it would be amended if the Ley Sinde is finally enacted.
Art. 8 LSSICE establishes the cases in which a Spanish judicial or administrative authority may restrict the provision of information society services. It is directly connected to Art. 3 ECD, which deals with the so-called country of origin principle and with the exceptions to it.
According to this principle, “Member States may not, for reasons falling within the coordinated field, restrict the freedom to provide information society services from another Member State”.
There are, however, some exceptions to this principle, which are set forth in Art. 3.4 ECD. This article allows Member States, under certain conditions, to take restriction measures in respect of a given information society service when the measures are necessary for some of the following objectives:
(a) “public policy, in particular the prevention, investigation, detection and prosecution of criminal offences, including the protection of minors and the fight against any incitement to hatred on grounds of race, sex, religion or nationality, and violations of human dignity concerning individual persons”,
(b) “the protection of public health”,
(c) “public security, including the safeguarding of national security and defence”, and
(d) “the protection of consumers, including investors”.
The measures must be proportionate to these objectives and “taken against a given information society service which prejudices [them], or which presents a serious and grave risk of prejudice to those objectives”.
The country of origin principle set forth in Art. 3.2 ECD was transposed in Art. 7 LSSICE. Next, Art. 8 LSSICE—in accordance with Art. 3.4 ECD—provides for the possibility of adopting restriction measures with regard to a given information society service when it prejudices or may prejudice to some of the objectives listed in it.
However, unlike in Art. 3.4 ECD, this possibility of restriction measures in Art. 8 LSSICE is not established just as an exception to the country of origin principle but in general, that is, regardless of whether the service is originated in another Member State, in Spain, or in any other country.
This does not appear to be an improper transposition of the Directive. According to the ECD it is possible for a Member State to adopt restriction measures for the sake of the said objectives with regard to services originating in another Member State. Thus, it seems that nothing prevents a Member State to subject the services originating within its territory to the same kind of restrictions, let alone services originating in non-EU Countries.
The grounds for adopting restriction measures in the LSSICE
The measures envisioned in Art. 8 LSSICE may consist of the interruption of the provision of the service or the removal of the illicit material. The objectives that may motivate those measures are similar to those listed in Art. 3.4 ECD:
(a) the protection of public order, the investigation of criminal offences, the public safety and the national defence;
(b) the protection of public health and of consumers, including investors;
(c) the respect of human dignity and the principle of non-discrimination on grounds of race, sex, religion, opinion, nationality, disability or any other personal or social circumstance; and
(d) the protection of youth and childhood.
The restriction measures should be adopted by the authority which is competent for the protection of the concerned objective, acting within the competencies conferred on it by the Law.
This “competent authority” does not always need to be a court, as the protection of some of the objectives is also entrusted to administrative bodies—for instance in the case of public health or consumer protection.
Here is where the Ley Sinde comes into play. It introduces an amendment to this Art. 8 LSSICE, which consists of adding a new objective to the list: the protection of copyright.
The purpose of the Ley Sinde, as mentioned above, is to allow an administrative authority to order restriction measures against information society services that may violate copyright. Thus, Art. 8 LSSICE—an article that, as noted, already allows not only courts but also administrative bodies to restrict the provision of information society services—was seen by the drafters of the bill as the best place to insert the new rule.
A new administrative authority
Next thing is creating the administrative authority that will exert the function of protecting copyright and ordering the said measures. To this end, through an amendment to the Copyright Act (TRLPI), the SEB establishes a new Section within an already existing body—the Intellectual Property Commission.
While the First Section of this Commission will continue to exert mediation and arbitration functions, the newly created Second Section will have the mission of protecting intellectual property rights from its violation by information society service providers, and will be the authority with the power to adopt the restriction measures provided for in Article 8 LSSICE.
According to the proposed amendment of Art. 158 TRLPI, the Second Section of the Intellectual Property Commission will be able to order the measures for the interruption of the provision of an information society service or for the infringing materials to be taken down.
The measures may be taken against an information society service provider who acts with direct or indirect lucrative intent. It appears that the reference to “indirect” lucrative intent is meant to include the situations such as those where the owner of a website offering links to infringing content does not charge a fee for the service, but seeks economic profit through advertising placed on the page.
The restriction measures may be taken as well against providers lacking direct or indirect lucrative intent as long as their conduct causes—or is capable to cause—a patrimonial harm. Arguably, this encompasses any situation involving an infringement, and thus—in spite of what was claimed sometimes in the debates—the bill does not target just people who try to profit from copyright infringement but has a potentially broader scope.
Freedom of expression concerns
Once the first draft of the Ley Sinde was made public it prompted a strong opposition from internet users. In particular it was argued that allowing an administrative authority to order the closing down of a website would violate the principle of freedom of expression.
It was contended that websites are media and therefore only a court could order to close them down. Actually, the current text of Art. 8 LSSICE already takes this into account, as a measure of closing down of a website adopted by an administrative authority might run afoul of Art. 20.5 of Spanish Constitution, which establishes that “[t]he seizure of publications, recordings, or other means of information may only be adopted by a judicial decision”.
Indeed, Art. 8 LSSICE includes a paragraph stating that the competent judicial authority—as the one responsible for ensuring the rights to freedom of expression, to receive information, to academic freedom and to literary, artistic, scientific and technical creation—will be the only one who may adopt the restriction measures contemplated in that provision wherever this competence is attributed exclusively to judicial authorities by the Constitution or other laws governing the concerned rights.
It could be argued, thus, that this paragraph of Art. 8 LSSICE already ensures that the proposed amendment will not allow administrative authorities to take restriction measures that may violate freedom of expression and the other related rights. However, it was contended that the reform would indeed be an assault on free speech as the one who would decide in the first place whether or not the restriction measure affects those rights would be the administrative authority itself.
A truly peculiar system of judicial control
Therefore, and in view of the strong opposition against the bill, before introducing it into Parliament the government modified it to include a (truly peculiar indeed) system of judicial control.
It was decided that once the Commission orders a restriction measure, it must ask the court to authorize its execution. However, the court will not be able to consider the merits of the case, i.e. whether there is indeed a violation of copyright.
Rather, the court must only take into account whether the concerned measure prejudices the rights and liberties enshrined in Art. 20 of the Constitution, quoted above. Moreover, the court’s decision must limit itself to either grant or deny the authorization—it cannot modify or amend the measure.
This peculiar system raises important concerns. Not the least of them is that it appears to craft an administrative procedure in the hope of achieving something that courts have been denying so far—deeming that websites that link to infringing content engage in copyright infringement and closing them down.
This is certainly striking, as it is difficult to see how an administrative body could find those websites to be infringing where judges have found them not to be so.
Note: this post was based on this recently published paper
The recent Spanish court ruling that clears YouTube of copyright liability has got a good deal of international attention. It’s been reported, for instance, by the The New York Times, The Wall Street Journal, The Guardian, Out-Law, TechDirt, TechCrunch, and many other sources, including, of course, Google itself.
In this post I’ll try to give an account of the case, providing some context to the Spanish law when needed.
First, I’d like to make clear that this ruling is not a decision handed down on appeal, despite what some of the reports appear to suggest. Rather, it is the judgment delivered by the lower Court, the Commercial Court of Madrid No 7. It now can be—and surely will be—appealed before the Court of Appeals (the “Audiencia Provincial” of Madrid).
True, there had been two previous decisions on the case, but they were issued by the same Judge and were preliminary rulings dealing only with precautionary measures requested by the plaintiffs.
On July 1, 2008, Telecinco (actually two companies of the group: Gestevision Telecinco S.A. and Telecinco Cinema S.A.U.) filed a petition for preliminary measures of protection against YouTube under article 141 of the Spanish Copyright Act (Texto Refundido de la Ley de Propiedad Intelectual, TRLPI). They asked the court to grant these measures inaudita parte, that is, before the defendant has the opportunity to present its arguments against it. The Court accepted Telecinco’s views about the urgent need for adopting the requested measures and issued an order granting them on July 23, 2008. The ruling ordered YouTube to stop using Telecinco’s clips on YouTube’s site and to remove them from it. The court further prohibited YouTube to use those works in the future without Telecinco’s authorization. At the same time, the court ordered the plaintiffs to immediately provide enough identification of the infringing contents so that their use on YouTube could be stopped and prevented in the future.
YouTube then filed a brief in opposition to the adopted measures. It argued they were technically unfeasible, essentially because the information provided by Telecinco didn’t allow a proper identification of the clips. In a new order issued on November 21, 2008, the court accepted this argument and acknowledged that YouTube was already offering a way for copyright owners to identify allegedly infringing clips. The court deemed this system to be appropriate—at least for that initial stage of the procedure—and thus modified the prior order in the sense of requiring Telecinco to specifically provide the URLs of the claimed infringing clips. I don’t know whether or not Telecinco complied with this request, or to what extent, though it appears that the clips, or some of them, were effectively removed from YouTube.
What has now been rendered is the final judgment on the case. It is certainly an interesting ruling. It nicely parallels some of the holdings of Viacom v. YouTube. It would be interesting to highlight the similarities between the discussions in both cases, but that would be too long for a single post and so I will leave it for another occasion. In any event, unlike in Viacom v. YouTube, where almost all documents filed on the case are available online at the justia.com website, in Telecinco v. YouTube—as it’s normally the case in lawsuits in Spain—we lack access to the actual text of the complaint and to defendant’s opposition brief. Hence, it is not easy to assess to what extent the ruling addresses all the arguments put forward by the parties—or to what extent it side steps them. Rather, we must content ourselves with the streamlined references to the parties’ arguments offered in the ruling.
The ruling addresses three main questions. First, the nature of the service provided by YouTube, i.e. whether it acts as a mere intermediary or rather as a content provider. Second, in the event that YouTube is deemed to merely provide intermediary services, whether or not it qualifies for the hosting safe harbor set forth in the Spanish transposition of the E-Comm Directive. Third, in the event that it qualifies for the safe harbor, whether or not plaintiffs may be granted injunction relief.
i) The nature of the service provided
Plaintiffs further contend that YouTube acts as a content provider because it carries out “editorial functions”, such as selecting “featured videos” and preventing some inappropriate, but not unlawful, clips from appearing on the site. The court holds that in fact it would be impossible for YouTube to control all the videos users upload. Besides, it asserts that selecting “featured videos” doesn’t amount to an editorial function, as it is carried out automatically, following certain objective parameters. Nor the fact that videos are displayed on a site designed by YouTube and distinguished by its trademark would, according to the court, turn YouTube into a content provider. Similarly, the court states that the fact that YouTube exploits its site for gain is not a sign that its services are not of an intermediary nature. The court rightly underscores that the E-Comm Directive presupposes that intermediary services covered by the safe harbors are provided for gain.
The ruling goes on describing the notice-and-take-down procedure YouTube has in place. Just like in Viacom, the Judge finds that this procedure works smoothly, and highlights that every time Telecinco has followed it to request the taking down of a video, YouTube has promptly reacted removing the allegedly infringing clip. The court stresses that, being an intermediary service provider, YouTube cannot be subject to a general obligation of monitoring its site nor to actively seek for facts or circumstances revealing infringements (art. 15 E-Comm Directive).
ii) Qualifying for the safe harbor
Once it has been established that YouTube provides an intermediary service, the second group of issues relate to whether it qualifies for the hosting safe harbor laid down in the Law on Information Society Services (LSSI) (the Spanish transposition of the E-Comm Directive). Article 16 of this Law implements the liability exemption for hosting set forth in Article 14 of the E-Comm Directive.
As it is well known, the hosting safe harbor exempts a service provider from liability on the condition that it lacks actual knowledge of illegal activity or information (or, with regards claims for damages, it lacks awareness of facts or circumstances from which the illegal activity or information is apparent), and that upon obtaining such knowledge or awareness, acts expeditiously to remove or to disable access to the information.
It is worth noting here that the Spanish transposition of the Directive does not contain the standard of “awareness of facts and circumstances”. Rather, it establishes a single standard consisting of the lack of “actual knowledge”. In addition, it establishes a very narrow legal notion of actual knowledge. According to Article 16.1.II of the Spanish Law, “[i]t will be understood that the service provider has the actual knowledge referred to in […] when a competent body has declared that the data are unlawful, or has ordered their removal or the disablement of access to them, or the existence of the damage has been declared, and the provider knew of this resolution, without prejudice to the procedures of detection and removal of content that providers may apply by virtue of voluntary agreements, and without prejudice to other means of actual knowledge that might be established.”
Spanish courts have wrestled over how to construe this provision. Some rulings have taken the strict view that only in the cases contemplated by this article the provider has the relevant knowledge, while others have chosen a more open reading, admitting other ways of gaining this knowledge. Finally, in a judgment issued on December 9, 2009, the Spanish Supreme Court explicitly rejected the strict construction of this article on the grounds that it would not be in accordance with the Directive.
Telecinco argued for an open interpretation of the concept of actual knowledge. The court holds that the concept of actual knowledge must indeed be construed in an open way (thus not limited to the instances where a prior ruling has declared the illegality of the materials), but at the same time in a way which is compatible with the general principle that the provider cannot be subject to a general obligation of monitoring. As a result, according to the court, copyright owners should precisely identify the specific infringing files in order for the provider to gain actual knowledge of the infringement. The court finds that YouTube’s system of notice-and-take-down is consistent with this approach. While it acknowledges that this may be burdensome for copyright owners, the court stresses that this is nonetheless the order of priorities that both the EU and Spanish legislators have chosen.
iii) Injunction relief
Finally, the court tackles the issue of the injunction requested by plaintiffs. According to the ruling, the plaintiffs requested an injunction against YouTube under articles 138 and 139 of the Spanish Copyright Act. These provisions allow right holders to apply for an injunction against intermediaries whose services are used by a third party to infringe, even where the acts of the intermediaries as such are not infringing, “without prejudice to the provisions of [the LSSI]”. The court rejects the injunction on the grounds of the latter clause of the provision. The court thinks to be “blindingly obvious” that this clause “completely eliminates the possibility of bringing the action” against intermediary service providers.
(Arguably, however, this is not that clear. The E-Comm Directive clearly states that the hosting safe harbor “shall not affect the possibility for a court or administrative authority, in accordance with Member States’ legal systems, of requiring the service provider to terminate or prevent an infringement” (Art. 14.3 E-Comm Directive). Therefore, even though the Spanish transposition remains silent about this point, it seems that the liability exemptions of the LSSI, as such, do not prevent injunctions against the service provider (provided, of course, that the injunction doesn’t imply actively monitoring the site). If the LSSI doesn’t prevent injunctions then the “without prejudice to” clause quoted above might have a different meaning).
In accordance with all the reasons expressed above, the ruling dismisses all plaintiffs’ claims. The ruling can be appealed, and it appears that Telecinco will appeal indeed.
The full text of the ruling (in Spanish) can be downloaded here (PDF).