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Spanish Court rules that links to infringing content are copyright infringements

December 19, 2014

In a recent ruling (PDF), a Spanish appellate court (Audiencia Nacional) has upheld the decision of the Spanish agency for the administrative enforcement of copyright — the Intellectual Property Commission (IPC).

The IPC had ordered that a torrent linking website (elitetorrent) remove some of its torrent links to protected works.

This is the first case where the Audiencia Nacional deals with an appeal against an order issued by the ICP and tackles the substance of the legal question at issue, i.e., whether the challenged links constituted a copyright infringement.

It concludes that the links were indeed a copyright infringement, and thus rejects the appeal brought by the webmaster.

The ruling holds that a link to non-authorized content amounts to an act of making available, and thus require the authorization of the rights holder. The court reaches this conclusion on the basis of the CJEU judgment in Svensson. There, the CJEU held that a link constitutes an act of communication to “a public”, albeit it does not need to be authorized where it points to a work which the right holders had made freely available on the Internet, as in that case the link does not target a “new public”, different than that already taken into account by the rights holders when they authorized the initial communication.

The Spanish Audiencia Nacional states that the Svensson criteria fully apply to the case at issue and concludes that the linking website carried out an act of communication to the public which did required the right holders’ authorization, as they “had not authorized the exploitation free of restrictions of their work on the Internet”.

Text of the ruling (in Spainsh) available here (PDF).

Right to Be Forgotten: Google Sentenced to Pay Damages in Spain

December 17, 2014

(Cross posted to the Stanford’s Center for Internet & Society Blog)

The CJEU judgment on the right to be forgotten, Google Spain v. Mario Costeja, hit the search engine on an unexpected front – damages. On the basis of the CJEU’s judgment, the Barcelona Court of Appeals ordered Google to pay damages to an individual who, like Costeja, sought the removal of links to some old, damaging information from the search results.

In 1981, the plaintiff of this case was criminally charged for violating “public health” regulations. He was finally convicted by the Spanish Supreme Court in 1990. Nine years later, he was granted pardon. The Royal Decree granting this pardon was subsequently published in the Boletín Oficial del Estado (Official Gazette), as is required by the law. When typing plaintiff’s name in Google, links to the Official Gazette would appear, thus revealing that this person had committed a crime about thirty years ago.

In 2009, he filed a complaint against Google Spain SL before the Spanish Data Protection Authority (DPA). The DPA ordered Google Spain SL to adopt the measures necessary to withdraw the data from its index and to prevent access to the data in the future. Like in many other similar cases – including the Costeja’s case – Google appealed this decision to the Audiencia Nacional, where it is still pending.

On March 22, 2011, long before the CJEU rendered the Google Spain ruling, the plaintiff brought also a civil lawsuit asking for damages. This is the case now decided by the Barcelona Court of Appeals. The complaint asked for the removal of the links, and for damages. However, at an initial stage of the proceedings, the plaintiff acknowledged that the contested links had already been removed, and thus only the claim for damages survived in the lawsuit.

Initially, the first instance court rejected the complaint, and the plaintiff appealed. On July 17, 2014 (albeit only recently reported), the court of appeals handed down its ruling granting the plaintiff’s claim and awarding damages, although dramatically reducing the exaggerated amount demanded. The court relied heavily on the CJEU Google Spain judgment and held that Google infringed the subject’s data protection rights by failing to remove the links when requested to do so. The plaintiff was awarded moral damages for the period of time the links were accessible.

The Data Protection Directive (95/46) orders Member States to “provide that any person who has suffered damage as a result of an unlawful processing operation or of any act incompatible with the national provisions adopted pursuant to this Directive is entitled to receive compensation from the controller for the damage suffered.” This provision was transposed into art. 19 of the Spanish Data Protection Law, which is the basis for the complaint.

Google successfully claimed that the safe harbor for search engines (art. 17 of the Law on Information Society Services) applied to it. However, according to the court, Google lost the safe harbor when it obtained the actual knowledge of the offending links, at the time it knew about the DPA decision. While this claim for damages is independent from any administrative proceeding, the court came to the conclusion that Google was liable from the moment it was notified about the DPA decision, and up to the moment the links were removed – a time span of about ten months.

As noted, the defendant in this case was not Google Inc., but its Spanish subsidiary, Google Spain SL – along with some other entities. The court rejected the defendant’s contention that because the search engine is operated by Google Inc. – a different entity – Google Spain SL cannot be held liable.

The text of the ruling, which has been appealed before the Supreme Court, is available here (in Spanish). Please note that the names of individual parties are anonymized.

New Paper: Privately Litigated Disconnecting Injunctions

July 18, 2014

Martin Husovec and I have just finished a paper titled Privately litigated disconnecting injunctions, which is available at the ssrn website. It deals with a particular type of injunctions that rights holders might apply for against intermediaries on the basis of Art. 8(3) of the InfoSoc Directive, which consist of enjoining an ISP from providing internet access to one of its users, allegedly engaging in copyright infringement. A case already decided in Spain granting the disconnecting injunction serves us as a study case to assess the problems this type of injunctions face. We deal particularly with the serious problems these injunctions raise regarding their compatibility with the EU Charter of Fundamental Rights.

We conclude as follows:

Privately litigated disconnecting injunctions requiring ISPs to cease providing internet access to one of its subscribers raise serious concerns from the standpoint of their compatibility with the EU Charter of Fundamental Rights and the European Convention of Human Rights. For these injunctions to be compatible with the Charter and the Convention, they should respect a number of key requirements. First, as discussed in Part III(1), the concerned individual should be granted the opportunity to defend his or her rights in court. To this end, the plaintiffs would need to previously identify that user, so that he or she could be included in the lawsuit. Second, as shown in Part III(2), some injunctions, particularly those without time limits, those targeting all national ISPs, or blocking also legitimate communications, might qualify as a criminal sanction and hence be unavailable due to the requirement of a stricter legal basis for criminal charges. Third, as explored in Part III(3), the test of proportionality seems difficult to be complied with. At the very least, the injunction should be narrowly tailored and show a sufficient degree of effectiveness. Moreover, not only courts, but also Member States themselves are limited by the Charter in the discretion they enjoy with regards to the way of implementing Art. 8(3) InfoSoc Directive. Whether they provide for disconnections against intermediaries as an administrative or judicial instrument of injunctive nature, Union law is implemented and thus also EU Charter constrains their actions. These problems make it extremely complicated that these injunctions are granted if courts, as they must, demand that the injunction applied for complies with the principles enshrined in the Charter and the Convention. In any event, obtaining such an injunction would be costly and slow for the plaintiff, and the outcome would hardly be effective in bringing to an end the user’s infringing activity. While some right holders may be inclined to explore this injunctions on the basis of the national transpositions of Art. 8(3) InfoSoc Directive, it seems unlikely that this form of relieve may end up being an attractive and effective tool to curb online infringement.

Any comment or suggestion will be welcome!

Spanish court orders an ISP to disconnect a copyright infringer

January 22, 2014

Cross posted on The Center for Internet and Society at Stanford Law School

In a recent ruling issued by the 15th Section of the Barcelona Court of Appeals – a Section specializing on IP – the Spanish ISP R Cable y Telecomunicaciones Galicia has been ordered to suspend, immediately and for good, the Internet connection of a user who engaged in copyright infringing file sharing. The text of the ruling (in Spanish) is available here (PDF). This is the first ruling of this kind in Spain.

The action was brought by Promusicae, an association of Spanish music producers, along with the main music labels operating in Spain. Aided by DtecNet, an anti-piracy firm, Promusicae learned of an internet user who was making available more than five thousand music files in his hard drive shared folder, using the P2P network Direct Connect. The investigative firm actually downloaded three files which corresponded to copyrighted songs owned by the plaintiffs. The user was identified by his nickname and IP address only. It was not possible to find out the user’s real identity as ISPs in Spain are not obliged to reveal the identity of their users for purposes of civil lawsuits.

Not knowing the identity of the file sharer, the plaintiffs brought the case directly and exclusively against the ISP, asking for an injunction under articles 138 and 139.1.h) of the Spanish Copyright Act which allow right holders to seek injunctions against intermediaries whose services are used by a third party to infringe copyright. The requested injunction consisted of suspending the provision of internet access to the infringer. The possibility of asking for injunctions against intermediaries is contemplated in art. 8(3) and Recital 59 of the EU Copyright Directive, though the specific modalities of such injunctions are left to Member States’ national law.

Strikingly enough, the ISP chose not to answer the complaint and didn’t intervene at all in the lawsuit.

The court of first instance dismissed the claim, holding that the user’s conduct was not infringing. The Court of Appeals reversed and held that the user’s acts were indeed infringing as they constituted unauthorized acts of reproduction and making available to the public. It held therefore that plaintiffs were entitled to the sought injunction.

Some difficult questions arise from this case – I will highlight just a few.

First, the user was not a party in the proceedings, as the lawsuit was filed only against the ISP. This poses the question of whether the infringement could be found without summoning the allegedly infringer – though it is of course unlikely that the user could have successfully invoked a defense against the finding of infringement.

Second, articles 138 and 139.1.h) of the Spanish Copyright Act require the injunction to be objective, proportionate and non-discriminatory. The court, however, did not assess at all whether such a radical measure satisfied the required proportionality.

Third, and closely linked to the question of proportion, an IP address does not necessarily identify a single individual as it could have been shared by different people.

Finally, the real effect of the injunction is rather dubious, as the infringer can easily shift to a different access provider.

Website operator sentenced to 18 months of prison for linking to P2P

November 17, 2013

Two recent rulings handed down in Spain have reached opposite conclusions on the much debated question of whether or not linking to copyright infringing content amounts to an act of communication to the public, and thus can be characterized as a primary infringement.

Both rulings come from criminal courts. In the first one, the case of mejortorrent.com and multiestrenos.com, the court held that linking to files located in P2P networks does not constitute a communication to the public, being instead a merely intermediary act (see Auto del Juzgado de Instrucción número 4 de Bilbao, August 30, 2013). The court notes that, in addition, the safe harbors laid down in the Spanish Information Society Services Act would apply.

In contrast, in a more recent ruling, the case of bajatetodo.com, another criminal court found that the website operator did engage in a communication to the public when providing links to infringing content hosted in P2P networks (see judgment 453/13 Juzgado de lo penal número 4 de Castellón, October 30, 2013). The court rejected the claim that the activity is sheltered by the linking safe harbor of the Spanish law. As a result, the website operator was sentenced to 18 months of prison (which most likely will not be effective, as is usual in sentences below 2 years) plus a fine. In addition, damages were awarded to the right owners who brought the action.

These rulings show how the issue is still debated in Spain. While most of the rulings in Spain have reached the conclusion that websites providing links to infringing material do not realize an act of communication to the public, some others have come to the opposite result. This debate has taken place for the most part in criminal procedures brought by right owners (a list of cases can be found here, in Spanish).

Of course, this is by no means just a domestic debate. Some references for a preliminary ruling which address directly this question are pending before the CJUE (see cases C-466/12, Svensson; C-279/13, C More Entertainment AB), and different opinions have been put forward by entities such as ALAI and the European Copyright Society.

Google held not liable for linking to defamatory content

May 26, 2013

google_logoIn ruling recently handed down by the Spanish Supreme Court, Google has been held not liable for linking to pieces of news containing false accusations against an individual.

This is the first case in which the Supreme Court deals with the specific “safe harbor” for information location tools (the linking safe harbor).

While the Electronic Commerce Directive chose not to establish a safe harbor for information location tools, the Spanish transposition law did establish a specific liability exemption covering this activity. According to Art. 17 of Ley de Servicios de la Sociedad de la Información, information society service providers providing links, directories or information search tools shall not be liable for the information to which they lead their users. This liability limitation is subject to the condition that the provider does not have actual knowledge that the activity or the information to which it directs, or which it recommends, is illegal, or that it damages a third party’s goods or rights. In case the provider obtains such knowledge it must act diligently to remove or to disable the link, in order to benefit from the exemption.

In this case, the plaintiff brought a civil action against Google and its CEO on account of the search results pointing to three websites where false accusations against the claimant were made. The claim was that by contributing to spread the defamatory content, Google was harming plaintiff’s reputation. The claimant had requested Google to take down the links several times, which Google refused to do, until the plaintiff finally filed the complaint.

The court of first instance dismissed the claim, holding that Google was protected by the linking safe harbor, and asserting that, despite the requests made by the claimant, the search engine did not obtain the required actual knowledge of the linked content’s illegality. The ruling was upheld by the Court of Appeals. Now the Supreme Court confirms again the dismissal.

A key element is the notion of actual knowledge. The linking safe harbor defines it in the same terms than the hosting safe harbor:

“It 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.”

The Supreme Court had already established in a 2009 ruling dealing with the hosting safe harbor that this narrow notion of “actual knowledge” was inconsistent with that provided for in the E-Commerce Directive, and  that it should thus be construed in a broad way so as to encompass the knowledge derived from facts or circumstances from which the illegal activity is apparent.

The Supreme Court deals now for the first time with the lack of actual knowledge requirement within the linking safe harbor and assumes that it must be construed in the same open way. It holds, nonetheless, that the notifications made by the claimant were not enough as to put Google in knowledge, because the illegal character of the information was not obvious in itself. Therefore, Google didn’t need to take the links down to benefit from the linking safe harbor.

Interestingly, thus, in seems that in a situation like the one considered in this case, the only way for Google to gain the relevant knowledge would have been a court order declaring the illegality of the linked content, much in the way of the narrow interpretation of the provision.

The text of the ruling (in Spanish) is available here

First ruling in Spain dealing with keyword advertising

May 6, 2012

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

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