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!
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.
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)