On March 15 2016 the Paris Court of Appeal issued an interesting ruling in the fight against online piracy and websites that infringe copyright and related rights in regards to the contribution of intermediaries such as internet service and search engine providers.

Background

Article L336-2 of the IP Code allows rights holders – as well as collecting societies and trade associations representing rights holders – to seek a tribunal order to have intermediary service providers take measures to terminate or prevent infringement. This article transposes EU Article 8(3) of the Information Society Directive (2001/29/EC) into French law. Rights holders have previously used this provision to obtain blocking orders against notorious infringing websites such as The Pirate Bay, as well as a ruling confirming that search engine providers can be ordered not to propose certain keyword suggestions leading to pirate sites.

Facts

Film producer and distributor trade associations initiated action and on November 28 2013 obtained a blocking order against internet service and search engine providers regarding several infringing websites. Both the internet service and search engine providers appealed the first ruling. The Paris Court of Appeal widely confirmed the decision, which was the first to order search engine providers not to give access to infringing websites by providing hyperlinks leading to them.

Decision

First, the court confirmed that trade associations can initiate such a procedure to defend the collective interest of the profession that they represent under Article L336-2 of the IP Code.

The court then confirmed that the definition of an 'intermediary' subject to such a procedure includes search engines. Although one of the search engine providers had sought to have the question referred to the European Court of Justice for a preliminary ruling, the court stood by the initial decision. It ruled that – according to Article 8(3) and Recital 59 of the Information Society Directive – a 'search engine provider' is an intermediary whose services are used by a third party to infringe a copyright or related right. Notably, the court held that search engines' activities are not limited to a purely neutral role of indexing and ranking hyperlinks, and that they contributes to the transmission of online infringement by third parties.

The search engine provider's French subsidiary asked the court to reject any demand against it, as it had had no technical role nor had it directly and effectively participated in the search engine exploitation. However, the court confirmed that the subsidiary was also an 'intermediary' in the meaning of French law, insomuch as it was "able to contribute" to remedying the infringement. The court based its decision on several facts showing that the subsidiary had been involved in the exploitation of the search engine's services, even though it had not been in charge of the technical aspects.

The court advised that this ruling was not subject to the liability of the intermediaries in question, nor to the liability of the person performing the online infringement. In the context of an Article L336-2 action, courts are not asked to rule on the liability of an intermediary – rather, on its ability to contribute to stopping or preventing an infringement. Conversely, the ruling did not prevent rights holders from seeking the liability of an intermediary based on alternative legal grounds.

The court also stated that it was unnecessary for the requested measures to be of absolute efficiency, and therefore rejected the search engine provider's argument that the measures are easy to circumvent. This is in line with both prior French case law and European Court of Justice case law – notably Telekabel, which was quoted in the ruling.

Finally, the court overturned the first-instance ruling on the specific question of the cost of implementing the measures. While the first-instance court had ruled that rights holder trade associations should bear the burden of the cost, on submission of an invoice by an intermediary the associations successfully appealed. The court emphasised that – in the context of a significant infringement – rights holders' businesses are endangered. It is therefore justified for intermediaries to bear the burden of the cost of the measures, because rights holder trade associations have no control over these costs and, most notably, internet service and search engine providers are integral to infringing websites being made available.

The court noted that the burden of cost may be borne by rights holders in the case of a disproportion relating to the complexity, cost or duration of the measures that compromises the viability of the internet service or search engine provider's business model, which was not the case here.

Comment

This decision is a major step for rights holders that have long been encouraging internet intermediaries – and notably, search engine providers – to help in the fight against significant online copyright infringement.

This decision has been appealed before the Supreme Court; therefore, this reference should be closely monitored.

For further information on this topic please contact Loïc Fouquet at Nomos by telephone (+33 01 43 18 55 00) or email (lfouquet@nomosparis.com). The Nomos website can be accessed at www.nomosparis.com.

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