The Court of Rome has issued what could prove to be a highly controversial decision on the liability of internet search engines.
PFA Films Srl was the exclusive licensee of exploitation rights in the film About Elly. It sought an interim injunction against Google Italy Srl, Yahoo! Italia Srl and Microsoft Srl (as the owner of the search engine Bing) on the grounds of breach of IP rights. PFA claimed that the three companies' search engines provided links to websites that allowed the streaming, downloading or peer-to-peer transfer of the film without PFA's consent.
The court dismissed the case in relation to Google Italy and Microsoft, as the Italian companies of the respective groups did not play an active role in the management of the search engines. However, the court surprisingly held that PFA's allegations against Yahoo! were well founded. It further held that:
- once websites which provide unlawful content have been identified, search engines can monitor the links to such websites and avoid indexing or linking to them;
- search engines are caching providers for the purposes of the EU E-commerce Directive (2000/31/EC) and the liability exemption under the directive does not affect their obligation to remove infringing material when they become aware of them;
- as PFA had notified Yahoo! Italia of the breach, this notification was sufficient to make Yahoo! Italia aware of the unlawful material and to impose an obligation to monitor the links to the unlawful content; and
- Yahoo! Italia's failure to remove the links to infringing versions of the film following notification by PFA resulted in Yahoo! Italia bearing contributory liability.
The court therefore ordered Yahoo! Italia to remove the links to the unlawful copies of the film.
The decision is significant for two main reasons. First, the court's approach may compel search engines to remove links to content simply on the basis of notice from an alleged rights holder, without the need for the latter to provide evidence of infringement. Second, the removal obligation in this case applies not only to links to the websites that provide the unlawful content in question, but also to other websites that - although they perform lawful activities - contain links to the infringing websites (which are to be identified by the search engine, rather than communicated to it by the rights holder).
This is one of the first Italian court decisions on liability for linking. It raises questions about the future development of the liability regime for internet service providers (ISPs) in Italy. There is a risk that the decision could give rise to considerable abuses by right holders while imposing heavy obligations on search engines, which could be compelled to 'crawl' the Internet continuously to identify potential new links to disputed and potentially infringing content.
The decision will further heighten interest in the forthcoming results of the communications regulator's consultation on adopting a notice and takedown procedure for copyright materials. The next few months could bring significant changes for ISPs and their potential liability; search engine companies and other online service providers would be well advised to focus on Italy in order to avoid potential disputes in future.
For further information on this topic please contact Giulio Coraggio at DLA Piper Italy by telephone (+39 02 80 61 81), fax (+39 02 80 61 82 01) or email ([email protected]).