People may use telecoms networks to pass information to each other. Some websites such as that run by The Pirate Bay allow people to download software that enables them to pass small pieces of information around a telecoms network. The question in this case is whether a Dutch court can order telecoms companies to block their customers’ access to websites like The Pirate Bay in order to stop presumed copyright infringement from taking place.
Continue readingTag Archives: intermediaries
Case C-494/15, Tommy Hilfiger – imposing online market rules onto market lessors
Can famous brands rely on their intellectual property rights to require a company, running a market, to insert a term into the leases with market-stall holders whereby the stall holders agree not to sell trademark infringing goods?
Background
The aspects to this case seem clear from the wording of the questions asked by the Czech court.
For ease, Article 11 of Directive 2004/48/EC governs ‘Injunctions’ and provides:
Member States shall ensure that, where a judicial decision is taken finding an infringement of an intellectual property right, the judicial authorities may issue against the infringer an injunction aimed at prohibiting the continuation of the infringement. Where provided for by national law, non-compliance with an injunction shall, where appropriate, be subject to a recurring penalty payment, with a view to ensuring compliance. Member States shall also ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of Directive 2001/29/EC.
Questions Referred
According to the website of the UK’s Intellectual Property Office, the Czech court has asked:
1. Is a person with a lease of premises in a market, who provides stalls and pitches on which stalls may be placed to individual market-traders for their use, an intermediary whose services are used by a third party to infringe an intellectual property right within the meaning of Article 11 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights?
2. Is it possible to impose on a person with a lease of premises in a market, who provides stalls and pitches on which stalls may be placed to individual markettraders for their use, measures, as provided for in Article 11 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, under the same conditions as those formulated by the Court of Justice in its judgment of 12 July 2011 in Case C-324/09 L’Oréal and Others v eBay and Others with regard to the imposition of measures on the operators of an online marketplace?
Comment
Case C-324/09, L’Oréal has been the object of a number of recent references made to the CJEU from various national courts.
Case C-324/09, L’Oréal featured in a reference from a French court about the sale of goods over the internet and the correct interpretation of EU Regulation 44/2001 (Brussels I); see further, Case C-170/12, Pinckney – where is the harm with an Internet sales offer?
The CJEU also mentioned L’Oréal in response to a reference Danish Supreme Court; see further, Case C-98/13, Martin Blomqvist – deliberately purchasing a fake Rolex from China.
The L’Oréal judgment was also alluded to in the CJEU’s ‘Papasavvas’ judgment; see further, Case C-291/13, Papasavvas – online libel, defamation and injurious falsehood.
Update – 20 November 2015
Article 11 of the Enforcement Directive and ‘intermediaries’ is also stake in a recent reference from the Dutch Supreme Court; see further, Case C-610/15, Stichting Brein – seeking website blocks to stop peer to peer technology.
Update – 7 July 2016
Judgment
A version of the CJEU’s judgment in Case C-494/15, Tommy Hilfiger ECLI:EU:C:2016:528 is reproduced below. The reproduction is not authentic. Only the versions of the document published in the ‘Reports of Cases’ or the ‘Official Journal of the European Union’ are authentic. The source of the reproduction is the Eur-Lex Europa web site. The information on that site is subject to a disclaimer and a copyright notice.
JUDGMENT OF THE COURT (Second Chamber)
7 July 2016 ()
(Reference for a preliminary ruling — Approximation of laws — Directive 2004/48/EC — Enforcement of intellectual property rights — Notion of ‘intermediary whose services are being used by a third party to infringe an intellectual property right’ — Tenant of market halls subletting sales points — Possibility of an injunction against that tenant — Article 11)
In Case C‑494/15,
REQUEST for a preliminary ruling under Article 267 TFEU from the Nejvyšší soud (Supreme Court, Czech Republic), made by decision of 25 August 2015, received at the Court on 21 September 2015, in the proceedings
Tommy Hilfiger Licensing LLC,
Urban Trends Trading BV,
Rado Uhren AG,
Facton Kft.,
Lacoste SA,
Burberry Ltd
v
Delta Center a.s.,
THE COURT (Second Chamber),
composed of M. Ilešič (Rapporteur), President of the Chamber, C. Toader, A. Rosas, A. Prechal and E. Jarašiūnas, Judges,
Advocate General: M. Wathelet,
Registrar: A. Calot Escobar,
having regard to the written procedure,
after considering the observations submitted on behalf of:
– Tommy Hilfiger Licensing LLC, Urban Trends Trading BV, Rado Uhren AG, Facton Kft., Lacoste SA and Burberry Ltd, by L. Neustupná, advokátka,
– the Czech Government, by M. Smolek and J. Vláčil, acting as Agents,
– the French Government, by D. Colas and D. Segoin, acting as Agents,
– the European Commission, by F. Wilman and P. Němečková, acting as Agents,
having decided, after hearing the Advocate General, to proceed to judgment without an Opinion,
gives the following
Judgment
1 This request for a preliminary ruling concerns the interpretation of Article 11 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ 2004 L 157, p. 45, and corrigendum OJ 2004 L 195, p. 16).
2 The request has been made in proceedings between (i) Tommy Hilfiger Licensing LLC, Urban Trends Trading BV, Rado Uhren AG, Facton Kft., Lacoste SA and Burberry Ltd and (ii) Delta Center a.s. regarding injunctions which the applicants in the main proceedings want to see granted against Delta Center for the purposes of compliance with their intellectual property rights.
Legal context
EU law
3 Recitals 10 and 23 of Directive 2004/48 state:
‘(10) The objective of this Directive is to approximate [l]egislative systems [of the Member States] so as to ensure a high, equivalent and homogeneous level of protection in the internal market.
…
(23) … rightholders should have the possibility of applying for an injunction against an intermediary whose services are being used by a third party to infringe the rightholder’s industrial property right. The conditions and procedures relating to such injunctions should be left to the national law of the Member States. As far as infringements of copyright and related rights are concerned, a comprehensive level of harmonisation is already provided for in Directive 2001/29/EC [of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (OJ 2001 L 167, p. 10)]. Article 8(3) of Directive 2001/29/EC should therefore not be affected by this Directive.’
4 Article 2 of Directive 2004/48, which defines the scope of the directive, provides in paragraph 1:
‘Without prejudice to the means which are or may be provided for in [European Union] or national legislation, in so far as those means may be more favourable for rightholders, the measures, procedures and remedies provided for by this Directive shall apply … to any infringement of intellectual property rights as provided for by [European Union] law and/or by the national law of the Member State concerned.’
5 Chapter II of Directive 2004/48, entitled ‘Measures, procedures and remedies’, contains six sections, the first of which, entitled ‘General provisions’, includes Article 3, which provides:
‘1. Member States shall provide for the measures, procedures and remedies necessary to ensure the enforcement of the intellectual property rights covered by this Directive. Those measures, procedures and remedies shall be fair and equitable and shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.
2. Those measures, procedures and remedies shall … be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade …’
6 Section 5 of Chapter II of Directive 2004/48 is entitled ‘Measures resulting from a decision on the merits of the case’. It comprises Articles 10 to 12 entitled ‘Corrective measures’, ‘Injunctions’ and ‘Alternative measures’ respectively.
7 Under Article 11 of Directive 2004/48:
‘Member States shall ensure that, where a judicial decision is taken finding an infringement of an intellectual property right, the judicial authorities may issue against the infringer an injunction aimed at prohibiting the continuation of the infringement. Where provided for by national law, non-compliance with an injunction shall, where appropriate, be subject to a recurring penalty payment, with a view to ensuring compliance. Member States are also to ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of Directive 2001/29/EC.’
8 Article 8(3) of Directive 2001/29, provides:
‘Member States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right.’
Czech law
9 According to the documents before the Court that Article 11 of Directive 2004/48 was transposed into Czech law by Article 4 of zákon č. 221/2006 Sb., o vymáhání práv z průmyslového vlastnictví (Law No 221/2006 on the compliance with intellectual property rights; ‘Law No 221/2006’).
10 Article 4(1) of Law No 221/2006 provides:
‘Where there is an unjustified infringement of [intellectual property] rights, the person injured may apply for a court order to force the infringer to refrain from the actions infringing or affecting the right and for the elimination of the consequences thereof …’
11 Under Article 4(3), injured parties may also apply for a court order to exercise the rights granted also ‘against any person whose means or services are used by a third party to infringe intellectual property rights.’
The dispute in the main proceedings and the questions referred for a preliminary ruling
12 Delta Center is the tenant of the marketplace named ‘Pražská tržnice’ (Prague market halls, Czech Republic). It sublets to market-traders the various sales areas situated in that marketplace. The rental contracts concluded with those market-traders impose on the latter the obligation to respect the regulations to which their activities are subject. Moreover, a brochure written in Czech and Vietnamese bearing the words ‘Warning for traders’ is distributed to them. That brochure states that the sale of counterfeits is forbidden and may lead to the termination of the contract for the rental of the sales area.
13 The applicants in the main proceedings manufacture and distribute brand products. Having established that counterfeits of their goods were sold in those Prague market halls, they brought the matter before the Městský soud v Praze (City Court, Prague), asking it inter alia to order Delta Center:
– to refrain from any conclusion or extension of contracts for the rental of sales areas in those halls with persons whose conduct was held by the judicial or administrative authorities with final effect to constitute an infringement or a risk of infringement of the rights conferred by the marks mentioned in the application;
– to refrain from any conclusion or extension of such contracts where the terms of those contracts do not include the obligation on market-traders to refrain from infringing the applicants’ intellectual property rights or the clause according to which Delta Center may terminate the contract in the event of the infringement or likelihood of infringement of those rights, and
– to submit, in some situations described by the applicants, its excuses in writing and to have a report published, at its own expense, in the Hospodářské noviny journal.
14 By judgment of 28 February 2012, the Městský soud v Praze (City Court, Prague) dismissed that application for an injunction. Whilst considering that Delta Center is a ‘person whose means or services are used by a third party’ within the meaning of Article 4(3) of Law No 221/2006, it held that there was no infringement or risk of infringement of the applicants’ rights given that it was evident for buyers that the goods at issue are counterfeits and are therefore neither produced nor distributed by the applicants.
15 The applicants brought an appeal against that judgment before the Vrchní soud v Praze (High Court, Prague).
16 By judgment of 5 December 2012, for reasons which are different than those upheld by the first court, that court confirmed the rejection of the request for an injunction. According to that court, a broad interpretation of the words ‘means or services … used by a third party to infringe’ set out in Article 4(3) of Law No 221/2006 and the words ‘the services … used by a third party to infringe an intellectual property right’ referred to in Article 11 of Directive 2004/48 would lead to absurd situations in which inter alia the supply of electricity or the grant of a commercial licence to a market-trader would be considered to constitute a means of enabling the infringement of intellectual property rights.
17 The applicants brought an appeal on a point of law before the Nejvyšší soud (Supreme Court).
18 The latter court observes that the wording of Article 4(3) of Law No 221/2006 corresponds to that of the third sentence of Article 11 of Directive 2004/48 and recalls that the national legislation which transposes a directive must, to the greatest extent possible, be interpreted in the light of the wording and the purpose of that text.
19 Taking the view therefore that the dispute pending before it will have to be resolved by taking account of the interpretation of the third sentence of Article 11 of Directive 2004/48 provided by the Court in the judgment of 12 July 2011 in L’Oréal and Others (C‑324/09, EU:C:2011:474), the Nejvyšší soud (Supreme Court) nevertheless states that the dispute which led to that interpretation concerned infringements of intellectual property rights in an online marketplace. The question arises whether that interpretation must also be followed when infringements of intellectual property rights took place in a physical marketplace.
20 In those circumstances, the Nejvyšší soud (Supreme Court) decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:
‘1. Is a person with a lease of premises in a market, who provides stalls and pitches on which stalls may be placed to individual market-traders for their use, an intermediary whose services are used by a third party to infringe an intellectual property right within the meaning of Article 11 of Directive 2004/48?
2. Is it possible to impose on a person with a lease of premises in a market, who provides stalls and pitches on which stalls may be placed to individual market-traders for their use, measures, as provided for in Article 11 of Directive 2004/48 under the same conditions as those formulated by the Court of Justice [in the judgment of 12 July 2011 in L’Oréal and Others, C‑324/09, EU:C:2011:474] with regard to the imposition of measures on the operators of an online marketplace?’
Consideration of the questions referred
The first question
21 By its first question, the referring court essentially asks whether the third sentence of Article 11 of Directive 2004/48 must be interpreted as meaning that the tenant of market halls who sublets the various sales points situated in those halls to market-traders, some of whom use their pitches in order to sell counterfeit goods of branded products, falls within the concept of ‘an intermediary whose services are being used by a third party to infringe an intellectual property right’ within the meaning of that provision.
22 It is settled case-law that the third sentence of Article 11 of Directive 2004/48, like Article 8(3) of Directive 2001/29 to which it refers, obliges Member States to ensure that an intermediary whose services are used by a third party in order to infringe an intellectual property right may, regardless of any liability of its own in relation to the facts at issue, be ordered to take measures aimed at bringing those infringements to an end and measures seeking to prevent further infringements (see to that effect, in particular, judgments of 12 July 2011 in L’Oréal and Others, C‑324/09, EU:C:2011:474, paragraphs 127 to 134, and 24 November 2011 in Scarlet Extended, C‑70/10, EU:C:2011:771, paragraphs 30 and 31).
23 For an economic operator to fall within the classification of ‘intermediary’ within the meaning of those provisions, it must be established that it provides a service capable of being used by one or more other persons in order to infringe one or more intellectual property rights, but it is not necessary that it maintain a specific relationship with that or those persons (see, to that effect, judgment of 27 March 2014 in UPC Telekabel Wien, C‑314/12, EU:C:2014:192, paragraphs 32 and 35).
24 Nor is such a classification subject to the condition that the economic operator provide a service other than the one which is used by the third party in order to infringe the intellectual property right.
25 Thus, as far as concerns electronic commerce, the Court held that an access provider which merely permits Internet access without proposing other services or exercising a review provides a service which is capable of being used by a third party to infringe intellectual property rights and must be classified as an ‘intermediary’ (see, to that effect, order of 19 February 2009 in LSG-Gesellschaft zur Wahrnehmung von Leistungsschutzrechten, C‑557/07, EU:C:2009:107, paragraph 43, and judgment of 27 March 2014 in UPC Telekabel Wien, C‑314/12, EU:C:2014:192, paragraph 32).
26 In the present case, it is not contested that Delta Center is the tenant of the ‘Pražská tržnice’ market halls and exercises an economic activity which consists in subletting the sales points situated in those market halls. Such an activity for reward constitutes a provision of services.
27 Nor is it contested that some of the market-traders to which Delta Center sublets those sales points use them in order to offer visitors to those market halls counterfeit goods of branded products.
28 Without there being a need to determine whether other service providers, such as those — mentioned as a hypothesis in the decision to refer — providing electricity to infringers, fall within the scope of the third sentence of Article 11 of Directive 2004/48, it should be stated that, in any event, an operator which provides to third parties a service relating to the letting or subletting of pitches in a marketplace, thanks to which they have access to that marketplace and offer for sale in that marketplace counterfeit branded products, must be classified as an ‘intermediary whose services are being used by a third party to infringe an intellectual property right’ within the meaning of that provision.
29 The fact that the provision of sales points concerns an online marketplace or a physical marketplace such as market halls is irrelevant in that connection. It is not apparent from Directive 2004/48 that the scope of the directive is limited to electronic commerce. Moreover, the objective stated in recital 10 of that directive of ensuring a high, equivalent and homogeneous level of protection of intellectual property in the internal market would be substantially weakened if an operator which provides third parties with access to a physical marketplace such as that at issue in the main proceedings, on which those third parties offer in that marketplace the sale of counterfeit branded products, could not be the subject of the injunctions referred to in the third sentence of Article 11 of that directive.
30 Having regard to the foregoing, the answer to the first question is that the third sentence of Article 11 of Directive 2004/48 must be interpreted as meaning that the tenant of market halls who sublets the various sales points situated in those halls to market-traders, some of whom use their pitches in order to sell counterfeit branded products, falls within the concept of ‘an intermediary whose services are being used by a third party to infringe an intellectual property right’ within the meaning of that provision.
The second question
31 By its second question, the referring court asks, in essence, whether the third sentence of Article 11 of Directive 2004/48 must be interpreted as meaning that the conditions for an injunction within the meaning of that provision against an intermediary who provides a service relating to the letting of sales points in market halls are identical to those for injunctions which may be addressed to intermediaries in an online marketplace, set out by the Court in the judgment of 12 July 2011 in L’Oréal and Others (C‑324/09, EU:C:2011:474).
32 In paragraph 135 of that judgment, the Court first of all noted, referring to recital 23 of Directive 2004/48, that the rules for the operation of the injunctions for which the Member States must provide under the third sentence of Article 11 of the directive, such as those relating to the conditions to be met and to the procedure to be followed, are a matter for national law.
33 Next, it stated that those rules of national law must be constructed so as to achieve the objectives of Directive 2004/48. For that purpose, and in accordance with Article 3(2) of that directive, injunctions must be effective and dissuasive (judgment of 12 July 2011 in L’Oréal and Others, C‑324/09, EU:C:2011:474, paragraph 136).
34 Lastly, the Court held that injunctions must be equitable and proportionate. They must not therefore be excessively expensive and must not create barriers to legitimate trade. Nor can the intermediary be required to exercise general and permanent oversight over its customers. By contrast, the intermediary may be forced to take measures which contribute to avoiding new infringements of the same nature by the same market-trader from taking place (see, to that effect, judgment of 12 July 2011 in L’Oréal and Others, C‑324/09, EU:C:2011:474, paragraphs 138 to 141).
35 The Court thus took the view that any injunction within the meaning of the third sentence of Article 11 of Directive 2004/48 may be pronounced only if it ensures a fair balance between the protection of intellectual property and the absence of obstacles to legitimate trade (see, to that effect, judgment of 12 July 2011 in L’Oréal and Others, C‑324/09, EU:C:2011:474, paragraph 143).
36 While, admittedly, in the case which gave rise to the judgment of 12 July 2011 in L’Oréal and Others (C‑324/09, EU:C:2011:474), the Court had to interpret the third sentence of Article 11 of Directive 2004/48 in the context of injunctions which may be addressed to an intermediary in an online marketplace, it interpreted that article in the light of the general provisions formulated in Article 3 of that directive, without specific considerations relating to the nature of the marketplace at issue. Nor is it apparent from Article 3 of the directive that its scope is limited to situations which occur in online marketplaces. Moreover, it follows from the wording of Article 3 of the directive that it applies to any measure referred to by that directive, including those provided for in the third sentence of Article 11 of the directive.
37 Therefore, the answer to the second question is that the third sentence of Directive 2004/48 must be interpreted as meaning that the conditions for an injunction within the meaning of that provision against an intermediary who provides a service relating to the letting of sales points in market halls are identical to those for injunctions which may be addressed to intermediaries in an online marketplace, set out by the Court in the judgment of 12 July 2011 in L’Oréal and Others (C‑324/09, EU:C:2011:474).
Costs
38 Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.
On those grounds, the Court (Second Chamber) hereby rules:
1. The third sentence of Article 11 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as meaning that the tenant of market halls who sublets the various sales points situated in those halls to market-traders, some of whom use their pitches in order to sell counterfeit branded products, falls within the concept of ‘an intermediary whose services are being used by a third party to infringe an intellectual property right’ within the meaning of that provision.
2. The third sentence of Article 11 of Directive 2004/48 must be interpreted as meaning that the conditions for an injunction within the meaning of that provision against an intermediary who provides a service relating to the letting of sales points in market halls are identical to those for injunctions which may be addressed to intermediaries in an online marketplace, set out by the Court in the judgment of 12 July 2011 in L’Oréal and Others (C‑324/09, EU:C:2011:474).
[Signatures]
Language of the case: Czech.
EU Law Radar Links to Authorities Cited
Case C-526/15, Uber Belgium – facilitating a mobility service not a taxi service
Do occasional private car drivers who use Uber’s software and get paid to take people on journeys but who do not receive remuneration or a wage, provide a taxi service requiring a license?
Continue readingCase C-434/15, Asociación Profesional Élite Taxi – Uber’s new software destroys the old order of labour
Traditionally, people wanting to be driven from A to B could hail a cab on the street. Subsequently, cabs could be hailed by telephoning for one. Now it is possible to use a smartphone to organise an ‘electronic hail’. However, if the smartphone uses Uber’s software, then the car that comes to pick them up will not be a licensed taxi. The question is: can Uber’s new software destroy the old order of labour that governs the life of a taxi-driver, a legal order characterised by the state-licensing of taxi cabs?
Continue readingCase C-30/14, Ryanair – grounding a go compare an airfare website
Price-comparison websites in the EU are often lawful because the websites they take their information from are databases frequently unprotected by either copyright or the ‘sui generis’ right enshrined in the EU’s Database Directive 96/9/EC. This is true of Ryanair’s website. But Ryanair’s website is however protected by a plank of deviant Dutch ‘copyright’ law. In this case, a Dutch website that compares the price of airfares is seeking to rely on a Dutch exception to the Dutch ‘copyright’ rule, an exception that corresponds to one found in the EU’s Database Directive. The legal question has become whether the Directive applies to all databases and thus websites – even the unprotected ones – and, if so, whether the price-comparison website qualifies as a ‘lawful user’, who does not need to obtain Ryanair’s consent to use Ryanair’s website.
Continue readingCase C-314/12, UPC Telekabel Wien – a proportionate stop to people watching Vicky the Viking on a website?
When people visit a website to be able to watch films at home, is it proportionate, in light of EU copyright law and EU fundamental rights law, to injunct the company that provides those people with access to the Internet?
Facts
‘Vicky the Viking’ is a film which can be accessed on the ‘kino.to’ website. However, the rights holders of the Vicky the Viking film had not consented to the website making the film available to the public, nor had they consented to the reproductions made by the website when visitors either ‘streamed’ films or downloaded copies or extracts from the films. (Streaming produces transient reproductions in the end-user’s apparatus whereas ‘downloading’ films often generates a permanent reproduction, which as a rule is viewed in a private setting.)
The rights holders of the Vicky the Viking film, together with the rights holders of other films also available on the kino.to website, brought an action not against the company that ran the website but against UPC Telekabel Wien. UPC Telekabel Wien is a company that provides access to the Internet and is one of Austria’s largest ‘access providers’. The rights holders sued on the basis that some of the access-provider’s customers must have accessed the copyright-protected works on kino.to.
UPC Telekabel Wien, the applicant in cassation but defendant in the initial action, rejected the claimants’ claims. It was not acting illegally by providing access to the internet. There was no connection between it and the website’s operators. The website did not ‘serve’ UPC. Even without UPC Telekabel Wien providing access to the Internet, the website would continue to exist. Furthermore, the company objected to the wording of the proposed injunction. A general injunction would be impossible, nor would it be reasonable to expect it to stop its customers from accessing the kino.to website. Every technological block can be circumvented. And the wording of the injunction which the claimants’ sought was simply too general and too wide in scope.
Moreover, UPC Telekabel Wien also rejected the alternative proposed injunction, which was more specific. UPC Telekabel Wien pointed out that the specific measures of DNS blocking and IP address blocking would be ineffective, and would come with a high price tag for the access-provider. Awarding such measures would be contrary to the legal principle of proportionality. In the event of the specific injunction being granted, then UPC Telekabel Wien would have to regularly check whether the illicit content was (still) on the website. This simply could not be expected of them. Besides, IP blocks affect other people who also run websites particularly when IP addresses are regularly allocated to multiple users. As a final point, UPC Telekabel Wien warned of the ‘floodgates’ opening, and emphasised that the case would have wider implications than the individual case before the court. In the event of an injunction being granted to the claimants, it could be expected that the claimants would make numerous comparable demands upon not just UPC Telekabel Wien but also other companies that provide access to the Internet.
Questions Referred
The matter was litigated up to the Austrian Supreme Court. According to the website of the UK Intellectual Property Office, the Austrian Supreme Court has asked:
1. Is Article 8(3) of the Directive to be interpreted as meaning that a person who makes protected subject matter available on the internet without the right holder’s consent is using the services of the access providers of persons seeking access to that protected subject matter?
2. If the answer to the first question is in the negative, are reproduction for private use and transient and incident reproduction permissible only if the original reproduction was lawfully reproduced, distributed or made available to the public?
3. If the answer to the first and second question is in the affirmative, and an injunction is therefore to be issued against the user’s access provider in accordance with Article 8(3) of the Directive, is this compatible with Union law, in particular with the necessary balance between the parties’ fundamental rights?
4. If the answer to the third question is in the negative, is it compatible with Union law to require an access provider to take specific measures to make it more difficult for its customers to access a website containing material made available unlawfully if those measures require not considerable costs and can easily be circumvented without any special technical knowledge?
Comment
The official translation of Question 3 available on the Curia website reflects the more specific question of the Austrian Supreme Court, namely:
3. If the answer to the first question or the second question is in the affirmative and an injunction is therefore to be issued against the user’s access provider in accordance with Article 8(3) of the Information Directive: Is it compatible with Union law, in particular with the necessary balance between the parties’ fundamental rights, to quite simply prohibit an access provider from allowing its customers access to a certain website (without ordering specific measures) as long as the material available on that website is provided exclusively or predominantly without the rightholder’s consent, if the access provider can avoid incurring preventive penalties for breach of the prohibition by showing that it had nevertheless taken all reasonable measures?
The Opinion of the Advocate General is due out on 10 October 2013. The case is being heard by the Fourth Chamber.
Update – 10 November 2013
Advocate General Cruz Villalón’s Opinion is now scheduled for the 26 November 2013.
Update – 9 March 2014
The judgment of the Fourth Chamber is due out on 27 March 2014.
Update – 5 August 2014
Judgment
A version of the CJEU’s judgment in Case C-314/12, UPC Telekabel Wien ECLI:EU:C:2014:192 is reproduced below. The reproduction is not authentic. Only the versions of the document published in the ‘Reports of Cases’ or the ‘Official Journal of the European Union’ are authentic. The source of the reproduction is the Eur-Lex Europa web site. The information on that site is subject to a disclaimer and a copyright notice.
JUDGMENT OF THE COURT (Fourth Chamber)
27 March 2014 ()
(Request for a preliminary ruling — Approximation of laws — Copyright and related rights — Information society — Directive 2001/29/EC — Website making cinematographic works available to the public without the consent of the holders of a right related to copyright — Article 8(3) — Concept of ‘intermediaries whose services are used by a third party to infringe a copyright or related right’ — Internet service provider — Order addressed to an internet service provider prohibiting it from giving its customers access to a website — Balancing of fundamental rights)
In Case C‑314/12,
REQUEST for a preliminary ruling under Article 267 TFEU from the Oberster Gerichtshof (Austria), made by decision of 11 May 2012, received at the Court on 29 June 2012, in the proceedings
UPC Telekabel Wien GmbH v Constantin Film Verleih GmbH, Wega Filmproduktionsgesellschaft mbH,
THE COURT (Fourth Chamber),
composed of L. Bay Larsen, President of the Chamber, K. Lenaerts, Vice-President of the Court, acting as a judge of the Fourth Chamber, M. Safjan, J. Malenovský (Rapporteur) and A. Prechal, Judges,
Advocate General: P. Cruz Villalón,
Registrar: A. Impellizzeri, Administrator,
having regard to the written procedure and further to the hearing on 20 June 2013,
after considering the observations submitted on behalf of:
– UPC Telekabel Wien GmbH, by M. Bulgarini and T. Höhne, Rechtsanwälte,
– Constantin Film Verleih GmbH and Wega Filmproduktionsgesellschaft mbH, by A. Manak and N. Kraft, Rechtsanwälte,
– the Austrian Government, by A. Posch, acting as Agent,
– the Italian Government, by G. Palmieri, acting as Agent, assisted by W. Ferrante, avvocato dello Stato,
– the Netherlands Government, by C. Schillemans and C. Wissels, acting as Agents,
– the United Kingdom Government, by L. Christie, acting as Agent, assisted by S. Malynicz, barrister,
– the European Commission, by J. Samnadda and F.W. Bulst, acting as Agents,
after hearing the Opinion of the Advocate General at the sitting on 26 November 2013,
gives the following
Judgment
1 This request for a preliminary ruling concerns the interpretation of Article 5(1) and (2)(b) and Article 8(3) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (OJ 2001 L 167, p. 10), and of certain fundamental rights enshrined in EU law.
2 The request has been made in proceedings between (i) UPC Telekabel Wien GmbH (‘UPC Telekabel’) and (ii) Constantin Film Verleih GmbH (‘Constantin Film’) and Wega Filmproduktionsgesellschaft mbH (‘Wega’) concerning an application for UPC Telekabel to be ordered to block the access of its customers to a website making available to the public some of the films of Constantin Film and of Wega without their consent.
Legal context
EU law
3 Recitals 9 and 59 in the preamble to Directive 2001/29 state:
‘(9) Any harmonisation of copyright and related rights must take as a basis a high level of protection, since such rights are crucial to intellectual creation. … Intellectual property has therefore been recognised as an integral part of property.
…
(59) In the digital environment, in particular, the services of intermediaries may increasingly be used by third parties for infringing activities. In many cases such intermediaries are best placed to bring such infringing activities to an end. Therefore, without prejudice to any other sanctions and remedies available, rightholders should have the possibility of applying for an injunction against an intermediary who carries a third party’s infringement of a protected work or other subject-matter in a network. … The conditions and modalities relating to such injunctions should be left to the national law of the Member States.’
4 Article 1 of that directive, headed ‘Scope’, provides in paragraph 1:
‘This Directive concerns the legal protection of copyright and related rights in the framework of the internal market, with particular emphasis on the information society.’
5 Article 3 of the same directive, headed ‘Right of communication to the public of works and right of making available to the public other subject-matter’, provides in paragraph 2:
‘Member States shall provide for the exclusive right to authorise or prohibit the making available to the public, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them:
…
(c) for the producers of the first fixations of films, of the original and copies of their films;
…’
6 Article 8 of Directive 2001/29, headed ‘Sanctions and remedies’, states in paragraph 3:
‘Member States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right.’
Austrian law
7 Paragraph 18a(1) of the Law on copyright (Urheberrechtsgesetz) of 9 April 1936 (BGBl. 111/1936), as amended by the new law of 2003 on copyright (Urheberrechtsgesetz-Novelle 2003, BGBl. I, 32/2003, ‘the UrhG’), reads:
‘The author has the exclusive right to make the work available to the public, by wire or wireless means, in such a way which allows members of the public to access it from a place and at a time chosen by them.’
8 Paragraph 81(1) and (1a) of the UrhG state:
‘(1) A person who has suffered an infringement of any exclusive rights conferred by this Law, or who fears such an infringement, shall be entitled to bring proceedings for a restraining injunction. Legal proceedings may also be brought against the proprietor of a business if the infringement is committed in the course of the activities of his business by one of his employees or by a person acting under his control, or if there is a danger that such an infringement will be committed; Paragraph 81(1a) shall apply mutatis mutandis.
(1a) If the person who has committed such an infringement, or by whom there is a danger of such an infringement being committed, uses the services of an intermediary for that purpose, the intermediary shall also be liable to an injunction under subparagraph (1). …’.
9 Paragraph 355(1) of the Code of Enforcement (Executionsordnung) states:
‘Enforcement against the person obligated to desist from an activity or to tolerate the carrying out of an activity shall take place, at the time of consent to enforcement, by the imposition by the enforcement court, upon application, of a fine for any non-compliance after the obligation became executory. In the event of further non-compliance, the enforcement court shall, upon application, impose a further fine or a period of imprisonment of up to one year in total. …’.
10 It is apparent from the explanations given by the referring court in its request for a preliminary ruling that, at the stage of the enforcement procedure, the addressee of the prohibition can argue, in order to avoid liability, that he has taken all of the measures that could be expected of him in order to prevent the result prohibited.
The dispute in the main proceedings and the questions referred for a preliminary ruling
11 Having established that a website was offering, without their agreement, either a download or ‘streaming’ of some of the films which they had produced, Constantin Film and Wega, two film production companies, referred the matter to the court responsible for hearing applications for interim measures with a view to obtaining, on the basis of Article 81(1a) of the UrhG, an order enjoining UPC Telekabel, an internet service provider, to block the access of its customers to the website at issue, inasmuch as that site makes available to the public, without their consent, cinematographic works over which they hold a right related to copyright.
12 By order of 13 May 2011, the Handelsgericht Wien (Commercial Court, Vienna) (Austria) prohibited UPC Telekabel from providing its customers with access to the website at issue; that prohibition was to be carried out in particular by blocking that site’s domain name and current IP (‘Internet Protocol’) address and any other IP address of that site of which UPC Telekabel might be aware.
13 In June 2011, the website at issue ceased its activity following an action of the German police forces against its operators.
14 By order of 27 October 2011, the Oberlandesgericht Wien (Higher Regional Court, Vienna) (Austria), as an appeal court, partially reversed the order of the court of first instance in so far as it had wrongly specified the means that UPC Telekabel had to introduce in order to block the website at issue and thus execute the injunction. In order to reach that conclusion, the Oberlandesgericht Wien first of all held that Article 81(1a) of the UrhG must be interpreted in the light of Article 8(3) of Directive 2001/29. It then held that, by giving its customers access to content illegally placed online, UPC Telekabel had to be regarded as an intermediary whose services were used to infringe a right related to copyright, with the result that Constantin Film and Wega were entitled to request that an injunction be issued against UPC Telekabel. However, as regards the protection of copyright, the Oberlandesgericht Wien held that UPC Telekabel could only be required, in the form of an obligation to achieve a particular result, to forbid its customers access to the website at issue, but that it had to remain free to decide the means to be used.
15 UPC Telekabel appealed on a point of law to the Oberster Gerichtshof (Supreme Court) (Austria).
16 In support of its appeal, UPC Telekabel submits inter alia that its services could not be considered to be used to infringe a copyright or related right within the meaning of Article 8(3) of Directive 2001/29 because it did not have any business relationship with the operators of the website at issue and it was not established that its own customers acted unlawfully. In any event, UPC Telekabel claims that the various blocking measures which may be introduced can all be technically circumvented and that some of them are excessively costly.
17 In those circumstances, the Oberster Gerichtshof decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:
‘1. Is Article 8(3) of Directive 2001/29 … to be interpreted as meaning that a person who makes protected subject-matter available on the internet without the rightholder’s consent [for the purpose of Article 3(2) of Directive 2001/29] is using the services of the [internet] access providers of persons seeking access to that protected subject-matter?
If the answer to the first question is in the negative:
2. Are reproduction for private use [within the meaning of Article 5(2)(b) of Directive 2001/29] and transient and incidental reproduction [within the meaning of Article 5(1) of Directive 2001/29] permissible only if the original of the reproduction was lawfully reproduced, distributed or made available to the public?
If the answer to the first question or the second question is in the affirmative and an injunction is therefore to be issued against the user’s [internet] access provider in accordance with Article 8(3) of [Directive 2001/29]:
3. Is it compatible with Union law, in particular with the necessary balance between the parties’ fundamental rights, to prohibit in general terms an [internet] access provider from allowing its customers access to a certain website (thus without ordering specific measures) as long as the material available on that website is provided exclusively or predominantly without the rightholder’s consent, if the access provider can avoid incurring coercive penalties for breach of the prohibition by showing that it had nevertheless taken all reasonable measures?
If the answer to the third question is in the negative:
4. Is it compatible with Union law, in particular with the necessary balance between the parties’ fundamental rights, to require an [internet] access provider to take specific measures to make it more difficult for its customers to access a website containing material that is made available unlawfully if those measures require not inconsiderable costs and can easily be circumvented without any special technical knowledge?’
Consideration of the questions referred
Admissibility of the questions referred
18 As a preliminary point, it should be noted that the fact that the website at issue in the main proceedings has ceased its activity does not make the questions referred inadmissible.
19 In accordance with settled case-law, in proceedings under Article 267 TFEU, which are based on a clear separation of functions between the national courts and the Court of Justice, it is solely for the national court, before which the dispute has been brought and which must assume responsibility for the judicial decision to be made, to determine, in the light of the particular circumstances of the case, both the need for and the relevance of the questions that it submits to the Court (see, to that effect, Case C‑415/11 Aziz [2013] ECR, paragraph 34).
20 Thus, the Court may refuse to rule on a question referred for a preliminary ruling by a national court only where it is quite obvious that the interpretation of EU law that is sought bears no relation to the actual facts of the main action or its purpose, where the problem is hypothetical, or where the Court does not have before it the factual or legal material necessary to give a useful answer to the questions submitted to it (Aziz, paragraph 35).
21 However, that is not the case in the dispute in the main proceedings because it is apparent from the request for a preliminary ruling that, under Austrian law, the referring court must make its decision on the basis of the facts as set out in the decision at first instance, that is to say at a time when the website at issue in the main proceedings was still accessible.
22 It follows from the above that the request for a preliminary ruling is admissible.
The first question
23 By its first question, the referring court asks, essentially, whether Article 8(3) of Directive 2001/29 must be interpreted as meaning that a person who makes protected subject-matter available to the public on a website without the agreement of the rightholder, for the purpose of Article 3(2) of that directive, is using the services of the internet service provider of the persons accessing that subject-matter, which is to be regarded as an intermediary within the meaning of Article 8(3) of Directive 2001/29.
24 As a preliminary point, it should be noted that, in the case in the main proceedings, it is common ground that the protected subject-matter was made available to users of a website without the consent of the rightholders mentioned in Article 3(2) of Directive 2001/29.
25 Given that, according to that provision, rightholders have the exclusive right to authorise or prohibit any act of making available to the public, it must be stated that an act of making protected subject-matter available to the public on a website without the rightholders’ consent infringes copyright and related rights.
26 In order to remedy such a situation of infringement of the rights at issue, Article 8(3) of Directive 2001/29 provides for the possibility for rightholders to apply for an injunction against intermediaries whose services are used by a third party to infringe one of their rights.
27 As Recital 59 in the preamble to Directive 2001/29 states, since the services of intermediaries are increasingly used for infringing copyright or related rights, such intermediaries are, in many cases, best placed to bring such infringing activities to an end.
28 In the present case, the Handelsgericht Wien and then the Oberlandesgericht Wien ordered UPC Telekabel, the internet service provider addressed by the injunction at issue in the main proceedings, to bring the infringement of the rights of Constantin Film and of Wega to an end.
29 However, UPC Telekabel disputes that it may be considered, for the purposes of Article 8(3) of Directive 2001/29, to be an intermediary whose services are used to infringe a copyright or related right.
30 In this respect, it follows from Recital 59 in the preamble to Directive 2001/29 that the term ‘intermediary’ used in Article 8(3) of that directive covers any person who carries a third party’s infringement of a protected work or other subject-matter in a network.
31 Having regard to the objective pursued by Directive 2001/29, as shown in particular by Recital 9 thereof, which is to guarantee rightholders a high level of protection, the concept of infringement thus used must be understood as including the case of protected subject-matter placed on the internet and made available to the public without the agreement of the rightholders at issue.
32 Accordingly, given that the internet service provider is an inevitable actor in any transmission of an infringement over the internet between one of its customers and a third party, since, in granting access to the network, it makes that transmission possible (see, to that effect, the order in Case C‑557/07 LSG-Gesellschaft zur Wahrnehmung von Leistungsschutzrechten [2009] ECR I‑1227, paragraph 44), it must be held that an internet service provider, such as that at issue in the main proceedings, which allows its customers to access protected subject-matter made available to the public on the internet by a third party is an intermediary whose services are used to infringe a copyright or related right within the meaning of Article 8(3) of Directive 2001/29.
33 Such a conclusion is borne out by the objective pursued by Directive 2001/29. To exclude internet service providers from the scope of Article 8(3) of Directive 2001/29 would substantially diminish the protection of rightholders sought by that directive (see, to that effect, order in LSG-Gesellschaft zur Wahrnehmung von Leistungsschutzrechten, paragraph 45).
34 That conclusion cannot be called into question by the argument that, for Article 8(3) of Directive 2001/29 to be applicable, there has to be a contractual link between the internet service provider and the person who infringed a copyright or related right.
35 Neither the wording of Article 8(3) nor any other provision of Directive 2001/29 indicates that a specific relationship between the person infringing copyright or a related right and the intermediary is required. Furthermore, that requirement cannot be inferred from the objectives pursued by that directive, given that to admit such a requirement would reduce the legal protection afforded to the rightholders at issue, whereas the objective of that directive, as is apparent inter alia from Recital 9 in its preamble, is precisely to guarantee them a high level of protection.
36 Nor is the conclusion reached by the Court in paragraph 30 of this judgment invalidated by the assertion that, in order to obtain the issue of an injunction against an internet service provider, the holders of a copyright or of a related right must show that some of the customers of that provider actually access, on the website at issue, the protected subject-matter made available to the public without the agreement of the rightholders.
37 Directive 2001/29 requires that the measures which the Member States must take in order to conform to that directive are aimed not only at bringing to an end infringements of copyright and of related rights, but also at preventing them (see, to that effect, Case C‑70/10 Scarlet Extended [2011] ECR I‑11959, paragraph 31, and Case C‑360/10 SABAM [2012] ECR, paragraph 29).
38 Such a preventive effect presupposes that the holders of a copyright or of a related right may act without having to prove that the customers of an internet service provider actually access the protected subject-matter made available to the public without their agreement.
39 That is all the more so since the existence of an act of making a work available to the public presupposes only that the work was made available to the public; it is not decisive that persons who make up that public have actually had access to that work or not (see, to that effect, Case C‑306/05 SGAE [2006] ECR I‑11519, paragraph 43).
40 In view of the above, the answer to the first question is that Article 8(3) of Directive 2001/29 must be interpreted as meaning that a person who makes protected subject-matter available to the public on a website without the agreement of the rightholder, for the purpose of Article 3(2) of that directive, is using the services of the internet service provider of the persons accessing that subject-matter, which must be regarded as an intermediary within the meaning of Article 8(3) of Directive 2001/29.
The second question
41 In the light of the reply to the first question, it is not necessary to reply to the second question.
The third question
42 By its third question, the referring court asks, essentially, whether the fundamental rights recognised by EU law must be interpreted as precluding a court injunction prohibiting an internet service provider from allowing its customers access to a website placing protected subject-matter online without the agreement of the rightholders when that injunction does not specify the measures which that access provider must take and when that access provider can avoid incurring coercive penalties for breach of that injunction by showing that it has taken all reasonable measures.
43 In this respect, as is apparent from Recital 59 in the preamble to Directive 2001/29, the rules for the injunctions which the Member States must lay down pursuant to Article 8(3) of the directive, such as those relating to the conditions to be met and the procedure to be followed, are a matter for national law.
44 That said, those national rules, and likewise their application by the national courts, must observe the limitations arising from Directive 2001/29 and from the sources of law to which Recital 3 in its preamble refers (see, to that effect, Scarlet Extended, paragraph 33 and the case-law cited there).
45 In order to assess whether an injunction such as that at issue in the main proceedings, taken on the basis of Article 8(3) of Directive 2001/29, is consistent with EU law, it is therefore necessary to take account in particular of the requirements that stem from the protection of the applicable fundamental rights, and to do so in accordance with Article 51 of the Charter of Fundamental Rights of the European Union (‘the Charter’) (see, to that effect, Scarlet Extended, paragraph 41).
46 The Court has already ruled that, where several fundamental rights are at issue, the Member States must, when transposing a directive, ensure that they rely on an interpretation of the directive which allows a fair balance to be struck between the applicable fundamental rights protected by the European Union legal order. Then, when implementing the measures transposing that directive, the authorities and courts of the Member States must not only interpret their national law in a manner consistent with that directive but also ensure that they do not rely on an interpretation of it which would be in conflict with those fundamental rights or with the other general principles of EU law, such as the principle of proportionality (see, to that effect, Case C‑275/06 Promusicae [2008] ECR I‑271, paragraph 68).
47 In the present case, it must be observed that an injunction such as that at issue in the main proceedings, taken on the basis of Article 8(3) of Directive 2001/29, makes it necessary to strike a balance, primarily, between (i) copyrights and related rights, which are intellectual property and are therefore protected under Article 17(2) of the Charter, (ii) the freedom to conduct a business, which economic agents such as internet service providers enjoy under Article 16 of the Charter, and (iii) the freedom of information of internet users, whose protection is ensured by Article 11 of the Charter.
48 As regards the freedom to conduct a business, the adoption of an injunction such as that at issue in the main proceedings restricts that freedom.
49 The freedom to conduct a business includes, inter alia, the right for any business to be able to freely use, within the limits of its liability for its own acts, the economic, technical and financial resources available to it.
50 An injunction such as that at issue in the main proceedings constrains its addressee in a manner which restricts the free use of the resources at his disposal because it obliges him to take measures which may represent a significant cost for him, have a considerable impact on the organisation of his activities or require difficult and complex technical solutions.
51 However, such an injunction does not seem to infringe the very substance of the freedom of an internet service provider such as that at issue in the main proceedings to conduct a business.
52 First, an injunction such as that at issue in the main proceedings leaves its addressee to determine the specific measures to be taken in order to achieve the result sought, with the result that he can choose to put in place measures which are best adapted to the resources and abilities available to him and which are compatible with the other obligations and challenges which he will encounter in the exercise of his activity.
53 Secondly, such an injunction allows its addressee to avoid liability by proving that he has taken all reasonable measures. That possibility of exoneration clearly has the effect that the addressee of the injunction will not be required to make unbearable sacrifices, which seems justified in particular in the light of the fact that he is not the author of the infringement of the fundamental right of intellectual property which has led to the adoption of the injunction.
54 In that regard, in accordance with the principle of legal certainty, it must be possible for the addressee of an injunction such as that at issue in the main proceedings to maintain before the court, once the implementing measures which he has taken are known and before any decision imposing a penalty on him is adopted, that the measures taken were indeed those which could be expected of him in order to prevent the proscribed result.
55 None the less, when the addressee of an injunction such as that at issue in the main proceedings chooses the measures to be adopted in order to comply with that injunction, he must ensure compliance with the fundamental right of internet users to freedom of information.
56 In this respect, the measures adopted by the internet service provider must be strictly targeted, in the sense that they must serve to bring an end to a third party’s infringement of copyright or of a related right but without thereby affecting internet users who are using the provider’s services in order to lawfully access information. Failing that, the provider’s interference in the freedom of information of those users would be unjustified in the light of the objective pursued.
57 It must be possible for national courts to check that that is the case. In the case of an injunction such as that at issue in the main proceedings, the Court notes that, if the internet service provider adopts measures which enable it to achieve the required prohibition, the national courts will not be able to carry out such a review at the stage of the enforcement proceedings if there is no challenge in that regard. Accordingly, in order to prevent the fundamental rights recognised by EU law from precluding the adoption of an injunction such as that at issue in the main proceedings, the national procedural rules must provide a possibility for internet users to assert their rights before the court once the implementing measures taken by the internet service provider are known.
58 As regards intellectual property, it should be pointed out at the outset that it is possible that the enforcement of an injunction such as that in the main proceedings will not lead to a complete cessation of the infringements of the intellectual property right of the persons concerned.
59 First, as has been stated, the addressee of such an injunction has the possibility of avoiding liability, and thus of not adopting some measures that may be achievable, if those measures are not capable of being considered reasonable.
60 Secondly, it is possible that a means of putting a complete end to the infringements of the intellectual property right does not exist or is not in practice achievable, as a result of which some measures taken might be capable of being circumvented in one way or another.
61 The Court notes that there is nothing whatsoever in the wording of Article 17(2) of the Charter to suggest that the right to intellectual property is inviolable and must for that reason be absolutely protected (see, to that effect, Scarlet Extended, paragraph 43).
62 None the less, the measures which are taken by the addressee of an injunction, such as that at issue in the main proceedings, when implementing that injunction must be sufficiently effective to ensure genuine protection of the fundamental right at issue, that is to say that they must have the effect of preventing unauthorised access to the protected subject-matter or, at least, of making it difficult to achieve and of seriously discouraging internet users who are using the services of the addressee of that injunction from accessing the subject-matter made available to them in breach of that fundamental right.
63 Consequently, even though the measures taken when implementing an injunction such as that at issue in the main proceedings are not capable of leading, in some circumstances, to a complete cessation of the infringements of the intellectual property right, they cannot however be considered to be incompatible with the requirement that a fair balance be found, in accordance with Article 52(1), in fine, of the Charter, between all applicable fundamental rights, provided that (i) they do not unnecessarily deprive internet users of the possibility of lawfully accessing the information available and (ii) that they have the effect of preventing unauthorised access to protected subject-matter or, at least, of making it difficult to achieve and of seriously discouraging internet users who are using the services of the addressee of that injunction from accessing the subject-matter that has been made available to them in breach of the intellectual property right.
64 In the light of the foregoing considerations, the answer to the third question is that the fundamental rights recognised by EU law must be interpreted as not precluding a court injunction prohibiting an internet service provider from allowing its customers access to a website placing protected subject-matter online without the agreement of the rightholders when that injunction does not specify the measures which that access provider must take and when that access provider can avoid incurring coercive penalties for breach of that injunction by showing that it has taken all reasonable measures, provided that (i) the measures taken do not unnecessarily deprive internet users of the possibility of lawfully accessing the information available and (ii) that those measures have the effect of preventing unauthorised access to the protected subject-matter or, at least, of making it difficult to achieve and of seriously discouraging internet users who are using the services of the addressee of that injunction from accessing the subject-matter that has been made available to them in breach of the intellectual property right, that being a matter for the national authorities and courts to establish.
The fourth question
65 In the light of the reply to the third question, it is not necessary to reply to the fourth question.
Costs
66 Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.
On those grounds, the Court (Fourth Chamber) hereby rules:
1. Article 8(3) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as meaning that a person who makes protected subject-matter available to the public on a website without the agreement of the rightholder, for the purpose of Article 3(2) of that directive, is using the services of the internet service provider of the persons accessing that subject-matter, which must be regarded as an intermediary within the meaning of Article 8(3) of Directive 2001/29.
2. The fundamental rights recognised by EU law must be interpreted as not precluding a court injunction prohibiting an internet service provider from allowing its customers access to a website placing protected subject-matter online without the agreement of the rightholders when that injunction does not specify the measures which that access provider must take and when that access provider can avoid incurring coercive penalties for breach of that injunction by showing that it has taken all reasonable measures, provided that (i) the measures taken do not unnecessarily deprive internet users of the possibility of lawfully accessing the information available and (ii) that those measures have the effect of preventing unauthorised access to the protected subject-matter or, at least, of making it difficult to achieve and of seriously discouraging internet users who are using the services of the addressee of that injunction from accessing the subject-matter that has been made available to them in breach of the intellectual property right, that being a matter for the national authorities and courts to establish.
[Signatures]
Language of the case: German.
EU Law Radar Links to Later Authorities
- Lidl, C-134/15, ECLI:EU:C:2016:498
- Tommy Hilfiger, C-494/15, ECLI:EU:C:2016:528
- McFadden, C-484/14, ECLI:EU:C:2016:689
Update – 24 November 2014
The CJEU’s judgment in Case C-314/12, UPC Telekabel Wien is in the background to a recent reference made by a German court to the CJEU. See further, Case C-484/14, McFadden – a mere conduit?
Update – 20 November 2015
The CJEU’s judgment in UPC Telekabel Wien is now also being discussed in the context of a recent reference made by the Dutch Supreme Court; see further, Case C-610/15, Stichting Brein – seeking website blocks to stop peer to peer technology.