By Pranit Biswas and Nitika Sinha
The Court of Justice of the European Union in the matter of Frank Peterson v Google LLC, YouTube Inc., YouTube LLC, Google Germany GmbH and Elsevier Inc. v Cyando AG, passed a ruling on June 22, 2021 pertaining to exemption from liability for YouTube.
The Grand Chamber ruled in favor of the renowned media portal YouTube and held that YouTube and similar intermediary entities are not liable for infringement of copyright unless the intermediary or the operator has specific knowledge that the protected content is available illegally on its platform and abstains from rapidly deleting it or blocking access to it.
The issue before the Court was regarding infringement of the IP rights held by Mr. Frank Peterson and Elsevier Inc. committed by users of the video sharing platform operated by YouTube and the file-hosting and sharing platform operated by Cyando, respectively.
Frank Peterson v Google LLC, YouTube Inc., YouTube LLC, Google Germany GmbH
Frank Peterson is a music producer and owns a music studio named “Nemo Studios” which entered into an exclusive worldwide contract with the artist-performer Sarah Brightman, inter alia covering the use of audio and video recordings of her performances as well as a license agreement, covering exclusive distribution rights for her recordings and performances.
In November 2008, Sarah Brightman started a tour named the ‘Symphony Tour’ in which she performed the works she had recorded for her album Winter Symphony. Noticing that some private recordings of the concerts could be accessed on YouTube, Frank Peterson contacted YouTube and Google Germany through a letter, on November 7, 2008, asking them, inter alia, to issue cease and desist declarations. Pursuant to which the impugned infringing content was taken down by YouTube, but the same reappeared on the platform on November 19, 2008.
Consequently, Frank Peterson brought an action against Google and YouTube seeking an injunction, disclosure of additional information, and a declaration that they were liable to pay damages, for the infringement of his exclusive rights as the producer of the album as well as the rights arising out of Sarah Brightman’s performance of the works on the album, in which he was a backing vocalist as well as a producer.
Elsevier v. Cyando
Elsevier is an international specialist publisher, having the exclusive rights, inter alia, to the use of the works “Gray’s Anatomy for Students”, “Atlas of Human Anatomy” and “Campbell-Walsh Urology”.
On becoming aware that the aforementioned works had been made available on the file hosting and sharing platform known as “Uploaded” that is operated by Cyando, Elsevier notified its objections to Cyando through 2 letters, in January 2014 in respect of their making available Elsevier’s proprietary publications. Thereafter, Elsevier also brought an action against Cyando for a prohibitory injunction, principally, as the party responsible for the infringement of the works, alternatively as a participant in the infringement and further, alternatively as an “interferer”. Elsevier also prayed for damages to be granted in their favour.
Statement of Issues:
1. Whether Article 3(1) of the Copyright Directive must be interpreted as meaning that the operator of a video-sharing platform or a file-hosting and sharing platform, on which users can illegally make protected content available to the public, itself makes a ‘communication to the public’ of that content, within the meaning of the provision.
2. Whether Article 14(1) (a) of the Directive on Electronic Commerce must be interpreted as meaning that, for the operator to be excluded, under that provision, from the exemption from liability provided in Article 14(1), it must have knowledge of specific illegal acts committed by its users relating to protected content that was uploaded to its platform.
3. Whether Article 8(3) of the Copyright Directive must be interpreted as precluding a situation where the right holder is not able to obtain an injunction against an intermediary whose services are used by a third party to infringe the rights of the right holder unless that infringement has previously been notified to that intermediary and that infringement is repeated.
The Bench of the Grand Chamber after referring to all the contentions presented, made the following observations in the case:
- Whether “Communication to the Public” under article 3(1) is by the operator/intermediary or by the users?
As per Art. 3(1) of the Copyright Directive, Member States are required to provide authors with the exclusive right to authorize or to restrict the communication of their works to the public, hence the authors have a preventive right enabling them to intervene between possible users of their work and any public communication which such users might make, in order to prohibit such communication.The observation of the Bench was that decisively illegal content was being uploaded to the platform concerned not by the operator, but by the users who were acting autonomously and were hence, responsible for their own actions. Moreover, it was the platform’s users determining whether the content they had uploaded was made available to other internet users through that platform so that the public could access it.With respect to the file hosting and sharing platform, Uploaded, the download link allowing access to the impugned uploaded content was being communicated directly only by the user i.e., file uploading program and the platform did not make it possible to share that link. Hence, to share such content, the user must either send the download link directly to the persons to whom he wants to give access, or must publish such link on the internet. Furthermore, the operator informs its users, in the conditions of use of its platform, that they are prohibited from infringing copyright through that platform.
2. With regards to the second issue, “Whether Operators can claim exemption from liability?”
In order to determine whether the operator of a video sharing platform/file-hosting and sharing platform may get an exemption under Art. 14(1) of the Directive on Electronic Commerce, from the liability for the protected content that has been illegally communicated to the public by the users through its platform, it is essential to examine the role played by such operator. Whether the operator is solely technical, passive and automated, which would mean that it has no knowledge or control over the content on its platform, or whether, it plays an active role that either gives it knowledge of or control over such content.As per Art. 15(1) of the E-Commerce Directive, the operators could not be subjected to a general obligation to monitor the information being stored on their platform or being transmitted, or to specifically look for circumstances indicating illegal activity.
3. With regard to the third issue, “Whether actions can be brought against the intermediary without previously notifying it of infringement?”
Art. 8(3) of the Copyright Directive states, ‘Member States shall ensure that right holder are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe copyright or a related right’. It must be interpreted as not precluding a situation under any national law where a copyright holder or related right holder may not obtain any injunction against any intermediary whose service are used by a third party to infringe its right, wherein the intermediary has no knowledge of such infringement, within the ambit of Art. 14(1)(a), unless, before the commencement of court proceedings, such information has been notified to the intermediary, and the latter has failed to intervene expeditiously in removing the content or blocking access to the same.
The decision of the Court
The Bench after considering all the key factors while dealing with the contentions held as follows:
1. That Article 3(1) of the Copyright Directive must be interpreted as meaning that the operator of a video-sharing platform or a file hosting and sharing platform, on which users can illegally make protected content available to the public, doesn’t make a “public communication” of the said content, within the meaning of that provision, unless it contributes beyond merely making the platform available, to giving access to such content to the public in breach of copyright. An operator may only be held liable for infringement made through its platform wherein it has specific knowledge that the “protected content” is available illegally on its platform, and refrains from deleting it or blocking access to it, or where that operator is in knowledge of the fact that the users of its platform are illegally making protected content available on its platform and then refrains from putting in place the appropriate technological measures that can be expected from a reasonable, diligent operator in order to counter copyright infringements on the platform, or where the operator participates in selecting protected content illegally communicated to the public, and provides tools specifically intended for the illegal sharing of such content or knowingly promotes such sharing of protected content, which may be attested by the fact that the operator follows a financial model that encourages illegal use of its platform to communicate protected content to the public.
2. For such an operator to be excluded, under the exemption from liability provided for in Article 14(1) of the Directive on Electronic Commerce, it must have knowledge of specific illegal acts committed by its users, related to protected content which was uploaded on their platform and that as soon as it was brought to the knowledge of the operator, it acted expeditiously to remove or restrict access to such content.
3. When the interferer is a service provider whose service is to store information provided by a user, in principle, that service provider can be the subject of a prohibiting injunction only if, after notification of a clear infringement of an IP right had been provided, that right is infringed again or continues to be infringed, and that service provider has not intervened immediately after such notification to remove such content in question or to block access to such content and has failed to ensure that such infringements do not recur.
The Hon’ble Court has laid down several principles through its interpretation of various sections of both the Copyright Directive as well as the Directive on Electronic Commerce, and has made several observations pertaining to the role of intermediaries in curbing the infringement of copyright on their respective platforms, specifically delving into the aspect of knowledge and control that an intermediary has while monitoring or operating its platform. In conclusion, the Hon’ble Court has considered it fit to exempt intermediary platforms from liability under the Directives, provided that they had either been unaware of the instances of infringement of the Petitioners’ content, or had taken appropriate diligent steps to remove/reduce the instances of objectionable content. Under the circumstances of the cases in question, the Court was pleased to absolve the intermediary platforms of liability for copyright infringement of the Petitioners’ materials.