national workshop on enforcement of intellectual property rights for judges national workshop on...

NATIONAL WORKSHOP ON ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS FOR JUDGES

organized bythe World Intellectual Property Organization (WIPO)

in cooperation withthe Albanian Copyright Office (ACO)

Tirana, June 14 and 15, 2012

Specific Aspects of Copyright Enforcement in the Digital Online Environment

Dr. Mihály FicsorChairman, Central and Eastern European

Copyright Alliance (CEECA)

M Ficsor, Tirana, June 14-15, 2012 2

I. INTERNATIONAL, EU AND NATIONAL NORMS

Three „layers” of international copyright and related rights norms

First „layer”: Berne Convention originally adopted in 1886, regularly revised ; for the last time in 1971 (administered by WIPO) and the Rome Convention adopted in 1961 (jointly administered by WIPO, UNESCO and ILO).

Second „layer”: TRIPS Agreement adopted in 1994 (administered by WTO).

Third „layer”: WIPO Copyright Treaty (WCT) and WIPO Performances and Phonograms Treaty (WPPT) adopted in 1996.


The WIPO „Internet Treaties”

The WIPO „Internet Treaties” adopted in Geneva on December 21, 1996 the WIPO Copyright Treaty (WCT)

• entered into force on March 6, 2002• number of Contracting Parties on April 10, 2012: 89

the WIPO Performances and Phonograms Treaty (WPPT) • entered into force on May 20, 2002 • number of Contracting Parties on April10, 2012: 89

The Treaties offer overall regulation on copyright and two categories of related rights, but their main objective is to adapt those rights to the digital, networked environment, to the requirements of the information society.

The Republic of Albania is party to both Treaties. Implementation in the EU: the 2001 Information Society (Copyright)

Directive.

4M Ficsor, Tirana, June 14-15, 2012

Historical and political background of the preparation of the WIPO “Internet Treaties”

No revision of the Berne Convention since the Stockholm (1967)-Paris (1971) twin revisions, and no revision of the Rome Convention (1961) in spite of the ever more numerous challenges raised by new technologies.

Parallel preparatory work in the Uruguay Round GATT negotiations and in WIPO, with slowing down the latter in order to avoid interference with the former.

April 1994: adoption of the WCT package along with the TRIPS Agreement; the latter only bringing about certain modest changes in the substantive copyright and related rights norms.

Between the end of 1992 (the de facto closure of the TRIPS negotiations) and 1994: spectacular development and growing use of the Internet.

Serious and urgent questions raised for the international copyright and related rights systems as a consequence of this.

No chance for reopening the negotiations in WCT; acceleration of the preparatory work in WIPO Committees leading to the adoption of the two “Internet Treaties” within what may have seemed to be a very short time.


Three stages of the debates before the Diplomatic Conference

Thesis: copyright is dead – and, if it is not yet, it should die.

Antithesis: no change is needed; we may simply

continue applying the existing international norms. Synthesis: certain amendments are necessary but

there is no need for fundamental changes.


Arguments by those who were declaring – or urging – the death of copyright (1)

Argument: The cyberspace is, and should remain, the realm of complete freedom; national laws and international treaties have nothing to do with it.

Response: there is no “cyberspace” outside the world we live; all the computers and telecommunication systems and all those who operate and use the global network may be found in this or that country; thus, national laws and international laws do have a lot to do with all this.


Arguments by those who were declaring – or urging – the death of copyright (2)

Argument: It would be impossible to control the use of works and other protected materials and exercise copyright and related rights on the Internet.

Response: “The answer to the machine is in the machine” (Charles Clark (1933 – 2006)). That is, the application of technological protection measures and electronic rights management information is the solution.


Characterization of the WIPO „Internet Treaties”

Legally: no revisions of the Berne Convention and the Rome Convention, but “special agreements” (under Berne Article 20 and Rome Article 22).

Concerning the level of protection: „Berne & Rome plus TRIPS plus;” that is, what is provided in the Berne and Rome Convention plus what is provided in the substantive provisions of the TRIPS Agreement plus what is still included on the basis of the “digital agenda” of the preparatory work.

From the viewpoint of economic and legislative burdens: no real extension of the scope of protection; clarification of the application of the existing norms and, in certain aspects, their adaptation to the new environment, and new means of exercise and enforcement of rights.

Politically: the Treaties are well-balanced, flexible and duly take into account the interests of the different groups of countries and stakeholders.


The „digital agenda:” clarification, adaptation and new means of exercise and enforcement

The so-called „plus” elements included in the WIPO Treaties on the basis of the „digital agenda:” clarification of the application of the right of reproduction in the digital

environment, in particular as regards the storage of works, performances and phonograms in electronic memories;

recognition/clarification of the existence – as an inevitable corollary to the right or reproduction – of an exclusive right of first distribution of copies of works, fixed performances and phonograms;

through a combination and adaptation of existing rights, recognition of the exclusive right of (interactive) making available of works, fixed performances and phonograms;

clarification of the application of exceptions and limitations in the new environment;

obligations regarding the protection of technological measures and rights management information, as means of exercising and enforcing rights.


Rights applicable for acts performed on the Internet (1)

Uploading: exclusive right of reproduction. Berne Article 9; TRIPS Article 9(1) Berne Article 9; TRIPS Article 14(1), (2) and (3); WCT Article 1(4) Berne Article 9, agreed statement: electronic storage is also

reproduction; WPPT Articles 7 and 11; agreed statement as in the case of the WCT; Information Society (Copyright) Directive Article 2 (emphasis added).Article 2: „Member States shall provide for the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part: (a) for authors, of their works; (b) for performers, of fixations of their performances; (c) for phonogram producers, of their phonograms; (d) for the producers of the first fixations of films, in respect of the original and copies of their films; (e) for broadcasting organisations, of fixations of their broadcasts, whether these broadcasts are transmitted by wire or over the air, including by cable or satellite.”



The new Albanian Copyright Law on the right of reproduction: Article 24. Exclusive rights (of authors)(1) Unless otherwise provided in this law, the author shall have the following exclusive rights to authorize or prohibit the use of his work:(a) right of reproduction,..(3) In the application of this Law, (a) “reproduction” means the making of one or more copies of a work or object of related rights either directly or indirectly, and either temporarily or permanently, in any form whatsoever, including an audio or video recording, and the temporary or permanent storage of a work or object of related rights in an electronic medium;



The new Albanian Copyright Law on the right of reproduction: • Article 53(1) on the rights of performers: exclusive right of authorization

or prohibition of (a) the fixation of their performances; (b) the reproduction of the fixation of their performances;

• Article 57(1) on the rights of producers of phonograms: exclusive right of authorization or prohibition of (a) the reproduction of their phonograms;

• Article 59(1) on the rights of the producers of first fixation of films: exclusive right of authorization or prohibition of (a) the reproduction of their films;

• Articles 61(1) on the rights of broadcasting organizations: exclusive right of authorization or prohibition of (a) the fixation of their broadcasts; (b) the reproduction of the fixation of their broadcasts.



Uploading: exclusive right of reproduction. In case of (interactive) making available to the public, the act of uploading is „dissolved” in the exclusive right of making available to the public: WCT Article 8 (as part of the general exclusive right of communication to the public); WPPT Articles 10 and 14 (separate from the right to single equitable remuneration for non-

interactive communication to the public under WPPT Article 15); Information Society (Copyright) Article 3 (emphasis added): „1. Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.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: (a) for performers,…(b) for phonogram producers…(c) for the producers of the first fixations of films, (d) broadcasting orgnizations…”



The new Copyright Law of Albania on the right of (interactive) making available to the public:• Article 24. Exclusive rights (of authors)

(1) Unless otherwise provided in this law, the author shall have the following exclusive rights to authorize or prohibit the use of his work:..(j) right of of interactive making available to the public;…(3) In the application of this Law,…(i) “interactive making available to the public’’ means the making available to the public of works or objects of related rights, by wire or wireless means, in such a way that the members of the public may access them from a place and a time individually chosen by them;

• Article 53(1) for performers; Article 57(1) for producers of phonograms; Article 59(1) for producers of first fixations of films; and Article 61(1) for broadcasters provide for an exclusive right of making available to the public.



Downloading: right of reproduction in case of downloading by natural persons for private, non-commercial

purposes: right to remuneration (Information Society (Copyright) Directive Article 5(2)(b): „fair compensation”) based on a „levy” system and exercised through mandatory collective management;

free reproduction against the payment of a „levy” does not extend to reproduction from [obviously] illegal sources: clarified by legislation (such is in Germany, Nordic countries, Spain) or in other way (such as by the Conseil d’État in France or by the Copyright Council in Hungary);

for the right to remuneration, the application and non-application of technological protection measures should be taken into account, and the objective of making private copies, in general, does not eliminate the prohibition of the circumvention of such measures (Information Society (Copyright) Directive Article 6).


Rights applicable for the acts performed on the Internet (6)

„File sharing” in p2p systems: misleading expression; what truly happens is (interactive) making available to the public.

„User-generated content (UGC)”: an expression covering different things: in case of user-created works , the same rules apply as in the case of any other works; if, however, a user includes a work without authorization into a UGC system (such as the

YouTube) without authorization, it is an infringement of the right of (interactive) making available to the public.

„Creative commons” (CC) and „free-software” licenses allowing free uses on the Internet: useful system for those who do not want to exercise their economic rights (or some of

them), since it offers a uniform way of indicating this; it is based on copyright; if somebody does not use a CC work allowing similar subsequent

free uses, it is a violation of the licensing conditions; it is not a „revolutionary” alternative to the economic exploitation of copyright and related

rights; it is only suitable for those who may afford not exercising their rights, because they have other sources of living (academics, professors, „accidental authors,” „vanity publishers,” free-time „bloggers,” etc.)


Rights applicable for the acts performed on the Internet (7)

Non-interactive webcasting, simulcasting (streaming): in case of copyright, the „traditional” rights of communication to the public apply

(Articles 11(1)(ii), 11ter(1)(ii), 14(1)(ii) and 14bis(2) of the Berne Convention, Article 8 of the WCT, Article 3(1) of the Information Society (Copyright Directive); Articles 4 and 15(2) of the Azerbaijani Copyright Law; as regards authors’ rights – depending on whether original communication or retransmission is involved – in accordance with the international and E.U. norms, in the form of voluntary, „extended” or mandatory collective management;

in the case of performers and producers of phonograms, the right to single equitable remuneration applies (Articles 12 and 16(1)(a) of the Rome Convention, Article 15 of the WPPT, Article 8(2) of the 1993 Rental, Lending and Related Rights Directive of the EU, Article 37 of the Azerbaijani Copyright Law) normally with mandatory collective management.



II. ENFORCEMENT OF RIGHTS IN THE DIGITAL ONLINE ENVIRONMENT:

INTRODUCTION

„File sharing,” „UGC platforms,” etc. (1)

„File sharing” in p2p systems: misleading expression: what truly happens is (interactive) making available to the public.

„User-generated content (UGC):” an expression covering different things: in case of user-created works, the same rules apply as in the case of any

other works; if, however, a user includes a work without authorization into a UGC system

(such as the YouTube) without authorization, it is an infringement of the right of (interactive) making available to the public.

Folkloristic misbelieves: if somebody infringes copyright without commercial purpose is not infringement. For owners of rights it is not truly relevant whether those who undermine

their chance to enjoy and exploit their rights normally do so for commercial purposes or without any such purposes, rather just for some confused „ideological” reasons.



Special characteristics of use of works and objects of related rights through

the Internet facilitating infringements and leading to less respect for copyright: minimum cost of reproduction and distribution; low-cost, perfect, efficient and easy-to-operate distribution

network; abundant and easy availability of digitized works and objects of

related rights; possible absence of widespread legal distribution systems; combination of the roles of suppliers and users;



Special characteristics of use of works and objects of related rights through the

Internet facilitating infringements and leading to less respect for copyright (continued):

absence of social condemnation of infringements through the Internet; just the contrary, performing piratical activities through the Internet – mainly among younger people – has even positive social connotations (something that is fashionable, that reflects how clever and technically savvy somebody is, that is regarded as a form of expressing opposition to the “establishment,” and something that makes those involved to feel as romantic, brave and risk-taking rebels);

certain infringing activities through the Internet were not controlled when it still might have been possible, as a result of which they have become so much widespread that it is difficult legally and politically control them;

due to the global, cross-border and ephemeral nature of digital infringements, it is difficult to detect and combat them;

due to the great number of illegal “file sharers,” it is delicate political task to deal with the problem.



III. ENFORCEMENT OF RIGHTS IN THE DIGITAL ONLINE ENVIRONMENT: DIGITAL RIGHTS MANAGEMENT

„Answers to the machine:” application and protection of TPMs and RMI (DRM) (1)

Agreement at the 1996 Diplomatic Conference: there was a need for making it possible the application of, and adequately protecting, technological measures (TPMs, such as encryption systems) and rights management information (RMI, such as digital identifiers) – together: „digital rights management” (DRM) – in order that copyright and related rights might be exercised and enforced in the digital, networked environment.

WCT Article 11 and WPPT Article 18: „Contracting Parties shall provide adequate legal protection and effective legal

remedies against the circumvention of effective technological measures that are used by [authors][performers or producers of phonograms] in connection with the exercise of their rights under [this Treaty or the Berne Convention][this Treaty] and that restrict acts, in respect of their [works][performances or phonograms] , which are not authorized by [the [authors][the performers or the producers of phonograms] concerned or permitted by law.”



WCT Article 12 and WPPT Article 19: „(1) Contracting Parties shall provide adequate and effective legal remedies against any

person knowingly performing any of the following acts knowing, or with respect to civil remedies having reasonable grounds to know, that it will induce, enable, facilitate or conceal an infringement of any right covered by [this Treaty or the Berne Convention][this Treaty]:

(i) to remove or alter any electronic rights management information without authority; (ii) to distribute, import for distribution, broadcast or communicate to the public, without

authority, [works] or copies of [works][fixed performances or phonograms] knowing that electronic rights management information has been removed or altered without authority.

„(2) As used in this Article, ‘rights management information’ means information which identifies the [work, the author of the work][the performer, the performance of the performer, the producer of the phonogram, the phonogram, the owner of any right in the [work][performance or phonogram], or information about the terms and conditions of use of the [work][performance or phonogram], and any numbers or codes that represents such information, when any of these items of information is attached to a copy of a [work][performance or phonogram] or appears in connection with the communication of [a work][a fixed performance or a phonogram] to the public.”



The requirement of adequate protection of TPMs can only be duly fulfilled if the protection extends for both access-control and „copy-control” TPMs and against both acts of circumvention and „preparatory acts.” The negotiating history of the „Internet Treaties” confirms this.

Article 6(1) and (2) of the Information Society (Copyright) („InfoSoc”) Directive: „1. Member States shall provide adequate legal protection against the circumvention of any

effective technological measures, which the person concerned carries out in the knowledge, or with reasonable grounds to know, that he or she is pursuing that objective.

„2. Member States shall provide adequate legal protection against the manufacture, import, distribution, sale, rental, advertisement for sale or rental, or possession for commercial purposes of devices, products or components or the provision

of services which: (a) are promoted, advertised or marketed for the purpose of circumvention of, or (b) have only a limited commercially significant purpose or use other than to circumvent, or (c) are primarily designed, produced, adapted or performed for the purpose of enabling or

facilitating the circumvention of, any effective technological measures.”


„Answer to the machine:” application and protection of TPMs and RMI (DRM) (4)

The new Copyright Law of Albania on TPMs:Article 77. Protection of technological measures (1) The following acts shall be forbidden, independently of whether or not as a result of them any infringement of copyright, related rights or other rights protected by this Law may also take place:(a) the circumvention any effective technological meas ures by a person who carries out the act of circumvention in the knowledge, or with reasonable grounds to know, that he or she is pursuing that objective;(b) the manufacture, importation, distribution, sale, rental, advertisement for sale or rental, or possession for commercial purposes of devices, products or components or the provision of services which:

(i) are promoted, advertised or marketed for the purpose of circumvention of, or(ii) have only a limited commercially significant purpose or use other than to circumvent, or(iii) are primarily designed, produced, adapted or performed for the purpose of enabling or facilitating the circumvention of,

any effective technological measures.



The new Copyright Law of Albania on TPMs:Article 77. Protection of technological measures (Contd)

(2) In the application of this Law, "technological measures" means any technology, device or component that is designed to prevent or restrict acts in the normal course of its operation in respect of works or objects of related right, which are not authorized by the owner of rights. Technological measures shall be deemed "effective" where the use of a protected work or object of related rights is controlled by the owner of rights through application of an access control or protection process, such as encryption, scrambling or other transformation of the work or object of related rights or a copy control mechanism, which, in the normal course of its operation, achieves the protection objective.



Contrary to certain allegations, no new „access right” emerges as a result of application and protection of TPMs and RMI.

Access to works by users have always been controlled; without it, the copyright system simply could not have existed. In book shops, record shops, one has had to pay for copies to get full access; in libraries ,certain rules have had to be respected in order to receive copies in loan; in case of theatrical presentations, concerts, etc., buying tickets or other arrangements have been needed to the members of the public for getting access.



Even the beneficiaries of exceptions have not been able to get access to copies without any conditions whatsoever. Walking into a bookshop, taking a book from the shelves and walking out without payment referring to the „right” of free quotation?

In the digital networked environment, what used to be (i) going to the video shop, (ii) buying a video recording on a cassette; (iii) bringing it home, (iv) putting into the player, (v) sitting down and (vi) pressing the „play” button – has been replaced by a simple click on the keyboard. The use of TPMs („DRM”) is the normal way of making access conditional to the payment of a reasonable price or some other arrangement.



Various methods to guarantee the applicability of exceptions and limitations that are important from the viewpoint of public interests. For example, in the U.S. certain outright exceptions and a tri-annual administrative review process.

In the E.U., the Member States are obligated to provide for an appropriate intervention mechanism under Article 6(4) of the 2001 Information Society (Copyright) Directive:

„Notwithstanding the legal protection provided for in paragraph 1, in the absence of voluntary measures taken by rightholders, including agreements between rightholders and other parties concerned, Member States shall take appropriate measures to ensure that rightholders make available to the beneficiary of an exception or limitation provided for in national law in accordance with Article 5(2)(a) [reprographic reproduction], (2)(c) [certain library and educational uses], (2)(d) [ephemeral recording by broadcasters], (2)(e) [copying of broadcasts in social institutions], (3)(a) [illustration for teaching; scientific research], (3)(b) [use by people with disability] or (3)(e) [public security; official procedures] the means of benefiting from that exception or limitation, to the extent necessary to benefit from that exception or limitation and where that beneficiary has legal access to the protected work or subject-matter concerned.



Article 6(4) of the Information Society (Copyright) Directive (Contd): „Member State may also take such measures in respect of a beneficiary of an exception or

limitation provided for in accordance with Article 5(2)(b) [private copying], unless reproduction for private use has already been made possible by rightholders to the extent necessary to benefit from the exception or limitation concerned and in accordance with the provisions of Article 5(2)(b) and (5) [Article 5(5) subjects the application of all exceptions and limitations to the „three-step test”], without preventing rightholders from adopting adequate measures regarding the number of reproductions in accordance with these provisions.

„The technological measures applied voluntarily by rightholders, including those applied in implementation of voluntary agreements, and technological measures applied in implementation of the measures taken by Member States, shall enjoy the legal protection provided for in paragraph 1.

„The provisions of the first and second subparagraphs [see the preceding slide and the first paragraph on this slide] shall not apply to works or other subject-matter made available to the public on agreed contractual terms in such a way that members of the public may access them from a place and at a time individually chosen by them.”



The majority Member States apply mediation-arbitration systems as such intervention measures. In general, the pessimistic forecasts – according to which the application and protection of TPMs would not guarantee the applicability of important exceptions and limitations – have turned out to be unjustified.

In Hungary, also a mediation system has been provided in the Copyright Law for which the Hungarian Copyright Council is competent. The system has been in existence since May 1, 2004, when Hungary became a member of the E.U.

The number of submissions received in the more than eight years: 1 The number of submission which has proved to be justified: 0



The new Copyright Law of Albania on TPMs: Article 77. Protection of technological measures(3) Notwithstanding the legal protection provided for in paragraph (1), in the absence of voluntary measures taken by the owners of rights, including agreements between them and other parties concerned, the beneficiaries of the exceptions and limitations provided for in Articles 37, 40(2) and 41(1)(b), (f), (g) and (h) and (2), or their representative organizations, may request the Copyright Council established at the Albanian Copyright Office to intervene through an arbitration procedure to ensure that owners of rights make available to them the means of benefiting from that exception or limitation, to the extent necessary to benefit from that exception or limitation, where they have legal access to the protected work or objects of related rights or other rights provided for by this Law. In such a case, the procedure foreseen in Article 85 shall apply. (4) The technological measures applied voluntarily by the owners of rights, including those applied in implementation of voluntary agree ments, or those applied as a result of the mediation procedure mentioned in paragraph (3) or a court decision, shall also enjoy legal protection provided for in this article. (5) The provisions of paragraphs (3) and (4) shall not apply to works or objects of related rights or other rights provided for in this Law made available on agreed contractual terms in the form of interactive making available to the public.



The new Copyright Law of Albania on RMIArticle 78. Rights management information(1) The following acts shall be forbidden to be knowingly performed by any person without authority:(a) the removal or alteration of any electronic rights manage ment information;(b) the distribution, importation for distribution, broadcasting, communication or making available to the public of works or objects of related rights or other rights provided for in this Law from which elec tronic rights-management information has been removed or altered without authority,if such a person knows, or has reasonable grounds to know, that by so doing he is inducing, enabling, facilitating or concealing an infringement of any copyright, related rights or other rights provided for in this Law.(2) In the application of this Law, “rights management information” means any information, provided by the author or other owner of right, identifying the work or an object related rights, the author or other owner of right, or information on the conditions of the use of the work or object of protection, as well as any numbers and codes representing such information.



IV. ENFORCEMENT OF RIGHTS IN THE DIGITAL ONLINE ENVIRONMENT: CO-

OPERATION BY AND LIABILITY OF INTERNET INTERMEDIARIES

Results of lobbying against liability: agreed statements in the WIPO „Internet Treaties”

Agreed statement to Article 8 of the WCT included as a result of intensive lobbying by the representatives of ISPs at the December 1996 Diplomatic Conference:

“It is understood that the mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Treaty [the WCT] or the Berne Convention.” (Emphasis added.)

This agreed statement states something obvious, since it has always been evident that, if somebody carries out an act other than an act directly covered by a right provided for in the Convention (and in corresponding national laws), he has no direct liability. It is another matter that, depending on the circumstances, he may still be liable on the basis of some other forms of liability, such as contributory or vicarious liability.

The international treaties on intellectual property rights, understandably and rightly, do not cover such issues of liability. The WCT follows this example (and so does the WPPT).


Specific provisions of the liability of online intermediaries (1)

Special provisions concerning the liability of Internet service providers (ISPs)– and the conditions of the limitation thereof (in the most detailed manner in the US Copyright Act and the 2000 E.U. Electronic Commerce Directive) – in respect of different services: mere conduit; system caching; hosting; [information location tools].

Notice and take down systems: hosting and location tool services may only be exempted from liability if they, upon being informed of infringing material, act expeditiously to remove, or disable access to, such material.



New Copyright Law of AlbaniaArticle 79. Conditions of limitation of liability of service providersWithout derogation of the provisions of the laws of the Republic of Albania on electronic commerce and the liability of service providers, service providers shall only be exempted from the liability for infringements committed by the users of their services, if they fulfill the following conditions:(a) as soon as they obtain information on the basis of which they know or have reasons to know, that their hosting or location tool services are used in respect of any material infringing copyright, related rights or other rights protected by this Law, including when they receive notice about it from the owners of rights, acts promptly to remove such a material from their system or to disable access to it;(b) they fulfill duly and promptly any judicial injunction to eliminate or prevent infringement of copyright, related rights or other rights protected by this Law;



New Copyright Law of AlbaniaArticle 79. Conditions of limitation of liability of service providers (Contd)

Without derogation of the provisions of the laws of the Republic of Albania on electronic commerce and the liability of service providers, service providers shall only be exempted from the liability for infringements committed by the users of their services, if they fulfill the following conditions:..(c) they fulfill duly and promptly any order of law enforcement authorities, and, in the case of civil procedures, of the court to reveal the identity of those persons who have committed infringements by using their services, or there are well founded reasons to believe that they have done so;(d) they have adequate policy against repeat infringers, including the suspension of their accounts where they continue their infringing activities in spite of repeated warnings communicated them.


Liability of ISPs and other intermediaries – „notice and take down” (1)

Hungarian example for a „notice and take down” system:

The Electronic Commerce Act contain (Act CVIII of 2001) “horizontal” rules (covering violations of different laws) limiting service providers’ civil liability, but it also provides for a “notice and takedown” procedure exclusively with respect to claims concerning the infringement of copyright or neighboring rights .

If the owner of the pertinent right claims that a service provider is making accessible any information that infringes its right, that owner may serve a notice, with full evidentiary effect, on the service provider to demand the latter to remove, or to disable access to, the information in question. This notice must specify the following: (a) the right-owner with its name, telephone number, main postal address, and electronic-mail address; (b) in what work or other media production the pertinent right is claimed and facts probative of the infringement; and (c) data identifying the information in question.



Notice and take down system under the Hungarian Electronic Commerce Act (continued):

Within 12 hours from the receipt of the notice, the service provider must remove or disable access to the information identified in the notice.

Within 3 days, it must inform the user of its service, who has provided the information in question, of the terms of the notice requesting removal or disablement of access.

Within 8 days from the user's receipt of such notification of the removal or disablement of access, the user of the service may request, in a notice with full evidentiary effect, that the information be restored to the system. Such a counter-notice must specify (a) the user of the service with the requisite contact information set out above for the right-owner, (b) the information claimed to be infringing, and (c) the prior network location of this information. Further, the counter-notice must include a statement that, with appropriate justification, explains why the information in question is not infringing. The service provider, upon receipt of the counter-notice, must restore the information, or access to it, within its system. It must also inform the right-owner of the terms of the counter-notice and the restoration of the information.



Notice and take down system under the Hungarian law (continued): If, after being apprised of the initial notice, the user of the service admits the infringement

or does not submit a counter-notice within the required 8-day period, the service provider must maintain the removal of, or disablement of access to, the information in question.

Within 10 days of the receipt of a counter-notice, the rightowner has the options of filing a civil suit to obtain a temporary injunction and ultimately a permanent injunction to restrain the infringement or of initiating a criminal proceeding.

Within 3 days of filing a civil suit or starting a criminal proceeding, the right-owner must send the service provider a copy of the pleadings or process commencing the pertinent action, and the service provider must remove or disable access to the information again as it did before, that is, within 12 hours. The rightowner has to notify the service provider of any temporary injunction or final judicial decision on the merits issued in the case. The service provider, depending on the judicial outcome, must either restore the information in question or maintain its removal or disablement of access.

The service provider is not liable for removing or disabling access to the information in question, provided that it has acted in good faith and in harmony with the pertinent provisions of the Electronic Commerce Act.



New Copyright Law of Albania. Article 80. Notice-and-take-down procedure (1) Owners of copyright, related rights and other rights protected by this Law whose rights have

been infringed by the users of the services of an online service provider shall have the right to demand the service provider to removal or block access to any material infringing their rights by the users of the services of the service provider by way of sending a written notice to the service provider. Such notice shall contain the following:

(a) the subject of the infringement and the indication of the facts that provide reasonable basis to believe that infringement has taken place;

(b) the data needed to identify the unlawful material; (c) the name, address of residence or head office, phone number and electronic mail address of

the owner of rights… (3) Where notice is sent through a representative, a copy of the authorization of the representative,

along with the information mentioned in paragraph (2)(c) concerning the representative, shall also be attached to the notice.

(4) The service provider shall remove, or disable access to, the infringing material identified in the notice within 24 hours of receiving the notice, and should promptly inform about this both the owner of rights and the user of the service concerned.



New Copyright Law of Albania. Article 80. Notice-and-take-down procedure (Contd) (5) Within 8 days of receiving the information mentioned in paragraph (4), the user of the

service concerned may send a counter-notice to the service provider to demand the re-inclusion of the material in the system of the service provider or reestablishing access to it, respectively. Such counter-notice shall contain the following:

(a) identification of the material removed or made inaccessible; (b) the network address where the material had been available; (c) indication of the reasons for which, in view of the user of the service, the material

concerned does not infringe the right of the owner of rights specified in the notice; (d) information mentioned in paragraph 2(c) concerning the user of the service. (6) Where the user of the service does not send a counter-notice within the time limit specified

in paragraph (5) or where the counter-notice does not fulfill the requirements mentioned in paragraph (5), the service provider shall maintain the effect of the removal of, or disabling access to, the material concerned.



New Copyright Law of Albania. Article 80. Notice-and-take-down procedure (Contd) (7) In case of a counter-notice, the service provider informs about it and about its contents the owner

of rights within 3 days of the receipt of the counter-notice. Where the owner of rights, 10 days of the receipt of such information does not present a document to the service provider proving that a civil or criminal procedure has been initiated, the service provider shall fulfill the demand of the user of the service presented in the counter-notice. Where the owner of rights presents a document mentioned in the preceding sentence, the service provider shall maintain the effect of the removal, or disabling access to, the material concerned until the interim or final decision of the court.

(8) The owner of rights shall be obligated to inform the service provider within 3 days of the interim or final decision of the court, and the service provider, depending on the contents of the decision, either maintains the effect of the removal, or disabling access to, the material concerned the provisions of this article.

(9) The service provider shall not be liable for the removal of, or disabling access to, the material concerned if he or it acts in accordance with the provisions of this article.

(10) Where the removal of, or disabling access to, the material concerned, turns out to be unjustified due to the absence of infringement, the owner of rights shall be liable for any damage caused to the user of the service in accordance with the rules of civil liability.


Case law on the liability of internet intermediaries (1)

Napster (A&M Records, Inc v. Napster 239 F. 3d 1004 (9th Cir. 2001). Napster, the first popular p2p music “file sharing” system, had a central database that allowed users to find each other and to copy MP3 files from each other’s shared libraries on their hard drives. Napster has been found liable for contributory infringement since it could have blocked access to infringing files and it did not do so.

Grokster (Streamcast, Morpheus) (MGM Studios, Inc. v. Grokster Ltd. 125 S. Ct. 2764 (2005). This new generation of p2p systems did not have centralized directory; the information necessary for “file sharing” was dispersed among the users of the system. Their business profits from advertisement depended on the volume of infringing copies transmitted with the use of their software. The US Supreme Court found that they actively induced infringements.



KaZaa (Universal Music Australia Pry Ltd v. Sharman License Holding Ltd (2005) FCA 183.) The Federal Court of Australia has found the company operating the KaZaa decentralized “file sharing” system for reasons similar to those identified by the US Supreme Court in the Grokster case. The decision pointed out that no measures had been applied to prevent infringements although they were available (but their application would have been against the company’s financial interests). The defendants also actively promoted infringements under the populist slogan of “KaZaa revolution.”

Pirate Bay (Sony Music et al. v. Fredrik Neij, Gottfrid Swartholm Warg, Peter Sunde Kolmisoppi and Carl Ulf Sture Lunds Sure Lundström, decision No. B 13301-06 of April 17, 2009, of the Stockholm District Court). The Stockholm District sentenced each of the four defendants – the operators of Pirate Bay one of the biggest BitTorrent “file-sharing” systems – to 1 year’s imprisonment for complicity (aiding and abetting) in copyright infringements. By providing a website with highly-developed search functions, simple uploading and downloading procedures, and by linking a tracker to the website, the defendants abetted the offences which the “file-sharers” were objectively guilty of. The District Court has also obligated the defendants to pay compensation for damages to the plaintiff owners of rights in an amount over 30 million Swedish crowns.



Tele2 A/S (decision October 25, 2006, of the Copenhagen City Court). At the demand of IFPI Denmark, the court issued an injunction requiring the ISP to block access to the Russian pirate site allofmp3.com.

Mininova (decision of August 26, 2009, of the District Court of Utrecht, the Netherlands). Although the Mininova BitTorrent platform applied a notice-and-take-down system, it did not obey to the demands of owners of rights that it not only take down but also actively filter and block access to certain titles about which it was obvious that their use was illegal. The court obligated Mininova to apply a filtering and blocking system.

Pirate Bay (decision February 2, 2010, of the Tribunal of Bergamo) The court has found that it is an obligation of the Italian Internet service and access providers to block access to the pirate website.

British Telecom (High Court of Justice, London, July 28, 2011). The Court has found in favor of Twentieth Century Fox, Universal Film Studios, Warner Bros. Entertainment, Paramount Pictures, Disney Enterprises and Columbia Pictures against the British Telecom. The High Court judge has ruled that BT must block access to a website which provides links to pirated movies. The case has concentrated on Newzbin 2, a site aggregating a large amount of illegal copies of movies on its Usenet „discussion” forums.



Scarlet (Tiscali) (TPI Brussels, June, 29, 2007, SABAM c/ SA Scarlet (previously Tiscali)). The Brussels court has found that although the operator of the Scarlet (previously Tiscali) decentralized “file sharing” is obligated to apply adequate filtering technology to prevent infringing activities.

Controversial rulings of the Court of Justice of the EU: Scarlet v. SABAM (C-70/10 of January 18, 2010) and SABAM v. Netlog (a hosting service) (C-360/10 of June 28, 2010): (i) national courts cannot impose general obligations of filtering; (ii) it is beyond the scope of national courts’ competence to interpret laws in a single case so as to influence all the participating and non-participating parties; (iii) national legislators may introduce online content filtering taking the principle of proportionality into account; (iv) such filters cannot imply all methods of e-communication; (v) filtering and blocking are not to be used for general preventive purposes; (vi) where there is no infringement, filtering and blocking are not to be applied; (vii) filtering and blocking cannot be introduced completely at the expense of the internet service provider.

It is possible for the legislators of Member States to provide for filtering and blocking as means of protection of rights, even as part of a graduated response system, where infringement can be observed and filtering and blocking are aimed at concrete persons and kinds of infringements with due respect for proportinality.


Legislative measures: right of information (1)

Developments in Germany in the lights of the judgment of 29 January 2008 of the European Court of Justice (ECJ) in the Pro Musicae v. Telefonica case (C-275/06), according to which, it is possible but not obligatory, under the EU norms to obligate ISPs to reveal the identity of infringers in civil procedures: Before September 1, 2008: no right of information in civil procedures. Indirect way: rightholders charged unknown persons for criminal offence and, in

principle, obtained information when the prosecutors investigated. The theory of „misusing criminal procedure in order to enable civil actions.”

Prosecutors limited criminal investigations to the most serious cases. New legal situation since September 1, 2008, when the law implementing the

Enforcement Directive entered into force introducing a right of information in civil proceeding (courts may order revealing information when infringements are obvious).


Legislative mesures: right of information (2)

Developments in Sweden in the lights of the judgment of 29 January 2008 of

the European Court of Justice (ECJ) in the Pro Musicae v. Telefonica case : In Sweden, before April 1, 2009 (as in Germany before September 1, 2008)

owners of rights were only able to obtain information on the identity of on-line infringers by reporting to the police to launch criminal investigation (however, the police, in many cases, was quite reluctant to act).

The Swedish law to implement the Enforcement Directive entered into force on April 1, 2009.

The new law made it possible for courts to order in civil procedure that an ISP reveal the identity of „file-sharers” and other infringers.

Within a couple of days after the entry into force of the new law, the Swedish Internet traffic dropped by 33%, obviously due to the decrease of the volume of illegal „file-sharing” traffic.


Legislative measures: „graduated response”(1)

„Graduated response” – “three strikes” – model applied or considered in certain countries (U.K, Spain, Republic of Korea, New Zeeland, Canada, Ireland, Italy, etc.) The new French legislation has been followed with the greatest attention.

First version of the French law adopted in May 2009 foresaw the following system: The Government will establish a new administrative body to operate a warning and

sanction mechanism (the „HADOPI”). Rights holders will use DRM mechanisms (such as, watermarks, fingerprinting, filters

etc) to make infringement more difficult and – provided that the warning and sanction system functions effectively – will bring on-demand and physical video release dates in line, make audiovisual material available on-line earlier and make musical productions available online.

Internet service providers will send warnings and implement sanctions as required by the new law, acting under the direction of the HADOPI, test and implement filters and work with rights holders to use and improve DRM systems. )


Legislative measures: graduated response (2)

„Graduated response;” first version of the French law (continued): The HADOPI will issue a warning to infringers by email, followed within a month (if the infringing

activity continued) by a second warning. If the infringing activity still continues, the third step will be the real „strike:” the Internet account of the offender may be suspended up to one year.

A database will be established of repeat infringers whose accounts are to be suspended and it will be prohibited to Internet service providers to open account for them during the period of suspension.

The sanction to be applied against infringers will be at the level of minor crimes, but serious fines will be applied against Internet service providers if they do not act in accordance with the law or open account for users included in the database as owners of suspended accounts.

The French Constitutional Court in June 2009 found the first version of the law unconstitutional because the ultimate suspension – the third strike – was to be decided upon by an administrative body rather by a court.

In July 2009, the Senate, and then in September 2009, the National Assembly, adopted the final text of the law under which the decision on the „third strike” would be taken by a court.


Cross-industry co-operation (1)

An example: the „UGC principles:” www.ugcprinciples.com. Key elements: UGC Services should use effective content identification technology

(“Identification Technology”) with the goal of eliminating from their services all infringing user-uploaded audio and video content for which Copyright Owners have provided Reference Material. To that end…, UGC Services should fully implement commercially reasonable Identification Technology that is highly effective,…in achieving the goal of eliminating infringing content.

If a Copyright Owner has provided: (1) the reference data for content required to establish a match with user-uploaded content; (2) instructions regarding how matches should be treated; and (3) representations made in good faith that it possesses the appropriate rights regarding the content (collectively, “Reference Material”), then the UGC Service should apply the Identification Technology to implement a Filtering System.


http://www.ugcprinciples.com/

http://www.ugcprinciples.com/


UGC principles (continued): UGC Services and Copyright Owners should work together to identify sites that

are clearly dedicated to, and predominantly used for, the dissemination of infringing content or the facilitation of such dissemination. Upon determination by a UGC Service that a site is so dedicated and used, the UGC Service should remove or block the links to such sites. If the UGC Service is able to identify specific links that solely direct users to particular non-infringing content on such sites, the UGC Service may allow those links while blocking all other links.

UGC Services should use reasonable efforts to track infringing uploads of copyrighted content by the same user and should use such information in the reasonable implementation of a repeat infringer termination policy. UGC Services should use reasonable efforts to prevent a terminated user from uploading audio and/or video content following termination, such as blocking re-use of verified email addresses.



UGC principles (continued):

The Identification Technology should use Reference Material to identify user-uploaded audio and video content that matches the reference data and should permit Copyright Owners to indicate how matches should be treated.

If the Copyright Owner indicates in the applicable Reference Material that it wishes to block user-uploaded content that matches the reference data, the UGC Service should use the Identification Technology to block such matching content before that content would otherwise be made available on its service (“Filtering Process”). The Copyright Owner may indicate in the applicable Reference Material that it wishes to exercise an alternative to blocking (such as allowing the content to be uploaded, licensing use of the content or other options), in which case, the UGC Service may follow those instructions or block the content, in its discretion.



YouTube’s audio and video identification system:

Rights holders deliver YouTube reference files (audio-only or video) of their protected content , metadata describing that content, and policies on what they want YouTube to do when it finds a „match.”

YouTube compare content uploaded to YouTube against those reference files, and its identification technology (with filtering function) automatically identifies the protected content .

In case of a „match,” YouTube and applies the rights owner’s preferred policy: (i) authorizing and monetizing, (ii) only tracking, or (iii) blocking (taking down).



V. CITING FRANCIS GURRY FOR A KIND OF SUMMARY

Francis Gurry on the protection and enforcement of rights in the digital online environment

Francis Gurry, Director General of WIPO, about the future of copyright on the Internet at the „Blue Sky Conference” in Sidney in February 2011: „It is a question that implies a series of balances: between availability, on the one hand, and control of the distribution of works as a means of extracting value, on the other hand; between consumers and producers; between the interests of society and those of the individual creator; and between the short-term gratification of immediate consumption and the long-term process of providing economic incentives that reward creativity and foster a dynamic culture.” „Recognizing the limitation of law, and its inability to provide a comprehensive answer, should not mean that we abandon it…I believe that the question of… the responsibility of intermediaries is paramount. The position of intermediaries is key.”



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