The fight against films counterfeiting through internet providers and search engines

Paris High Civil Court, Pôle 5, Ch. 2, December 15, 2018

A group of professional film and audiovisual organisations obtained from the Court that Internet service providers (ISPs) and a major search engine be ordered to take some measures, and to bear the related costs, against the illegal downloading of movies.

These organisations consider that Internet service providers and search engines, as intermediaries, provide the means for Internet users to download illegally from sites identified as pirates. The claimants have sued three ISPs and a major search engine on the grounds of Article L. 336-2 of the French Intellectual Property Code, which provides that, in the event of copyright infringement due to the content of an online public communication service, the court may order that measures be taken to prevent or stop such infringement against any person likely to help remedy it.

According to this legal ground, the court first had to determine to what extent the sites in question infringed a copyright or related right.

In order to ascertain the making available of protected works, film professionals relied on the reports made by the Association de Lutte contre la Piraterie Audiovisuelle (ALPA). It appears that works of the claimants’ members were made available to Internet users. Thus, for the Court there is no doubt that these sites are dedicated to downloading or viewing audiovisual works without the authorization of the rights holders. These reports also revealed that the URL of the websites concerned were redirecting to other domain names.

Given the illegal nature of the activity of the concerned Internet sites, the Court had to rule on the measures to be taken.

The ISPs contested, in the light of European Union law, the proportionality and necessity of the measures requested by the claimants. The Court recalled the whole body of rules of the European Union and French law allowing the taking of measures strictly necessary to defend the rights of holders or their representatives, through a contradictory procedure. Internet service providers also questioned the actual need for such measures.

The Court confirmed that the requested measures were necessary by emphasizing that ISPs were likely to contribute to remedying copyright infringements « in that they have the possibility of preventing access by their subscribers to the content offered by the sites in question ».

Interestingly, the Court stated that the implementation of Article L 336-2 is not subject to the justification of a prior unsuccessful action by the right-holders with other actors such as the publisher of the websites or hosting providers. However, the Court pointed out that measures directly against registrars would be likely to remedy the infringements.

Thus, the Court clarified that the implementation of Article L 336-2 is not subsidiary to the application of other prior measures.

Consequently, the Court ordered ISPs to take the necessary measures for 12 months in order to prevent access to the sites referred to in the claimants’ list of claims.

The Court also had to address a major issue concerning the financial costs in taking these measures.

The ISPs have expressed their refusal to bear the costs, considering that they are not bound by any legal obligation and that this would entail an additional burden of work which would result in a cost. On the other hand, professional organisations argued that this cost should be borne by ISPs in relation to their obligations as « intermediaries » under Directive 2000/31 as implemented in France by the LCEN. According to this law, the intermediaries are bound by an obligation to enforce the judicial injunctions they receive, as recalled in CJUE September 15th, 2016 Tobias Mc Fadden / Sony Music. Generally speaking, professional organisations consider that it is not the right-owners but rather the ISPs who should bear the costs insofar as the infringement is facilitated by their services.

The Court underlined that the EU texts do not specify who should bear the costs. It also stated that ISPs cannot argue that their lack of active role, i.e., their status as mere intermediaries, precludes them from incurring these costs. The Court ruled on the ground of proportionality between freedom of enterprise and protection of intellectual property rights. It decided in favour of the applicants, considering that giving the ISPs the duty to pay these costs does not breach the requirement of proportionality in the implementation of these measures. Thus, the costs were charged to ISPs.

The originality of the decision is also due to the fact that professional organisations have sued a search engine to solicit measures to dereferencing the incriminated websites.

The claimant sued the search engine considering that its service allows Internet users who do not know the domain of the illegal website to access it via the search engine. So, the claimant asked the search engine to withdraw pages that allow access to infringing content from the search results.

The search engine contested the usefulness and effectiveness of this request. It argued that this type of dereferencing by URL is easily bypassed by the administrator of a website by way of sub-domains. The search engine considers that blocking a domain name is sufficient to prevent access to infringing works.

With regard to requests for dereferencing per se, the Court began by recalling the ALPA’s findings that a significant percentage of users of the sites in question (sometimes exceeding 60%) went through the search engine. After being recognised as an intermediary, the Court began to point out that dereferencing measures may be combined with blocking measures insofar as the seriousness of the infringement justifies it.

The claimants also requested that measures be taken beyond the particular URLs targeted in their claims by allowing the dereferencing of mirror-sites to which Internet users are redirected. They considered that the search engine service is able to know such redirections. Thus, the Court granted requests for the dereferencing of the sites as a whole for 12 months (and not specific domain names).

The originality of this decision lies in the fact that the applicants decided to file a claim against ISPs and a major search engine to cover all illegal behaviours. Also, it seems that the dereferencing of unlawful sites as a whole, notwithstanding specific extensions is an important step forward, particularly in the fight against mirror sites.

This decision is part of a recent movement in which right holders, and often their representative organizations, file claims against intermediaries based on the argument that they allow mass access to works for Internet users. Recently a similar decision was rendered in Spain, where major American film studios obtained from the Court that the ISPs block access to two illegal download sites.