Prof. Jane C. Ginsburg, Columbia University School of Law
December 30, 2013

In a prior column, “Take Down/Stay Down: RIP in France?”, I commented on a July 2012 decision of the French Supreme Court rejecting the “takedown/stay down” remedy that some lower courts had imposed on service providers hosting infringing “user-generated” content.  The plaintiffs had complained that requiring them to send the ISPs new takedown notices each time another user reposted the same infringing content was an exercise in futility (with none of the moral resonance of Camus’s Sisyphus).  The high court nonetheless held that the orders fell afoul of the EU eCommerce Directive’s prohibition of general duties to monitor the content that ISPs host.  See Art. 15.1 (“Member States shall not impose a general obligation on providers, when providing the services covered by Articles 12 [conduit], 13 [caching] and 14 [hosting], to monitor the information which they transmit or store, nor a general obligation actively to seek facts or circumstances indicating illegal activity”).

A new wave of ISP liability litigation in Europe revisits the obligations of ISPs, in a context higher up the chain of communication to the public, and therefore of higher stakes.  Where takedown/stay down orders concerned the blocking of access to particular content on UGC sites, the current cases address orders to block access to infringing sites altogether.  Readers may recall the furor fomented in 2012 in the European Parliament over ratification of the Anti-Counterfeiting Trade Agreement (ACTA): The general absence of substantive discussion of the agreement’s obligations (which the EU had in fact already implemented, notably in the 2004 Enforcement Directive and the 2001 Information Society Directive), together with the anti-ratification mobilization, made ACTA in some ways the EU bookend to the 2011 US SOPA-PIPA debacle.  But one of the most controversial features of SOPA-PIPA, website blocking, did not figure explicitly in the text of ACTA.  Now the EU appears to be embracing that remedy, both at the level of national courts, and most recently in a Nov. 26, 2013, opinion of the advocate general recommending that the Court of Justice of the European Union adopt an interpretation of the EU texts that will permit national courts to issue preventative injunctions ordering ISPs to block access to infringing websites.

This column will review recent decisions in the UK and in France, and then will address the advocate general’s opinion and its possible consequences.

In the UK, a series of decisions commencing in 2011 with Twentieth Century Fox Film Corp. v. British Telecommunications plc, culminating (so far) in the July 2013 decision in Football Ass’n Premier League v. BSkyB, the British Chancery courts (generally per Mr. Justice Richard Arnold, one of the UK’s leading intellectual property jurists) have issued blocking orders against off-shore P2P sites (including the Pirate Bay) and, in BSkyB, against an off-shore site aggregating links to illegal streaming sites.  The court found that through its substantial intervention in the making available of the streamed content, the off-shore aggregator was itself engaged in an infringing communication to the public, even though the streams to which it linked emanated from third-party websites:

FirstRow aggregates together a large number of streams from a variety of streamers, indexes them for the convenience of the user and provides a simple link for the user to click on in order to access a specific stream. It is true that the technical effect of clicking on the link is to direct the stream from the UCG site to the user’s computer, but even so the stream is presented in a frame provided by FirstRow.  In all the circumstances, I consider that FirstRow is responsible for the communication.  Para. 42.

Moreover, the off-shore site’s communication could be deemed to be taking place in the UK because the aggregator was targeting UK viewers, paras. 45-46.  With respect to the proportionality of the remedy requiring UK ISPs to block access to the aggregation site, Judge Arnold highlighted the particular problem of obtaining relief against off-shore infringers: “The orders [against the access providers] are necessary to protect the copyrights of FAPL and the supporting rightholders, which are being infringed on a large scale.  Given the difficulty of identifying, let alone bringing proceedings against, the operators of FirstRow, no other effective remedy is open to FAPL in this jurisdiction.”  Para 55(ii).  Altogether, the combination of infringing activity focused on UK customers and the absence of alternate effective relief justified ordering the UK access providers to block the operator’s IP address.

In France, the Paris first-level court on Nov. 28, 2013, issued a preliminary injunction at the behest of the association of cinema producers against a group of French access providers, requiring them to block the domain names of a variety of aggregators of links to locations (many hosted on MegaUpload) offering unauthorized streams of movies.  The access providers objected, inter alia, that the plaintiffs lacked a legal basis for seeking a preventive injunction against future and indeterminate infringements of unidentified works.  The court began its analysis by observing that the French Code of Intellectual Property empowered it to take “all measures appropriate to prevent or to end infringement with respect to any person capable of contributing to remedy the infringement” even if that person were not itself an infringer.  Like Justice Arnold, the French court concluded that the link aggregators were engaged in infringing communications to the public:

[B]y providing internet users with the ability to view the works by means of hypertext links presented on the websites at issue, and even though the contents of the works are stored on third party servers or platforms, these website operators have engaged in acts of performance of the works at issue by making their content available.

The access providers were in a position to prevent the occurrence of the infringement, the court continued, because they can block their subscribers’ access to the infringing content by preventing access to the sites’ domain names.  In response to the access-providers’ contention that the court should first require plaintiffs to seek recourse against the service providers who host the infringing websites, the court, in addition to observing that the website operators can easily change host service providers, evoked the same sorts of practical impediments signaled by Justice Arnold:

Because many of the hosts are located outside this territory, the execution of judgments enjoining them to undertake this or that restrictive measure risks encountering important procedural difficulties, which will impose delays and will diminish or eliminate the effectiveness of such orders.

Accordingly, the court issued a list of websites that the French service providers were ordered to block within 15 days.

Neither the British nor the French decisions addressed the compatibility of the site-blocking remedy with Art. 15 of the eCommerce Directive.  On its face, the remedy, specifying which websites are to be rendered inaccessible, imposes on the ISPs neither a monitoring obligation nor a general, anticipatory, obligation to investigate illegal activity.  The investigation will have been undertaken by the copyright owners, and an order to block effectively preempts any monitoring, because there is no need to monitor the activity of a site that users cannot in any event contact.  The relationship between Art. 15 and the site blocking did figure in Advocate General Pedro Cruz Villalón’s analysis in his recommendation in UPC Telekabel Wien GmbH, 26 November 2013, (French text).  Because the English text is not yet available, I will quote at some length from the AG’s opinion.

At issue was whether, in light of eCommerce Directive Art. 15 and of EU principles of proportionality and of freedom to conduct a business, Art. 8.3 of the 2001 Information Society Directive (“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” – a text also applied in the British and French actions) empowered a national court to require an entity that merely provides access to a third party site that massively infringes copyright to block that site’s IP address and domain name.  The third-party off-shore site,, was an illegal movie-streaming site.

The defendant service provider urged that the “intermediaries” comprehended within Information Society Directive Art. 8.3 should be limited to those whose services are used by the infringer to make the infringing site accessible over the internet, i.e., the host service provider, and therefore should exclude the service provider that enables the end-user to access that site, i.e., the access provider.  The advocate general rejected the distinction:

35. The rightolders rise up against internet sites that massively violate copyright.  The persons behind those sites, as well as the persons that make the sites accessible over the internet, often are operating from outside the European Union, or are hiding their identity.  The rightowners therefore endeavor to attain their objective by acting against the access providers so that they are ordered to block access to the infringing offers….

36. We too are of the view that the end-user’s access provider must be considered to be an intermediary whose services are used by third parties to violate copyright.  This conclusion flows from the letter, the context, the meaning and the purpose of the relevant provision [InfoSoc Directive, Art. 8.3]….

47. Admittedly, it is true that an Internet site, once it has been put online by the service provider of the website operator [the host service provider] has already been “made available to the public in such a way that members of the public may access them from a place and at a time individually chosen by them,” in the sense of article 3, paragraph 2 of Directive 2001/29.  Nonetheless, this making available to the public is effectuated primarily by the intermediation of said public’s own access provider.  Although the removal of one particular access provider will not cease to make the site accessible, it is certain that, collectively, the Internet end-users’ access providers are necessary to the “making available to the public.”  The referring court correctly notes in this regard that, from a factual point of view, the making available becomes relevant only at the instant in which Internet users may access the content in question….

51. …intermediaries are the best targets of enforcement measures seeking to stop infringement principally because they transmit data “in a network.”  The terms chosen [by the InfoSoc Directive] underscore that it is not merely a matter of the initial transmission in a network, but also of the last transmission in the network….

The advocate general therefore concluded that access providers were potential enforcement targets even when users, rather than infringers, availed themselves of their services in order to access the infringing site via the Internet.  He further contended that ordering access providers to block third party sites did not conflict with eCommerce Directive Art. 15 because the order did not involve imposing any measures excluded by that text:

78. An impermissible measure would have been involved if the judge had required the access provider actively to seek out possible copies of the illicit webpage under other domain names, or to filter all the data transmitted over its network, which might correspond to specified films and then block them.  But such measures are not here at issue.  The referring court is instead asked to rule on the blocking of a specific Internet site.

As for the balancing of the fundamental right to conduct a business (of providing Internet access) against the rights of copyright owners, the advocate general concluded that the specific website-blocking relief sought was in principle proportionate, even though its implementation may require significant resources, and that it was up to the national courts to calibrate the balance in individual cases.

The advocate general’s Opinion is non-binding, so it is possible that the Court of Justice of the European Union will reject site-blocking remedies, but the Opinion’s thorough analysis of the texts and interrelationship of the relevant directives prompts the prediction that the CJEU will follow the AG’s recommendation.  In that event, we can expect site blocking to become a widely implemented remedy, at least in the EU.  The sites at risk are likely to be limited to the kind that SOPA and PIPA advocates called “rogue websites” – off-shore locations dedicated to infringement.  If the website is hosted from within the EU, the principle of proportionality may, in lieu of injunctions against access-providers, counsel recourse against the local host, as to whom effective relief should be available.  If an off-shore website is not “dedicated to infringement” but offers a variety of content, a significant proportion (in terms of volume of use) of which is in fact non-infringing, EU principles of proportionality and fundamental right to conduct a business may similarly lead EU courts to decline to impose a site-blocking remedy on EU ISPs.  The next area of contention therefore may be the characterization of a site as “dedicated to infringement” or “massively violating copyright.”  Consider a site consisting of over 50 percent “cute baby” videos: At first blush, while the site may be a venue for illegal streams or downloads, it hardly seems “dedicated” to them.  But what if 90 percent of the visitors to the site forego the adorable infants in favor of commercially produced motion pictures?  The site’s content neutrality now seems pretextual, and in any event, the infringements would be “massive.”  The harder question is whether EU principles also permit blockage of off-shore sites (such as, some would argue, MegaUpload) that both massively infringe, but also enable massive non-infringing uses.