Miquel Peguera Poch (Universitat Oberta de Catalunya)

Copyright Enforcement in
the Digital Environment
The Spanish experience
Miquel Peguera. Universitat Oberta de Catalunya
Three ways of legal enforcement:
- Civil enforcement
- Criminal enforcement
- Administrative enforcement
(the Sinde-Wert Law”)
Recent amendments:
2014 reform of the
• Copyright Act,
• Civil Procedure Act
2015 reform of the Criminal Code
Civil enforcement highlights:
 Civil actions for direct infringement
 Injunctions against intermediaries
- article 8(3) InfoSoc
- article 11 Enforcement Directive
 Secondary liability
Information society services, protected
by e-Commerce Directive Safe Harbours
Telecinco v. YouTube (Madrid Court of Appeals,
14 Jan 2014)
 take down notices must identify particular
clips (no monitoring obligations, art. 15 ECD)
 injunctions against third-parties must also
refer to specific clips (Sabam v. Netlog
(C-360/10)
Specific safe harbour for information
location tools (linking)
(same conditions than hosting)
Ordering the closing down as a precautionary
measure
Mediapro v RojaDirecta, Madrid Commercial Court
No. 11, 16 Jun 2015.
Prof. Miquel Peguera. Universitat Oberta de Catalunya
Prof. Miquel Peguera. Universitat Oberta de Catalunya
… you say RojaDirecta
… I say TarjetaRojaOnLine
Prof. Miquel Peguera. Universitat Oberta de Catalunya
Injunctions against intermediaries:
Promusicae v. R
Barcelona Court of Appeals, 18 Dec. 2013.
 ISP enjoined to suspend the provision of
Internet access to a subscriber allegedly
engaging in P2P file sharing.
Secondary liability (US-law inspired):
 Inducement liability: knowingly inducing
infringement
 Contributory liability: contributing to the
infringement with knowledge or reason to know
 Vicarious liability: having a direct economic
interest in the infringing acts and the capacity to
control the infringer’s activity
(Same liability than the direct infringer)
The lack of secondary liability in copyright
law was key to reject a 13 million lawsuit
brought by Promusicae against a Spanish
p2p software developer:
Blubster case (Madrid Court of Appeals,
31 March 2014)
Criminal enforcement
highlights:
Many criminal procedures against sites
providing a catalogue of links to streaming
or downloading protected works
Hesitant jurisprudence: is linking a
criminal copyright infringement?
 Most courts found it is not:
-- facilitating infringement ≠ direct infringement
-- thus no criminal offence either
 Others did find infringement
-- Some convictions relying on Svensson (C466/12) to find linking ꞊ communication to the
public
youKioske
Judgment 2/16, Audiencia Nacional, 5 Feb 2016
(six years of prison for two different crimes)
Prof. Miquel Peguera. Universitat Oberta de Catalunya
2015 reform of the Criminal Code:
It constitutes a criminal copyright offense (when
carried out for profit and to the prejudice of a third
party):
- reproducing, plagiarizing, distributing,
communicating to the public,
- or exploiting in any other way
a protected work without authorization
Prof. Miquel Peguera. Universitat Oberta de Catalunya
The one who,
- when providing an information society service,
- for profit (directly or indirectly), and to the
prejudice of a third party,
- actively and in a non-neutral way (not limiting
itself to a merely technical processing),
- facilitates the access to, or the localization of,
protected works
- in particular, by providing lists of classified
links to those works, whether or not the links had
been initially provided by its users.
Prof. Miquel Peguera. Universitat Oberta de Catalunya
 Punishment: from 6 months to 4 years of
prison.
 In aggravated cases: from 2 to 6 years of
prison.
Some linking websites have decided to close down
voluntarily
Prof. Miquel Peguera. Universitat Oberta de Catalunya
Administrative enforcement:
the “Sinde-Wert Law”
Sinde-Wert Law: A specific provision
within Law 2/2011 on Sustainable Economy
(4 March 2011)
- Creates a Second Section in the IP
Commission
- Secondary regulations were passed in
December 2011
- In force since 1st March 2012
The IP Commission (2nd Section) may:
i) assess whether an information society
service is violating copyright
ii) order the provider to suspend the
service or to remove the infringing material,
and prevent future infringement
iii) order injunctions against intermediaries
to ensure effectiveness of the order
The 2014 reform of the Copyright Act.
 expands the powers of the IP
Commission
 Provides for injunctions against
payment and advertising service providers
Background
Main concern:
Online copyright infringement through
websites providing links to infringing files
(music, movies)
Prof. Miquel Peguera. Universitat Oberta de Catalunya
Prof. Miquel Peguera. Universitat Oberta de Catalunya
Prof. Miquel Peguera. Universitat Oberta de Catalunya
Policy decisions behind the law:
 Not to target individual users
 Instead, targeting information society
service providers (economic activity)
 Providing for injunctions against
intermediaries (including website
blocking)
Why administrative enforcement?
- Right holders had been largely
unsuccessful in judicial actions (mostly
criminal) against pirate websites.
- A controversial move: setting up a
government body that would know better
than judges?
Limits of an administrative (non judicial)
enforcement:
Special protection for media under
Spanish Constitution
- art 20(5) “[t]he seizure of publications,
recordings, or other means of information
may only be adopted by a judicial
decision”
Finally, a system of (light) judicial control was
adopted:
 Enforcement measures require judicial
authorization
 But only as regards to possible affection
to freedom of expression and related rights.
 The authorizing court cannot assess
whether there is in fact a copyright
infringement
 The procedure seeks only injunctive relief
(not monetary relief)
 Conceived as a “procedure for reestablishing legality” (reestablecimento de la
legalidad)
(putting the infringement to an end and
preventing future infringement)
- the provider is ordered to remove or disable
the infringing content
- if the provider does not comply, the
Commission may order injunctions against
intermediaries to ensure the infringing
content is no longer accessible
(in practice, only these measures against
intermediaries require the judicial
authorization)
 Such a system of administrative
enforcement is a novelty under the Spanish
copyright law.
The Sinde Law took advantage of a
provision in the national law transposing the
E-Commerce Directive.
Art. 8 LSSICE establishes the cases where
a judicial or administrative authority may
restrict the provision of information society
services.
(following article 3(4) E-Commerce Dir)
The measures envisioned in Art. 8 LSSICE
may consist of the interruption of the
provision of the service or the removal of the
illicit material –
And requiring the cooperation of
intermediary service providers
The restriction measures should be
adopted by the authority which is
competent for the protection of the
concerned objective, acting within the
competencies conferred on it by the Law.
 This “competent authority” does not
always need to be a court
(a) public order, investigation of criminal
offences, public safety, national defence;
(b) protection of public health and of
consumers, including investors;
(c) respect of human dignity and the
principle of non-discrimination
(d) protection of youth and childhood
(a) public order, investigation of criminal
offences, public safety, national defence;
(b) protection of public health and of
consumers, including investors;
(c) respect of human dignity and the
principle of non-discrimination
(d) protection of youth and childhood
(e) the protection of intellectual property
rights
The IP Commission (2nd Section)
 Not an independent authority; it’s
rather a government body.
 All members appointed by the
government among government
employees.
Target:
Information society service providers
(whether or not acting as intermediaries) who
may violate copyright.
 After the 2014 reform, more specifically,
the procedure will be addressed against:
(A) information society service providers who
violate IP rights
 the IP Commission will decide whether to
initiate the procedure taking into account:
- the number of infringing works that can be
accessed through the service
- the business model of the service provider.
(B) information society service providers who
infringe IP rights
 by providing the description or location of
works which are apparently offered without
authorization.
 and taking an active, non-neutral role in that
activity – not limiting themselves to merely
technical intermediary tasks.
Particularly those offering classified lists of
links to protected works,
--- regardless the fact that the links may be
initially provided by users
How the procedure works
1. Complaint lodged by a rights holder
(after an unsuccessful attempt to require the
provider to remove or disable the contents)
– Such a request might be considered a means of
actual knowledge for the purposes of the hosting and
linking safe harbours, if the notice identifies precisely
the work, the right holder, and the location where the
work is made available.
– There’s no need for a prior request where the
provider has not indicated a valid electronic address.
– The attempt will be considered unsuccessful if the
provider does not remove or disable the contents
within 3 days from the notice.
2. The IP Commission will ask the provider to
either
- “voluntarily” remove the contents within 48
hours, or
- make the allegations as to the existence
of an authorization or the applicability of an
exception or limitation to the right.
If the provider voluntarily removes or
disables the content, that will be understood
as an implicit acknowledgment of the
infringement by the provider.
If the provider does not remove or disable
“voluntarily”,
the IP Commission may order the provider
to suspend the provision of the service or to
remove the infringing contents,
as long as the provider causes or may
cause an economic harm.
-- If the provider repeatedly fails to comply
with such an order, it may be fined
(between 150,001 to 600,000 Euros)
3. The Commission may require the
compulsory cooperation of:
- intermediary information society service
providers (including search engines)
- payment service providers
- advertisement service providers
 ordering them to suspend the services
they provide to the infringer.
 if they fail to comply, they can be fined
under the LSSICE
 orders to block access to the website must
be appropriately motivated, considering its
proportionality and the effectiveness of the
other measures available.
 if the website operates under the <.es>,
the IP Commission will order the
Registration Authority to cancel the domain
name registration, which could not be
assigned again in at least 6 months.
4. Measures against intermediaries cannot
be enforced without judicial authorization.
 The Commission will ask the court for
the authorization
 The court can only consider if the
measures affect the rights to freedom of
expression and information protected
under art. 20 of the Spanish Constitution.
 The court can only grant or deny the
authorization.
In practice, a procedure much more
convoluted and slow than expected
Ministry of Culture reports that 34 websites
have closed down (either because the
domain name had been cancelled or
because the web voluntarily closed)
-- cases are not public though
3 cases where the court authorized the
blocking of the website
Judicial authorization for website blocking
was denied in Goear for lack of
proportionality (20 March 2014),
- but later granted on appeal (7 Jan. 2015)
Judicial authorization granted for the
blockade of The Pirate Bay website by
Spanish ISPs (27 March, 2015)
Prof. Miquel Peguera. Universitat Oberta de Catalunya
Thanks!