Dr. Martin Schaefer comments in GRUR on the ECJ ruling: Compensation obligation for stored private copies of protected works in the cloud – Austro-Mechana/Strato

In GRUR issue 8/2022, 558 of April 15, 2022, BOEHMERT & BOEHMERT partner and attorney at law Dr. Martin Schaefer comments on a decision of the European Court of Justice of March 24, 2022 – C-433/20 (Austro-Mechana/Strato) on the mandatory statutory remuneration for private copies of protected works stored in the cloud. 

The background is the legal dispute between GEMA´s Austrian sister organisation, Austro-Mechana, and Strato AG, a German provider of cloud services. The Vienna Higher Regional Court had submitted a request for a preliminary ruling to the European Court of Justice, concerning two questions relating to Art. 5 II lit. b InfoSoc Directive (2001/29)

In his note to the ECJ judgement in GRUR 2022, 558, Dr. Martin Schaefer comments on the argumentation, employed by the ECJ, followed by conclusions presenting ideas for new ways to deal with the situation created by the CJEU´s ruling. 

Users of GRUR can download the commentary by Dr. Martin Schaefer here.

“Why Metadata Matters for the Future of Copyright” – Dr. Martin Schaefer in the journal European Intellectual Property Review

Metadata is essential in the copyright industry of the 21st century to keep the engine of copyright running smoothly and powerfully for the benefit of creators, users and the copyright industry as a whole. But metadata is difficult to acquire and even difficult to keep up to date, as content rights are mostly multi-layered, fragmented, international and moreover volatile. 

BOEHMERT & BOEHMERT partner and lawyer Dr. Martin Schaefer deals with a solution approach for this challenge in his article “Why Metadata Matters for the Future of Copyright”, which appeared in the 08/2021 issue of the “European Intellectual Property Review” (E.I.P.R.). Together with co-author Prof. Dr. Norbert Gronau from the University of Potsdam, Dr. Schaefer develops the idea of a neutral tool for searching and improving metadata that could serve as a buffer to protect the interests of proprietary database owners and avoid the shortcomings of centralised databases. 

In light of various EU efforts, the authors conclude in their paper that it is time to take the concept of a “metadata search and enhancement tool” to a new level. And this is not only for the music industry, as the entire copyright sector could benefit from such approach. Large international public organisations – such as those under the roof of the EU – would be predestined for implementation.

Things to come – what to expect from Germany’s current copyright reform?

By 7 June 2021, the EU Directive 2019/790 on Copyright and Related Rights in the Digital Single Market must be transposed into German law. For the wider public, it is only associated with the keyword “upload filter”. In fact, the directive consists of a whole bundle of highly diverse regulatory issues, some of which will have a direct impact on the daily practice of companies dealing with copyright-protected works or services.


It has not been long since the Copyright Act was last amended. The second reform of copyright contract law dates from 2016, the amendment on copyright and the knowledge society from 2017 and the implementation of the Marrakesh Directive for the benefit of persons who are blind or visually impaired from 2018. Nevertheless, this field of law does not come to rest. Another copyright reform is due in Germany in 2021. It will transpose the so-called DSM Copyright Directive (2019/790) from April 2019 on copyright and related rights in the Digital Single Market (hence the acronym) into German law. Time is of the essence: by 7 June 2021, the transposition must enter into force.

Overview of the regulations to be transposed into German law under the Directive

Although this Directive is basically a whole bundle of copyright directives with highly diverse areas of regulation, it was only a year before its adoption that it was noticed by a broader public because of the debate about the so-called ‘upload filter’ contained in Art. 17 of the Directive (at that time in Art. 13). In fact, only the word ‘upload filter’ was new. The regulation transposes into a formal law an existing legal situation which European and German case law had long since formulated in a binding manner: that of ‘notice and staydown’ (as the ECJ first stated back in 2011 in Case C-324/09 – L’Oréal / eBay, para. 131): It concerns operators of online platforms where users can upload content (the Directive speaks of ‘online content-sharing service provider’), i.e. the YouTubes and Facebooks of this world. If a rights holder notifies the operator of such a platform of an infringement committed by an uploading user, the operator must not only ensure that access to such infringing content is blocked, but is also obliged to prevent similar content from being uploaded again.

In addition to Art. 17, which has become highly controversial, the Directive also contains much less publicly discussed but nevertheless highly important regulations, namely

  • on ‘text and data mining’ (TDM) in Art. 3 and 4,
  • on use of works and other subject matter in digital and cross-border teaching activities in Art. 5,
  • on the preservation of cultural heritage in Art. 6,
  • on the use of out-of-commerce works and other subject matter by cultural heritage institutions in Art. 8 to 11,
  • on collective licensing with extended effect in Art. 12,
  • on access to and availability of audiovisual works on video-on-demand platforms in Art. 13
  • on images of works of visual art in the public domain in Art. 14,
  • on a neighbouring rights for press publications concerning online uses in Art. 15,
  • the participation of publishers in levies for reprography and private copying in Art. 16, and
  • on copyright contract law in Art. 18 to 23.

In addition, another directive is to be transposed at the same time, the so-called CabSat Directive (2019/789), which deals with the exercise of copyright and related rights applicable to certain online transmissions of broadcasting organisations and retransmissions of television and radio programmes.

On the transposition of the directive in Germany:
The “online content sharing platforms”

At the time this article appears, it is still uncertain whether the deadline will be met for all parts of the Directive. Just as in the European debate, the complex around the liability of online content-sharing service providers is the most controversial in the German transposition. It is not yet foreseeable where the journey will lead here, as the draft bill currently on the table tries to get by without an ‘upload filter’ as far as possible, although the directive actually prescribes it as a rule.

In particular, it will play a role here how the new copyright exceptions (required by the Directive) in favour of parodies, caricatures and pastiches (Section 51a draft German Copyright Act – hereinafter UrhG) will be linked to the liability rules in future.

These new regulations have great economic significance for rights holders and platforms alike – both with regard to the question of which uses can be licensed by them and which may be used freely for mere statutory remuneration, and of course with regard to liability for unauthorised offers.

In future, it will be a matter for every rights holder to optimally adapt to the new situation in order not to fall by the wayside economically by third party uses of protected content on online content-sharing platforms.

Transposition into German Law – the Other Subjects of Regulation

In contrast, most of the other regulations are much less controversial, especially since many of them are already laid down in current German copyright law, such as rules for use in the context of digital teaching and learning (Sections 60a and 60b UrhG), text and data mining (Section 60d UrhG), uses by cultural heritage institutions such as libraries, archives and museums (Sections 60e and 60f UrhG), publisher participation in statutory remuneration claims (Section 63a UrhG, which has been suspended since a decision by the BGH in I ZR 198/13 – Publisher Participation) or out-of-print works (Sections 51 and 52 Collecting Society Act – VGG), although in each of these fields the looming changes have caused much debate among the respective interested parties.

The curious case of the neighboring right for press publishers

This also applies to the neighboring right for press publishers (Sections 87f to 87h UrhG), which has been enshrined in German law since 2013, but was recently declared null and void by the European Court of Justice in its current form (in Case C 299/17) because Germany had failed at the time to officially inform the EU about the legislative project. So here we have the strange situation that a regulation that already existed in Germany, even though it has been largely been ineffective, is abolished by the ECJ because of a violation of EU law, only to have have it reintroduced it in a new form immediately afterwards due to a requirement of the EU legislator.

Collective licensing with extended effect

This is a legal figure (that has even in Germany come to be known under the acronym ECL for ‘Extended Collective Licensing’) that would not necessarily have had to be transposed into German law. The concept originates from Scandinavian law and has developed there in the same area in which statutory remuneration claims are applied in Germany, e.g. for the remuneration of private copying. One speaks of ECL when a collecting society is legally entitled to administer the rights even of those who have not signed an administration agreement with it. In fact, we know similar rules in Germany in the area of statutory remuneration claims. If a collecting society asserts such claims, it is also presumed under current German law (Section 49 VGG) that it administers the rights of all rightholders. According to the draft bill, ECL is now also to be introduced in Germany in connection with the licensing of online content-sharing service providers, because statutory remuneration is excluded there under the Directive. However, the European legislator has set very tight limits on the application of this model precisely because of the danger that ECL interferes with the free and individual exercise of rights. It remains to be seen whether the emerging legislative solution for Germany will stand up to these requirements. Rights holders will have to be particularly vigilant here.

Caution with contracts for copyright works and other protected matter

The large and important complex on copyright contract law is largely based on the model of German law (Sections 32 to 41 UrhG), but in parts even goes beyond it, so that here all companies that use copyright-protected works and performances on the basis of contracts should check what new legal obligations they will face in future, because some obligations also relate to existing contracts and, under certain conditions, even to those for which the parties have agreed on a non-European contract law to be applicable to their agreement.


Six months before expiry of the deadline, it is not yet clear how the German implementation will proceed. Major political decisions are only now being taken. Therefore, extreme vigilance is required for all companies whose business is in any way copyright related. For them, it will not least be a matter of adapting administratively to the changed requirements, especially of copyright contract law. In view of the immense economic importance that online content-sharing service platforms have acquired, companies that deal with copyright-protected content in particular will also have to assess the impact of the new regulations in this area on existing business models. This will require an analysis in each individual case.

New GRUR article “The Digital Private Copy in the Age of Exception Based Business Models” by Dr. Martin Schaefer

In the 12/2020 issue of the journal “GRUR – Zeitschrift der Deutschen Vereinigung für gewerblichen Rechtsschutz und Urheberrecht” (GRUR is the German Association for the Protection of Intellectual Property, the largest and oldest association in Germany that is dedicated to the protection of intellectual property), on the occasion of two judgements of the German Federal Court of Justice, BOEHMERT & BOEHMERT attorney Dr. Martin Schaefer analyses the current practice, in Germany, of basing commercial business models on exceptions and limitations of German copyright law that in their majority had been created for non-commercial use only. 

Under the title „The Digital Private Copy in the Age of Exception Based Business Models”, Dr. Schaefer calls for such business models to be examined more closely than so far regarding their compatibility with the requirements of EU law. 

The article is available in German only either in print or to subscribers on the Beck-Online platform under: GRUR 2020, 1248.

„Why Metadata Matters for the Future of Copyright” – Article by Dr. Martin Schaefer on the Kluwer Copyright Blog

There is a growing recognition that for the market for copyrighted content to work, metadata is the grease that keeps the engine running. So far, all projects for centralized databases have failed. The reason lies in the instability of metadata. Is there a solution to the problem?

BOEHMERT & BOEHMERT attorney Dr. Martin Schaefer examines this question in his blog article “Why metadata is important for the future of copyright” and describes as a possible approach a “metadata search engine” as a decentralised, non-commercial open source tool for research and enrichment of metadata. This blog post was published in English in the well-known Kluwer Copyright Blog under the title “Why Metadata Matter for the Future of Copyright” and is available here in full length. 

About the Kluwer Copyright Blog
The Kluwer Copyright Blog is a publication of Kluwer Law International with information and news about European copyright law. It is compiled by a group of leading experts, consisting of practicing lawyers and academics, to report on the latest developments.

“No General Third Party Effect!” – Comment by Dr. Martin Schaefer on the DSM Directive on the CCC portal

The EU Directive on the “Digital Single Market” (DMS) must be transposed into German law by the beginning of June 2021. The subject of the controversial directive is copyright law in the digital single market and thus a whole bundle of legislative issues ranging from text and data mining to the preservation of cultural heritage and copyright contract law. 

Special focus is given to Article 17 of the DMS Directive and thus the role of Online Content Sharing Service Providers (OCSSP) – providers of online services for user-generated content such as YouTube, Facebook, Instagram and Co.

For the general public, the Directive is linked to the debate about the so-called “upload filter”, which is nothing more than the routine known for many years as “notice and stay-down” and which has been practiced without any problems. But it also raises licensing issues: Who needs a licence in connection with such user-generated content and who does not? 

In his blog article “No General Third Party Effect!” on the portal of the company “Copyright Clearance Center” BOEHMERT & BOEHMERT attorney Dr. Martin Schaefer provides answers  and refers to old familiar structures which continue to exist unchanged in the new environment.

Read the complete article here

About CCC
The Copyright Clearance Center (CCC) is, according to own statements, a world leader in voluntary collective licensing and a promoter of copyright law. For more than 40 years, the company has been setting standards with its products and services for an efficient global market of exploitation rights and licensing solutions. 

Back to the higher thres­hold? – The CJEU decision Cofemel

Of all things, the notion of “a work” is not legally defined in any of the many EU directives on copyright, even though the term appears repeatedly in these directives.  However, in recent years the European Court of Justice (CJEU) seems to have discovered this term for itself as an “autonomous concept of Union law” which must be interpreted and applied uniformly throughout the Union. For German jurisprudence, the Cofemel decision of the CJEU might result in concluding a full circle, as it points back into the direction the BGH once came from with its theory of a higher threshold for copyright protection in matters of applied art.

The European Concept of the (Copyright Protected) Work Continues to Take Shape: The CJEU decision C-683/17 – Cofemel

Of all things, the notion of “a work” is not legally defined in any of the many EU directives on copyright, even though the term appears repeatedly in these directives, as in Article 3(1) and Article 4(1) of the InfoSoc Directive (2001/29/EC). However, in recent years the European Court of Justice (CJEU) seems to have discovered this term for itself and sees it as an “autonomous concept of Union law” which must be interpreted and applied uniformly throughout the Union (para. 29 of the judgment C-683/17 – Cofemel).

The Path toward a European Concept of “Work”

So far, it had always been borderline phenomena for the CJEU to assess, so that it basically worked its way from the edge to the middle of the concept . The first judgment on this subject, C-5/08 – Infopaq, of 2009, concerned the protectability of an 11-word extract from a protected work (which the CJEU affirmed). In Case C-145/10 – Painer, of 2011, the CJEU then for the first time dealt in more detail with the concept of the scope of creative freedom, namely on the subject of portrait photography. This requirement of originality, whereby an author expresses his creative abilities in an independent manner by making free and creative choices, was then further elaborated in Case C-604/10 – Football DataCo. Such originality be always excluded where technical considerations, rules or constraints determine a design, which leave no room for artistic freedom.

Case C310/17 – Levola Hengelo – of 2018 dealt with the interesting question of whether the taste of a cheese could enjoy copyright protection. The protectability ultimately failed because in the case of the taste of a foodstuff, unlike, for example, a literary, pictorial, cinematic or musical work, identification is essentially based on taste sensations and experiences which are subjective and changeable. Here, the CJEU lacked the intersubjective concretizability of the object of protection. Nevertheless, the CJEU did not refrain from briefly summarizing the creative requirements for a work in this case. Accordingly, two conditions must be fulfilled cumulatively:

“First, the subject matter concerned must be original in the sense that it is the author’s own intellectual creation (…). (para. 36)

Secondly, only something which is the expression of the author’s own intellectual creation may be classified as a ‘work’ within the meaning of Directive 2001/29 (…).” (para. 37)

Does the BGH’s “Geburtstagszug” judgement collide with the Cofemel decision of the CJEU?

In its decision in Case C-683/17 – Cofemel of 12 September 2019, the CJEU is building on the basis outlined above. It concerns clothing models, i.e. the field of applied arts. For decades, in Germany a higher threshold for copyright protection used to be applied to such works in order to prevent competing copyright and design protection. Under the pressure of the European development of design law, the Federal Court of Justice (BGH) gave up this special path as early as 2014 in its decision I ZR 143/12 – Geburtstagszug (GRUR 2014, 175).  The CJEU now expressly confirms this in para. 45 of the Cofemel decision. The principle of a cumulative protection as a design, on the one hand, and as copyright protected work, on the other, applies.

In the aforementioned decision, the BGH concluded its remarks in para. 41 as follows:

“Even though  no higher requirements are to be placed on the level of originality of a work of applied art than in the case of works of art that are free of purpose, it must be taken into account, when assessing whether such a work achieves the level of design/originality required for copyright protection, that the aesthetic effect of the design can only justify copyright protection if it is not due to the intended purpose of use but is based on an artistic achievement (…). An author’s own intellectual creation presupposes that there is a scope for creative freedom and that it is used by the author to express his or her creative spirit in an original way (…) Furthermore, it must be noted that a low level of originality, although it constitutes copyright protection, leads to a correspondingly narrow scope of protection of the work in question.”

The CJEU now seems to contradict this in its Cofemel decision. According to the CJEU in para. 55 of the judgment, the fact that designs such as the clothing designs at issue generate, over and above their practical purpose, a specific and aesthetically significant visual effect is not such as to justify those designs being classified as “works” within the meaning of Directive 2001/29. That reflects the ‘anti-subjective’ argument put forward in the Levola decision on the taste of cheese.

Pursuant to the CJEU, the decisive factor is rather solely the above-mentioned definition of the autonomous concept of a work under Union law with its two cumulatively required elements, namely “own intellectual creation” and “creative work not determined exclusively by specifications or technology” (para. 29 to 31 of the judgment).

The future irrelevance of an aesthetic effect as a requirement for protection does not mean, however, that the cited position of the BGH would have to be revised, for it too was already based on the CJEU’s new concept of work. That the aesthetic effect of an object justifies protection does not seem to be postulated by the BGH – despite the misleading expression in the quoted passage. It mentions the aesthetic effect rather in the sense that it is the desired consequence of the individual exercising of artistic freedom (resembling the CJEU position in para. 54 of its decision).

In para. 35 of the ruling, the CJEU then says something else which at first glance seems to contradict the position of the BGH: if an object fulfils the requirements of the autonomous concept of a work, the scope of this protection does not depend on the degree of creative freedom of its author and is therefore, even in the case of an object with little freedom of design, not less than the protection which is granted to all works covered by the Directive. Had not the BGH ruled that a low level of creative freedom meant a correspondingly narrow scope of protection?

Here too, however, the BGH had already taken the boundary line drawn by the CJEU into account, since it does not reduce the material scope of protection, but merely emphasizes that in an area in which a lot is predetermined, i.e. in which individuality has only a limited scope within the specifications, all others working according to the same specifications will also achieve similar results.

Thus the creator of a four-wheeled pram – as the BGH and CJEU are to be understood in the same way – may not prohibit other creators from designing four-wheeled prams, provided that their four-wheeled prams stand out from each other as individual designs.

The remaining question is about the level of expression of creative freedom required for a design to be qualified for copyright protection in view of the parallel EU design protection. The CJEU expresses itself somewhat sibylline here when it says in para. 50f.: ” For its part, the protection attached to copyright, the duration of which is significantly greater, is reserved to subject matter that merits being classified as works. For these reasons (…) the grant of protection, under copyright, to subject matter that is protected as a design must not have the consequence that the respective objectives and effectiveness of those two forms of protection are undermined.” From that it follows that, although the protection of registered designs and the protection as copyrighted works may, under EU law, be granted cumulatively to the same subject matter, that concurrent protection can be envisaged only in certain situations.

One conclusion to be drawn from this could be that no too low requirements must be placed on the concept of “one’s own intellectual creation” in order to prevent design protection from being completely overlapped by copyright protection. This question, which is enormously important for practice, will almost certainly occupy the national courts and eventually lead up to the CJEU once again.


So far, in view of the open wording of § 2 German Copyright Act (UrhG), the concept of a copyright protectable work has not led to any conflict between European case law and German statutory law. Yet the development of European case law has more than once forced the BGH to revise the interpretation of law that had often been established for decades.

For the BGH, the Cofemel decision of the CJEU might result in concluding a full circle, as it points back into the direction the BGH once came from with its theory of a higher threshold for copyright protection in matters of applied art.

Dr. M. Schaefer comments on copyright in “Wandtke/Bullinger”, 5th edition

As in the previous editions, BOEHMERT & BOEHMERT attorney Dr. Martin Schaefer commented on recording company law in the German Copyright Act in the revised 5th edition of the now published “Practical Commentary on Copyright” by Wandtke/Bullinger (ed.).
The Wandtke/Bullinger commentary is regarded as a distinguished commentary by practitioners due to its strongly application-oriented approach.

The publication can be obtained from Beck Verlag.

Wandtke/Bullinger (ed.), Praxiskommentar zum Urheberrecht, 5th edition, Munich 2019, 5th, newly edited and extended edition 2019. ISBN 978-3-406-71159-6

Are preventive duties on hosting service providers in line with EU law? Some comments from a legal perspective on Art. 13 Draft DSM Directive and “upload filters”

The debate on Art. 13 Draft DSM Directive has gained speed, after the Commission’s initial 2016 proposal was supplemented by the Council’s proposal of May 25, 2018, and after the European Parliament’s JURI Committee on June 20, 2018 also voted on an own proposal for Art. 13 Draft DSM Directive. The plenary vote is due in July 2018. While the language of the proposals by the Commission, Council and Parliament offer differences, all three proposals seem to share the common standpoint that active role hosting providers should have a duty to prevent the availability of unauthorized copyright content.

The contrasting view by some politicians, e.g. MEP Ms. Reda create the impression that such a duty, including by means of applying Automatic Content Recognition technologies would be something new and not already part of the existing EU law. A look from a legal standpoint shows that this impression would not be correct. Rather, so far EU law and the respective case law has allowed the imposition of a duty to prevent the availability of unauthorized copyright content for hosting providers under certain requirements. This includes neutral non-active hosting providers.

Duties of care for passive hosting providers

Art. 15 E-Commerce Directive (ECD) provides for a prohibition on imposing general monitoring duties upon internet providers. This is in particular true for passive hosting providers, which may – due to their non-active role – rely on the liability privileges of Art. 14 ECD. The CJEU understood Art. 14 as applying only to mere technical, automatic and passive operators providing data processing services to their customers (CJEU of 23 March 2010, joined cases C-236 / 08 to C-238 / 08 para. 114 – Google and Google France; CJEU of 12 July 2011, C-324 / 09 para. 113 – L’Oréal / eBay).

Art. 15 ECD plays an important role in particular in determining the scope of injunction claims, which remain applicable even if Art. 14 ECD applies. In contrast to Arts 12 to 14 ECD, Art. 15 ECD applies to injunction claims, in particular to injunction claims which are raised pursuant to Art. 8(3) Copyright Directive in the field of copyright, and pursuant to Art. 11 third sentence Enforcement Directive for other IP rights. Pursuant to Art. 8(3) Copyright Directive and Art. 11 third sentence Enforcement Directive, right holders can ask providers to take measures to prevent future rights infringements. The Articles do not proscribe or prohibit any measure to achieve the goal.host

In this regard, Art. 15 ECD helps to balance the fundamental rights at stake by the internet provider, its users and the right holders (CJEU of 14 April 2011, C-70 / 10, para. 69 et seq. – Scarlet / SABAM; CJEU of 16 February 2012, C-360 / 10, para. 39 et seq. – SABAM / Netlog; CJEU of 15 September 2016, C-484 / 14, para. 87 – McFadden / Sony Music). For example, the CJEU has found that an injunction imposed on a hosting provider requiring it to install a filtering system obliging the hosting provider to actively monitor all the data relating to all of its service users, in order to prevent any future infringement of intellectual property rights is incompatible with Art. 15 ECD (CJEU of 16 February 2012, C-360 / 10, para. 38 et seq. – SABAM / Netlog).

But as Art. 15 ECD is an open provision which requires a careful balancing of rights, it does not stand in the way of more specific monitoring duties, in particular by hosting providers. For example, file hosters have been obliged by German and Italian courts to apply word filters, after having been notified about a specific title of a copyright work, made available without authorization by a user. This interpretation of Art. 15 seems convincing. As the filtering is confined to a specific title, it is not in conflict with the prohibition of general monitoring duties by internet providers. Recital 47 ECD in particular mentions that “monitoring obligations in a specific case” are not prohibited by Art. 15 ECD.

Nevertheless, a clear delineation between prohibited general monitoring obligations and allowed specific monitoring obligations has not yet been established, in the absence of relevant CJEU case law. Confusingly, the French Federal Supreme Court (Cour de Cassation) has rejected stay down obligations for hosting providers as conflicting with the prohibition of general monitoring duties (Cour de Cassation Arrêt no. 831, 11-13.669, 12 July 2012 – Google France / Bach films; Cour de Cassation Arrêt no. 828 of 12 July 2012 – Google France / Bach films.).

It does not seem convincing to maintain that stay down and a duty to prevent the availability of specific works are always stopped by the prohibition of general monitoring duties pursuant to Art. 15 ECD. In the end, it is a question of the technical solution used by the provider. For example, if the measures relate only to files of a certain type and thus only prevent the availability of such files, one cannot talk of general monitoring. If one would apply Art. 15 ECD in all cases that involve any processing of data, no room would be left for specific monitoring duties. What also speaks in favour of the freedom to establish specific monitoring duties to ensure prevention of infringements, is the recognition of a balancing of rights by the CJEU specifically for Art. 15 ECD. If any and all prevention duties for hosting providers were prohibited by Art. 15 ECD, this would preclude any kind of duties of care for hosting providers and would reduce the duties of hosting providers to a mere takedown. Such mere takedown duties would not be in line with EU law.

Rather, the CJEU has in several cases recognised prevention duties of hosting providers (CJEU of 12 July 2011, C-324 / 09 para. 131 – L‘Oréal / eBay; CJEU of 16 February 2012, C-360 / 10 para. 29 – SABAM / Netlog.). In particular for hosting providers after they were notified of a clear rights infringement, Art. 8 (3) Copyright Directive establishes duties beyond mere takedown, also for stay down and for prevention of similar clear rights infringements of the same kind. This is at least the established case law of the German Federal Supreme Court. In its L’Oréal / eBay decision, the CJEU confirmed the German case law for the sister provision Art. 11 3rd sentence Enforcement Directive. According to the court, the prevention duty included the duty to ensure that an online market place takes measures “which contribute, not only to bringing to an end infringements of these rights by users of the market place, but also to preventing further infringements of that kind”. (CJEU of 12 July 2011, C-324 / 09 paras. 127, 128 to 134 – L‘Oréal / eBay). In particular, according to the German case law, such (specific) prevention duties by hosting providers can include the application of word filters with regard to the works notified to the provider.

In the case of unjustified notices, it should also be noted that here too EU law already provides for a solution. E.g. for access providers the CJEU has confirmed a right of action for internet users where they face an unjustified blocking of information through website blocking (CJEU of 27 March 2014, C-314 / 12 para. 57 – UPC Telekabel Wien). This decision concerned Art. 8 (3) Copyright Directive and more specifically the weighing of the fundamental rights at stake. Art. 8 (3) also applies to hosting providers. As a consequence, and also in the case of unjustified blocking of information by hosting providers already under the existing regime of Art. 8 (3) Copyright Directive, the rules provide for a right of action for the uploader.

As a result, reasonable and specific duties to prevent the availability of copyright works for neutral and passive hosting service providers seem possible under the current regime.

The case of active hosting providers

That said, prevention duties (which may include upload filtering for specific content) for active hosting providers should not fall behind this current status of law for passive providers. Rather, it logically follows from CJEU case law that active hosting providers deserve even a stricter liability regime than neutral hosters.

CJEU Ziggo / Brein (“The PirateBay”) concerned a website blocking claim raised against a Dutch access provider under Art. 8(3) Copyright Directive. In this context, the CJEU analysed the website The Pirate Bay, which is an online index for digital content, facilitating peer-to-peer file sharing among users of the BitTorrent protocol. The court held it to be a sufficient intervention in a communication that The PirateBay offered an index classifying the works under different categories, based on the type of works, genre and popularity, and the operators of The PirateBay checking that the work has been placed in the appropriate category. Also, the operators deleted obsolete or false Torrent files and actively filtered some content (CJEU of 14 June 2017, C-610 / 15, para. 38 – Ziggo / Brein).

The role of The Pirate Bay as a platform to connect users of the BitTorrent protocol for infringing activity was evaluated by the CJEU as primary liability for communication to the public. Moreover, it appears that the criteria for primary liability (as established by the CJEU in The Pirate Bay) for communication to the public run parallel with the requirements for an “active role”, which excludes hosting providers from the liability privilege of Art. 14 ECD. This would also guarantee a sound interface without gaps between the EU liability rule for communication to the public and the liability privilege of Art. 14 ECD.

Therefore, according to the CJEU case law, active hosting service providers are, due to their very nature, under a stricter, primary, copyright liability through their (active or deliberate) intervention in the making available of works on their platform. It follows that in order to avoid liability, active hosting service providers must take effective measures to prevent the unauthorised availability of works on the services. It would be a bizarre conclusion that primarily liable service providers would have lesser duties than those already applied to passive hosting service providers (see above).

It may be of interest in this respect that the German Federal Supreme Court (BGH) has also applied the requirements for filtering duties for providers which are within Art. 15 ECD to providers outside it. According to the opinion of the BGH, search engines are not within the reach of Art. 15 ECD. But the prohibition to impose general filtering obligations upon them applies. Nevertheless, specific filtering duties may be imposed on search engines. In particular, after a notification by the right holder, work specific word filtering duties and also work specific audiovisual filtering duties (if proportionate) may be imposed on the search engine (BGH of September 21, 2017, file no. I ZR 11 / 16: “Vorschaubilder III” (“Thumbnails III”).

It would therefore appear perfectly feasible and within the framework of the existing EU law to impose more extensive duties to prevent the availability of copyright content on active hosting service providers, subject to a careful balancing of legitimate interests and rights. Active hosting providers with an in principle legal business model may in particular face specific filtering duties. Depending on the business model, such filtering duties may be extended. For example a borderline business model attracting infringements could face more general filtering duties.

Result: A duty to prevent the availability of protected works is a necessary part of copyright liability law

CJEU and national case law show that reasonable duties of care for hosting service providers, including the duty to prevent the availability of copyright works, are an integral part of copyright liability already. They have been applied for years without “breaking the internet”. But such “preventive” duties have to be applied with a differentiated approach:

  • Duties of Passive hosting providers should be assessed against Art 15 of the ECD, and in particular the prohibition against “general” monitoring.
  • Active hosting service providers fall under a stricter regime. But the scope of duties depends on the legitimate interests at stake. For some active role hosters specific monitoring will apply, but in other cases they must do more. One example would be services deploying a business model based on the unauthorized availability of copyrighted works uploaded by their users. In order to avoid copyright liability such services should take effective measures to prevent the availability of works on their services.

This article was first published in the Kluwer Copyright Blog (http://copyrightblog.kluweriplaw.com/2018/06/28/preventive-duties-hosting-service-providers-line-eu-law-comments-legal-perspective-art-13-draft-dsm-directive-upload-filters/).