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Monday, 21 July 2014

Italian court says that YouTube’s Content ID should be used to block allegedly infringing contents

A couple of months ago this blog reported that the Tribunale di Torino (Turin District Court) had rejected an application for an interim injunction brought by Delta TV in the context of proceedings between this and Google and YouTube. 

As readers might recall, Delta TV produces and markets TV programs, and holds the economic rights to a number of South American soap operas for a number of territories (including Italy), where it licences the relevant rights to third parties. 

Delta TV became aware that a number of episodes of such soap operas dubbed in Italian had been unlawfully uploaded on YouTube. It also became aware that, by inserting their titles on Google Search, the first results displayed links to such YouTube videos. 

Delta TV sued [the case is still pending] Google and YouTube for secondary copyright infringement, seeking damages for over EUR 13m. It also sought an interim injunction to have the videos removed from YouTube.

Antonio is confused:
how on earth could one prefer URLs
to titles such as
Sortilegio ("spell") or
La forza del desiderio ("the strength of desire")?
YouTube and Google opposed the application, claiming that, as soon as they became aware of such allegedly infringing contents, they removed them from YouTube, in compliance with the obligations set for hosting providers by the Ecommerce Directive and the piece of legislation (Legislative Decree 70/2003) that implemented it into the Italian legal system. 

The Tribunale di Torino dismissed the request for an interim injunction, holding that from Articles 16 and 17, and Recitals 42 to 48 of the Directive as interpreted by the Court of Justice of the European Union (CJEU) in its decisions in Cases C-70/10 Scarlet [here] and C-360/10 Netlog [here], it follows that:

a)  YouTube does not have any duty to determine in advance whether individual users who upload videos onto its platform have actually the right to do so. 
b)  The only case when a hosting provider such as YouTube may be responsible for third parties' infringements is when it has actual knowledge of the presence of illegal content or, upon obtaining such knowledge or awareness [according to the judge it is necessary for the rightholder to indicate the URLs of the allegedly infringing content, not just the title of the works in which copyright has been allegedly infringed] it does not act expeditiously to remove or disable access to the content. 
c)  EU and Italian laws forbid any obligation on ISPs to monitor the information they store or transmit. Moreover, should obligations of preventative control and filtering be imposed on hosting providers, the broad diffusion of services based on the adoption of automatic uploading systems would be negatively affected.

The Tribunale found - among other things - that, upon receiving notice of the relevant URLs, YouTube had acted expeditiously to remove all the allegedly infringing videos. The judge also suggested that to prevent future infringements, rightholders may continue monitoring whether new allegedly infringing content is uploaded, or – even better - participate in YouTube's Content ID program. This allows rightholders to deliver reference files of content to which they say they own the copyright to YouTube, metadata describing that content, and policies describing what they want YouTube to do when it finds a match. YouTube compares videos uploaded to the site against those reference files, and when a match is found it applies the rightholder’s chosen policy, ie (a) make money from the upload; (b) leave it up and track viewing statistics; or (c) block it from YouTube altogether.

Delta TV appealed the decision, seeking an injunction that would require YouTube and Google to prevent further infringements. According to Delta, this could be done by requiring the defendants - rather than Delta - to activate Content ID. Delta also argued that, by indexing and organising the contents uploaded onto its platform, YouTube is not a hosting provider that is eligible for the Ecommerce Directive “safe harbors”.

The Tribunale di Torino has now issued its decision [made available only at the end of last week] and - contrary to the dramatic reports of some newspapers [here and here] that suggested that YouTube can no longer be considered a hosting provider within the Ecommerce Directive - agreed with Delta's claims to a pretty limited extent. 

Enforcement v Ecommerce Directive?
No need for a fight
IP protection and information society services: the latter prevail

The three judges that re-examined Delta’s claim started by observing that there might be a clash between IP protection (which is also protected as a fundamental right within Article 17(2) of the Charter of Fundamental Rights) and information society services. 

At the EU level, this might have resulted in a conflict between the Enforcement Directive and the Ecommerce Directive, but EU legislative avoided it: Article 3(2)(a) of the former states in fact that that directive would not affect the latter, notably Article 12 to 15. 

This means that the safe harbor provisions of the Ecommerce Directive prevail over the Enforcement Directive, yet within the boundaries set by the Ecommerce Directive itself, in particular at Recitals 42, 43, 45, 46, 47, and 48. 

It is within this legislative framework that: (1) the prohibition of a general obligation on providers to monitor the information transmitted or stored must be interpreted and, more generally, (2) the balance between IP protection and information society services must be established. 

The judges then recalled that in L'Oréal and Scarlet the CJEU prohibited national measures that would require an intermediary provider to monitor actively all the data of each of its customers in order to prevent any future infringement of IP rights. However, the jurisdiction conferred on national courts must allow them to order those intermediaries to take measures aimed not only at bringing to an end infringements already committed, but also at preventing further infringements.

Don't worry Cecil:
safe harbors still exist
YouTube is a new generation provider, yet still a hosting provider

The judges then considered whether YouTube could be considered a content – rather than hosting - provider. They noted how technological development has been such as to supersede the descriptions provided in the Ecommerce Directive, which posits the idea of a hosting provider as a subject that merely "sells storage space" [does this imply a suggestion to EU law-makers that this directive should be updated?].

These days no hosting provider may be considered completely neutral in respect of the information stored, in that the very way in which it organises such information economically supports its activities by making its service attractive to advertisers. 

YouTube should be considered a new generation hosting provider. However, this does not mean that a subject like YouTube is not eligible for the safe harbors of the Ecommerce Directive, but rather that the duty of care that can be reasonably expected from it pursuant to Recital 48 to the Directive may be of a higher standard. 

Rightholders must specify URLs, and YouTube should use them as reference files for Content ID

The judges confirmed that rightholders must indicated the URLs of the allegedly infringing content when sending a formal request to YouTube. Sole indication of the title of the works in which copyright has been allegedly infringed is insufficient. 

Once this has occurred, can the hosting provider be required to prevent future uploads of the same contents that were accessible at the URLs specified? 

According to the judges, this question must be addressed from both a legal and technical standpoint.

As regards the former, it is necessary to determine whether imposing this obligation would conflict with the provisions of the Ecommerce Directive. According to the judges, this control would be ex post and specific, thus differing from a general obligation to monitor.

In relation to technical feasibility, the judges found that it would be possible for YouTube to employ Content ID to prevent further infringements. Although Content ID works through reference files provided by the rightholder, in the case of requests to remove specific URLs of YouTube videos, such reference files would be already present on the video hosting platform. This means that YouTube could use directly those files to prevent the future uploading of identical contents. In any case, the rightholder shall remain responsible towards third parties for any illegitimate use of Content ID.

... rather than those of courts?
So what?

In the end, the Tribunale only accepted Delta’s claim that YouTube should use Content ID to prevent further alleged infringements, by using the reference files at the URLs specified in Delta’s earlier formal request to block new identical contents.

Wait a second, says Merpel: isn’t this already one of the options from which rightholders using Content ID may choose from?

Basically this new decision of the Tribunale di Torino just means that Delta has decided that it does not want to monetise or leave the contents up, but rather wishes to have them removed when the same reference files are found again on YouTube, and that YouTube must comply with its request.

This is something that YouTube would do even without being sued and actually do better than the solution proposed by the Tribunale. Rightholders who participate in the Content ID program may in fact provide YouTube with the reference files of any contents to which they own the copyright and want blocked, while in the case of Delta TV YouTube will have to use Content ID only to block the contents specified in its earlier removal request.

Is this a smart solution for Delta TV? Let’s now wait for the final decision of the Tribunale to know more ...

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