Can ‘public morals’ prevent the use of religious symbols and motifs in advertising? No, says the European Court of Human Rights

The first ad

Is the prohibition to use in advertising the image of Jesus and Mary on grounds of public morals an undue compression of one’s own freedom of expression?

This is essentially the issue that the European Court of Human Rights (ECtHR) had to address in Sekmadienis v Lithuania (Appl No 69317/14).

In yesterday’s judgment the Court answered … in the affirmative.

The decision is interesting because the ECtHR reviewed the application of freedom of expression within Article 10 of the European Convention on Human Rights (ECHR) in the context of commercial advertising and in light of the vague concept of ‘public morals’.

Background

The applicant, Sekmadienis, is a Lithuanian clothing company that in 2012 ran an advertising campaign featuring three advertisements:

1.    The first showed a young man with long hair, a headband, a halo around his head and several tattoos wearing a pair of jeans. A caption at the bottom of the image read “Jesus, what trousers!” (Jėzau, kokios tavo kelnės!).

2.    The second advertisement showed a young woman wearing a white dress and a headdress with white and red flowers in it. She had a halo around her head and was holding a string of beads. The caption at the bottom of the image read “Dear Mary, what a dress!” (Marija brangi, kokia suknelė!).

3.    The third advertisement showed the man and the woman together, wearing the same clothes and accessories as in the previous advertisements. The man was reclining and the woman was standing next to him with one hand placed on his head and the other on his shoulder. The caption at the bottom of the image read “Jesus [and] Mary, what are you wearing!” (Jėzau Marija, kuo čia apsirengę!).

In 2013, further to a number of complaints, the State Consumer Rights Protection Authority  (SCRPA) – having consulted the Lithuanian Advertising Agency and the Lithuanian Bishops Conference – held that the applicant’s advertising campaign was contrary to ‘public morals’ within Article 4 §2(1) of the Lithuanian Law on Advertising.

This provision states that “[a]dvertising shall be banned if … it violates public morals”.

Although the concept of ‘public morals’ is not defined in any legal instrument, according to the SCRPA it implies in any case the respect for the rights and interests of others. That would not be the case of the applicant’s campaign, which would be instead distasteful and offensive to religious people. Furthermore, “the elements of the advertisements taken together – the persons, symbols and their positioning – would create an impression for the average consumer that the depicted persons and objects were related to religious symbols”.

The SCRPA imposed a fine of approx EUR 580 on Sekmadienis. This appealed the decision, but all attempts were unsuccessful.

Having exhausted all internal legal remedies, the clothing company decided to sue Lithuania before the ECtHR, claiming that the interference with its own freedom of expression within the Lithuanian law was not justifiable in light of Article 10 ECHR, and went beyond the limitations allowed under paragraph 2 thereof. The applicant claimed that the restriction had not taken place in accordance with the law (when the advertisements were issued, the Law on Advertisement did not any include any reference to the use of religious symbols or motifs), did not pursue a legitimate, and was not necessary in a democratic society.

The Lithuanian Government submitted that the applicant’s freedom of expression had been compressed, but such restriction was compliant with Article 10(2) ECHR. As regards the notion of ‘public morals’, according to the Government this must be understood as broad: although the relevant provision in the Law on Advertising did not ban the use of religious symbols or motifs in advertising per se (at least at the time when the restriction was imposed, because later on the law was amended), morals could be based on religious views, especially taking into account the historic importance of Christianity in Lithuania (eg, in the context of anti-Soviet resistance), and the number of Christians among the population (nearly 80% of population is believed to be Catholic).

The judgment

As is clear from Article 10(2) ECHR, an interference with one’s own freedom of expression is allowed insofar as it:

·       Is prescribed by law;

·       Pursues a legitimate aim; and

·       Is necessary in a democratic society.

Prescribed by law: not really foreseeable but the point is not this

The first requirement, as also clarified in Delfi, entails that the law in question should be accessible, ie formulated with sufficient precision, to the person concerned and foreseeable as to its effects.

The assessment of foreseeability of course depends on the law considered, as well the field it is designed to cover and the number and status of those to whom it is addressed. If the addressees are those carrying on a professional activity who must exercise special care, then a special care in assessing the risks that such activity entails should be also expected.

The second ad

In the case at issue, the ECtHR agreed with the Lithuanian Government that it would not be possible to provide a precise legal definition of ‘public morals’, which accordingly must be intended in a broad sense.

Although the fact that this case was the first in Lithuania addressing the issue of use of religious symbols and motifs in advertising did not exclude the foreseeability of how the concept of ‘public morals’ would be intended in such instance, the fact that the advertisements were found to be contrary public morals because the use of religious symbols in them was “inappropriate” and “distorted the meaning” of those symbols was not foreseeable.

Nonetheless, the ECtHR noted that the real point would not be the foreseeability of such understanding of ‘public morals’, but rather whether the interference pursued a legitimate aim and was necessary in a democratic society.

Pursued a legitimate aim: yes

According to the ECtHR the aim of protecting morals arising from the Christian faith and shared by a substantial part of the Lithuanian population, along with the protection of the right of religious people not to be insulted on the grounds of their beliefs, is a legitimate aim.

Necessary in a democratic society: not really

The Court noted at the outset that the understanding of ‘democratic society’ entails that freedom of expression also includes information and ideas that offend, shock and disturb. Also, the meaning of ‘necessary’ implies that any restrictions to freedom of expression require the existence of a “pressing social need”, in relation to which Contracting States have a certain margin of appreciation. The Court’s task, in this sense, is to exercise a supervisory jurisdiction, not to replace competent national authorities.

The Court further noted that different types of expression may be subject to different degrees of protection. When it comes to religious beliefs, Article 10 freedom must be balanced against “the general requirement to ensure the peaceful enjoyment of the rights guaranteed under Article 9 to the holders of such beliefs including a duty to avoid as far as possible an expression that is, in regard to objects of veneration, gratuitously offensive to others and profane”.

The Court held that the expressions at issue - although they had a commercial purpose and were not intended to contribute to any public debate concerning religion or any other matters of general interest – “at the outset … do not appear to be gratuitously offensive or profane, nor do they incite hatred on the grounds of religious belief or attack a religion in an unwarranted or abusive manner”.

The third ad

In this sense, the Lithuanian authorities had failed to explain “why the reference to religious symbols in the advertisements was offensive, other than for the very fact that it had been done for non-religious purposes”.

Furthermore none of the authorities had addressed the applicant’ argument that “the names of Jesus and Mary in the advertisements had been used not as religious references but as emotional interjections common in spoken Lithuanian, thereby creating a comic effect”.

The Court also noted that the Lithuanian Constitutional Court has held that “no views or ideology may be declared mandatory and thrust on an individual” and that the State “does not have any right to establish a mandatory system of views”.

In conclusion

The ECtHR ruled that the Lithuanian authorities had failed to strike “a fair balance between, on the one hand, the protection of public morals and the rights of religious people, and, on the other hand, the applicant company’s right to freedom of expression.”

The analysis of the ECtHR is very interesting, in that it enlightens the relationship between freedom of commercial expression and the vague notion of ‘public morals’.

In this sense – in addition to providing guidance in the context of advertisement law - the judgment may also serve to elucidate how the absolute ground for refusal of registration of a trade mark on grounds of public policy or morality [Article 7(1)(f) of Regulation 2017/1001 and Article 4(1)(f) of Directive 2015/2424] should be intended, especially considering the frequent occasions in which this ground is relied upon by relevant authorities (for instance, only a few days ago the General Court confirmed that the sign ‘Fack Ju Göhte’ could not be registered as trade mark [here]).

Wednesday Whimsies

What's happening out and about in the world of IP? IPKat provides a summary of upcoming IP events.

London

On 6 March 2018, WilmerHale is hosting a free UK Intellectual Property Seminar on Global IP Litigation. The discussion will be lead by Mr. Justice Birss, judge of the Patents Court and Business and Property Courts Supervising Judge for the Midland, Wales and Western Circuits, and will center around the future role of the UK in global and European IP litigation proceedings. A discussion on future forum shopping in the UPC is also promised. See here for further details and registration. 

Cambridge

The CIPIL Annual Spring Conference 2018 will be held on 10 March 2018 at the University of Cambridge. Mr Justice Arnold will chair this year's theme on  Intermediary Liability and Responsibility. Those interested in IP may wish to take a look at session 1, in which the issue of intermediary liability and responsibility vis-à-vis copyright and other forms of intellectual property, hate speech, children protection and personal data protection will be discussed. 

Cambridge

Edinburgh

The WP Intellectual Property Conference will be held on 12 April 2018 at The Signet Library in Edinburgh. The keynote will be from Scottish Supreme Courts judge Hon Lady Wolffe. The conference will focus on harmonisation of the copyright regime, in light of the digital single market, and includes a talk from IPKat Dr Eleonora Rosati!

Europe

Submissions are now open for the European Law Institute (ELI) Young Lawyers Award. The noble goal of the award is to "provide the young European community with a mechanism to propose practical suggestions for the improvement of European law". Applicants for the award must be enrolled at a European university or have been awarded a law degree in the last 5 years. Entry requires the submission of a unpublished <2,500 word paper dealing with a European legal issue that could be improved. Full entry requirements can be found here. Will a paper on IP win this year?

Prize winning Kat

Africa

The WIPO and WTO are organizing the first Regional WIPO-WTO Colloquium for IP Teachers and Researchers in Africa. A similar event too place last year in Asia. The colloquium will be held on 9-12 April 2018 UNISA in Pretoria, South Africa. See here for full details and registration, including information on the available scholarships.

Webinars

IP and AI

London based start-up CIPHER are hosting a webinar on AI and IP, which will focus on the extent to which AI can help with the creation, enforcement and exploitation of intellectual property, and specifically patents. Full details and registration can be found here.  

Trade marks

MARQUES is hosting a free webinar on "Social Media and Marketplaces back to basics: ...'Food' for thoughts" on 29 March 2018. The webinar will provide an overview and case studies on strategies to protect IP rights in some social media and online marketplace platforms. There will also be a presentation by in-house lawyers from two multinational companies from the food industry, who will discuss the main issues they face and the practical solutions that can be adopted in both social media and online marketplace environments. Full details of the webinar can be found here. 

Job adverts

Glasgow

Glasgow 

The University of Glasgow is looking for a full time Lecturer in Intellectual Property. Full details can be found here.

San Fransico

The Wikimedia Foundation is looking to fill a Technology Law and Policy Fellow position in sunny San Francisco. The role is designed for a lawyer with up to 2 years of legal or public policy experience who "is passionate about free knowledge and open source issues". Apparently, it is even more awesome if you also have a good sense of humor.

Image credits: LIMATZ CATS

A spectrum of specificity - Article 3(a) of SPC Regulation

Formula 1 of EP (UK) 0 810 209

Is a compound that is represented by a Markush formula in a patent claim but not identified elsewhere in the patent specification a product "protected by a basic patent" for the purposes of Article 3(a) of the SPC Regulation?  This issue was considered last year in the first instance decision of (1) Sandoz Limited (2) Hexal AG v (1) G.D. Searle LLC (2) Janssen Sciences Ireland UC [2017] EWHC 987 (Pat). At the time, the IP Kitten noted with surprise that the matter was capable of resolution without a reference to the CJEU (see previous post here).  Well, it now turns out that was a little premature, and a reference from the Court of Appeal in the same case [2018] EWCA Civ 49 is winging its way across the English Channel. 

Background

The Claimants/Appellants sought to revoke SPC/GB07/038 (the SPC) which is due to expire on 23 Feb 2019 for a product described in the SPC as "Darunavir or the pharmaceutically acceptable salt, ester or prodrug thereof".   Darunavir is marketed by Janssen (the exclusive licensee) under the brand Prezista.  Prezista is a protease inhibitor anti-retroviral medication used to treat HIV.  The Claimants aimed to clear the way for their generic darunavir product, on the basis that the SPC is invalid because on a true construction of Article 3(a) of the SPC Regulation, darunavir is not a product "protected" by the patent.  There is no challenge to the validity of the patent itself.  The patent consists of Markush claims.  

Article 3(a) of the SPC Regulation provides as follows: 

"A certificate shall be granted if, in the Member State in which the application referred to in Article 7 is submitted and at the date of that application:
(a) the product is protected by a basic patent in force".

The judge at first instance decided that the SPC complied with each of the various interpretation options for Article 3(a) currently on the table (see further detail of those options in previous post here), and concluded that the SPC did comply with Art 3(a) of the SPC Regulation. 

Issues on appeal

It was common ground that there is no reference to darunavir anywhere in the specification, and that it fell within Markush formulae in the patent. The appellants' evidence was that the closest compound to darunavir disclosed in the patent was "Compound 7", and the difference with darunavir was only in the P1 substituent.  In the case of Compound 7, the P1 substituent is an aralkoxycarbonyl group, whereas for darunavir, the corresponding P1 substituent is a heterocyclyloxycarbonyl group (specifically a fused bis-tetrahydrofuran derivative).  The difference in the two P1 substituents is set out below:

P1 substituent: Compound 7

P1 substituent: Darunavir

The appellants’ evidence was that the heterocyclyloxycarbonyl substituent in darunavir was unusual, did not form part of the common general knowledge available to the skilled team at the priority date, and the structure of the P1 substituent group of darunavir was not published until after the priority date of the patent.  The defendants'/respondents' evidence drew attention to a pre-priority date article which discloses the heterocyclyloxy portion of the P1 group in darunavir (but not the whole P1 group) as an intermediate in a reaction scheme for the synthesis of insect anti-feeding compounds.

The appellants argued that given the large number of compounds covered by the claims and the unusual nature of the P1 substituent of darunavir, Article 3(a) was not satisfied on the facts.  The respondents contended that darunavir was protected by the patent if it is one of the class of products defined and claimed by reference to the Markush formulae in the claims. 

Article 3(a):  a spectrum of specificity

The Court of Appeal reviewed the case law of the CJEU and pending references, focussing on Case C-322/10 Medeva BV v Comptroller-General of Patents, Designs and Trade Marks and Case C-493/12 Eli Lilly & Co Ltd v Human Genome Sciences Inc.  The CJEU articulated for the first time in Eli Lilly that in order to be protected by the basic patent, the claim must relate to the product implicitly, but necessarily and specifically (the "Lilly requirement").   Issues before the Court of Appeal included the following: (a) Is the Lilly requirement limited to functional claims? (b) If it is not so limited and applies to all claims, is it always satisfied by a Markush claim which covers the active ingredient? (c) Is the position unclear necessitating a reference to the CJEU?

Floyd LJ (for a unanimous Court of Appeal) noted that an important point of detail is the time and circumstances in which the national authority has to determine whether a product is protected by a basic patent - this falls to be judged when the product is known and authorised to be placed on the market.  The question remains what is the necessary exercise for determining whether the product is protected by the patent: is the correct approach to ask whether it is clear that the product is claimed as such, or whether the product is one which is sufficiently identified?
The Court of Appeal considered paragraph 43 of the Lilly judgment to try and identify what underlies the specificity requirement. This indicates that one way to prevent the marketing authorisations of third parties from being used as the basis for SPCs is to insist on a high degree of specificity in the basic patent.  The Court of Appeal continued, that if there is a general requirement that the active ingredient which is the subject of the SPC must be identified, the question arises of how specific the claims must be - there is a "spectrum of specificity" indicated by the factual scenarios in the various decided cases and references to the CJEU.  With regard to Markush claims, the judge noted that he would:

"regard it as plain that a Markush claim can in some circumstances amount to a sufficiently precise claim for the purposes of Article 3(a), for example where individual substituents are identified in the specification, or where classes of such substituents are set out, and the skilled person would be able to determine the extent of those classes.  However I do not think one can extract from the reasoning in Eli Lilly the proposition that an active ingredient is adequately identified by a Markush formula however broadly that formula is framed and however obscure the particular substituent required to form the active ingredient the subject of the SPC.  I think it is at least arguable that that substituent must be amongst those which the skilled person would be able to identify based on his common general knowledge at the priority date." (para 106, emphasis added)

The Court of Appeal gave two reasons for this conclusion: First, if the objective is to ensure that the patent proprietor has come close to an actual realisation of the product, then the fact that the relevant substituents cannot be arrived at from a reading of the specification and the CGK may be highly relevant. Secondly, the Bundespatentgericht (German Federal Patents Court) in the pending Sitagliptin reference (Decision 14 W (pat) 12/17 dated 17 October 2017, original here, English translation here) expressed the view that the functional formula in that case, and the Markush formula in the present case are factually indistinguishable for the purposes of Article 3(a) - a view with which the Court of Appeal in the present case disagreed.  This divergence of opinion could lead to conflicting decisions between member states. 
The Court of Appeal expressed concern about the identification test, and expressed agreement with the first instance judge that a far better test would be to ask "whether the product the subject of the SPC embodies the core inventive advance of the basic patent."  However, the Court also recognised that an adoption of the core inventive advance test would present difficulty to patent offices around Europe in its application, and would be a "very long way indeed from the simple, transparent and objective approach foreseen by the Memorandum" to the SPC Regulation (which can be found here). 

Provisional conclusion and reference to the CJEU

Left to his own devices, the judge would have concluded that darunavir was a product protected by the claims of the patent.  In the case of a product with a single active ingredient and a patent with a claim which identifies a number of compounds by means of a Markush formula, all of which embody the core inventive technical advance of the patent, the test should be whether the skilled person, considering the claims of the patent on the one hand and the structure of the product in question on the other, would immediately recognise that the active ingredient in question is one of those specified by the formula.  On the facts of the present case, that test is satisfied, but it is not clear that this is the correct approach in EU law.  (It is worth noting that the core inventive contribution test has also been disapproved by the Bundespatentgericht in its sitagliptin reference, which considers that such a test has a place only in connection with Article 3(c) of the SPC Regulation.)

The Court of Appeal therefore stayed the appeal proceedings and referred the following question to the CJEU:

“Where the sole active ingredient the subject of a supplementary protection certificate issued under [the SPC Regulation] is a member of a class of compounds which fall within a Markush definition in a claim of the patent, all of which class members embody the core inventive technical advance of the patent, is it sufficient for the purposes of Article 3(a) of the SPC Regulation that the compound would, upon examination of its structure, immediately be recognised as one which falls within the class (and therefore would be protected by the patent as a matter of national patent law) or must the specific substituents necessary to form the active ingredient be amongst those which the skilled person could derive, based on their common general knowledge, from a reading of the patent claims?”

Protection of traditional knowledge and cultural expressions: the case of 'Maasai IP'

Maasai people

Over time the issue of whether and how to protect cultural heritage and folklore has attracted increasing attention. Discussions in this sense have famously taken place in a number of jurisdictions, including Australia and some African countries.

With particular regard to the latter, a few days ago the Financial Times published an interesting article, discussing the case of 'Maasai IP'.

Maasai are are an ethnic group that has traditionally led a semi-nomadic life across southern Kenya and northern Tanzania. They are are famous as warriors and cattle-rustlers.

The Financial Times article discusses how awareness has arisen among Maasai as regards effective protection of the name, image, symbols, and reputation of Maasai people. 

In particular, Isaac ole Tialolo, a member of Kenya’s Maasai tribe, is credited as the initiator of a "more legalistic approach to protecting - and monetising - [the] cultural heritage" of Maasai people. As reported by the article, in fact, Tialolo went from breaking the camera of a tourist who was attempting to take photographs of Massai warriors to initiating and becoming the chair of the Kenyan branch of the Maasai Intellectual Property Initiative Trust (MIPI).

MIPI's objective is to reclaim "the Maasai ownership of its famous iconic cultural brand. The Maasai name, image and reputation is used around the world on products ranging from cars to shoes, and exercise equipment and is worth billions of dollars" [Washington-based Light Years IP estimates that more than 1,000 companies have used Maasai imagery or iconography without permission, including well-known fashion brands - eg here - and luxury car manufacturers].

Louis Vuitton Fall/Winter 2011
and Maasai man
(here) 

With the goal of redistributing licensing revenue among a community where 80% of people live below poverty levels, MIPI intends to increase awareness about Maasai's IP rights and license the use of Maasai's name, image, brand, culture, and artefacts (eg shoes and fabric). 

Besides actively seeking protection for their IP (eg by means of trade mark registrations) - which in any case might be a costly, complex, and lengthy process - one could wonder whether local laws afford any protection to cultural heritage in the sense intended by MIPI.

The answer seems to be in the affirmative, at least in part.

Kenya has for instance recently adopted an Act for the Protection of Traditional Knowledge and Cultural Expressions. Both terms - 'traditional knowledge' and 'cultural expressions' - are broadly defined. Protection is granted to every 'community' (to be intended as a homogeneous and consciously distinct group of the people who share any of the following attributes: (a) common ancestry; (b) similar culture or unique mode of livelihood or language; (c) geographical space; (d) ecological space; or (e) community of interest) against any unauthorised third-party exploitation of their traditional knowledge and cultural expressions.

In addition, both the Kenyan Copyright Act and the Tanzanian Copyright Act contain a specific regulation of the use of folklore, which is defined as:

- "a literary, musical or artistic work presumed to have been created within Kenya by an unidentified author which has been passed from one generation to another and constitutes a basic element of the traditional cultural heritage of Kenya and includes - (a) folktales, folk poetry and folk riddles; (b) folk songs and instrumental folk music; (c) folk dances and folk plays; and (d) the production of folk art, in particular drawings, paintings, sculptures, pottery, woodwork, metalware, jewellery, handicrafts, costumes and indigenous textiles" (Kenya);

- "production consisting of characteristic elements of the traditional artistic heritage developed and maintained over generations by a community or by individuals reflecting the traditional artistic expectations of their community" (Tanzania)

However, it would appear that neither Tanzania nor Kenya recognise a self-standing image rights [but readers' insights would be appreciated]. In this sense it is unclear how one could control the unauthorised use of his/her own image, if not by attempting to rely - at least in specific instances - on other areas of the law, eg passing off. Recently the Ugandan High Court issued an interesting decision that to some extent echoes the outcome of the Fenty v Arcadia UK litigation. 

Overall the case of 'Maasai IP' is part of a broader trend towards the recognition of certain groups' elements of identity as deserving of legal recognition. However, lacking specific legislation, traditional tools may only provide sporadic, limited, and fragmentary protection.

Austria refers Facebook ‘Hate-Speech’ case to the CJEU

The supreme court of Austria (‘Oberste Gerichtshof’ - OGH, case number 6Ob116/17b) has asked the Court of Justice of the European Union (CJEU) for clarification on the scope of Art. 15 (I) of the E-Commerce Directive and the host provider privilege.

Here are the facts of the case:

The plaintiff in this case is Dr Eva Glawischnig-Piesczek, a green politician from Austria. In April 2016, a Facebook user with the fake alias ‘Michaela Jaskova’ posted an image of Glawischnig-Piesczek, and made some rude comments in German (“wretched traitor”, “corrupt clumsy oaf”, “member of a fascist party”) regarding the politician. Facebook was requested to delete the image and the comments in July 2016, but failed to do so.

Glawischnig-Piesczek then obtained a preliminary injunction against Facebook, which obliged the social network not only to delete the image and the specific comments (making them inaccessible worldwide), but also to delete any future uploads of the image if it was accompanied by comments that were identical or similar in meaning to the original comments. Upon being served the injunction, Facebook blocked access to the original image and comments (limited to Austria) and appealed the decision. The court of second instance upheld the first decision only in part: Facebook was now obligated to delete any future uploads of the image if it was accompanied by comments that were identical to the original wording or if the comments were similar in meaning and Facebook had actual knowledge of these comments (e.g. via a subsequent notice from the plaintiff or a third party).

Both parties appealed the court of appeal’s decision, which brought the case to Austria’s highest civil court, the OGH.

The judges begin their decision with a detailed analysis of the comments that were made by ‘Michaela Jaskova’ and find them to be unlawful due to their defamatory and offensive nature and complete lack of factual background for the statements. The court also states that the unlawfulness was evident, even to a layman without any legal background. Due to this, Facebook was required to delete the image and the comments upon obtaining actual knowledge of the post on July 2016. Facebook’s failure to do so deprived the social network of its liability privilege as a hosting provider under Article 15 of the E-Commerce-Directive, which is implemented in § 16 ECG (the Austrian ‘E-Commerce-Law’).

Facebook is considered by the court to be an abettor to the unlawful comments and as such, under Austrian law, is obliged to refrain from any repetition of the infringement. Austrian jurisprudence with regard to defamatory statements allows the plaintiff and the court to include statements that are not identical, but similar in wording or meaning, in the injunction. This does make sense and is handled similarly in Germany. If it was only forbidden to repeat the identical statement, the offender could easily circumvent the court’s decision by slightly altering his statement, resulting in the necessity of a new court order for each new statement.

Identical or similar?

However, according to the court, the claim for a ‘broad’ injunction that includes statements that are different from the original one might be in conflict with Article 15 of the E-Commerce-Directive. Article 15, which is implemented in § 18 ECG, asks that member states shall not impose a general obligation on providers to monitor the information which they transmit or store, nor a general obligation actively to seek facts or circumstances indicating unlawful activity.

Indeed, an obligation for Facebook to pro-actively identify every future infringing post, including those that are different in wording, but similar in meaning, could result in an obligation to monitor all information which Facebook stores.

The judges appear uncertain whether such a judgment would result in a general obligation in the sense of Article 15. They turn to recital 48 of the E-Commerce-Directive, which states:

‘This Directive does not affect the possibility for Member States of requiring service providers, who host information provided by recipients of their service, to apply duties of care, which can reasonably be expected from them and which are specified by national law, in order to detect and prevent certain types of illegal activities.’

According to this, a judgment asking for the prevention of illegal activities is not completely excluded with regards to Article 15 (1) of the E-Commerce-Directive, but can be made with regards to specific infringements.

Looking at McFadden, the court states that monitoring all of the information must be excluded from the outset as contrary to Article 15 (1). However, the judges believe this statement from the CJEU is not applicable to the case at hand, since McFadden dealt with an access-provider and not a hosting provider. This statement is a bit odd in its brevity, given that Article 15 applies to ‘mere conduit’ as well, but the court provides no further explanation.

The judges appear more inclined to apply L’Oréal/eBay, which found that hosting providers can be ordered to take measures which contribute, not only to bringing to an end infringements of intellectual property rights, but also to preventing further infringements of that kind. This leaves the question what constitutes infringements ‘of that kind’. Are only infringements that are identical to the original infringement ‘of that kind’ or are similar infringements included when it comes to ‘hate speech’?

The Vienna judges decided to ask the CJEU for clarification and have referred the following questions [be advised, this is a Kat-translation and not the official wording]:

Does Article 15(1) of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) preclude the national court, to make an order requiring a hosting provider who has failed to expeditiously remove illegal information not only to remove the specific information but also other information that is identical in wording?

With regards to the first question, the court further asks whether Article 15(1) precludes such an order that requires the hosting provider to remove such information (or block access to it) worldwide or only in the relevant member state.

The court further asks whether Article 15(1) precludes such an order that is limited to removing or blocking access to the illegal information only from the specific user who posted the content and whether such an order would be applicable worldwide or only in the relevant member state.

The court next asks, if the previous questions are answered in the negative: does the same answer apply to information that is not identical in wording, but similar in meaning?

Finally, the court asks: does the same answer apply to information that is not identical in wording, but similar in meaning, once the host provider has actual knowledge of the information?

This Kat is very much looking forward to the CJEU’s answers. The referral touches some very relevant questions. In Canada, the Supreme Court ruled in Equustek v. Google that the search engine had to delist certain results from its search engine globally. In the case at hand, the plaintiff wants the offensive content to be removed from Facebook globally, while Facebook has only limited access from Austria.

Also, the issue of pro-active monitoring/content filtering by hosting providers is at the center of the discussion around Art. 13 of the upcoming DSM-directive.

This post will be updated once the CJEU publishes the questions on its website.