Who is an 'intermediary' for the sake of Article 11 of the Enforcement Directive?

Mr Justice Arnold speaking yesterday
at the 1st iCLIC conference
in Southampton

Who can be considered an 'intermediary' within Article 11 of the Enforcement Directive, so that “rightholders are in a position to apply for an injunction” against such subjects “whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of Directive 2001/29/EC [the InfoSoc Directive]”?

Are 'intermediaries' the same subjects that the Ecommerce Directive refers to as 'information society service providers', and the InfoSoc Directive also calls 'intermediaries'?

This question is not really one of linguistics, especially considering the uncertainties surrounding – for instance - whether search engines may be considered intermediaries within Article 11 of the Enforcement Directive, as well as the current (heated) discussions surrounding the role and responsibilities of online intermediaries in tackling online infringements.

With particular regard to the latter, IPKat readers will promptly recall that this topic is indeed at the centre of policy discussion also [but not only: just look at Australia] at the EU level. Last May the EU Commission issued its Digital Single Market Strategy [here and here], in which - among other things - it announced a discussion on the role and responsibilities of online platforms and intermediaries to tackle infringing content. A public consultation on – among other things – the regulatory environment for online platforms and intermediaries [a draft version of which has been already leaked and the IPKat discussed it here] is due to be launched later this month.

While waiting for all these things to happen, is there anyone better placed to discuss the identity of an 'intermediary' than Mr Justice Richard Arnold (High Court of England and Wales and – among other things – blocking injunctions guru)?

Of course not.

The 1st iCLIC conference on the role of internet intermediaries in the law enforcement process opened yesterday [you can follow the conversation on Twitter at #iclic15] at the University of Southampton with a keynote address by Mr Justice Arnold, in which he addressed this very question.

The Enforcement Directive and preceding legislation

Mr Justice Arnold began his analysis by recalling the relevant EU legislation preceding the adoption of the Enforcement Directive. 

He noted at the outset that the rationale for enrolling online intermediaries in the enforcement process is enshrined in Recital 59 of the InfoSoc Directive:

"In the digital environment, in particular, the services of intermediaries may increasingly be used by third parties for infringing activities. In many cases such intermediaries are best placed to bring such infringing activities to an end ..."

In other words, and to use a language borrowed from economists, the EU legislature considered intermediaries the best placed to bring infringing activities to an end [but also prevent new infringements from occurring, as the Court of Justice of the European Union (CJEU) most recently recalled at para 37 of its Telekabel judgment, discussed here] because these subjects are the lowest-cost avoiders.

He also noted how Article 8(3) of the InfoSoc Directive does not contain an express reference to the 'digital environment', and Recital 59 itself stresses that the role of intermediaries may be relevant “in the digital environment, in particular”, but does not appear limited to that [Merpel notes that this may be reassuring to hear for those (very few) who still have an off-line life].

Although the InfoSoc Directive is limited to copyright, the rationale of Recital 59 is the same of the general provision in Article 11 of the Enforcement Directive.

Having looked into relevant EU legislation, then Mr Justice Arnold considered UK implementation of the relevant provisions.

Too cool to care?

UK implementation of EU directives

The judge recalled how, while UK Government expressly transposed Article 8(3) of the InfoSoc Directive into its own copyright law [it is section 97(A) of the Copyright, Designs and Patents Act 1988 (CDPA)], it decided against doing the same with regard to Article 11 of the Enforcement Directive, on consideration that section 37(1) of the Supreme Court Act 1981 was already enough [but if that was actually the case, noted the learned judge, then why didn’t the UK Government repeal section 97(A)? For an analysis of the (messy) state of UK copyright legislation, do take a look at this Jeremy post].

There is no need to recall that, until the decision in Cartier [another thoughtful decision by Mr Justice Arnold, noted here], lack of express implementation of Article 11 of the Enforcement Directive into UK law had resulted in uncertainties whether an injunction against an intermediary could be sought in this Member State in case of infringement of intellectual property rights other than copyright [trade marks in the specific case of Cartier].

In any case, if one looks at the language employed in section 97A CDPA will notice that this provision speaks of 'service providers' rather than intermediaries, as it should have been instead the case under the InfoSoc Directive. 

The reason? 

The language of section 97A was derived from the legislative instrument through which the UK had implemented the Ecommerce Directive into its own domestic law. But are service providers the same thing as intermediaries?

Who is an intermediary? But does the answer matter at all in the UK?

To address this, Mr Justice Arnold looked into two CJEU cases, these being LSG and the already mentioned Telekabel. 

In those cases the CJEU held that access providers and internet service providers are intermediaries. "[A]n internet service provider ... which allows its customers to access protected subject-matter made available to the public on the internet by a third party is an intermediary", held the CJEU at para 32 of its Telekabel judgment.

However, there are instances in which the nature of intermediaries or certain platforms [just to borrow from the language used by the EU Commission in its leaked draft consultation] has been basically taken for granted. This has been for instance the case of auction sites and online marketplaces in eBay, and online retailers in Cartier in which online retailers such as the target websites in that case could count as intermediaries. 

However, if one takes the case of credit card providers [which, is worth highlighting, are central to the much publicised discussed Follow the Money approach, which Mr Justice Arnold discussed in unusual (considering the overall excitement surrounding it) non-overly-enthusiastic tone in Cartier], are they intermediaries? According to the learned judge this is unclear. As a result it is uncertain whether injunctions can be sought against them. As such, he expressed the need for guidance being provided at the level of national courts [possibly with a CJEU reference as well?].

However, he noted that as far as UK is concerned, this may not be really an issue, as section 37(1) of the Supreme Court Act 1981 allows the High Court to issue an injunction

"in all cases in which it appears to the court to be just and convenient to do so."

The result? It does not really matter whether one is an intermediary within Article 11 of the Enforcement Directive when it comes to intellectual property infringements, at least in the UK. 

But - notes this Kat - can the same be said also for other EU Member States?