How far one must go to obtain a website blocking order

Several years after the Court of Justice of the European Union (CJEU) held in Telekabel [here] that website blocking orders under Art. 8(3) of Directive 2001/29/EC against internet service providers (ISPs) are compatible with EU law, various courts in current (and former) EU Member States granted such orders, e.g. in Austria, Greece and the UK [here and here].

German courts, on the other hand, still seem to struggle with the appropriate standard. The German Supreme Court sets high standards to obtain such an order, as seen in the recent judgment DNS-Sperre.

Background

The plaintiffs (from the USA, UK and Germany, respectively) are publishers of scientific books. Since 2019, several books to which they hold copyright have been made publicly available through the internet services ‘LibGen’ and ‘Sci-Hub’.

The identity of the operators of ‘LibGen’ and ‘Sci-Hub’ was unclear. The host provider for the content of these internet services was based in Sweden and did not react to cease-and-desist letters from the plaintiffs. The plaintiffs sued the ISP, Deutsche Telekom, and requested that it block those domains from being accessed by its customers.

The Supreme Court’s decision

Sec. 7(4) German Teleservices Act allows blocking orders, but only under the condition that there is no other way for the IP owner to stop the infringement. The Supreme Court interprets this to mean that the plaintiffs must have made reasonable efforts against the person who committed the infringement (i.e., the operator of the website), or against parties that contributed to it by providing services (e.g., the host provider), but such efforts failed or have no prospect of success. Only then can a blocking order be granted. The judges considered the ISP’s liability to be subsidiary to the liability of the infringer or its service providers. A blocking order is supposed to be a measure of last resort.

The Supreme Court goes on to explain what efforts are required. The IP owner is obliged to conduct reasonable investigations to determine the infringer. Taking into account the (financial) resources of the IP holder, this includes filing criminal complaints and conducting private investigations, for example by engaging a private investigator.

While enforcing cease-and-desist claims against the host provider is also among the possible options to be pursued prior to a blocking order, the Supreme Court sets limits on what the IP holder has to do in this respect. The IP owner is not required to take actions that may lead to an unacceptable delay. Thus, infringement proceedings on the merits, which may take several years, are not required. However, preliminary injunction proceedings against host providers based in the EU must be attempted in principle. The Supreme Court assumes that a preliminary injunction can be obtained and enforced within the EU quickly.

The IP holder may only refrain from taking such measures if they have no reasonable chance of success from the outset. This can be the case, for instance, if an enforcement action against the same host provider was unsuccessful in the past.

The Supreme Court found that the plaintiffs’ attempts to take action against the Swedish host provider were insufficient. They could have applied for a preliminary injunction requesting disclosure of the identity of the infringers, at least in Germany. In this regard, the Supreme Court took into account that the plaintiffs are large international publishers, which hold rights to many works. Hence, there is a risk of further infringement and so it is in the plaintiffs’ interest to identify the operators of ‘LibGen’ and ‘Sci-Hub’.

The plaintiffs argued for a presumption that operators of ‘structurally copyright-infringing websites’ take measures to conceal their identity, which makes pointless even the attempt of using private investigations or enforcing disclosure of information claims against host providers. The Supreme Court did not accept such a presumption. It already took issue with the term ‘structurally copyright-infringing website’ because it is not sufficiently clear what it means, nor did the plaintiffs explain it. Further, such a presumption would require extensive submissions by the plaintiffs and could lead to a complex evidentiary hearing.

For these reasons, the Supreme Court denied the blocking order.

(Also an effective way to block someone from accessing a website.)

Comment

The decision (and the law on which it is based) is disappointing for rights holders, even if one recognizes that a blocking order is not suitable for all instances of IP infringement. Individual cases of infringements on websites such as Amazon and eBay should not lead to a blocking order. This is because the identity of the operators of these platforms is known, they provide effective notice-and-take-down tools and their business model is legitimate.

In contrast, an IP owner should not be required to go through the trouble of trying to identify the people behind ‘structurally IP infringing website’. This term could be defined as a website containing numerous obvious IP infringements over an extended period of time, which website does not indicate the name and address of the operator (as required by Art. 5(1) of Directive 2000/31/EC), and does not provide an effective notice-and-take-down mechanism, or the operator does not react to cease-and-desist requests. As the plaintiffs’ argued (in the opinion of this GuestKat, rightly), operators of such websites do not want to be identified. The likelihood that investigations and legal actions against host providers may lead to any useful information about the infringers is likely to be low.

Furthermore, the IP infringements on which blocking order applications are based are usually not minor and inadvertent infringements. They often concern large-scale intentional violations from which the infringers intend to benefit monetarily.

The Supreme Court’s requirements are severe. To have a reasonable chance to obtain a blocking order in Germany, a rights holder needs to take several measures. As for the filing of a criminal complaint, the Supreme Court did not answer how long the IP owner needs to wait for the prosecution proceedings to yield results. Also, since the infringer, the host provider and their servers are often based outside of Germany, prosecution efforts will require contacting and coordinating with foreign prosecutors. Achieving results in a month or two seems unlikely.

Obtaining a preliminary injunction from a German court against a host provider outside of Germany can also be time-consuming and a challenge. One only has a window of one to two months after obtaining knowledge of the infringement to request a preliminary injunction. If you miss this deadline, you may not get a blocking order because you did not make ‘reasonable efforts’ as required by the Supreme Court.

One final thought: Since the Supreme Court took the (financial) resources of the IP holder into account, larger IP owners might consider cooperating with smaller entities whose IP has also been infringed. Since the latter have less resources, courts may be less restrictive on the ‘reasonable efforts’ they need to make.


Picture is by Александар Цветановић and is used under licensing terms of Pexels.