UPC Telekabel Wien, Case C-314/12, Court of Justice of the European Union, 27 March 2014
Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu101, first published online: June 19, 2014
The Court of Justice of the European Union (CJEU) issued its long-awaited decision on admissibility of the website-blocking injunctions. The ruling generally allows website-blocking, but makes its permissibility depend on the number of requirements. Because the decision addresses primarily website-blocking injunctions which omit to specify the specific blocking technology and/or fixed address of the website (so called ‘open-ended injunctions’), the extent to which its principles also apply to specific website-blocking injunctions is subject to interpretation.
Article 8(3) of Directive 2001/29 (the ‘InfoSoc Directive’) provides that: ‘[m]ember States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right’. ‘The conditions and modalities relating to such injunctions should be left to the national law of the Member States’ (Recital 59 of the InfoSoc Directive). ‘Those rules of national law must, however, be designed in such a way that the objective pursued by the directive may be achieved’ (see, by analogy, Case C-324/09 L'Oréal v eBay  ECR I-06011, para 136).
The CJEU was asked, among other questions, (i) whether a streaming website without any business relationship to an internet access provider can be still regarded as using its services under Article 8(3) of the InfoSoc Directive and, if so, (ii) whether fundamental rights preclude a court from issuing a website-blocking injunction when that injunction does not specify the measures which that access provider must take and when that access provider can avoid incurring coercive penalties for breach of that injunction by showing that it has taken all reasonable measures.
The Advocate General advised the court, first, that the operators of allegedly infringing websites also ‘use’ the services of an internet access provider in a sense of Article 8(3) InfoSoc Directive (para 59 of the opinion). Therefore, even where customers of a provider might not infringe rights themselves when using the website, the website-blocking injunctions can still be issued against the provider, as long as its services are used to channel users to infringing websites. Secondly, the website-blocking injunction may not be imposed in an open-ended form, but must be always specific (para 90 of the opinion).
The court accepted the first point, arguing that even an access provider who has no affiliation or business relationship with the targeted websites is still ‘used’ by these services. The court added that,
given that the internet service provider is an inevitable actor in any transmission of an infringement over the internet between one of its customers and a third party, since, in granting access to the network, it makes that transmission possible …, it must be held that an internet service provider … is an intermediary whose services are used to infringe a copyright or related right within the meaning of Article 8(3) of Directive 2001/29.The requirement of some business relationship ‘cannot be inferred from the objectives pursued by that directive, given that to admit such a requirement would reduce the legal protection afforded to the rightholders’. The objective of the Directive, said the court, is to guarantee them a high level of protection (Recital 9).
On the second point, the court disagreed with the Advocate General. Although it agreed that both the safe harbours (para 52 of the opinion) and the prohibition of general monitoring obligation (para 78 of the opinion) do not preclude such injunctions, and also that they can be permissible under some circumstances. It rejected the view of the Advocate General on the issue of a required form of such injunctions. The Advocate General advised that website-blocking injunctions are issued only as specific measures, because different measures ‘differ significantly as regards the degree to which they interfere with the fundamental rights’ and the ‘downstream opportunity for the addressee of the outcome prohibition to defend itself’ in the enforcement proceedings does not strike the necessary balance. He summarized his opinion strongly, as follows:
According to the case-law, the balance between the fundamental rights must be observed when the injunction is issued. In this case it is expressly not being observed; instead many considerations relevant to fundamental rights will only be examined at a later stage. … An examination of the ISP's situation also shows that no balance between the fundamental rights is struck by that procedural opportunity. The ISP must suffer the issuing of an injunction against it, from which it is not apparent what measures it is required to take. If, in the interest of its customers′ freedom of information, it decides on a mild blocking measure, it must fear a coercive penalty in the enforcement process. If it decides on a more severe blocking measure, it must fear a dispute with its customers. The reference to a possible opportunity to defend itself in the enforcement process does not in any way alter the ISP's dilemma.He added that, although it is ‘true that the originator can rightly refer to the danger of massive infringement of its rights by the website’, in cases like the present, ‘the ISP has no connection with the operators of the copyright-infringing website and has itself not infringed the copyright’. Therefore, in his opinion, open-ended injunctions, in contrast with specific injunctions, cannot be said to strike a fair balance between the rights of the parties.
The court apparently did not deeply share these concerns. Surprisingly, it turned the ‘ISP's dilemma’ is being resolved in favour of the internet access provider, arguing that the freedom to conduct a business would be better served if any business were ‘able to freely use, within the limits of its liability for its own acts, the economic, technical and financial resources available to it’. Subsequently, the court stylized the debate as a human rights balancing of a conflict between (i) copyrights and related rights, which are intellectual property and are therefore protected under Article 17(2) of the Charter; (ii) the freedom to conduct a business, which economic agents such as internet service providers enjoy under Article 16 of the Charter; and (iii) the freedom of information of internet users, whose protection is ensured by Article 11 of the Charter. The decision in this respect confirms a tendency to solve these types of issues not as a matter of secondary legislation but as limitations on human rights.
As regards the freedom to conduct a business, the CJEU concluded that the adoption of a website-blocking injunction restricts that freedom of a provider, because it cannot freely use available resources, given that such measure ‘may represent a significant cost for him, [and] have a considerable impact on the organization of his activities or require difficult and complex technical solutions’. Despite this, it ‘does not seem to infringe the very substance of the freedom’ (para 51 of the decision) because an open-ended injunctions
leave it to the addressee to determine the specific measures to be taken in order to achieve the result sought, with the result that he can choose to put in place measures which are best adapted to the resources and abilities available to him and which are compatible with the other obligations and challenges which he will encounter in the exercise of his activity.This reasoning seems flawed, given that enforcement proceedings must in the same way as any main proceedings necessarily establish whether the chosen measure was reasonable or not. On this basis, the courts will inevitably test and prescribe such measures by outlining what is unreasonable. The only difference is that, instead of arguing about reasonableness of the measures in the main proceedings before they are prescribed, the debate will be shifted to the enforcement proceedings subject to penalty. This has several consequences. First, the burden of proof will shift from the right holders to providers. Secondly, if the CJEU decision is taken literally, the national court will not even need to assess if there is at least one measure that might be reasonable, thus leaving the provider alone to figure out if it needs to do anything at all. Thirdly, the provider might choose measures that are cheaper for him, but disproportionate for the human rights of users (eg strong Deep Packet Inspection, ie a form of computer network packet filtering that examines the data part of a packet as it passes an inspection point).
All of these aspects are then potentially taken out of the court's focus when granting the order. As a consequence, the court only delays the problem and creates a great deal of legal uncertainty that could have been prevented by rejecting, or at least limiting, the website-blocking injunctions in the main proceedings. Moreover, if the injunctions are granted irrespective of the size of an intermediary, their automatic issuance could lead to anticompetitive results, given that what is reasonable for an incumbent is not reasonable for small and local access providers. Moreover, what the CJEU labels as freedom to use resources in fact is only a fallacy, because technology-specific injunctions still do not specify exact technical means, but only broadly outline technical means. If, say, an access provider is obliged to employ Deep Packet Inspection, there is not one specific way, since there are many technically detailed means by which to carry it out. The CJEU thus sacrifices legal certainty without winning any real flexibility for the providers and users.
That said, the court still does not give the courts of Member States a free rein, but subjects the human rights compatibility of website-blocking injunctions to several important reservations. The open-ended website-blocking injunctions (i) must be strictly targeted (para 56); (ii) must at least partially prevent and seriously discourage the access to a targeted website (para 62); (iii) must not lead to unbearable sacrifices for an access provider (para 52); (iv) must give a court in enforcement proceedings a possibility to assess their reasonableness (para 54); (v) must provide for a possibility for users to challenge the scope of the blocks once the implementing measures are known (para 57); and (vi) must be transparent in their implementation (para 57). If these six conditions are not met, the open-ended website-blocking injunction may not be issued.
This decision does not address whether the website-blocking injunctions are required by European Union law under Article 8(3) of the InfoSoc Directive, but only whether they are compatible with it (see para 45 of the decision; see also Martin Husovec ‘Injunctions against Innocent Third Parties: The Case of Website Blocking’ (2013) 4 Journal of Intellectual Property, Information Technology, and Electronic Commerce Law (JIPITEC) 118).
The decision will most likely very differently influence already quite divergent national practice regarding website-blocking injunctions. Member States that already require injunctions to be precise and clear in the main proceedings, will probably not need to apply all the considerations of the CJEU in UPC Telekabel Wien. It is because some of the requirements, such as the need of locus standi for users and the requirement of ex post implementation transparency, seem to be driven by a concern that exact conditions of the measures are determined outside of the court's oversight (see para 57). This is not the case when such injunctions are technology-specific and fixed as to the exact address of the targeted website. Website-blocking injunctions that are technology-specific, but still open to future changes, such as those issued before the courts of England and Wales, will also need to continue to guarantee a possibility for users to challenge the scope of the blocks ‘once the implementing measures are known’ (para 57). Moreover, as the last sentence implies, such open-ended injunctions, although technology-specific, must be transparent so that users can invoke their rights. On the other hand, it can be argued that even the implementation of technology-specific and fixed website-blocking injunctions can lead to a problem of over-blocking of the legitimate content, which might also have been a reason why the CJEU especially requires the need of locus standi for users. This would then lead to locus standi of users as a general requirement also in cases of all the specific website-blocking injunctions. Especially in the civil law jurisdictions, such a locus standi might be difficult to implement as a procedural rule as suggested by the court (para 57) or even in a form of a tortious claim. A substantive claim in the contract seems to be the most promising avenue.
It is also clear that not all of the countries will be able to issue open-ended injunctions of this kind. If national procedural law does not provide for assessment of the reasonableness of such injunctions in enforcement proceedings, but for instance only automatically attaches a strict liability to any breach, the court cannot issue such an open-ended website blocks in the first place.
On the other hand, website-blocking injunctions in all the Member States still must be strictly targeted. This means that any measures can only target those who infringed rights, whether as primary or secondary infringers. Any collateral over-blocking of innocent parties would render them disproportionate. The CJEU here confirms the principle of ‘collateral censorship’ first used by the European Court of Human Rights (ECtHR) in the Ahmet Yıldırım v Turkey case (App No 3111/10) . Further, blocking injunctions must be probably so effective that they at least partially prevent and ‘seriously discourage’ access to a targeted website. This standard seems to be somewhat higher than that endorsed by the Advocate General, who opined that ‘the quantitative assessment of the foreseeable success of the blocking measure is [only] one factor to be weighed’. Finally, imposition of the website-blocking should not lead to unbearable sacrifices (costs) for an access provider. Thus if the court were to require that a provider implement a system of Deep Packet Inspection by a smaller provider, it can be well argued that the latter is not obliged to do so due to considerations of personal cost.
UPC Telekabel concentrated on users and providers, but did not discuss proportionality from the perspective of targeted websites. The court did not explicitly endorse the advice of subsidiarity of the claims given by the Advocate General, who suggested that ‘a claim against the ISP is, admittedly, not completely out of the question, but the originator must, as a matter of priority, so far as is possible, claim directly against the operators of the illegal website or their ISP’ (para 107 of the opinion). In consequence, pressing problems related to a right to a fair trial of a targeted website owner are not mitigated by UPC Telekabel (see Husovec, ‘Injunctions against Innocent Third Parties’, pp. 123 ff).
This decision shows that even website-blocking might be considered a permissible specific monitoring obligation (see Art. 15 of the Directive 2000/31/EC (the ‘E-Commerce Directive’) OR 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’)). Specificity of such obligation thus seems to be eliminated to a question whether an object of a measure is individualized enough. Where the practice of blocking becomes an industry standard, and thus leads to “piling-up” of concrete objects with ‘special monitoring care’, it is questionable if the general monitoring has still any meaningful role to play next to the Charter of Fundamental Rights of the European Union. Since some forms of blocking necessarily lead to filtering on the level of access provider (eg Deep Packet Inspection), it is questionable whether Case C-70/10 Scarlet Extended  ECR I-11959 and Case C-360/10 Sabam  ECR I-0000 are really still such a vehement rejection of filtering in Europe as is often presented. Some forms of website-blocking require all the attributes which Sabam and Scarlet seemed to outlaw in their cumulation. They are (i) exclusively implemented at the expense of a provider, use a filtering system of (ii) preventive nature for (iii) all electronic communications, which (iv) indiscriminately applies to all users and is issued for (v) unlimited period of time.
It is not completely out of question that the open-ended blocking injunctions might one day end up before the European Court of Human Rights in Strasbourg. This author would not be surprised if they were found incompatible with some of the conflicting fundamental rights due to great legal uncertainty and failure to satisfy the quality of the law requirement. Because the ‘law’ that prescribes an interference must be always sufficiently clear and foreseeable as to both the meaning and nature of the applicable measures, so it sufficiently outlines the scope and manner of exercise of the power of interference in the exercise of the rights guaranteed by the ECtHR (see more paras 95 ff of the opinion of the Advocate General in Scarlet Extended). The ruling of the CJEU fails to live up to that standard.