10th Edition of the Master of Laws
in Intellectual Property (WIPO)
Enforcing Copyright against
File-Sharers: Copyright
Liability of Intermediaries
and Application Providers
Enrico Bonadio
City University London
3rd November 2011 (Turin)
• (i) File sharing (many cases)
• (ii) role and liability of Internet Service Providers (ISPs)
• … exemptions from copyright liability available under
EU and US law
• … many cases (eg US, Europe, Australia)
• (iii) legislative actions aimed at fighting unauthorized file
• (iv) relationship between copyright and free speech (in
the case of file sharing)
• (v) issues related to “disconnection” of Internet access
(as penalty)
• All manner of works can be stored and made
available electronically
• Eg: literature, music, works of art, etc. can be
represented in digital form
• … and they can be copied, manipulated or
transmitted anywhere in the world …
• … at “the touch of a button”
• The ease with which all these forms of creative
expression can be exploited digitally …
• … has prompted the “global information village”
• On the one hand: Internet and
tangible media (eg CDs, DVDs,
etc) benefit publishers …
• … as they can expose their
works to a massive worldwide
consumer audience and
generate revenues for copyright
• On the other hand: Internet
facilitates piracy, unauthorized
copying and dissemination of
• … it thus can be detrimental to
copyright owners
• Computational neuroscientist Sandberg:
in the on-line environment it is “hard to
maintain the social and emphatic
constraints that keep us from taking each
other’s things”
• In other terms: we respect IP when it
comes to books and other off line
• We forget it when IP assets are in digital
• Survey from Pew Internet / American Life
Project: 75% of respondents aged 12-to17: “file sharing is so easy to do; it is
unrealistic to expect people not do it
File sharing
Recently file sharing has become very popular …
eg for music
eg video/movie and video games lovers
Files containing such works can be uploaded,
downloaded and generally exchanged on the
• Copyright holders are worried and angry
• Eg: phonograms’ producers sell less CDs, as many
songs (especially from pop stars) are available on
the Internet (for “sharing”)
File sharing
• Technically: what is “file
• It refers to the sharing of
computer data or space
on a network
• It allows multiple users to
access the same file
stored in a central server
• … giving the user the
ability to read, modify,
print or copy
P2P file sharing
• What about “peer-to-peer” (P2P)
file sharing?
• It is sharing of files by a direct
exchange between end-users’
• Files are not stored on a central
• Certain software are installed in
users’ PCs (eg Kazaa) to act as
a mini-server
• … from which other P2P users
can download files
P2P file sharing
• P2P is popular as is userfriendly and convenient
• It has empowered
informal networks of filesharers around the world
ready to make available
files to others (without any
authorization from ©
P2P file sharing
• So, one aspect of P2P always involve unauthorized
reproduction on the downloader
• … ie the receiving part
• This is usually considered as a violation of the
reproduction right (one exclusive right)
• What about up-loaders?
• Indeed, they make available works to the public
• © owners rely on certain rules which reserve to them:
• (i) the act of “communicating to the public”
• (ii) the act of “making available” the work to others
WIPO Treaties
• Said rights are now protected in
many countries (US, EU, etc.)
• Article 8 WIPO Copyright Treaty
• Articles 10 and 14 WIPO
Performances and Phonograms
Treaty (WPPT)
WIPO Treaties
• Article 8 WIPO Copyright Treaty (WCT): “[…]
authors of literary and artistic works shall enjoy the
exclusive right of authorizing any communication to
the public of their works, by wire or wireless
means, including the making available to the public
of their works in such a way that members of the
public may access these works from a place and at
a time individually chosen by them”
WIPO Treaties
• Articles 10 WIPO Performances and
Phonograms Treaty (WPTT): “Performers
shall enjoy the exclusive right of authorizing
the making available to the public of their
performances fixed in phonograms, by wire or
wireless means, in such a way that members
of the public may access them from a place
and at a time individually chosen by them”
WIPO Treaties
• Article 14 WIPO Performances and
Phonograms Treaty (WPTT): “Producers of
phonograms shall enjoy the exclusive right
of authorizing the making available to the
public of their phonograms, by wire or
wireless means, in such a way that
members of the public may access them
from a place and at a time individually
chosen by them”
Enforcing copyright
• Later we’ll see that use/offer of file sharing technologies
(which allow the making available of copyright protected
works) …
• … has been held a violation of the above rules
• Courts have also considered use/offer of file sharing
technologies as:
• (i) contributory/vicarious/inducement copyright
infringement (US Napster and Grokster cases)
• (ii) authorization of copyright infringement (UK Polydor
case, Australia Kazaa case)
• (iii) general tort rule (civil law countries)
Enforcing copyright
• In the last years © owners have taken
advantage of legislation and regularly
taken action
• … against down-loaders, up-loaders
and generally against people who
shared files with peers (especially
music/video files)
• The above are “primary infringers”
Enforcing against ISPs
• Actions are also taken against
Internet Service Providers
• … ie companies/individuals
allowing or encouraging file
sharers to exchange files
• … or provide technical means
• … or make possible
• ISPs are deemed gatekeepers
• Liability is thus not limited to
uploaders/downloaders/ primary
Enforcing copyright
• The same occurs with other kinds of tort
• Liable is also who encourages, facilitates,
helps or anyhow benefits from unlawful
• Copyright makes no exception
• National legislations consider liable for
copyright infringement whoever is
connected with copyright infringement …
Enforcing copyright
Enforcing copyright
• Use/offering file sharing technologies is considered
by courts as:
• (i) Authorizing copyright infringement (UK /
• Amstrad UK 1986
• Kazaa case Australia (2005)
• eg failing to inform users of a library with copying
machines about copyright law and failing to
control/supervise …
• … was considered unlawful “authorization of
copyright infringement”
Enforcing copyright
• (ii) Contributory infringement:
• … when a third party assists in the commission of the
unlawful act which causes injury
• In order to prove infringement
• … the claimant must show that the infringer knew (or
had reason to know) the direct/primary infringement
• … provided that (a) the direct infringement occurs and
(b) there is a material contribution to such infringement
• Affirmed in Sony Betamax (1984 US Supreme Court)
and applied in Napster 2001 (US)
Enforcing copyright
• (iii) Vicarious infringement occurs …
• (a) if the third party had the “right and
ability to control” the infringer’s activity
• (b) if the third party received some
financial benefit from the unlawful act
• Napster case 2001 (US)
Sony Betamax case
• Sony Corp. of
America v. Universal
City Studios, Inc.
• US Supreme Court
• also known as the
“Betamax case”
• No contributory
Enforcing copyright
• (iv) recently the category of inducement of
copyright infringement emerged
• affirmed in Grokster 2005 (US Supreme Court)
• It has been borrowed from patent law
• It occurs when a 3rd party
• … distributes a device with the aim of promoting
its use to infringe copyright …
• in that case the 3rd party is liable for the user’s
resulting infringement
Enforcing copyright
• In civil law countries?
• (v) general tort rule (eg responsabilite’ civile in
• (vi) duty of care to avoid damages to others
(another tort rule) (affirmed in Mininova NL
• (vii) injunctive relief against third parties
• certain civil law countries allow injunctions
against persons involved in someone else’s
Amstrad case
• Amstrad Electronics
plc v The British
Industry Ltd
• UK 1986
• No authorization of
Napster case
• A&M v Napster
• US Court of
• Contributory and
vicarious liability
MGM v Grokster
• MGM v Grokster
• US Supreme
• Inducement
• (borrowed from
patent law)
Polydor v. Brown
• Polydor v. Brown
[2005] UK
• “making available to
the public”:
• copyright
Dutch case law
• (i) Stichting BREIN v
Techno Design
Programming’ BV
(2006): tortious act
• (ii) Brein v Mininova
2009 (tortious act)
Pirate Bay case
• Pirate Bay case
• Swedish joint
criminal and civil
• Guilty!
Kazaa case
• Universal Music
Australia Pty Ltd v
Sharman License
Holdings Ltd [2005]
• Federal Court of
• Authorization of
SGAE v Guerra
• SGAE v Jesus Guerra
• Court of Barcelona:
• Offering links to P2P
services is not
copyright infringement
Limewire case
Limewire case [2010]
NY Court:
(i) copyright infringement
(ii) unfair competition
(iii) inducement of copyright
• 26 October 2010: it was ordered to
disable the "searching, downloading,
uploading, file trading and/or file
distribution functionality”
• May 2011: settlement: LimeWire
agrees to pay $105 million in
Internet Service Providers (ISPs)
• What is an ISP?
• It facilitates access to
material in Internet and also
provides services:
• Eg email, bulletin boards,
chat rooms, DSL services,
web search engines, hosting
websites, etc.
• Such services have serious
copyright implications
• In certain cases they can
trigger liability for ISPs
ISPs liability
• ISPs have tried to minimize risks of liability
• … by requiring the persons to whom they
provide services to undertake to respect ©
• … and not to make infringing material
available to others
• ISPs may also seek indemnities from their
subscribers for copyright infringement
attributable to their actions
ISPs liability
• Yet, you can easily understand that the above is not
• some exemptions from copyright liability are needed
and should be made available to ISPs
• Rationale: recognizing the important role played by
ISPs in the “new economy”
• eg facilitating the use of Internet
• Exemption from copyright liability for ISPs:
• (i) E-Commerce Directive (2000/31) (EU)
• (ii) US Digital Millennium Copyright Act 1998 (DMCA)
ISPs – exemptions from liability (EU)
• 1st important exemption:
• Art. 14 E-Commerce Directive:
• eg: hosting websites, bulletin
boards, blogs, chat rooms and file
sharing platforms (eg YouTube)
• ISPs are exempted from liability
stemming from hosting any material
• … including material infringing 3rd
parties’ ©
• Thus: ISPs are not liable for the info
ISP - hosting exemption
• Art. 14 Dir: storing – 2 alternative requirements :
• a) ISP does not have actual knowledge of illegal activity and is
not aware of facts from which the illegal activity or information is
apparent; or
• b) ISP, upon obtaining knowledge or awareness, acts
expeditiously to remove or to disable access to the information.
• This exemption does not apply when ISP exerts authority and
control over users (Art. 14.2 Dir.)
• Recital 42 Dir. confirms that services that can be exempted must
be of “mere technical, automatic and passive nature”, which
means that such services do not entail any involvement on the
part of ISP with reference to contents
ISP – mere conduit exemption
• 2nd exemption: mere conduit (Art. 12 Dir.)
• ISP is not liable where it is “intermediate
transmitter”, i.e. when it:
• (a) does not initiate the transmission;
• (b) does not select the receiver of the
transmission; and
• (c) does not select or modify the information
contained in the transmission
ISP – mere conduit exemption
• no liability attaches where the
transmission is nothing more than as
a “conduit”
• … and takes place for the sole
purpose of carrying out the
• … and provided the information is not
stored for any period longer than is
reasonably necessary
• eg: facsimile transmission, telex, or
telephonic transmission or Internet
connection, and generally temporary
transmissions over which ISPs have
no control, eg P2P file sharing (not email services, which entail storage
and thus falls within storage
ISP – caching exemption
• 3rd exemption: caching (Art. 13 Dir.)
• In relation to all three exemptions:
• no general obligation on ISP “to monitor the
information which they transmit or store, nor a
general obligation actively to seek facts or
circumstances indicating illegal activity” (Art. 15 Dir.)
• Remember:
• the exemption usable by ISPs for escaping copyright
liability is storage/hosting exemption under Art. 14
Mininova case
• Brein v Mininova
Court of Utrecht
• No Art. 14 hosting
Pirate Bay case
• Pirate Bay case
• No Art. 14 hosting
Dailymotion case
• Dailymotion v
Carion, Nord-Ouest
Production et al.
• Court of Appeal of
Paris [2009]
• Art. 14 exemption
Telecinco v YouTube
• Telecinco v
• Court of Madrid
• Article 14 hosting
Telecinco v YouTube
• RTI v Yahoo!
• Court of Milan
• Creation of
active “hosting”
• No exemption
ISPs – exemptions from liability (USA)
• Also US legislation provide ISPs with shields from
copyright liability
• Sec. 512 Digital Millennium Copyright Act (DMCA)
• so-called “safe harbor” provisions
• Thus: if ISPs qualify for such an exception …
• … only individual infringing customers will be
liable for monetary damages (not ISPs)
• Aim Sec. 512 DMCA: striking balance between
competing interests of (i) © owners and (ii) users
• Four exemptions provided
Section 512 DMCA
• Two general requirements. All exemptions apply
• (i) ISP “has adopted and reasonably implemented,
and informs subscribers and account holders … of
a policy that provides for the termination in
appropriate circumstances of subscribers and
account holders … who are repeated infringers”
• (ii) ISP accommodates and does not interfere with
measures necessary to protect copyrighted works
(eg encryption)
Section 512 DMCA
Four exemptions:
(i) Conduit - Sec. 512(a) DMCA
(ii) Caching – Sec. 512(b) DMCA
(iii) Storage – Sec. 512 (c) DMCA
(iv) Info Location Tools – Sec. 512(d) DMCA (eg
search engines, websites linking to infringing material)
• ISPs complying with the requirements (both general
and specific) are not liable for money damages
• … but may still be ordered by a court to perform
Sec. 512(c) – online storage
• It applies to ISPs that
store infringing
material on their
networks “at the
direction of users”
• eg websites, chatrooms, blogs,
newsgroups and file
sharing platforms (eg
Sec. 512(c) – online storage
• In addition to the two general requirements …
• … Sec. 512(c) requires that ISP:
• a) either does not have the right and ability to control the
infringing activity of its users or – if it does – that it does
not receive a financial benefit directly attributable to the
infringing activity;
• b) is not aware of the presence of infringing material or
know any facts or circumstances that would make
infringing material apparent and …
• … upon receiving notice from copyright owners, act
expeditiously to remove the purported infringing material
Sec. 512(c) – online storage
• a) Lack of right and ability to control the infringing activity
and direct financial benefit
• So if ISP has the right and ability to control the infringing
activity …
• … must “not receive a financial benefit directly attributable
to the infringing activity” to qualify for this exemption
• This provision should be interpreted consistently with the
similar common law standard for vicarious copyright
• … according to which turning a blind eye to detectable
acts of infringement for the sake of profit gives rise to
Sec. 512(c) – online storage
• So we have two elements:
• (i) ISPs not having the right and ability to control
infringing activity of its users
• eg Napster was deemed as having right and ability to
• (ii) ISP must not receive direct financial element
• eg Napster’s system created a draw for users which
resulted in direct benefit …
• as its revenue was directly dependent on increases in
• Thus: exemption not available for Napster
Sec. 512(c) – online storage
• b) lack of knowledge of infringing material:
• 1) ISP should not have actual knowledge that it is
hosting infringing material
• 2) or not be aware of facts or circumstances from which
infringing activity is apparent
• Important: ISPs have no duty to monitor its service or
affirmatively seek infringing material on its system
• Sec. 512: two ways an ISP can be put on notice of
infringing material on its system:
• 1) notice from the copyright owner
• 2) the existence of certain “red flags”
Sec. 512(c) – online storage
• 1) Notice from the copyright owner (so-called
“take-down notices”)
• written notification of claimed infringement to a
Copyright Agent designated by the ISP
• It must includermation:
• (i) a physical or electronic signature of a person
authorized to act on behalf of the owner of an
exclusive right that is allegedly infringed;
• (ii) identification of the copyrighted work claimed to
have been infringed;
Sec. 512(c) – online storage
• (iii) identification of the material that is claimed to be
infringing and that is to be removed or access to
which is to be disabled, and information reasonably
sufficient to permit the service provider to locate the
• (iv) information reasonably sufficient to permit the
service provider to contact the complaining party
(such as an address, telephone number, and, if
available, an electronic mail address at which the
complaining party may be contacted);
Sec. 512(c) – online storage
• (v) a statement that the complaining party has a
good faith belief that the use of the material in the
manner complained of is not authorized by the
copyright owner or the law;
• (vi) a statement that the information in the
notification is accurate
• If a notice which complies with these requirements
is received …
• … the ISP must expeditiously remove or disable
access to the allegedly infringing material
• If the ISP complies with this notification
procedures, it is safe from legal liability as a result
of taking down the material
Sec. 512(c) – online storage
• 2) Red flags
• It is the second way an
ISP can be put on notice
that its system contains
infringing material
• “Red flag" test stems from
the language in the statute
that requires that …
• … an ISP not be “aware
of facts or circumstances
from which infringing
activity is apparent”
Sec. 512(c) – online storage
must ISPs follow the “safe harbor” procedures?
Answer: no!
ISPs may choose not to follow the DMCA “takedown
process” and do without the “safe harbor” exemption
• If an ISP feels it is not liable under pre-DMCA copyright
law …
• … eg because it is not contributorily or vicariously liable
or because there is no underlying copyright infringement
• … it can still raise said defences if it is sued by © owners
Sec. 512 – online storage
• Counter-notice and put-back procedures
• In order to ensure that © owners do not
wrongly insist on the removal of materials that
do not infringe their copyrights
• … ISPs can notify subscribers if their
materials have been removed and to provide
them with an opportunity to send a written
notice to the service provider stating that the
material has been wrongly removed [512(g)]
• Aim: correcting possible abuses of © owners
Sec. 512(c) – online storage
• If a subscriber provides a proper “counternotice” claiming that the material does not
infringe ©
• … the ISP must then promptly notify the
claiming party of such objection [512(g)(2)]
• If the © owner does not bring a lawsuit in
within 14 days, the ISP is required to restore
the material to its location on its network
Sec. 512(c) – online storage
• A counter-notice must contain:
• (i) subscriber's name, address, phone number and physical
or electronic signature [512(g)(3)(A)]
• (ii) identification of the material and its location before
removal [512(g)(3)(B)]
• (iii) statement under penalty of perjury that the material was
removed by mistake or misidentification [512(g)(3)(C)]
• (iv) subscriber’s consent to local federal court jurisdiction, or
if overseas, to an appropriate judicial body. [512(g)(3)(D)]
• If it is determined (by a court) that the copyright holder
misrepresented its claim regarding the infringing material …
• … the copyright holder becomes liable to the ISP for any
damages that resulted from the improper removal of the
material [512(f)]
Sec. 512(d) – linking
• Subsection 512(d) provides a
safe harbor for ISPs for
linking to infringing material,
such as for search engines,
websites with links,
hypertexts links, etc
• ISPs must stop linking the
material if it receives notice
that the material infringes a
copyright, or if it has reason
to believe so (take-down
• Exemption not contained in
EU Directive
Sec. 512 DMCA
• Identifying alleged infringers
• Sec. 512 allows © owners to request courts to issue a
subpoena to an ISP for identifying the individual allegedly
responsible for the infringing activities. [512(h)]
• Subpoena is granted on the condition that the information
about the individual's identity will only be used in relation to
the protection of the intellectual property rights of the
copyright owner. [512(h)(2)(C)]
• Subpoena only applies to users of hosting, caching or
linking, for which a takedown notice may be sent (all
“storing” activities lato sensu), not for mere conduit
• Thus DMCA subpoenas cannot be used to find the
identities of users engaged in P2P file sharing, as ISPs
render here a mere conduit for data transferred between
Internet users
Sec. 512 DMCA
• The above was confirmed
by US court in
• … RIAA v. Verizon (2003)
• Court: subpoena may be
issued only to ISPs
engaged in storing, caching
or linking
• … not against ISPs merely
providing Internet
connection for P2P
Sec. 512(f) DMCA
• Misrepresentations:
• Sec. 512(f) attempts to limit false and fraudulent claims
under the DMCA
• Indeed everybody must behave by the rules, and not
cheat …
• … whether you’re copyright holder or user:
• (i) anyone who fraudulently claims copyright
infringement …
• (ii) or fraudulently claims that non-infringing material
was wrongly removed (or that access to it was
wrongfully disabled)
• … is liable to anyone who suffers any damages
because of that misrepresentation, including court costs
and attorney’s fees
Sec. 512 DMCA
• These rules do not affect the right of a copyright
holder to sue a user who directly infringes
• Thus a copyright owner who believes that a user
has infringed or is infringing upon his or her
exclusive right
• … may sue the user for infringement
• … regardless of whether or not a take-down
notice is sent to the ISP
Sec. 512 DMCA - case law
• IO Group Inc. v Veoh
Networks (2008)
• Veoh exempted
under Sec. 512(c)!
Sec. 512 DMCA – case law
• Universal Music v
Veoh (2009)
• again: Veoh
exempted under Sec.
Sec. 512 DMCA – case law
• Viacom v
YouTube (2010)
• YouTube
exempted under
Sec. 512(c)!
• Dec. 2010 appeal
Sec. 512 DMCA – case law
• EMI v
• “digital music cloud
• Safe Harbour
exemption granted
• However, residually
contributory liable
Australian case law
• Roadshow Films Pty Ltd v
iiNET Limited (2010)
• (i) no authorization of
• (ii) iiNET can invoke “safe
harbor” exemption
• 2011: appeal decision
confirmed ISP activity’s
US case law on caching
• Gordon Roy Parker
v. Google, Inc. / Civ.
No. 04-CV-3918
(E.D. Pa., March 10,
• Search engine and
• Availability of the
safe harbor
provisions of Section
512(b) DMCA
French law – online copyright
• France is in the
forefront in the
battle …
• … against on-line
French law – online copyright
• France has dealt with filesharing issues (and generally
on-line infringement)
• ... taking into consideration
also the position of ISPs
• May 2009: HADOPI law
• It provides so-called “3strikes rule”
• It attempts to control and
regulate internet access as a
means to encourage
compliance with copyright
French law – online copyright
• It creates an ad hoc agency,
called "HADOPI" (Haute
autorité de diffusion des
oeuvres et de protection des
droits sur internet)
• … which has the task to control
• ... "internet subscribers screen
their Internet connections in
order to prevent the exchange
of copyrighted material without
prior agreement from the
copyright holders"
French law – online copyright infringement
• “3-strikes rule”
• Enforcement method works as follows:
• On claim or denunciation of copyright
holders, HADOPI starts the first step:
• 1) An email is sent to the ISP involved
in the claim. The ISP is required, on
behalf of HADOPI, to warn the user by
• If a repeated offence is suspected by the
copyright holders, by the ISP or by
HADOPI, in the 6 months following the
first step, the second step of the
procedure is started
• 2) A certified mail is sent to the
connection owner with similar
information sent in the first mail
French law – online copyright infringement
• On failure to comply in the year
following the reception of the
certified mail, the third step of the
procedure is started
• 3) The ISP is required to:
• (i) suspend internet access for
between two months and a year
(during which the subscriber is
prohibited from entering into a
service contract with any other
internet service provider); or
• (ii) order the subscriber to implement
security measures designed to
prevent the reoccurrence of illegal
downloads, with penalty fees for
French law – online copyright infringement
• HADOPI law was scrutinised
by French Constitutional Court
• IN June 2009 it found a portion of
the law unconstitutional:
• (i) terminating an
individual's Internet access affects
that individual's right to free
expression (which is a fundamental
• (ii) a decision to terminate
access should be made by a judicial
court after a careful balancing of the
two interests at stake (copyright and
freedom of speech)
French law – online copyright infringement
• (iii) as the HADOPI law gave
Internet access termination
power to an agency (and not to
a court), such grant of authority
was held as unconstitutional
• (iv) In other terms: HADOPI
law was unconstitutional, on
the basis that only a judicial
authority - and not an
administrative body - can order
the suspension of Internet
French law – online copyright infringement
• September 2009: HADOPI 2 was passed
• … to remedy the enforcement gap left by the
court's decision
• Only difference: sanctions to be applied to
alleged illegal down-loaders will be decided
by a judicial court
• … and not by the Hadopi agency (as
indirectly recommended by the Constitutional
• Yet, the entire process is still speeded up
by the Hadopi-driven procedure
French law – online copyright infringement
• October 2009: the French
Constitutional Court validated
the HADOPI 2 law, with only
one minor change
• This amendment stated that
the Courts will not be able to
decide on civil damages
during the same trial
• This means that in order to
claim damages the copyright
holders will have to bring a
separate action to court
UK Digital Economy Act
• April 2010 UK Digital Economy Act:
• aimed at fighting on-line
• June 2010: a proposed Code of
practice implementing it was
adopted by Ofcom
• It is expected to come into force in
early 2012
• The Code sets out inter alia how and
when ISPs will send notifications to
their subscribers to inform them of
allegations that their accounts have
been used for copyright infringement
(eg uploading songs without the
consent of the copyright owners)
UK Digital Economy Act
• Code proposal: 3-stages
notification process
• ISPs should inform subscribers of
copyright infringements
• … and proposes that subscribers
which have received three
notifications within a year (and
have not stopped infringing
• … may be included in a list
requested by a copyright owner
• The list would be useful to
copyright owners, who will then
be able to take legal action
UK Digital Economy Act
• Controversial issue is:
• Section 17(1) DEA
• … which grants
powers to the
Secretary of State to
disconnect people from
Internet or slow their
connections if they
ignore warnings in
case of alleged
US Bills
• US Senate bill 20.9.2010 Sen.
Patrick Leahy: blacklist of
websites (“dedicated to” or
“primarily designed” for
copyright infringing activities)
• US House Rep. 26.10.2011
Lamar Smith: Stopping Online
Piracy Act (SOPA): chasing
sites which “facilitate
• Civil society’s concerns
• Possible conflict with DMCA
safe harbor provisions?
File sharing, copyright v privacy
• Potential tension
between copyright
and privacy
• This holds true
specifically in digital
• ECJ 2008: Promusicae
v Telefónica (C275/06)
• Similar finding ECJ
2009: LSG v Tele 2
File sharing - copyright v free speech
• It is worthwhile to explore
relationship between ©
and free speech …
• … when it comes to file
• Generally speaking:
copyright has the potential
to restrict freedom of
File sharing: copyright v free speech
• both copyright and free speech have
constitutional dimension
• Free speech:
• 1st amendment US Constitut
• Art. 19 Univ. Dec. Hum. (UN)
• Art. 10 ECHR
• and many others acts
• Copyright:
• eg: Sec. 1.8 US Const: “the Congress
shall have the power to … promote
the Progress of Science and Useful
Arts, by securing for Limited Times to
Authors and Inventors the Exclusive
Right to their Respective Writings and
File sharing: copyright v free speech
• Said that …
• what about file sharing?
• Do legal actions against file sharers
restrict freedom of speech?
• If so, how can copyright enforcement
against file sharers restrict freedom of
• We try now to answer these questions
File sharing: not only copying music!
• File sharing is not limited to exchange and
copying of music or videos
• People also use file sharing to exchange
information, ideas, opinions, etc.
• eg: (i) for finding works which would otherwise
be unavailable
• (ii) carrying out personalized works after
having exchanged ideas
• (iii) posting creative remixes, sequel or new
interpretations of existing works (eg parody)
File sharing: parody (and other opportunities)
• Example of lawful parody created and
disseminated thanks to file sharing:
• Therefore, file sharing provides far more
opportunities than in the off-line world for
artists and authors …
• … to reach, analyze and further develop a
great number of existing works
File sharing: enhancing cultural capabilities
• eg: many universities (especially in the US)
use file sharing technologies to facilitate …
• … the sharing of class notes, class
assignments and other forms of content
• It is believed that such networks have
enhanced the educational and research
• viewed from this “social” and “educational”
perspective, file sharing can be deemed as
capable of fostering
• … a number of values underpinning the very
protection of free speech
File sharing: potentiality of P2P
• This is particularly true when it
comes to P2P file sharing
• … which enables sharing of files
by a direct exchange between
end-users’ computers
• Its decentralized feature allows
users to create and disseminate
countless kinds of resources
• … in manners which have never
been possible earlier
• so: the potential exchange of
information and ideas is
File sharing: enhancing cultural capabilities
• File sharing networks have thus become necessary
components of many global virtual communities
• … where for example information and cultural
pieces are shared and discussed in chat rooms or
other virtual spaces
• For several of these communities (e.g. academia,
defense sector, etc.) file sharing has opened new
scenarios and has become an important tool of
cultural, scientific and technical collaboration
File sharing: enhancing cultural capabilities
• In a nutshell:
• file sharing may boost the exchange of
information within communities of users,
artists and creators (i.e. communities of
people who are not just interested in
copying music and movie files)
• … and has the potential of dropping
individuals’ reliance on traditional mass
media market for information and
• It thus multiplies opportunities to exchange
ideas and opinions with a wider range of
File sharing: Diebold case (US)
• Said that …
• it seems copyright
owners are also keen in
enforcing their exclusive
• … against such
mentioned communities
• Diebold Electronic
Systems case (2003)
File sharing and free speech
• Diebold confirms that file sharing can be
• … to foster freedom of speech
• … to stimulate critical thinking
• … to exert leverage on companies,
government officials and politicians
• … and that copyright may maliciously be
invoked to stifle and chill said potentialities
File sharing: copyright v free speech
• The same can occur also when © owners do
not actually enforce their rights:
• this happens eg when speakers, artists or
• … being aware of the existence of copyright
provisions allowing right owners to enforce their
exclusive rights
• … prefer to engage in self-censorship rather
than running the risk of being sued and paying
lots of money as compensation
File sharing: form of interaction
• Thus: file sharing is not limited to musical
works, but also entails the exchange of other
kind of information
• In any case: also file sharing of music files
does contribute to marketplace of ideas
• It has been said that the exchange of music
files is increasingly perceived as a new form
of “interest-based social interaction”
• Even the passive sharing of songs with
unknown people sitting in front of their PC at
the other corner of the globe
• … is to be considered a form of cultural
• eg: YouTube which allows to share videos or
other material
• … and permit people to leave comments
regarding such material
File sharing
• Musical (artistic
works) are stimulated
if there is massive
exposure to (and
also creative
appropriation of)
previous works:
• Beethoven
• Mozart
File sharing
• Any author needs access to
previous works in order to
create new music (eg. jazz,
• such exposure is particularly
favored by the use of file
sharing technologies
• … and without such access
the creation of new music
(and generally of new artistic
forms) is hindered
File sharing: copyright v free speech
• Summing up:
• file sharing can be instrumental to the system of free
• … also because it strongly reduces the traditional copyrightsupported media power of content supply and distribution
• Thus: lesser artists, creators and authors who are not
associated to major labels, studios or publishers
• … have the potential to access and reach a larger market of
information, contents and ideas …
• and carry out creative appropriations and remixes of existing
• If they are hindered, their right to free speech may be
Disconnecting Internet access of file sharers
• File sharing is possible thanks to Internet
• In general, Internet connection has
become very important nowadays
• In some countries it has been declared
“fundamental right” (eg France, Estonia,
• It is thus interesting to analyse how some
legislations face the issue of Internet
disconnection in case of on-line copyright
• … including unauthorized file sharing
• French, UK and US law are relevant
Disconnecting Internet access of file sharers
• French Hadopi Law:
• Disconnection after three “strikes”
• But on June 2009 French Const Court found a
portion of the law unconstitutional
• As terminating individuals’ Internet access affects
individuals’ right to free expression
• The court held that any decision involving Internet
disconnection should be taken by a court
• … after a careful balancing of the two interests at
stake, i.e. copyright protection and freedom of
Disconnecting Internet access of file sharers
• As the HADOPI law gave an administrative agency the
power to terminate individuals’ Internet access, the Court
held such grant of authority as unconstitutional
• In light of Article 11 Declaration of the Rights of Man and the
Citizen of 1789, French Parliament was not at liberty to vest
an administrative authority with the power of terminating
individuals’ Internet access
• Article 11 of the Declaration of the Rights of Man and the
Citizen of 1789: “the free communication of ideas and
opinions is one of the most precious rights of man. Every
citizen may thus speak, write and publish freely, except
when such freedom is misused in cases determined”
Disconnecting Internet access of file sharers
• According to the Court: freedom of speech entails
access to online communications services:
• “in the current state of the means of communication and
given the generalized development of public online
communication services and the importance of the latter
for the participation in democracy and the expression of
ideas and opinions, this right (right to free speech)
implies freedom to access such services” (para. 12)
• It thus recognizes the importance of the right to have
access to Internet in the present era
Disconnecting Internet access of file sharers
• Other issue faced by French C. Court:
• the fact that the burden of proof was placed on
Internet subscribers
• that meant that - in order to be successful in the
procedure – Internet subscribers had to prove that
they were not liable for the alleged on-line
• Thus, subscribers should have proved that they
properly secured their Internet access or that a third
party was in fact responsible for the alleged
Disconnecting Internet access of file sharers
• According to the court, this turned out to be
• … a presumption of guilt on Internet subscribers
• … which infringed the presumption of innocence, a
principle constitutionally guaranteed under French law
• Indeed, Article 9 Declaration of the Rights of Man and the
Citizen of 1789:
• “as all persons are held innocent until they shall have
been declared guilty, if arrest shall be deemed
indispensable, all harshness not essential to the securing
of the prisoner’s person shall be severely repressed by
Disconnecting Internet access of file sharers
• What about UK?
• Controversial Section 17(1), which grants powers to the
Secretary of State
• … to disconnect people or slow their connections if they
ignore warnings in case of alleged infringement. This
provision states that:
• “The Secretary of State may by regulations make provision
about the granting by a court of a blocking injunction in
respect of a location on the internet which the court is
satisfied has been, is being or is likely to be used for or in
connection with an activity that infringes copyright”
Disconnecting Internet access of file sharers
• Thus also UK DEA provides – at least in principle – the
disconnection of Internet in case of on line copyright infringement
• Yet, it also takes for granted that such disconnection is to be
decided by a judicial authority
• It might have taken into account the French decision. Indeed
Section 17(5) DEA: “in determining whether to grant an injunction,
the court must take account of […] (e) the importance of freedom
of expression”
• Article 17(5)-d) also states that courts should take into
consideration “whether the injunction would be likely to have a
disproportionate effect on any person’s legitimate interests”
• However: “likely to be used” is risky and worrying
Disconnecting Internet access of file sharers
• What about US?
• Does the DMCA make reference to Internet disconnection
in case of on line copyright infringement?
• It does
• Precisely, the DMCA makes reference to such sanction
when dealing with the “safe harbour” exemption
• Indeed, this exemption applies to ISPs provided they inter
alia have adopted and reasonably implemented a “policy
that provides for the termination in appropriate
circumstances of subscribers and account holders of the
service provider’s system or network who are repeat
infringers” (Section 512(i)(1)(A) DMCA)
Disconnecting Internet access of file sharers
• Yet, this provision does not clarify who should finally
decide to impose such sanction
• The ISP which has adopted the policy in question?
• A judicial body?
• So far US courts have not given guidelines on that issue,
and particularly on the meaning of “repeat infringers”
• David Nimmer has given an interpretation of the term
“repeat infringers”: one may not be considered an
infringer unless he has been found as such by a court
• … as in France and UK
Debate at European Parliament
• Negotiations which led to the “Telecom Package”
• Two positions emerged
• old “amendment 138”:
• “Applying the principle that no restriction may be
imposed on the fundamental rights and freedoms of endusers, without a prior ruling by the judicial authorities,
notably in accordance with Article 11 of the Charter of
Fundamental Rights of the European Union on freedom
of expression and information, save when public security
is threatened in which case the ruling may be
Debate at European Parliament
• New “amendment 138”:
• it no longer requires that only judicial authorities be
allowed to cut off Internet access of persistent file
• It just says that any measures aimed at disconnecting
Internet access may only be adopted “as a result of a
prior, fair and impartial procedure”
• The word “judicial” has been removed from the key
sentence of the amendment
• That means that the right to judicial review is guaranteed
on appeal, but theoretically the first instance ruling can
still be issued by a non-judicial authority
Debate at European Parliament
• Resolution, 22 September 2010
• unauthorised uploading of copyrighted material
on the Internet is a clear infringement of IPRs
prohibited by both the WIPO Copyright Treaty
and the WIPO Performances and Phonograms
• no substantial difference between counterfeiting
and unauthorised file sharing
• risk that ordinary citizens sharing online copyright
protected files can be treated like criminal
organizations devoted to counterfeiting
Disconnecting Internet access
of file sharers – private agreements
• So, it is important that disconnection of Internet
access is decided exclusively by courts
• However, recent (private) agreements between ©
owners and ISPs
• … obliging ISPs to adopt graduated response
regimes envisaging the possibility of terminating
Internet access of unauthorized file sharers
• It therefore seems that suing file sharers in court is
not anymore the solution pursued by right holders to
combat on line copyright infringement
Disconnecting Internet access
of file sharers – private agreements
• Instead a strategy of compelled voluntary collaboration with
ISPs is being currently pursued
• public law is not anymore the only vehicle through which
graduated response regimes and decisions on Internet
disconnection can be taken
• private law mechanisms driven by market forces are more
and more used by copyright owners to pursue enforcement
• Such agreements are becoming popular, especially in the US
• Agreements according to which ISPs undertake to forward
notices of infringement to their subscriber
• Consequences: in some cases leading ISPs have suspended
Internet access of persistent file sharers without any court
order or other finding of an infringement
Disconnecting Internet access
of file sharers – private agreements
• Also in Ireland
• … a graduate response regime has become a common
rule for over 40% of Irish Internet subscribers
• … as a result of a settlement agreement between
major films distributors and the most important Irish
ISP (Eircom)
• this regime does not envisage the involvement of any
court and Eircom is the only “judge”
• … who decides whether the subscriber deserves or not
to have its Internet connection terminated
Disconnecting Internet access
of file sharers – private agreements
• The “transformation” of ISPs into copyright’ enforcement
agents is probably a consequence of a do ut des strategy
• There are signals that ISPs act as entertainment industry
enforcement agents in exchange for them acquiring the right to
transmit copyright holders’ programs over their Internet
• Right holders and ISPs’ interests are therefore becoming more
and more convergent and aligned
• eg the ISP Verizon reached an agreement with the company
Disney to forward infringement notices to users, in exchange
for receiving the right to transmit Disney’s programs
• these agreements may represent a first step in the context of a
“more complete private ordering of … online copyright
infringement” (Bridy)
Disconnecting Internet access
of file sharers – private agreements
• These private agreements seem to penalize too much file sharers
• eg US scenario: such agreements usually provide that ISPs
merely forward to alleged infringers the “DMCA take down
• These notices are information from the right holder to the user …
saying that the former has a good faith belief that the latter has
violated its copyright
• Some of these agreements between copyright holders and ISPs
provide that – after forwarding these notices and should other
alleged violations occur –
• … ISPs are entitled to suspend and even terminate users’ Internet
Disconnecting Internet access
of file sharers – private agreements
• Said provisions are risky for users
• … insofar as the collaboration between right holders
and ISPs – and a possible final decision suspending
or terminating users’ Internet access – is exclusively
based on DMCA take down notices
• Why?
• Because such notices are not always precise and
reliable, but just reflect right holders’ point of view:
• i.e. what they claim it is an infringement of their
Disconnecting Internet access
of file sharers – private agreements
• These agreements do not require ISPs to find out
whether a copyright infringement has really occurred
• It has been argued that take down notices are “flawed,
easy to generate, often meritless, and an inadequate
substitute for a full trial on the merits” (Murtagh)
• Indeed: they are issued unilaterally by right holders
• … without the involvement of neutral adjudicator such
as a court or a panel of arbitrators
• … and therefore without a strong proof of actual
File sharing / ECHR
• Article 10(1) ECHR: “Everyone has the right to freedom of
expression. This right shall include freedom to hold opinions
and to receive and impart information and ideas without
interference by public authority and regardless of frontiers.
• file sharing – by giving users the possibility of exchanging
information, ideas and reflections - has the potential to
promote and boost freedom of speech
• However, Article 10(2) ECHR states that “the exercise of
these freedoms, since it carries with it duties and
responsibilities, may be subject to such formalities, conditions,
restrictions or penalties as are prescribed by law and are
necessary in a democratic society […] for the protection of the
reputation or the rights of others”
File sharing / ECHR
• Article 10(1) ECHR: “Everyone has the right to freedom of
expression. This right shall include freedom to hold opinions
and to receive and impart information and ideas without
interference by public authority and regardless of frontiers.
• file sharing – by giving users the possibility of exchanging
information, ideas and reflections - has the potential to
promote and boost freedom of speech
• However, Article 10(2) ECHR states that “the exercise of
these freedoms, since it carries with it duties and
responsibilities, may be subject to such formalities, conditions,
restrictions or penalties as are prescribed by law and are
necessary in a democratic society […] for the protection of the
reputation or the rights of others”
File sharing / ECHR
• freedom of speech can be lawfully restricted if
the restriction is inter alia “necessary in a
democratic society”
• Can copyright enforcement against
unauthorized file sharers – which is capable
of restricting freedom of expression – be
considered “necessary in a democratic
• If it cannot be considered as such, it is
contrary to Article 10 ECHR
File sharing / ECHR
• Robert Danay’s paper (music file sharing)
• Danay argues that we should verify whether
such restriction is really useful to meet
copyright’s purposes.
• (i) The securing of a reward for the authors;
• (ii) the promotion and encouragement of
• is the restriction of freedom of speech useful to
meet the above copyright’s purposes?
File sharing / ECHR
• Danay believes that in most cases it might
not be useful
• file sharing does not seem to affect music
• Thus, copyright enforcement against file
sharers does not secure rewards for
authors nor promote the diffusion of music
• alternative systems of compensation not
involving tough sanctions
• The above issue is important
• I believe it is important that disconnection of
Internet access is decided exclusively by courts
• Another (final) issue:
• are there proposals aims at identifying possible
areas of freedom for unauthorized file sharers?
• Several proposals, all based on a “compensation
right” approach …
• which should substitute the traditional copyright
paradigm exclusively based on the unconditional
enjoyment of hollow exclusive rights
• Such solutions aim at saving the benefits
of file sharing technologies (especially in
terms of freedom of expression)
• … while at the same time guaranteeing
authors’ compensation (Professor Lessig:
“compensation without control”)
• transforming copyright from a proprietary
right to a compensation right would also
serve freedom of expression policy
• A first solution (Professor Netanel):
• Noncommercial Use Levy (NUL)
• Such levy would be imposed on the sale of any
consumer product or service whose value is
substantially enhanced by P2P file sharing
• … the amount being determined by an ad hoc
Copyright Office court
• Which products or services?
• eg consumer electronic devices (e.g. MP3 players,
CD burners and digital video recorders) used to
copy, store, send or perform shared and
downloaded files)
• The levy should be paid by the providers of this
products and services
• … and the distribution of the proceeds to copyright
holders should be carried out taking into
consideration the popularity of the works
• … and the actual use of the contents as measured
by technology tracking and monitoring such use
• As a consequence of the payment of such levy,
users could freely copy and circulate any works
that the right holder has made available on the
• … of course the use of the works should not be a
commercial one
• Professor Netanel:
• this system would give users and
creators more freedom to explore,
transform and adapt existing works
• … in such a way boosting freedom of
• … while at the same time rewarding
copyright holders and thus maintaining
the main essence and purpose of
• Netanel’s proposal has its merits
• Generally speaking, it is believed that
copyright holders in the Internet age will be
soon rewarded by mainly using levies and
• … as exclusive rights traditionally granted by
copyright are not easily enforceable in the
Internet world or their enforcement would
jeopardize the free exchange of information on
the Internet
• That is why levy-based proposals could soon
become reality in the Internet environment
• Another proposal:
• regime of government compensation to right holders
paid out of general tax revenues
• … with subsequent freedom to share and copy
copyrighted material available on line
• Generally speaking, recommendations to substitute
IPRs regimes with systems of government
compensation have been debated for a long time
• Proposal not very different from NUL
• … except that right holders would be paid from a
body funded by general tax revenues rather than by
levies imposed on certain products and services
• Another proposal:
• compulsory licence to authorize and regulate the P2P
distribution of copyright protected works on the Internet
• compulsory licenses are usually granted by
governments, or governmental bodies …
• … and oblige IPRs owners to licence the protected
asset to third parties willing to use it
• In principle: compulsory licencing schemes
• … by permitting users to access and share works on
the Internet …
• … would aim at favoring the circulation of copyrighted
works on the Internet and thus boosting freedom of
• Yet: skeptisism about the feasibility of
implementing such a system
• … as it is believed that compulsory
licences have proved to be unsuccessful in
implementing public policy goals
• … this would be proved by the fact that so
• … no compulsory licences have been
granted to authorize the P2P distribution of
copyrighted works on the Internet
• All these proposals have common features and
• … i.e. they aim at making the digital environment
and particularly the Internet a virtual place
• … where public debate, artistic creativity and
cultural diversity should coexist with commercial
• Proposals which do not tend to wipe out copyright
• … but try to strike a balance between copyright
and the right to freely access copyrighted works
available on the Internet
10th Edition of the Master of Laws
in Intellectual Property (WIPO)
Thanks for your
Enrico Bonadio
City University London

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