No Ka-Ching for Copyright Holders in Case over Kazaa?

(IPRinfo 1/2008)

Marcus Norrgård
Assistant Professor (HANKEN Foundation)
HANKEN Swedish School of Economics and Business Administration

On 29 January 2008, the European Court of Justice (ECJ) handed down a preliminary ruling concerning the right of copyright holders to request the names and addresses of Internet users from an Internet service provider in a case of suspected infringement.

Promusicae, an association of Spanish music producers, had applied for an order against the Spanish Internet access provider Telefonica requiring it to disclose the names and addresses of certain Internet users. Promusicae argued to have identified a number of IP addresses that had been used for illegal peer-to-peer (P2P) file sharing of music files using the software system Kazaa. Only the Internet access provider, however, knows the identities of the persons behind the IP addresses.

According to the Spanish law, an Internet access provider is obliged to provide such information only in cases of criminal investigations (or to protect public safety or if national security is involved).

The Spanish market court was of the opinion that there was a contradiction between Spanish and Community law. Therefore, it asked the ECJ whether Community law requires member states to lay down, in order to ensure effective protection of copyright, an obligation to communicate personal data in the context of civil proceedings.

Application of several directives
In its answer the ECJ had to consider many different provisions from several legislative Acts: on one hand provisions on the enforcement of IP rights (the TRIPs Agreement, InfoSoc Directive 200/29/EC, Directive on electronic commerce 2000/31/EC, Enforcement Directive 2004/48/EC and the Charter on Fundamental Rights), and on the other hand provisions on the protection of personal data (Directive on the protection of personal data 95/46/EC and Directive on privacy and electronic communications 2002/58/EC).

On the face of it, Article 8 of the Enforcement Directive seems to favour the copyright holder. It states that the member states must make it possible for their courts to order that information on the origin and distribution networks must be revealed by, inter alia, the person providing the services used on a commercial scale in the infringing activities. However, according to Article 8(3)(e) this applies without prejudice to, inter alia, provisions on the processing of personal data.

Even so, the ECJ, contrary to Advocate General Kokott’s opinion, found that the provisions on the protection of personal data do not preclude the communication of names and addresses of Internet users in the context of civil proceedings.

The ECJ based its argumentation on Article 13(1) of the Directive on the protection of personal data. It provides that the member states may restrict the obligation of confidentiality of personal data where that restriction is necessary, inter alia, for the protection of the rights and freedoms of others – including, according to the ECJ, intellectual property rights.

The ECJ went on to consider whether there is an outright obligation to require Internet service providers to disclose personal data. Although the ECJ scrutinised the IP directives in detail, it did not find any such obligation.

Instead, it concluded that it is up to the member states to strike a fair balance between the fundamental rights and other general principles of Community law. Thus, the ECJ left it to the national court to interpret the directives in the light of the fundamental right of respect for private life (i.e. protection of personal data) on one hand and the rights to the protection of property (including intellectual property) and to an effective remedy on the other.

Enigmatic surrender?
Some might find this decision enigmatic. Others might think that the ECJ surrenders in face of difficult questions. Yet to me this decision makes perfect sense. On the Community level, the provisions on IP enforcement have rapidly evolved from virtually no provisions at all (before the TRIPs Agreement) into a field with complex and far-reaching provisions.

At the same time, IP law and especially its enforcement have become a highly political issue with some groups wanting less protection while others demanding more. On top, different member states have different traditions of enforcing IP rights and rights in general.

After the final adoption of the Enforcement Directive (2005), I wrote that the directive gives room for both a weak and a strong enforcement ideology. Courts adhering to a strong enforcement ideology interpret the Directive in a way that makes it easier for rightholders to enforce their rights, whereas courts adhering to a weak strategy put up hurdles in the way of the rightholder in favour of the alleged infringer.

In its decision the ECJ does not clearly favour either strong or weak enforcement, but leaves it for the national judge to decide, putting thus quite a heavy burden on his/her shoulders. Whether national judges adopt a strong or a weak enforcement strategy will heavily depend on the national tradition, i.e. what view the judges have had on the enforcement of IP rights in the past.

Countries known to have bent on weak or strong enforcement will continue on that road, unless the national judges really take note of the balancing act now prescribed by the ECJ. The national judge should, according to this ruling, pay heed to the fundamental rights and the general principles of Community law.

As in 2005, I would again like to add that the national judge also needs to take into account the principles elaborated in Article 3 of the Enforcement directive. They include fair, cheap and fast procedures on one hand; effective, proportionate and dissuasive remedies on the other. Also, the facts of the case (e.g. separation between piracy and infringements between competitors) and the solutions of other countries (comparative law) are to be considered by the judge(s).

Is ECJ too cautious?
So why did the ECJ only prescribe a balancing act and not balance the rights itself? In other words, why did the ECJ give the instrument but not the solution? Either the ECJ feels that the time is not yet ripe for clear-cut decisions on enforcement, or it really regards that the world has become too complex for clear-cut decisions, making the national judge alone situated well enough to give a fair and just ruling.

Only time will tell which of these alternatives is true.

It is undisputable, however, that there are differences between member states. For instance, Section 60a of the Finnish Copyright Act – unlike the Spanish law – requires clearly the Internet access provider to give contact information under a court order even in civil proceedings in a case of a substantial copyright infringement.

Marcus Norrgård, ”The Role Conferred on the National Judge by Directive 2004/48/EC on the Enforcement of Intellectual Property Rights”, ERA Forum 4/2005, p. 503-514.

Judgments by the Courts of the European Communities (ECJ) and the opinions of the Advocate Generals can be found on the web site of the ECJ. The number of the Promusicae case is C-275/06.

Legal documents of the European Union (including judgments of the ECJ) can be searched on the Commission’s web site Eur-lex: