ISP blocking injunctions are possible in Germany (but not easy to come by)

09 December 2015


The German Federal Court of Justice (Bundesgerichtshof) has laid down requirements to obtain injunctions against internet service providers (ISPs) in order to have them block access to websites linking to copyright infringing material (BGH, decisions dated 26 November 2015, case nos. I ZR 3/14 and I ZR 174/14).

Although the full texts of the respective decisions are not available yet, the BGH's press release stresses some interesting aspects.

Background

The German collecting rights society GEMA sought to block Germany's largest internet access provider, Deutsche Telekom, from providing access to the website <3dl.am> (case no. I ZR 3/14, "GEMA"). The website in dispute hosted various links to files for which GEMA members own the copyright. The links led to files stored on sharehosters such as Netload, Uploaded or Rapidshare.

GEMA obtained an ex parte injunction against the operator of the website <3dl.am>; however said injunction could not be served at the address listed with the domain name registrar. GEMA then sued the host provider, but it became clear that the host provider's address was false. Finally, GEMA demanded that the ISP concerned, Deutsche Telekom, cease providing access to the relevant website. The BGH's decision of 26 November 2015 was in respect of GEMA's application for relief against Deutsche Telekom.

Key guidance stressed by the BGH

In summary, all instances (first and second instance and the BGH) ruled against GEMA. On the facts of the case a blocking injunction was not awarded. Nevertheless, the decision is of great interest to right holders as it provides guidance on the requirements for obtaining blocking injunctions against ISPs which, in principle, appear to be available. In short:

  1. Pursuant to Art. 8(3) of the InfoSoc Directive, "Member 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". Hence, the BGH accepted that privately litigated IP website-blocking orders should be available in Germany.

    Further, the availability of this remedy is compulsory pursuant to Art. 8(3) InfoSoc Directive. In this context the BGH followed the approach of the Austrian Supreme Court in "UPC Telekabel" and the English High Court in "Cartier v Sky".

    Thus, ISPs can principally be enjoined from providing access to websites hosting or linking to copyright infringing material provided that the respective ISP knowingly provides the means to allow the infringement and additionally failed to take reasonable care.
  2. The BGH appears to have accepted that an ISP can contribute to the infringements of third parties (if this point is substantiated in the BGH's full reasoning for its decision, it could change previous jurisprudence from the court on adequately-causal contribution to infringements).
  3. A blocking injunction against an ISP should be regarded the enforcement of last resort; it is only reasonable if the interests of the copyright owners in protecting their property, the interest of the access provider in their business model and the interest of the consumers in the free access to information are well balanced. As a result, blocking injunctions against ISPs are not only permissible in cases where the respective domain exclusively contains infringing material; blocking injunctions may also be available in cases where the legal material contained by said domain is insubstantial compared to the illegal material. Furthermore, the fact that it is technically possible to circumvent blocks does not lead to the assumption that they are ineffective as such; the blocking injunction is (at least) suitable to deny or aggravate the access.
  4. In order to comply with the principle of proportionality, a blocking injunction against an ISP requires that either (i) the respective right owner will take reasonable measures against the primary infringer (e.g. the website operator or host provider) and fails to stop the infringement; or (ii) the right owner can - from the facts of the case - be assured that there is no likelihood of success in preventing a primary infringement. With respect to the latter, the respective right owner has to take reasonable steps to evaluate the facts of the case. This can include hiring a private investigator and/or involving criminal prosecution authorities in order to determine the identity and location of the primary infringer.

In the present case, GEMA failed to take further reasonable steps such as those mentioned above, and thus was not able to obtain a blocking injunction against the Deutsche Telekom.

When in Rome... the British approach

Since 2011, the English High Court has been prepared to issue website blocking orders against ISPs in respect of websites with copyright infringing business models. The issuing of such orders has become largely uncontested by the ISPs, provided the form of order sought is in keeping with the court's guidance. See our alert on website blocking orders for copyright infringement here.

In 2014, the English High Court (Arnold J) decided that, based upon similar reasoning, blocking orders could be made to block websites which advertise and sell trade mark infringing products. In the 2014 case, Richemont, the Swiss manufacturer of luxury goods, obtained website blocking orders based upon the infringement of its trade marks (e.g. Cartier, Mont Blanc and IWC) in circumstances in which Chinese websites were offering for sale counterfeit products to UK customers.

The view of the English High Court is that such blocking measures, against the UK's main ISPs, are reasonable and - in light of the European Court of Justice jurisprudence - justified. The approach by the English court has led to a significant reduction in access to blocked websites in the UK.

Practical tips

When fighting online infringements in Germany, right owners must take all reasonable measures against primary infringers, which may include hiring a private investigator and/or involving criminal prosecution authorities. Only if these measures fail might the gates open for a blocking injunction against ISPs. Stay tuned for an update on the fully reasoned decision when it is published by the BGH.

In contrast, the obtaining of injunctions to block websites offering or enabling access to infringing products or material has become relatively straightforward for right owners in the UK, where the relief may even be obtained against ISPs based upon trade mark rights. Look out for further updates on the approaches of the courts in both jurisdictions.


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