Author: Catherine Jasserand (University of Amsterdam, Institute for Information Law (IViR))
Journal of Intellectual Property Law & Practice (2012), doi: 10.1093/jiplp/jps128, first published online: 17 September 2012
No obligation of monitoring subsequent publications is inscribed in law; however, French courts have a tendency to impose such an obligation on hosting providers shifting from a notice and take down rule to a notice and stay down rule.
Article 6 of the French law on digital economy (Law No 2004-575 of 21 June 2004, known as the LCEN) implements Articles 12 to 15 of the E-Commerce Directive (Directive 2000/31).
Article 6-I-2 of the LCEN defines hosting providers as natural or legal persons offering, even for free, the storage of signals, images, written material, sounds or messages supplied by the users of the services. Hosting providers cannot be liable for the information they store unless they had actual knowledge (or were informed) of the presence of illegal content on their systems and did not promptly act to remove it or block access to it.
Article 6-I-7 of the LCEN states that persons mentioned in Article 6-I-1 and Article 6-I-2 of the LCEN (internet service providers and hosting providers) are not subject to a general obligation to monitor information they transmit or store, or to actively seek facts or circumstances indicating illegal activities.
Article 6-III-1 of the LCEN covers the case of professional and non-professional publishers (or content providers).
Article L.261-1 of the French Intellectual Property Code states that a broadcasting company must give its consent for any reproduction, sale, exchange, rental or communication of its programmes to the public against the payment of a fee.
TF1, a French TV channel, and its affiliated entities (TF1 video, TF1 droits audiovisuels, LCI and e-TF1) noticed that several of their TV shows and films were being made available on the YouTube platform. In March 2008 they sued YouTube before the Paris Tribunal de Commerce (commercial court) for copyright and related rights infringements, trade mark infringements as well as unfair competition/parasitic behaviour. The Tribunal rejected the case for lack of jurisdiction. In May 2010 the same plaintiffs referred the case to the Paris Tribunal de Grande Instance (civil court of first instance) on the same grounds.
The Tribunal de Grande Instance rejected most of the claims brought by the plaintiffs as the court considered they were not sufficiently evidenced to establish the rights of TF1 and its affiliated companies. The court reduced the action to seven sport programmes for which TF1 claimed broadcaster's rights in application of Article L.216-1 of the French Intellectual Property Code. TF1 also invoked infringement of its copyright for the same programmes. However, the court denied that claim on the ground that a claim of copyright infringement could not be combined with a claim of violation of a related right with respect to the same subject matter. This statement is questionable: it is not based on any legal provision and the subject matter of the related right at stake (broadcasting right) is different from the subject matter of the copyright. The broadcasting right relates to the programmes as messages or signals, whereas the copyright relates to the programmes as protectable works. The programmes should therefore have benefitted from both classifications and received two separate (but cumulative) protections.
Having established the ground on which TF1 was entitled to sue YouTube, the Tribunal de Grande Instance ruled on the status of YouTube. The court had to determine whether YouTube was to be considered as a hosting provider or a publisher (content provider) in order to assess its liability regarding the videos available on its platform. The court referred to the criteria set forth by the French Supreme Court (Cour de Cassation, Société Nord-Ouest & UGC Images v Dailymotion, 1st civil chamber, 09-67.896, Decision 165, 17 February 2011) and by the Court of Justice of the European Union (Case C-360/10, SABAM v Netlog) to determine that YouTube had a passive role. First, the platform did not perform an a priori monitoring of the posted videos. Secondly, the selection of material was made automatically via algorithms. Finally, the fact that YouTube made commercial profits (through the sale of advertisements) could not be considered as a criterion to classify the platform as a content provider. The court concluded that YouTube was a hosting provider subject to Article 6 of the Law on Confidence in the Digital Economy. In application of this article, its liability was limited to its knowledge or awareness of the presence of illegal material on its website. Once informed of its presence, YouTube had the obligation to promptly remove it (or disable access to it). Neither the Directive nor the French law specify what constitutes a prompt removal. However, in the present case, the judges considered that removing the videos five days after their notification was not reasonable.
However, the court did not fine YouTube for this late removal. The judges considered that the conditions of Article L.216-1 of the French Intellectual Property Code (on which the claim was based) were not satisfied. To apply the article, access to the platform should not have been free! This argument does not sound very strong. The court also added that YouTube had provided the means (via its system called Content ID) of preventing a notified material from being reposted online and had performed its duties as a hosting provider.
This decision is interesting in many respects.
First, the judges no longer apply the criterion of commercial benefit or exploitation of a platform through advertisements to qualify the provider's/publisher's content.
Secondly, the court follows a trend that has been observed for several years. In 2007 the Paris Tribunal de Grande Instance ruled that hosting providers could be held liable for subsequent publications of material subject to one-time notification even if the material had been posted by different internet users (TGI Paris, Nord-Ouest Productions v Dailymotion, 13 July 2007). This position was affirmed by the Paris Court of Appeals in four decisions issued the same day (CA Paris, 2nd Chamber, 14 January 2011, Google Inc v les Films de la Croisade, Goatworks Films; Google Inc v Compagnie des phares et balises; Google Inc v Bac Films, the Factory; and Google Inc v Bac Films, the Factory, Canal +). The obligation of monitoring specific content is neither inscribed in French law nor in the E-Commerce Directive. In the present case, the judges acknowledged that YouTube had performed its duty by providing technical means of preventing new publication of notified material. This duty was created by the judges themselves, and they do not hesitate to fine hosting providers for non-compliance. The court hereby confirms a shift from a notice and take down rule (derived from the law) to a notice and stay down rule (liberally established by the courts).