1. March 5, 2014
ISP liability for copyright
and TM infringement
Developments in Europe and in the US
SPEAKERS
Beatrice Martinet
@beamartinet

2. What is an ISP/OSP or Internet Intermediary?
ISP
Provide access to Internet
Web Hosting
Electronic storage of 3PC
Third party Content Platforms
Search
Engines
e-commerce
Platforms
Payment
Systems
Social
Media
P2P
Platforms

3. Why should they be liable for 3rd party content?
ISPs/ OSPs
User
Freedom to
conduct business
Free speech
Privacy
Access to
knowledge?
Right Holder
Property right
CLAIMS
§ major loss from online
infringement
§ return on investment
§ whack-a-mole argument
§ OSPs benefit from
infringement (increased
revenues)
§ OSPs are least cost avoider
(control platforms)
§ consequence of their
business
CLAIMS
mere conduit
not at the origin of content
too much info (M of data)
threat to their business model
threat to free open internet
go against balance set by
Congress
§ Right holders are least cost
avoider (know their rights
better and whether use is
infringing)
§
§
§
§
§
§
CLAIMS
§ convenient access to
information and goods
anytime, anywhere
§ free speech
§ privacy

4. Why should you care about Europe?
q I. Applicable Law: country where protection is sought
§ See art. 8 of EC Regulation 864/2007 (Rome II)
q Relevant question?
§ Did any harmful event occurred in this country?
§ Availability of the website
§ public possibly targeted? See ECJ L’Oreal v. eBay (2011), Football Dataco v.
Sportradar (2012), Pinckney v. Mediatech (2013)
§ Factors: language, currency, purchase and shipping availability? Extension?
q Common Denominator approach
§ If you’re OK in the EU, you should be OK in the US
§ Standard for liability generally broader in Europe

5. What is their regime of liability in EU and US and how to tackle
this issue globally?(Overview)
q I. Legal framework governing OSP liability in EU US:
§ A. The DMCA and the e-commerce Directive: a broadly similar legal framework
§
B. Limited impact of the difference existing between the two systems
q II. Interpretation of this framework by US and EU Courts
§ A. A different interpretation of similar legal concepts
§ B. A different approach towards similar Internet intermediaries
q III. Best Practices
§ A. For right holders
§ B. For platforms
q Conclusion: what to expect in the future?

6. I. Essential regulations governing OSP liability US/EU
1996
1998
2000
WIPO copyright treaty
Mere provision of physical
facilities for enabling
communication does not
amount to
“communication” (note to art. 8
DMCA (17 U.S.C. ß 512 (a)-(k):
Safe harbor for some OSPs
(conduit, caching, hosting and
linking services), subject to
certain conditions.
Directive 2000/31/EC (§4 art.
12-14)
Similar provisions limiting liability
of OSP (conduit, caching,
hosting but not linking services)
for third party content under
similar conditions.
WCT)

7. A. Basic Principles governing ISP liability: a broadly
similar legal framework
Qualify as a service provider
Both : act as an intermediary
(not at the origin of content)
US only:
(i) Designate agent to receive notification (Hosting)
(ii) Adopt and reasonably implement repeat infringer policy
(iii) Do not interfere with standard technical measures
Lack of knowledge standard
Both: Actual Knowledge or Sufficient awareness (of facts and circumstances from which infringing activity is apparent)
Adequate Reaction standard
Both: Expeditiously remove or Block access to infringing content
Lack of control ( benefice?) standard
EU: (i) Platform’s control is over “recipient of the
service”
(ii) Benefit not in Directive but relevant in some jdx
US: platform must also benefit from infringing activity

8. B. Limited impact of differences b/w the 2 systems
Directive
DMCA
Vertical approach
Horizontal approach
(all kind of content)
Procedural Rules
• Injunctive relief (512 (j)) : lR limited to
blocking access to specific user or
specific content + least burdensome
measure
• Notification and counter-notification
procedure 512 (c)(g)
• Subpoenas (512 (h)) procedure to identify
infringers
• CDA 230: all content except Fed. crim.,
Privacy IP
• DMCA: Copyright content only
• IP outside DMCA: CL vicarious and
contributory liability
Procedural Rules
• Injunctive relief: governed by national
law - expressly preserved in art. 12(3),
13(2), 14(3) e-com. Dir., 8(3) Infosoc
Dir., 11 Enforcement Directive
• No harmonized notification procedure/
no counter-notification procedure
• Subpoenas governed by national laws

9. II. A Different interpretation of this common framework
by US and EU Courts
Different
interpretation of
similar legal concepts
• Eligibility under hosting and
linking safe harbor
• Knowledge standard
• Adequate response standard
• Control standard
• Financial benefit standard
Different approach
towards similar
intermediaries
• Search Engine and linking
intermediaries
• Online marketplace and
auction sites
• Social media and other UGC
sites
• Peer to peer networks,
bitTorrent, cyberlockers

10. II A. A Different interpretation of this common framework
by US and EU Courts
Qualify as a service provider
US: Broad Concept
EU: active/ passive standard
Concept
National Divergences
Adequate Reaction standard
US: Narrow concept
EU: broader concept
National Divergences
Lack of control standard
US: Narrow concept
EU: Blurry concept
National Divergences
Lack of benefice standard
US: narrow interpretation
EU: not relevant
National Divergences

11. 1. Eligibility under the hosting and linking SH
Broad concept: more than mere electronic storage
encompasses access-facilitating process“
See e.g. UMG Recording v. Shelter (9th Cir, 2013)
US
Eligibility
under
hosting and
linking safe
harbor
But inducement incompatible with safe harbor
See e.g. Grokster, Fung, Megaupload
EU
Neutral? (T, A P)
Active role of such kind
as to give it knowledge
or control over the data
(Google v. LVMH/L'Oreal
v. eBay)
National
Divergences
Neutral role:
- Being subject to payment, setting payment terms, providing general
information, storing 3PC – all compatible (eBay, Google)
Active role:
- drafting commercial message, suggesting keywords (Google)
- providing assistance e.g. promotion or optimization of offers (eBay)
Non eligible: (After ECJ Decision) eBay (LVMH v. eBay, Supr Ct, May 2012), Tiscali
(Tiscali v Dargaud – Supr. Ct 2008, Sedo (Supr. Court 2011),
FRANCE
Eligible: (After ECJ Decision) Google (SC 2010, CA Paris 2012), Dailymotion
(NOP v. Dailymotion (Supr. Ct. 2011), Youtube (Youtube v. TF1, TGI Paris 2013)
Non eligible: IOL (RTI v. IOL (Milan, 01/11) Yahoo! (RTI v. Yahoo (Milan,09/11)
ITALY
Eligible: Google ( RTI v. Google), (Google v. Vividown, Ccass, dec. 2013) ) Yahoo! (RTI
v. Yahoo! (Rome, 03/11 – 12/11)
Non eligible: Google (Google v. Copiepresse, Bruss. Court of appeal, 05/11)
BELGIUM
Eligible: eBay (Lancome v. eBay, 2009)

12. 2. Knowledge standard
Knowledge
Standard
US:
Narrow Concept
Copyright; Actual knowledge and Red flag both refer to specific instance of
infringement
Difference is b/w subjective and objective standard (“objectively obvious to reasonable
person’)
(Viacom v. Youtube (2nd Cir., 2012) - UMG Recording v. Shelter Capital (9th Cir., 2013) Perfect 10 v. CCbill (9th Cir. 2007), Capitol Rec. v. MP3Tunes (SDNY, 2013))
General knowledge of infringing activity is insufficient (Amazon v. Corbis, WD Wah.04)
No investigation required (Perfect 10 v. Ccbill, (9th Cir. 2007)
But willful blindness = Knowledge (Napster (01),Grokster(05), Viacom (12), Fung (13)
Trademark: No general monitoring obligation (Tiffany v. eBay (2nd Cir. 2010)
But constructive knowledge may trigger obligation to take affirmative steps (LVMH v.
Akanoc (9th, 11))
EU:
Broader Concept
National
Divergences
UK
- Operator may have to undertake some control on its own
- Liability if aware of facts and circumstances on the basis of which a diligent
operator should have identified infringement (L'Oreal v. eBay)
EWHC 07/28/11, TCF v BT
“general awareness that their services are being used to infringe” enough to justify TD
Red flag knowledge: “Diligent operator” standard (FR CA, 09/10, LVHM v. eBay)
e.g. of Red flags: (i) multiple notice of infringement, (ii) promotion and involvement in sales
FRANCE
But mere awareness that services may be use for infringing activity is insufficient if
operator has shown willingness to take down infringing content (SAIF v. Google, NOP
v. Daillymotion)
Red flag : Ricardo v. Rolex - German Fed. Court: price can be red flag sufficient to
trigger filtering
GERMANY

13. 3. Adequate response standard (specific v. general)
Obligation essentially limited to taking down notified content (UMG Recording v.
Shelter/ Perfect 10 v. Giganews (CD CAL 2014)
US
No monitoring obligation over past or future content, including when posted by
repeat infringer (Perfect 10 v. Giganews, CD Cal. 2014)
No affirmative duty to remedy situation (eBay)
Adequate
Response
Standard
No general monitoring obligation but specific injunction might be possible based
on art 11 of Enf. 8(3)© Dir.: terminate or prevent specific infringement from
occurring)
EU
National
Divergences
Scarlett v. Sabam (ECJ 2011) : Injunction OK if (i) not overbroad, (ii) limited in time
and (iii) costs not exclusively borne by OSP
Constantin v. Telekabel (AG Villalon): ISP can be required to block acc. to infr. site
UK
Blocking orders
TCF v. BT (EWHC, July 2012) – EMI v. Sky (EWHC, Feb. 2013), First Row (July 2013),
Paramount v. BT (Tubeplus and Solarmovie)
No general monitoring (end of TD/SD doctrine? (Youtube v. SPPF (SC June 2013))
But monitoring OK if targeted + temporary (Google v. BAC films, Sup. Ct July 2012))
FRANCE
Good practice suggested by Ct: immediate take down + termination policy (eBay,
Dailymotion)
injunction always possible even if safe harbor applies (Ricardo v. Rolex )
Youtube v. Gema: Youtube has obligation to filter out unlicensed GEMA content
GERMANY

14. 3. Adequate response standard (injunction)
No broad injunction (cf. 512 j)
US
No affirmative duty to remedy situation (eBay)
Adequate
Response
Standard
Specific injunction can be based on art 11 of Enf. 8(3)© Dir.: terminate or
prevent specific infringement from occurring)
EU
National
Divergences
Scarlett v. Sabam (ECJ 2011) : Injunction OK if (i) not overbroad, (ii) limited in time
and (iii) costs not exclusively borne by OSP
Constantin v. Telekabel (AG Villalon): ISP can be required to block acc. to infr. site
UK
Blocking orders
TCF v. BT (EWHC, July 2012) – EMI v. Sky (EWHC, Feb. 2013), First Row (July 2013),
Paramount v. BT (Tubeplus and Solarmovie)
Monitoring OK if targeted + temporary (Google v. BAC films, Sup. Ct July 2012))
FRANCE
Blocking and dereferencing orders (w/r/t unauthorized movie streaming sites) recently
issued against main ISPs and S.E. Google, Microsoft, Y!(TGI Paris 28/11/13 –allostreaming)
Milan Court ordered blocking of Rojadirecta ex parte upon prelim finding of © infringement
(chall. pend.)
injunction always possible even if safe harbor applies (Ricardo v. Rolex )
Youtube v. Gema: Youtube has obligation to filter out unlicensed GEMA content
GERMANY

15. 4. Control Standard
Trademark
US
Copyright
Control
Standard
Essential factor under vicarious liability doctrine
Lockheed Martin v. Network solution; Tiffany v. eBay (2nd Cir. 2010)
Under DMCA: narrow interpretation (but now independent from knowledge)
- Viacom v. Youtube (2nd Cir. 2012), “something more than mere ability to
block and remove content, w/o respect to knowledge” ;
- UMG Recording v. Shelter (9th Cir. 2013) “capacity to exert subst. influence
on activity of users, w/o necess. acquiring knowledge of specific infr. activity”
- Vimeo (SDNY, 2013): e.g. of control: syst. monitoring or inducement
Outside DMCA: broad interpretation
Napster: liable under contributory liability for failing to control its
system while had the right and ability to do so.
Secondary factor (awkward formulation in Directive) –blended with knowledge
“active role of such kind as to give knowledge of or control over the disputed data”
Google France v. LVMH (C-236-08 C-238-08) - L’Oreal v.eBay (C-324-09)
EU
Essential inquiry in some decisions e.g. Dailymotion not liable because no
intellectual control over content
National
Divergences
FRANCE
Irrelevant in others e.g. LVMH v. eBay - relevant inquiry is not whether right and ability
but whether has a duty to control
Other
countries:
not relevant

16. 5. Financial benefit standard
US
Secondary factor
see e.g. Viacom v. Youtube:
- infringing activity must be a draw, not just an added benefit
- value of service must lie in providing access to infringing content
EU
Irrelevant factor
see e.g. eBay, Google “The fact that the service is subject to payment
cannot have the effect of depriving the SP from exemption of liability”
Financial
Benefit
Standard
National
Divergences
UK
FRANCE
Relevant factor: cf. TCF v. BT (EWHC, July 2012) EMI v. Sky (EWHC, Feb 2013),
First Row (profiting from infringement on a large scale)
Relevant factor: reap a benefice from infringement through percentage fee“ see eBay v.
Parfums Christian Dior - Sedo (ibid)
Ebay’s profit does not only result from the neutral hosting of data but from the attractive
nature of its offers (eBay v,. Burberry)
Irrelevant factor: cf. Dailymotion: increased ad revenue is irrelevant
Relevant factor: RTI v. IOL - IOL offered services with a view to commercial benefit
ITALY

17. B. Different approach towards similar intermediaries
Search Engine/
Linking
providers
Online Market
Place
Social media
and other 3PC
platforms
Peer to Peer
Networks
US
US
US
US
EU
EU
EU
EU
National
Divergences
National
Divergences
National
Divergences
National
Divergences

18. 1. Search engine and linking intermediaries

19. Liability of SE and linking SP in Europe and in the US (1
of 2)
Linking to site containing infringing content is not © infringement (Pearson v. Ishayev,
SDNY,13)
Thumbnail = fair use (Kelly v. Ariba Soft; Perfect 10 v. Amazon (9th Cir 2003/2007))
Bookmarking is not infringing unless knowledge of specific infr. or inducement Flava
(7th Cir.13)
US
Search
Engine
No express mention of “linking providers” in the e-commerce Directive
Svensson (ECJ, Feb. 2014): linking to freely available content is not © infringement
b/c to be infringing communication must target new public
Two prejudicial questions remains before ECJ: Best Water, C more Entertainment
EU
Grey zone
Google v. LVMH lets some space for liability if linking intermediary plays an “active
role” (suggestions/advertising) and links to non freely available content (e.g. Paywall)
National
Divergences
BELGIUM
Liable: e.g. Google v. Copiepresse (Brussels Court of Appeal, May 5, 2011)
- liability results from own practice of selecting articles
- no fair use b/c harm to primary market
Not covered by exemption but not liable either b/c (i) extract not covered by (c)
(Paperboy) and (ii) implicit license (Vorschaulbildder I/II)
GERMANY
UK
FRANCE
FAPL v BT: First Row aggregates + indexes + links + provides frames to large
number of UG live sport streams : direct or at least joint liability for unauthorized
communication = Judge orders ISP to block First Row’s IP address (2013)
Google v. BAC films: Google eligible but may have specific duty
Ledix.com: Bordeaux Ct convicted operator of site linking to infringing movie streaming
Google v. Olivier Martinez (CA Paris 12/13) Google eligible, not liable for breach of privacy

20. Liability of SE and linking SP in Europe and in the US (2
of 2)
Linking to site containing infringing content is not © infringement (Pearson v. Ishayev,
SDNY,13)
Thumbnail = fair use (Kelly v. Ariba Soft; Perfect 10 v. Amazon (9th Cir 2003/2007))
Bookmarking is not infringing unless knowledge of specific infr. or inducement Flava
(7th Cir.13)
US
Search
Engine
No express mention of “linking providers” in the e-commerce Directive
Google v. LVMH lets some space for liability if linking intermediary plays an
“active role” (suggestions/advertising)
EU
Grey zone
Three prejudicial questions pending before the ECJ: Svensson, Best Water, C
more Entertainment
National
Divergences
SPAIN
ITALY
RojaDirecta is a mere intermediary providing links enabling users to watch
sports events – no involvement and no profit in connection w/ infringement: no
liability (Madrid Prov. Ct, 2010); MejorTorrent: linking to infringing content is not
a communication to the public: no infringement (Aug. 13) but contra Oct. 13
SC: Indexing and linking is contributory infringement b/c aid access to infr. Material:
Sky liable (Calciolibero/sky):
Milan Court ordered blocking of Rojadirecta ex parte upon prelim finding of ©
infringement (chall. pend.)
Playboy v. GeenStijl: Hyperlink to pirate content is no copyright infringement but can
be tort (knowledge infr. activityV
NETHERLANDS

21. 2. Online Marketplaces and auction websites

22. Liability of online marketplace and auction website in
Europe and in the US
- No liability for third party content except if failed to act after specific
knowledge (Tiffany v. eBay (2nd Cir. 10))
- Brian Masck v. Amazon (ED Mich. 2013): Amazon may be liable under
contributory liability for continuing to sell photo after notification of
infringement (no DMCA discussion)
US
Online
marketplace
Platforms may be liable if plays an active role of such kind as to give it
knowledge or control over infringing sale notably when providing
assistance e.g. promotion or optimization of offers (L’Oreal v. eBay)
EU
National
Divergences
FRANCE
UK
- eBay not eligible under SH b/c played active role, notably when assisted sellers to
optimize and promote offers) (eBay v. LVMH, SC 05/12) liable for 3PC
- eBay held liable for concealment/reception illicit profit (eBay v. Burberry, CA Pa 12)
- 2xmoinscher not eligible under SH b/c offers searching, anonymity and escrow services
(TGI Paris, May 13) but not liable since did not commit any fault
L’Oreal v. eBay, EWHC May 22, 2009 - QP to ECJ + 10 GP eBay could have taken to
curtain infringement but that may not have any duty to take. NB: cases in FR, BE, GER
and UK were finally settled in Jan 2014.
Lancome v. eBay (Belgium Court, 2009) – eBay eligible under SH/ not liable for 3PC
BELGIUM
GERMANY
eBay eligible under hosting safe harbor but may have to conduct some filtering on
ground of disturber liability (Rolex, etc.)

23. 3. Social media and other UGC platforms

24. Liability of social media and other UGC sites
Red Zone: specific knowledge + lack of adequate reaction = liability
US
Grey Zone 1: Willful blindness (aware of high probability + conscious avoidance)
- UMG Recording v. Shelter (9th Cir. 13) ;Viacom v. Youtube (2nd Cir. 12 ) (remand))
Social
media
other 3PC
platforms
EU
(no case law)
National
Divergences
FRANCE
Grey Zone 2: Red Flag knowledge?
Subjectively aware of fact circumstances that would have made specific
infringement objectively obvious to reasonable person
e.g. of Red flag? - Notification of specific material by third party? (Viacom v.
Youtube)
- Employee interaction (liking, commenting, white or blacklisting)? (Vimeo (SDNY
2013)
Google (Hosting providers but may still be liable under civ. liability (Bac films (CA Pa, 11),
Dailymotion: hosting provider but liable for not blacklisting repeat infringers and not
taking down content promptly (TF1 v. Dailymotion)
Dailymotion (NOP v. Dailymotion (Supr. Ct. 2011),
Liable: IOL and Yahoo not eligible under hosting exemption b/c active role in organizing
the service and selecting the videos (RTI v. Italia Online, Yahoo Milan, 2011)
ITALY
Not liable: Yahoo! Google (Rome 2011)
Youtube v. Gema (2012): Google not liable as “violator” but must take filtering measures
on the ground of “disturbing doctrine” (form of secondary liability)
GERMANY

25. 4. Peer to peer network, bit Torrent, cyberlockers

26. Liability of peer to peer networks, bitTorrent, and other
Cyberlockers
Contributory liability
e.g. Napster (9th Cir. 2001), Aimster (7th cir 2003), Grokster (SC, 2005), Arista
Records v. Lime Gp, Usenet (SDNY 2009 and 2010), Perfect 10 v. Megaupload (SD
Cal, 2011), Fung (2013)
US
Vicarious liability e.g. Napster (9th Cir. 2001),
Peer to peer
websites
Inducement e.g. Grokster (SC, 2005), Megaupload (SD Cal, 2011), Fung (2013)
European Court of Human Right (F. Neij v. Sweden, Feb. 2013) confirms 1 year jail
and 5 millions euros sentence for operator of TPB - no interference w/ freedom of
expression
EU
SGAE v. DJGC (Barcelona): no liability for SP torrent website elrincondejesus.
SPAIN
National
Divergences
GERMANY
Atari Europe v. Rapidshare (OLG Dusserldorf, 2010): no liability for Rapidshare
because complied with takedown notice and used for legal purpose by most users
Kazaa v. Buma/Sterma: no liability b/c (i) no control and (ii) software has legitimate use.
ISP XS4ALL has no obligation to block access to the Pirate Bay
NETHERLANDS
UK
SWEDEN
But liability of “the Pirate Bay” and Mininova, for copyright infringement
TCF v. BT - the Pirate Bay” - liable for copyright infringement
liability of “the Pirate Bay”
BAF v. Telenet Belgacom: Belgium SC confirmed lawfulness of far reaching injunction
ordering all ISPs to block access and ref. to The Pirate Bay
BELGIUM

27. III. BEST PRACTICES

28. A. BEST PRACTICES FOR PLATFORMS

29. 1. Be sure to qualify under a safe harbor
q Act as a service provider
§ Avoid commingling with third party content - see Vimeo, Tumblr
§ Beware of playing a too “active” role – see eBay
Adopt and reasonably implement a repeat infringers policy
§ Must provide for termination of repeat infringers in appropriate circumstances
§ Inform subscribers and account holders of the policy
§ Must be reasonably implemented (keep records) but does not have to be perfect
§ see Fr. SC 2012: Dailymotion liable for not blacklisting repeat infringers
§ see Vimeo (SDNY, 2013), Corbis v. Amazon, (WD Wash, 2004
§ See Perfect 10 v. Giganews, C.D. Cal 2014, no liability for not deleting all
content of repeat infringer
q Don’t interfere with standard technical measures
§ Disqualify OSP from protection under safe harbor (see Corbis v. Amazon)
§ Circumvention of TPM - DMCA specific offense (17 USC § 1201)

30. 2. Assess the different theories of liability
§ Volitional conduct (Perfect
10 v, Amazon)
Direct
Liability
§ Control
§ Benefit
Vicarious
Liability
§ Material Contribution
§ Knowledge
Contributory
Liability
Inducement
§ Distribution of
device suitable
for infringement
§ Evidence of
actual
infringement
§ Intent to foster infringement
(clear and affirmative steps)

31. Zoom on inducement
q Clear expression or other affirmative steps
§ Promoting infringing use of a product
§ e.g. advertising (Grokster, Fung)
They bit the Apple!
§ Failure to filter out infringing content despite general knowledge
of specific infringement (ibid)
§ Helping localizing infringing content (Fung)
§ Avoiding taking any steps to diminish infringing UGC (Fung)
§ Offering reward or incentive to 3rd parties for uploading infringing
content (Megaupload)
§ Service with overwhelming amount of infringing content
§ Building an audience or a business model on IP infringement
(Grokster, Fung)

32. 3. Know what you are supposed to know
Actual Knowledge
Red flag knowledge
Willful blindness
§ In general reception of
compliant notice of specific
infringement (P10 v. CCBill)
§ Objective prong: Reasonable
person (US)/ Diligent operator (EU)
§ Something more than reception
of formal TDN (Viacom, MP3Tunes)
§ Interaction of Cie’s employee w/
content or 3P notices may qualify
(Vimeo, Fung)
§ Interpretation is broader in Europe
§ Aware of high probability of
copyright infringement
§ Consciously avoid confirming
that fact
§ Cf. Viacom, v. Youtube (2nd
Cir.12), P.10 v. Megaupload
(S.D. Ca. 2011)
§ Not necessarily specific infr.
§ Concept may be broader in
Europe

33. 4. Take down infringing content timely
q Scope : in practice copyright and TM
§
§
§
Communication: Do not blame the right holder for content taken down
§
See e.g. Tiffany v. eBay (2nd Cir. 2010),
Tumblr recently sued by Perfect 10 for ignoring TD notices
Amazon held liable for copyright infringement for ignoring several TD notices
See Youtube v. GEMA, Munich Feb. 2014: injunction forcing youTube to change its message “not
available because GEMA has not granted right” – Court says it misrepresents the situation and
damage GEMA reputation (“not available due to lack of licensing agreement” would be OK)
Time limit : can be very short
§
§
No uniform, definite time (vary w/factual circumstances technical parameters) (Veoh)
But can be very short:
§ Dailymotion liable for taking down content “only” after 4 days (Fr. SC 2012)
§ eBay liable for not taking down infringing content within 72 hours (CA Paris and Metz 2013)
§ Industry standard? Google: 4M © TD request/week – average time: 6 hours
q Starting point:
§
§
US: reception of qualifying notification
Europe: for some Court, more informal knowledge can trigger obligations (cf. L’Oreal v. eBay)

34. 5. Going beyond DMCA obligations?
q Setting up some kind of filtering systems in collaboration with R.H
q Avoiding gaining any financial interest from piracy
§ Cf. industry voluntary agreement to remove ad from websites dedicated to piracy
§ Cf. Avoid building you business model on piracy
q Taking reasonable (business compatible) steps to combat piracy
§
Cf. UK decision in L’Oreal v. eBay and FR decision in LVMH v. eBay – good practices involves
§
§
§
§
preventive filtering,
restrictive selling conditions w/regard to items most likely to be infringed,
strict repeat infringers policy,
immediate withdrawal of any infringing offers, etc.

35. B. Best Practices for right holders

36. Best Practices for right holders (1)
q 1: Monitor the use of your rights online
§ DMCA places burden to police © infringement on RH (P.10 v.CCBill)
§ DMCA notices must clearly identify material and not put burden on ISP (P10 v,
Giganews)
2: Collaborate with platforms' anti-piracy strategies
§
see FR case Dailymotion – RH forfeited rights by refusing to collaborate
q 3. Send compliant TD notices (see 512(c)(3)(A))
§ see P10 v. CCBill; P10 v.Yandex, (ND Cal 13), P10 v. Giganews (CD Cal 14)
§ Adequate info to find and address infringement expeditiously (Viacom)
§ e.g.: URL addresses (Congress, youtube)
§ Search instructions and representative examples are insufficient (Giganews)

37. Best Practices for right holders
q 4: Do not “abuse” the take down system
§ Make sure you have a valid claim
Cf. Sogelink v. Sig Image: Fr Supr Ct held a company liable for using Google take down system
when the use of their TM as a keyword by their competitor did not create consumer’s confusion
(May, 2013)
§ Do not misrepresent the reality (512 (f)
See Lenz v. Universal Music (baby dancing on Prince) (ND Cal 08): lack of consideration for fair use
before sending TD notice: sufficient basis to state a claim for misrepresentation 512 (f)
§ Beware of possible backlashes (Unfair competition, Business
interference, False advertising, Libel, etc. counterclaims)
• Counterclaims
• DJ: See e.g. Lawrence Lessig’s v. Liberation Music or CrossFit v. Alvies (Facebook page of mom fans’ blog):
claims based on 512 (f), unfair competition, false advertising, business interference, etc.
• TRO/SJ: See e.g. Lunchmaster v. Choicelunch (SF): SJ ordering withdrawal of abusive TD notice

38. Practical ways to combat infringement: alternative business
models
q Free, freemium
advertising-supported
models
q Micro payment
q Subscription
q Cross-subsidization

39. Conclusion: Moving forward, what to expect?
Legislative reforms?
q Many proposals of legislative reforms
§ US: SOPA, OPEN,
§ International: ACTA
§ Europe: SINDE, AGCOM, HADOPI, DEA etc.
Limit of legislative reforms?
§ Lack of consensus and fundamental rights issues
§ Protecting ISP further? Which response to piracy?
§ Increasing ISP involvement in fight against piracy?
§ Opportunity? Costs on innovation, entrepreneurship, freedom of information
§ Means: Injunctive relieves? Dereferencing? Cutting stream of revenues - limits
§ Cracking down on users?
§ Limits to graduated response models – efficiency, unpopularity,
§ Fundamental rights issues: digital exclusions and free speech

40. Technological answer, collaborative efforts streamlined
enforcement licensing
q Filtering other technological answers
§ Protective blocking (DRM) limits (circumvention, over-blocking, etc.)
§ Voluntary blocking
§
§
Collaborative solutions (Content ID, Vero, etc.)
Unilateral solutions: opt in and opt out systems (Google books, Pinterest Pin in/out) limits
§ Compulsory blocking – Court blocking orders (UK, IR, FR, NL,B.) limits
q Stakeholders dialogue
§ Voluntary and political initiatives
q Facilitating enforcement of IP rights
§
§
Alternative Dispute Resolution
streamlined procedure (small claim tracks, etc.)
q Facilitating licensing process of online content
§
§
Main hurdle to distribution of legal content: clearing and licensing process
Different proposal in this regard
§
§
§
§
International registry of Copyright (Global Repertoire, Linked Coalition)
Single Digital Market for copyright
Machine readable copyright symbols (EPC big idea for EU Digital Agenda, CC project…)
Collective Right Management Directive (just adopted by EP): cross borders © license (streaming)

41. SIDEMAN BANCROFT LLP
(415) 392-1960
Beatrice Martinet
bmartinet@sideman.com