Authors: Gayle Kimberely, Nicole Sciberras Debono, Nina Fauser
Imagine this scenario: an individual decides to upload a copy of a Harry Potter film on YouTube, without acquiring the consent, and without paying any royalties to Warner Bros., which is the production company and owner of the rights of the film. Essentially, by uploading this film onto an online platform such as YouTube, but failing to acquire the consent of Warner Bros., this would constitute an infringement Warner Bros.’ intellectual property rights. Thus, in such a scenario, right holders would request YouTube, as the intermediary between the uploader and the rightsholder, to disclose the contact details of the person who unlawfully uploaded such a film. Following this, the right holder, Warner Bros., would then be able to commence proceedings against the individual who has shared their film online in this way.
However, in a recent case decided in July 2020, the Court of Justice has decided otherwise, holding that YouTube is no longer allowed to divulge personal information of anyone, apart from their postal address, even if that individual is performing illicit acts because, it seems, that their privacy trumps theft. This means that when a film is unlawfully uploaded onto an online platform like YouTube by a certain individual, despite having all the information about this individual, YouTube may only disclose the infringer’s postal address, so the only way a right holder can contact the infringer is to send him a letter via snail mail, at least according to the recent judgment of the Court of Justice of the European Union (‘CJEU’) adopted last month.
Constantin Film Verleih GmbH vs. YouTube LLC and Google Inc (Case C-264/19)
On the 9th of July 2020, the CJEU delivered a preliminary ruling in Constantin Film Verleih GmbH vs. YouTube LLC and Google Inc (Case C-264/19).
The proceedings concern a dispute between German film distributor Constantin Film Verleih (‘CFV’) and YouTube and its parent company, Google. CFV requested information on two YouTube users who had uploaded two full-length films infringing CFV’s intellectual property rights. YouTube refused to provide CFV with the users’ email addresses, telephone numbers, and respective IP addresses used to upload the films because, YouTube claimed, according to the Directive on the Enforcement of IP Rights (Directive 2004/48/EC, hereinafter “the Directive”), that it was only obliged to divulge the postal address of its users.
The CJEU seemed to agree with YouTube, declaring that, in terms of the Directive, when infringing content is uploaded onto an online platform, such as YouTube, the online platform can only be obliged to provide the postal address of the user concerned, and therefore, cannot be obliged to provide a user’s email address, IP address, or telephone number.
This rather restrictive interpretation of the Directive puts right holders at a severe disadvantage when trying to enforce their rights. Article 8(2)(a) of the Directive allows the judicial authorities to order the disclosure of the ‘names and addresses’ of the users, however the term ‘addresses’ was applied rather conservatively to include only one’s postal address. The CJEU based its decision on the opinion of Advocate General (‘AG’) Saugmandsgaard Øe, delivered in April 2020. In his opinion, the AG claimed that since the term ‘addresses’ was not defined, it had to be decided according to its usual meaning in everyday language, which is to include only the postal address. The opinion also refers to the Directive’s ‘travaux préparatoires’, which did not include anything which would suggest that the term ‘address’ should include one’s email address, IP address or telephone number.
Based on this interpretation of the term ‘address’, the CJEU ruled that in cases such as the one at issue, the judicial authorities are not obliged to order YouTube to provide the email address or IP address of the user who uploaded a film unlawfully. An online platform operator can only be obliged to provide the user’s postal address, a rather archaic interpretation adopted in the context of digital economy services where one is rarely asked for, or gives out one’s postal address.
Interestingly, in paragraph 39 of the decision, the CJEU referred to Article 8(3)(a) of the Directive, acknowledging that the EU legislature expressly provided for the possibility for the Member States to grant holders of intellectual property rights, the right to receive fuller information, provided, however, that a fair balance is struck between the various fundamental rights involved and provided that there is compliance with the other general principles of EU law, such as the principle of proportionality.
The Enforcement of Intellectual Property Right (Regulation) Act in Malta
In Malta, the Enforcement of Intellectual Property Rights (Regulation) Act, Chapter 488 of the Laws of Malta (the ‘Act’), would apply to the case at hand. In particular, Article 7 of the Act, dealing with the right of information, states that in the case of the infringement of an intellectual property right, the claimant can request the Court to order that the information on the origin and distribution networks is to be provided to such claimant. Article 7(2)(a) of the Act replicates the wording used in the Directive and mentions that the information shall include the names and addresses of the producers, manufacturers, distributors, suppliers, other previous holders of the goods/services and the intended wholesalers/retailers. It will be interesting to see what approach the Maltese courts will adopt in this context, when it comes to the interpretation of the term ‘addresses’.
This CJEU decision is rather disappointing for copyright holders whose content is mainly available on digital platforms. Most online platforms that internet users subscribe to do not require your postal address, especially if the service offered by the online platform does not entail the purchasing and delivery of physical goods to its users. This begs the question, in today’s digital day and age, shouldn’t the everyday meaning of the word ‘address’ be extended to include email addresses and IP addresses? For the time being, the CJEU has adopted a position which seems to favour the preservation of privacy and protection of personal data over the protection of intellectual property rights, and which seems to suggest that any extension to such meaning could only be addressed through the adoption of specific legislation.