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This article follows an earlier report on the case between Stichting BREIN, the litigious Dutch anti-piracy organisation, and defendant NSE, a Usenet provider. On April 5, 2019 the Dutch Supreme Court provided its proposed questions to the Court of Justice of the European Union on the concept of ‘communication to the public’.
The parties were given the opportunity to comment on the proposal. On June 7, 2019 the Supreme Court formulated the final questions, as set out below.
Usenet is a worldwide platform for the sharing of messages, existing since 1979 (longer than the internet). It consists of hierarchical news groups, classified by topic. Users can find messages by looking at these news groups or by using a unique message ID. When a user places a message on Usenet, it is transmitted to all of the many Usenet providers which, in turn, store all the messages on their servers during a retention period.
It is an easy and straightforward process to upload and/or download files containing, for instance, films and music, through Usenet. These files are split up in ‘binaries’, which are alphanumerical messages, and stored, as such, on Usenet. Persons wishing to access the content behind these binaries has only to use a certain type of software (not offered by NSE itself) which can be used to fit these binaries back together to recreate the original file.
Proceedings before the district and appeal courts
In 2011, the District Court of Amsterdam rendered several injunctions, which forced NSE to end its operations. The Appeal Court has reversed this judgment. Although it agreed with the lower court that communications to the public were occurring, it found that NSE’s activities amounted to merely acting as a conduit (article 12 of the Electronic Commerce Directive) when it comes to the passing along of messages of its own users, and hosting (article 14 of the Electronic Commerce Directive) with respect to the passing-along of messages of users of other providers.
"Cases such as this one continue to make their way to the desks of the European justices."
Therefore, NSE could not be held directly liable for infringements on its platform. However, it could be ordered to implement an effective notice-and-takedown system.
Proceedings before the Supreme Court
The Supreme Court considered that, although it is taken as a fact that copyright-protected works are made available through NSE, it is unclear whether NSE made communications to the public, which is therefore the first question referred to the CJEU.
Cases such as this one continue to make their way to the desks of the European justices, as the CJEU has repeatedly made clear that the determination of whether a conduct is a communication to the public must be dealt with on an ad hoc basis. Relevant factors are, among others, the indeterminateness, size and novelty of the public, the central role of the user and the considered nature of the intervention, and the existence of a profit motive.
One is likely to look at BREIN/Ziggo, in which the court decided that peer-to-peer platforms such as The Pirate Bay (TPB) were making communications to the public. The CJEU considered it relevant that TPB indexes torrents and offers a search function.
In the case of NSE, the existence of analogous search functions might therefore also play a vital role. It will have been for this reason that the lawyers of NSE have made a point of removing sentences from the suggested prejudicial questions, which stated that NSE should be presumed to provide a search function.
The second question touches on the apparent dissonance between naming an act as a communication to the public and qualifying the service making this communication as a purely technical, automatic and passive hosting provider. The Supreme Courts asks the CJEU whether a service making such communications can still invoke the safe harbour provision of article 14.
Third, the Supreme Court asks whether NSE, if the first and second questions are answered negatively, must still be denied a safe harbour on the basis of article 14. Fourth, the Supreme Court asks whether a national court may go beyond that which is provided in article 14(3) of the Electronic Commerce Directive, if a communication to the public is made, and article 14 may be invoked successfully and what kind of orders can be given in that case.
It is now in the hands of the CJEU to answer these questions, and European IP practitioners will await the answers with impatience.
Michiel Rijsdijk is a partner at Arnold + Siedsma. He can be contacted at: firstname.lastname@example.org
Marlies Wiegerinck is a specialised IP attorney at law an associate at Arnold + Siedsma since 2008. She can be contacted at: email@example.com
Arnold + Siedsma, anti-piracy, BREIN, Dutch Supreme Court, CJEU, software, Electronic Commerce Directive, NSE, European IP practitioners