Spain: YouTube Cannot be Enjoined to Prevent Future Copyright Infringing Uploads

YouTube achieved yet another big win in Spain last January when a court of appeals in Madrid found it not liable of copyright infringement. The case is Telecinco v. YouTube, one that in many ways resembles the Viacom/YouTube litigation in the US. The court of appeals affirmed a 2010 lower court ruling, finding that YouTube is sheltered from liability by the hosting safe harbor laid down in art. 16 of the Spanish Information Society Services Act, which transposes the provision set forth in the EU E-Commerce Directive (art. 14). Most importantly, the court found also that YouTube cannot be enjoined generally to prevent future instances of infringing content being uploaded.

The lawsuit was brought by Gestevisión Telecinco – a Spanish television network, currently Mediaset España Comunicación – and Telecinco Cinema alleging the use of their copyrighted content on YouTube. The plaintiffs claimed three alternative scenarios. First, they claimed that YouTube is a content provider engaging in copyright infringement and asked for monetary and injunction relief. Second, were the court to decide that YouTube is just an intermediary services provider, the plaintiffs’ asked the court to hold that it cannot benefit from the hosting safe harbor because it had actual knowledge of the infringing contents and did not act diligently to remove them. In this scenario, the plaintiffs sought monetary as well as injunction relief. Finally, were the court to consider that the defendant lacked the required knowledge and thus was protected by the safe harbor, the plaintiffs asked the court to order YouTube to stop providing their intermediary services with regards to plaintiffs’ contents. All such claims were dismissed by the lower court and now again by the court of appeals.

YouTube is an Intermediary Services Provider

After examining YouTube’s activity, the court concluded that it qualifies as an intermediary services provider. The discussion took into account the criteria set by the European Union Court of Justice (CJEU), which maintains that the E-Commerce Directive’s safe harbors “cover only cases in which the activity of the information society service provider is ‘of a mere technical, automatic and passive nature’, which implies that that service provider ‘has neither knowledge of nor control over the information which is transmitted or stored’.” See Google France, C-236/08 to C-238/08, para. 113. The Madrid court deemed that YouTube satisfies this standard of neutrality, relying on the more elaborated criteria provided by the CJEU in L’Oreal v eBay.

Right Owners Bear the Burden of Identifying Specific Instances of Infringement

The ruling held that YouTube is actually shielded by the safe harbor as it lacks actual knowledge of specific instances of infringement. Neither general notices that infringing content is being used on the platform nor the fact that all Telecinco images bear the well-known Telecinco’s little logo are enough as to give YouTube the actual knowledge or awareness that would disqualify it from the safe harbor. The court noted that holding otherwise would run afoul of the prohibition laid down in Art. 15 of the E- Commerce Directive, which forbids establishing general obligations to monitor the stored information or to actively seek facts or circumstances indicating illegal activity. Contrary to what the plaintiffs claimed, asking YouTube to find infringing Telecinco content would not be just a specific type of monitoring – permitted under recital 47 of the Directive. It would actually entail a general monitoring obligation, as all the contents on the platform must be checked in order to find the infringing clips.

Injunctions against Innocent Parties

Article 8(3) of the EU Directive on Copyright in the Information Society orders Member States to ensure that right holders may “apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right.” Accordingly, Arts. 138 and 139 of the Spanish Copyright Act provide the same redress, noting that the injunction may be asked even where the acts of the intermediaries as such are not infringing.

Here, the appellate court departed from the ruling of the lower court. The latter concluded that this injunction is not available when the intermediary is protected by the safe harbors. This, however, was an erroneous finding. It is clear from Art 14(3) of the E-Commerce Directive that the hosting safe harbor “shall not affect the possibility for a court or administrative authority, in accordance with Member States’ legal systems, of requiring the service provider to terminate or prevent an infringement.” The appellate court, thus, rejected the lower court’s conclusion.

However, it held that the injunction sought by the plaintiffs cannot be granted anyway. The plaintiffs had asked the court to order YouTube to suspend its intermediary services for good in relation to the plaintiffs’ copyrighted materials. Imposing such a general injunction would certainly entail a duty of monitoring all the contents on the platform, presently and in the future, which again would be contrary to the prohibition set forth in Art. 15 of the E-Commerce Directive.

In order to deny the injunction sought, the court relied on the CJEU ruling in Sabam v Netlog, which it cited extensively. In that case, the CJEU held that Directives 2000/31, 2001/29 and 2004/48, “read together and construed in the light of the requirements stemming from the protection of the applicable fundamental rights, must be interpreted as precluding a national court from issuing an injunction against a hosting service provider which requires it to install a system for filtering information which is stored on its servers by its service users, which applies indiscriminately to all of those users, as a preventative measure, exclusively at its expense, and for an unlimited period”.

The text of the ruling is available here (in Spanish). Telecinco announced it would appeal the ruling to the Supreme Court.

The author of this blog post, Miquel Peguera, is a Professor of Law at Universitat Oberta de Catalunya in Barcelona. He can be reached at mpeguera at uoc.edu.