According to the CJEU, under the Enforcement Directive Member States are not required to provide that, in the context of proceedings for the enforcement of IP rights, the judge may order a platform to provide the rightsholder with the IP addresses, e-mail addresses, and telephone numbers of the infringers
On July 9, 2020, the Court of Justice of the European Union (the “CJEU”) issued a ruling in case C‑264/19 (the “Decision”). The Decision is the result of a referral from the German Federal Court of Justice in the proceedings between Constantin Film Verleih GmbH, a film distribution company (“Constantin”), and YouTube LLC (together with its parent company, Google Inc.), the Internet service provider that owns and operates a well-known online platform that enables users to publish, watch, and share videos (the “YouTube Platform”).
The main proceedings
The main proceedings saw Constantin suing YouTube and Google, alleging copyright infringement on the YouTube Platform and seeking to obtain a series of pieces of information relating to the users who unlawfully uploaded film works to which Constantin owns exclusive usage rights, such as Parker and Scary Movie 5. More specifically, the information requested by Constantin included the e-mail addresses and mobile telephone numbers of the users in question, as well as the IP addresses they used to upload the files unlawfully and logs showing the time and location for each upload.
The legal grounds on which Constantine based its request were the applicable German law that implemented Article 8 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (the “Enforcement Directive”). Pursuant to the latter, Member States shall ensure that, in the context of proceedings concerning alleged infringement of an intellectual property right, the competent judicial authorities may order any person providing services used in infringing activities (like YouTube, in the case at stake) on a commercial scale to provide the rightsholder with a series of pieces of information about the infringers, “including their names and addresses.”
While in the first instance Constantin’s claim was dismissed, in the second instance YouTube and Google were ordered to provide (only) the email addresses of the infringing users. Constantin then appealed this part of the decision before the German Federal Court, again reiterating that its request should be upheld, i.e., that YouTube and Google should also be ordered to provide telephone numbers and IP addresses of the relevant users, as well as any further information making it possible to identify their locations at the time of the uploads.
According to the German Federal Court – which noted that despite the refusal to provide such additional information, it should, indeed, be available to the defendants – the key issue in ruling on the case was the definition of an “address” within the meaning of Article 8(2)(a) of the Enforcement Directive; therefore, it stayed the main proceedings and referred the question to the CJEU.
The referral
The questions submitted for a preliminary ruling,[1] as summarized by the CJEU, related to “whether Article 8(2)(a) of Directive 2004/48 must be interpreted as meaning that the term ‘addresses’ covers, in respect of a user who has uploaded files which infringe an intellectual property right, his or her email address, telephone number and IP address used to upload those files or the IP address used when the user’s account was last accessed.”[2]
According to the CJEU, the term “address” – absent any express reference in Article 8(2) of the Enforcement Directive to the law of Member States for the purpose of determining its meaning and scope – constitutes a concept of EU law to be interpreted in an independent and uniform way throughout the EU. Additionally, given that said term is not defined within the Enforcement Directive itself, its “meaning and scope must be determined in accordance with its usual meaning in everyday language.”[3]
In this regard, the CJEU followed the opinion of the Advocate General,[4] finding that the term covers only a postal address, i.e., the place of a given person’s permanent address or habitual residence. Lacking any further clarification in this respect, the notion of “address” should not be construed to include an email address, telephone number, or IP address.
Moreover, the CJEU held that the above interpretation is confirmed by the indications found in the traveaux preparatoires of the Enforcement Directive. Also, it is in line with the spirit of the relevant provisions, which are designed to reconcile “compliance with various rights, inter alia the right of holders to information and the right of users to protection of personal data.” The CJEU noted that the right to information set out in Article 8 of the Enforcement Directive is intended to “implement the fundamental right to an effective remedy guaranteed in Article 47 of the Charter of Fundamental Rights, and thereby to ensure the effective exercise of the fundamental right to property, which includes the intellectual property right protected in Article 17(2) of the Charter”[5] by putting a rightsholder in a position to identify the alleged infringers and enforce its IP rights. Nonetheless, the Court noted that the Enforcement Directive was meant to provide minimum harmonization only – meaning that the reach of Article 8(2) in harmonizing the laws of Member States should be limited to “information” as narrowly defined therein.
As the CJEU pointed out, this is without prejudice to the higher level of protection that may be provided at a national level in the transposition of the Enforcement Directive, which may go beyond “minimum harmonization” concerning the enforcement of IP rights. Essentially, the CJEU acknowledged that EU law expressly provided Member States the opportunity to grant IP rightsholders the right to receive fuller information, as long as “a fair balance is struck between the various fundamental rights involved and compliance with the other general principles of EU law, such as the principle of proportionality.”[6].
Conclusion
In light of the above, the CJEU ruled that Article 8(2)(a) of the Enforcement Directive “must be interpreted as meaning that the term ‘addresses’ contained in that provision does not cover, in respect of a user who has uploaded files which infringe an intellectual property right, his or her email address, telephone number and IP address used to upload those files or the IP address used when the user’s account was last accessed.”[7]
The literal interpretation given in the Decision narrows the scope of the information whose disclosure rightsholders can seek to order in an attempt to enforce their IP rights. On the other hand, it does leave the door open for more far-reaching disclosure orders in Member States where legislators choose to adopt fuller protection of IP rights. However, national provisions may not always come to the aid of rightsholders in Member States where transposition of EU law often occurs verbatim. From an Italian viewpoint, it is interesting to note that the relevant provisions transposing the Enforcement Directive[8] read as follows: “information […] may inter alia include the name and address […]” (our translation). The wording used by the Italian legislature thus suggests the non-exhaustive nature of the information whose disclosure may be ordered by the competent national judicial authority.
[1] Judgment of 9 July 2020, C-264/19 (Constantin Film Verleih), point 22.
[2] Judgment of 9 July 2020, C-264/19 (Constantin Film Verleih), point 23.
[3] Judgment of 9 July 2020, C-264/19 (Constantin Film Verleih), point 29.
[4] Opinion of Advocate General Saugmandsgaard ØE of 2 April 2020, points 30 and 33.
[5] Judgment of 16 July 2015, C-580/13 (Coty Germany), point 29, as cited in Judgment of 9 July 2020, C-264/19 (Constantin Film Verleih), point 35.
[6] Judgment of 9 July 2020, C-264/19 (Constantin Film Verleih), point 39.
[7] Judgment of 9 July 2020, C-264/19 (Constantin Film Verleih), point 40.
[8] Article 156-ter of the Law on copyright and related rights (Law of 22 April 1941, No. 633, as subsequently amended) and Article 121-bis of the Industrial Property Code (Legislative decree of 10 February 2005, No. 30, as subsequently amended).
