As the proposed “Directive on Copyright in the Digital Single Market” suffers a halt with the European Parliament declining to vote and rescheduling approval for September 2018, one of the main stumbling blocks is the likely ‘invasive’ nature Art. 13 requiring Internet Service Providers to pre-emptively scan, filter and block copyright-infringing contents which many in the industry consider too onerous. A recent ruling by the Court of Milan, once again, had to tackle the tricky and difficult issue of the extent the ISP’s liability, determining the scope of the injunction against ISP. In particular, the Court of Milan ruled on the admissibility of a Preliminary Injunction order issued against network access providers that extends not only to the domain name whose content has been found to be illegal, but also to all the different domains that provide the same content to the public (the so-called “alias” sites). The IP Milan Chamber found that such a ruling is compatible with the general prohibition according to which ISPs do not have a surveillance obligation, challenged at the EU level, and at the same time complies with the principles of proportionality, effectiveness and dissuasiveness of PI measures.
Following the PI proceedings brought by Arnoldo Mondadori S.p.A., the Court of Milan, on 12 April 2018, ordered Fastweb S.p.A., Telecom Italia S.p.A., Tiscali Italia S.p.A., Vodafone Italia S.p.A. and Wind Tre S.p.A., in their role as network access providers, to pay the costs for the implementation of the most appropriate technical measures that prevent users from accessing a portal that provided complete versions of Mondadori’s publications, either through the domain name “Italiashare.net” – the content of which was deemed unlawful – or through the “alias” sites, accessible through any domain name.
The case stemmed from an initial PI appeal brought by Mondadori against the same network access providers, as well as the hosting company, to obtain an order preventing access to the “Dasolo” portal by the recipients of the services, regardless of the top level domain adopted (“.it”, “.org”, “.net”). “Dasolo” illegally catalogued and provided the users with full versions of numerous magazines published by Mondadori (among many, “Chi”, “Cucina Moderna”, “Donna Moderna”, “Grazia”, “Panorama”, “Sale & Pepe”).
After having examined and distinguished the different liability profiles of the providers that perform data transport functions (the so-called “mere conduits”) and of those that store contents (the so-called “hosting” activity), the Judge for the first PI proceedings ordered the service providers to disable access “to all the sites with second-level domain name ‘dasolo’ regardless of the top level domain adopted” (“a tutti i siti con nome di dominio di secondo livello ‘dasolo’ indipendentemente dal top level domain adottato”, Milan Court, ord. 24 July 2017).
However, this measure did not prove to be sufficiently effective, since in a short time the “Dasolo” portal had become operational again by changing its second-level domain to “Italiashare”, while continuing to publish the same illegal content.
Therefore, Mondadori requested out-of-court that the network access providers adopt all the technical measures necessary to also disable this new domain. The providers refused on the grounds that a specific judicial or administrative measure would be necessary to extend the injunction to the different second-level domain “Italiashare”. Hence Mondadori’s new PI motion was aimed at obtaining a more far-reaching injunction, which could be extended to all different second-level domains that provide the same illegal content to the public (the so-called “alias” sites).
This is the framework for the recent order which is examined here. In fact, the Milan Court clarified that such an order is compatible with the fact that ISPs do not have a preventive surveillance obligation, since they are not subject to any general obligation to monitor the network, since their intervention is always subject to specific notification by the right holder.
The Directive on electronic commerce only prohibits the imposition on ISPs of a general duty of preventive surveillance, and conversely requires them to implement effective measures for both repression and prevention of offences, using the detailed reports of the right holders, who are therefore reserved a proactive role in the protection of their rights. The First Instance Court further observes that the prohibition of a general obligation to monitor is not in any event of exempting effect here, since the electronic commerce Directive provides that “this does not concern monitoring obligations in a specific case” (DIRECTIVE 2000/31/EC, Whereas No. 47).
Such an order was also considered to be both effective and proportionate. The principle of the proportionality of PI measures must always be balanced with the principle of the effectiveness of copyright protection, which requires the court to take all appropriate measures to prevent the recurrence of unlawful acts since, if, for any infringement subsequently found, the intervention of the court was necessary “no injunction could ever be issued for the future, contradicting the very nature of this type of conviction, ontologically projected to prevent the continuation and repetition of the offences to come”.
It is in this perspective that the Court of Justice has in fact ruled that injunction orders “must be sufficiently effective to ensure genuine protection of the fundamental right at issue,” that is to say “they must have the effect of preventing unauthorised access to the protected subject-matter or, at least, of making it difficult to achieve” (CJEU, 27 March 2014, in Case C-314/12, Telekabel).
The Court further observes that the admissibility of the so-called “Dynamic Injunction“, i.e. orders which also extend to sites not expressly indicated in the PI order and which therefore overcome the inconvenience of having to establish subsequent judgements to strike and pursue phenomenologically identical violations, has also been confirmed by the European Commission, when interpreting the Enforcement Directive.
The Court therefore concludes the order by requiring the Respondents, in their capacity as network access providers, take the most appropriate technical measures to prevent the recipients of their services from gaining access to the portals which provide the public with the same illegal content as that at issue in the proceedings and relating to the Magazines, either through the domain name “Italiashare.net” or through the “alias” sites, reachable through any domain name, within a maximum of ten working days of receipt of specific notification of violations reported by the applicant, with the right of the recipients of the request to reimbursement of technical costs strictly necessary and inherent to the request itself.
A positive injunction, supported by a penalty that requires ISPs to take all necessary measures to prevent access to all future alias sites that make the same illegal content available to the public and regardless of the first or second level domain actually adopted, is certainly a far-reaching order, but one that poses many implementation issues.
With particular reference to the implementation of the order, the Court of Milan, in the well-known Mediaset Premium case decided by the Court of Milan, had instead refused to extend the order to alias sites that did not yet exist, even if their content was identical, since this would have required a private party to check whether the content was lawful or not, whereas “the current legal system does not seem to allow a private party to be given the status of a body permanently delegated by the judge to fill in the preceptive content of a measure of its own” (Court of Milan, order 27 July 2016, Mediaset Premium).
The order under review seems to go beyond the conclusions of the previous Mediaset Premium in favour of a more effective protection for right holders, which is certainly desirable, following the most recent and extensive interpretation of Community case-law on the liability of intermediaries, while at the same time denoting the growing attention of national courts to the need for right holders to obtain effective measures to combat online piracy.
However, there remain the problems that the previous Mediaset case had reported with regard to the methods of execution of the PI order, since the positive order commented herein shifts the assessment of illegality to a private level, leaving it in fact to the agreement or unity of views on the illegality of the content between the holder of rights and the ISP, relegating the intervention of the judge at the time of non-compliance by the ISP to the request for disabling the alias.