This article briefly sums up the most relevant case law for internet service providers (ISPs) – intended both as actual providers of internet access as well as information services and content providers – and intellectual property right (IPR) holders dealing with legal proceedings in Italian Courts regarding liability and injunctive measures for online illicit content.

In recent years, the liability and burden of ISPs has been a topic of great discussion among Italian Courts.

From an intellectual property perspective, the role ISPs play as hosting providers (i.e. storage of information provided by a recipient of the service) is particularly interesting and relevant.

ISP LIABILITY

An important distinction, from a liability perspective, is the difference between “active host” and “passive host”. Only the latter falls within the rules excluding liability provided under EU Directive 31/2000 and Legislative Decree 70/2003.

According to the most recent case law, confirmed by the Italian Supreme Court (decision n. 7708/19), ISPs are acting as  “active hosts” when performing an activity which contains “indexes of participation” from the ISP in relation to the content uploaded. Among these “indexes” the Court lists, among others, the following activities: filtering, categorising, evaluating, monetising, advertising/promoting content. In a nutshell any activity which improves the user experience and in turn the user’s trust in and loyalty towards the content provider.

The Supreme Court then provides that an ISPs acting as “passive hosts” – that can rely on the exemptions of liability provided under EU Directive 31/2000 and Legislative Decree 70/2003 – will still be held liable if they were made aware of the illicit content by any means (even a generic notice letter) and they did not act to remove the content or did not comunicate the illicit nature of the content to the competent authorities.

To sum up, should an IPR holder wish to prove the liability of an ISP acting as “passive host”, the holder shall need to prove that the ISP was made aware of the illicit content, that the illicit nature of the content was sufficiently grounded and that the ISP had the chance to actively stop the continuation of the illicit activity.

This signals an important turning point in national case law. Prior to this decision the nature of “active host” was still inconsistently interpreted by the courts. This decision provides an extensive list of activities suitable to identify an ISP as “active host”, essentially including many activities of content service providers and thereby requiring them to participate more actively in the removal of illicit content and in the prevention of illicit content being uploaded again.

Even more notably, the Supreme Court, confirming the settled case law of the Court of Rome dealing with these cases, stated that a mere generic notice letter sent by the IPR holder is sufficient to activate a liability for the ISP even if acting as “passive host”.

Until the Supreme Court decision, the case law of the Court of Milan took a different approach, more in line with the letter of the law, providing that the “passive host” is exempt from liability until the ISP receives a specific C&D letter which contains details of the illicit content or a specific removal order from the competent authorities (Court or AgCom – Autorità per le Garanzie nelle Comunicazioni, i.e. Authority for Communications Guarantees).

In conclusion, the Supreme Court seems to have taken an approach which is more favourable for the IPR holder.

ALIAS WEBSITES AND “DYNAMIC INJUNCTIONS”

Alias websites are essentially websites that provide the same (illicit) content, subject of a previous Court proceedings, but under a different “top level domain” (TLD), i.e. the domain extension or what follows the domain name in a query (“[query].com”, “[query].it” etc…), and/or “second level domain” (SLD), i.e. the query just to the left of the domain extension.

This phenomenon occurs frequently in the online world, especially in streaming service which provide content infringing the rights of the IP owner.

Indeed it is common that once the IPR holders obtain a court injunction against specific websites providing content infringing their IPRs, the owner of the offending website simply moves the content to a different website having a different TLD or SLD than those listed in the Court Order. In other words, the entity providing the illicit content could easily circumvent the Court Order essentially rendering it ineffective.

The IPR holders would then have to instigate another time consuming and costly court proceeding to enjoin the alias websites. However, once enjoined the cycle would just repeat itself.

This issue was overcome by national case law. The courts have acknowledged the difficulty IPR holders encounter when trying to obtain a truly effective instrument to protect their IPRs online. Italian courts have opened up to a very powerful cost and time saving tool; the so called “dynamic injunction”. The possibility of resorting to such a measure, in matters of online copyright infringement, has been confirmed on a number of occasions by the national courts, namely by the Court of Milan (Order issued on 12 April 2018 in the proceedings having Docket No. 51624/2017, Order No. 1073/2019 and Order No. 2718/2019).

With  this instrument, which is not explicitly provided in the Italian Civil Procedure Code, the IPR holders can extend the injunction they obtained against certain websites to the aliases of said websites – that provide the same infringing content – without the need to instigate new court proceedings each time a new alias appears online.

As mentioned, the “dynamic injunction” is not a codified measure but merely the best practical answer to the needs of IPR holders who seek online protection.

The main issue brought against “dynamic injunctions” is that procedurally this measure would shift the assessment on the illicit nature of future aliases from the judge and the courts, where this assessment should be made, to the private entity or individual owner of the IPR. Added to this, the order would apply to future unknown aliases the content of which is uncertain. Therefore, there would be the risk of a “blank” measure applying to any alias infringing on the rights of the IP owner who obtained the measure.

This issue has once again been addressed by case law.

The national courts have established that for there to be an alias against which the “dynamic injunction” would be enforceable, there would have to be objective and subjective connection between the alias/es and the website/s subject of the “dynamic injunctions”.

A “dynamic injunction” may then extend its effect to the alias website/s if they contain the same infringing content (“objective connection”) and are controlled by the same subjects who controlled the websites subject of the “dynamic injunction” or subjects or entities connected to them (“subjective connection”).

Currently, “dynamic injunctions” appear to be the most effect solution in matters of online IP infringement, especially in relation to content covered by copyright.

Its potential flexibility, cost and time saving approach along with the fact that it reduces the workload for courts are aspects to bear in mind when evaluating the possibility of extending such a solution to the protection of IPRs beyond the scope of online copyright infringement.

THE COPYRIGHT DIRECTIVE

The recent approach taken by national case law appears to be in line with the goals of Directive (EU) 2019/790 (aka the “Copyright Directive”).

The Copyright Directive aims to update copyright protection law to allow it to deal with the innovation of digital technologies.

Art. 17 of the Directive, in particular, is directly and only aimed at content providers such as YouTube and Facebook and provides that “an online content-sharing service provider performs an act of communication to the public or an act of making available to the public for the purposes of this Directive when it gives the public access to copyright-protected works or other protected subject matter uploaded by its users”.

In order to quench the debate surrounding the original wording of Art. 17, which essentially related to the lack of a general monitoring duty of the ISPs, the final version provides that the content provider shall obtain an authorisation from the IPR holders. In the absence of the authorisation under Art. 17(4), content-sharing service providers shall be liable for unauthorised acts of communication to the public unless the service providers demonstrate that they have: “(a) made best efforts to obtain an authorisation; (b) made best efforts to ensure the unavailability of specific works and other subject matter for which the rightholders have provided the service providers with the relevant and necessary information; and (c) acted expeditiously, upon receiving a sufficiently substantiated notice from the rightholders, to disable access to, or to remove from their websites, the notified works or other subject matter, and made best efforts to prevent their future uploads in accordance with point (b)”.

The directive has still not been implemented in Italy but will certainly open up new and interesting debates on the subject. First and foremost regard what exactly amounts to a “best effort” in the event of lack of authorisation.

That being said, the point made by the Supreme Court, in the decision mentioned above, regarding generic notice letters sent to ISPs from IPR holders will likely no longer hold.  Indeed, based on points (b) and (c) of Art. 17(4) above, a generic notice from the IPR holder is unlikely to be sufficient to prove the liability of a provider or require that said provider act expeditiously to remove a website or prevent future uploads.

By way of note, in France, the first EU country to implement the Copyright Directive, the French Competition Authority, in application of Art. 15 of the Copyright Directive, recently ordered Google to negotiate with the AFP (Agence France Presse) the amount Google owes to them for the use of the articles in Google News.

If history is a teacher, looking at the Spanish experience, where, back in 2014, following the introduction of a national law which essentially anticipated the content of Art. 15 of the Copyright Directive, Goggle decided to remove the Google News service from Spain, Big G may decide to shut down the Google News service also in France. This could be a great loss for the press industry where, in Europe alone, Google News brings more than 8 billion visits to publishers’ websites every month.