birgit clark - isp liability through interference in germany

ISP Liability through

“Interference” in Germany –

an overview

Birgit Clark, IPKat event

1 April 2014, Bristows LLP

Störerhaftung – a unique beast!

• Issue of correct translation into English: interferer or

disturber? Even defining the term in German is far from

straightforward.

• General civil law (Sachenrecht), Articles 823, 1004

German Civil Code.

• Administrative and Police law (Gefahrenabwehr)

• Copyright law, see e.g. Article 19a, 69a, 97 German

Copyright Act.

• Internet law, in particular ISP liability

• Different types of interferer: Handlungs-,

Zustandsstörer.

Liability through ‘Interference’?

• Störerhaftung is a long established German legal

concept, not limited to copyright, trade mark or even IP

law.

• A Störer literally translated is an interferer or disturber.

• Usually, direct liability for copyright infringement requires

an infringement (e.g. an unlicensed distribution, or at

least willing and knowing participation in an unlicensed

distribution) of copyright protected works.

• An interferer, however, is someone who, without being

a perpetrator or participant, contributes willfully to

an infringement of absolute rights in a sufficiently

causal manner.

European Law on indirect IPR liability

• European law on indirect liability for IPR infringement

“fluffy”.

• Enforcement Directive 2004/48 (Articles 9, 11) and

Information Society Directive 2001/29 (Article 8(3)) oblige

Member States to provide for claims against indirect

infringers.

• Provisions on the protection of technological protection

measures (TPMs) and digital rights management information

(DRM) in the Information Society Directive (and other

copyright Directives) regulate specific cases of indirect

liability.

• By contrast: Articles 12 - 15 E-Commerce Directive

2000/31 contain limitations on ISP liability equivalent

provisions in German Telemediengesetz (TMG).

European Law on indirect IPR liability

• Resulting obligation for Member States unclear: Recital 59

Information Society Directive (copyright and related rights) and

Recital 23 Enforcement Directive leave procedures and

conditions of injunctions as well whether other remedies

should be provided to national law.

• How damages can be directed against indirect infringers not

regulated by European law.

• Term ‘intermediary’ not defined in the relevant Directives.

• Level required to achieve minimum harmonisation unclear.

• Interplay between rules on the liability of intermediaries in

Enforcement and Information Society Directives and ’safe harbour’

rules in Articles 12 - 15 E-Commerce Directive for ISPs are unclear.

Privileges in E-Commerce Directive

• Articles 12 - 15 E-Commerce Directive privilege different

kinds of ISPs:

– Access and transmission providers (Article 12),

– Caching providers (Article 13),

– Host providers (Article 14).

• No host liability where ISP has no actual knowledge of

the infringement and no awareness of any facts from

which infringement is apparent.

• Provisions are mirrored in German Telemediengesetz.

Privileges in E-Commerce Directive

• Upon knowledge/awareness of an infringement, ISP

must act expeditiously to remove or to disable access

to the infringing information.

• Privileges not meant to prevent national authorities

or courts to prevent/stop infringement based on

national laws.

• General principle in Article 15 E-Commerce Directive

means that Member States must not impose any

general obligation on ISPs to monitor stored or

transmitted information.

Limitations to ISP liability

• BGH bases its concept of ISP liability as ‘interferers’

(limited to injunctive relief) upon a restrictive

interpretation of the liability privileges of the E-

Commerce Directive, i.e. as not fully covering injunctive

relief.

• BGH developed its own criteria concerning the scope of

an ISPs obligation to prevent future comparable

infringements.

• Seen as acte claire, never referred to CJEU.

• CJEU has, however, developed an arguably similar

approach in its case law, inlcuding in L’Oréal v eBay,

Google France, SABAM, Scarlet and UPC Telekabel

Wien.


• CJEU appears to tend towards an interpretation which

limits liability limitations to cases where the host provider’s

service is genuinely neutral.

• Article 15 E-Commerce Directive: only genuinely ‘neutral’

service providers should benefit from the privileges.

• Recital 42 E-Commerce Directive: provider’s activity must

be of a “mere technical, automatic and passive nature”.

• Neutral host provider’s service has to be

independent from the contents of the hosted/carried

information without any direct (e.g. financial) interest

of the provider regarding the specific contents of that

information.


• Before looking at liability limitations, one needs to

determine the existence and conditions of the

contributory liability of ISPs for primary infringements

by their users

• This is done under national law, which is only partly

harmonised (see Article 11 Enforcement Directive and

Article 8(3) Information Society Directive).

• In Germany this is where we encounter the so-called

‘interferer liability’ for copyrights and trade marks.

German Approach

German case law on contributory liability for the

infringement of IPRs is divided, even within BGH itself:

For copyright and trade mark law, the BGH’s 1st Civil Senate

BGH bases liability of mere contributors on interferer liability

(Störerhaftung).

For patent law, the BGH’s 10th

Civil Senate applies a concept of contributory tortious liability, which regards contributory acts as independent tortious patent

infringements.

German Approach

• Concept of Störerhaftung applied in cases of contributory

liability of ISPs for copyright and trade mark infringement

of their users.

• BGH landmark decisions in the ‘Internet Auction cases’(BGH, GRUR 2004, 860 – Internetautkion I; BGH, GRUR 2007, 708 –

Internetauktion II; BGH, GRUR 2008, 702 – Internetauktion III)

• It was held that an internet platform provider is not

tortiously liable as an infringer/perpetrator or participant

in infringing acts of its users provided it had no actual

and concrete knowledge of the infringement.

• By way of background: tortious participation in an

infringement would require the participant’s and

principal’s intention.

German Approach: interferer liability

• BGH: any person who has intentionally made a causal

contribution to the direct infringement of an IPR by a

third party can be held liable for injunctive relief as

interferer.

• Three requirements:

1. intentional adequate causal ('with sufficient

causative effect‘) contribution to the infringing acts

of any third party;

2. legal and factual possibility of preventing a

resulting direct infringement;

3. a violation of a reasonable duty of care to prevent

such an infringements.


• BGH’s interpretation of the E-Commerce Directive based

upon wording and systematic context of Article 14(3)

E-Commerce Directive.

• BGH: Article 14(1) E-Commerce Directive privileges the

host provider only in relation to claims for damages

and criminal liability, but not in relation to injunctive

relief.

• Acte clair and BGH did not refer the issue to the CJEU.


• Liability under the head of Störerhaftung is limited to

injunctive relief, including preventive injunctions.

• Damages cannot be claimed.

• Interferer's liability requires a breach of a reasonable

duty of care” injunctions may require interferer to take

reasonable measures to prevent further comparable

infringements in the future.

• Measures depend on individual case but must not be so

burdensome that they could harm ISP’s entire

business model.

Issue of ‘reasonable measures’

• The extent of ‘reasonable measures’ (aka ‘audit duties’)

in the centre of debate about ISP liability.

• Only reasonable (‘proportionate’) and technically

possible measures may be imposed to identify

comparable infringements.

• Contradictory court decisions over the years on what is a

reasonable measure, example are the Rapidshare (a

one-click hosting sites) cases.

• Each Higher Regional Court had a different view, or so it

seems…


• OLG Cologne (6 U 86/07 of 21 September 2007): not

reasonable to require the use of file name filters to detect

specific copyright-protected works since they cannot

differentiate between legal/illegal copies.

• OLG Hamburg (5 U 73/07 of 2 July 2008): business

model is not legitimate because it aims to facilitate the

illegal use of copyright proetected material. Thus all

necessary measures to detect and delete infringements

are “reasonable”.


• OLG Duesseldorf (5 U 73/07 of 27 April 2010): duty to

delete infringing copies/files but Further monitoring of

stored, uploaded or downloaded files is unreasonable.

• OLG Hamburg (5 U 87/09 of 14 March 2012): increase

of “cloud services” so business model now legitimate.

However, it allows completely anonymous uploads with

high risk of abuse. Still significant duty of care, albeit

perhaps not as significant as found in 2009.

BGH on ‘reasonable measures’

• Two BGH decisions clarified standard of reasonableness

by strengthening preventative, specific filtering duties: I ZR

18/11 of 12 July 2012, Alone in the Dark and I ZR 80/12,

Rapidshare of 15 August 2013.

• Duty to “take all technically and economically

reasonable measures to prevent future uploads of files

which have been reported to be illegally distributed

through its service”.

• No exhaustive checklists but a reasonable minimum

standard.

• Audit duties might go further if an ISP were to play an

active role in terms of knowledge/control.


• Notice and takedown: duty to delete any files that are

reported to be illegal copies of copyrighted works.

• File name filters: once notified of a copyright infringement,

duty to use file name filters to prevent future uploads of the

same/similar files as well as screening of already stored

files; need for copyright protection outweighs the user

interests in legal back-up copies.

• Monitoring of link lists: duty to actively monitor online

third-party link lists known for publishing links to infringing

files stored on the hosting service's servers and to delete any

infringing content advertised on such sites. Only a limited

number (single-digits) of third-party link lists, as a more

comprehensive monitoring obligation would be economically

unreasonable.


• Determined by taking into account all the facts of the

case, including, role and function of the interferer,

degree of causation (i.e. danger of direct infringement),

possibility that the claimant might file an action against

the direct infringers, etc.

• For host providers such as internet platforms, there is no

reasonable duty of comprehensive ex ante

examination of any user infringing content.

• As a rule, ISPs cannot be expected to screen and

control any content before it is available on the

internet.

• Only applies ‘neutral’ ISPs.

BGH on Reasonable Measures

• In light of Article 15 E-Commerce Directive BGH stresses that

even with regard to injunctions, basic principle remained

that no general obligation to monitor should be imposed

upon ISPs.

• In Jugendgefährdende Medien (I ZR 18/04 of 12 July 2007)

BGH had already clarified the measures that can be imposed

to prevent future comparable infringements:

– limited to adequate and reasonable filtering activities in

relation to offers by the same user in the same category

or with regard to infringements with same main features

found in the first infringing offer.

– No obligation to prevent any future comparable

infringement at any cost.

Issue: what if an ISP is not neutral

Kinderhochstühle im Internet II (BGH, I ZR 216/11 of 16

May 2013):

• Internet auction platform liable for copyright

infringements of third parties if it itself actively

promotes the infringing offers by its own marketing

campaign (i.e. not neutral).

• Third party seller offered copyright infinging chairs on

internet aution platform. Auction house had already been

notified through other sellers that the third party’s chairs

were infringing when it started its online keyword

campaign.

Issue: what if an ISP is not neutral

• Liability privilege (Articles 7, 10 TMG) does not apply.

• Due to its promotion of the chairs through its own

keyword campaign, ISP was no longer neutral but

took more active role.

• Reasonable measure included duty to manually review

every offer linked through the keyword campaign.

• Automatic filter not sufficient due to evidence that

intermediary knew of previous allegations of copyright

infringement with respect to the same products and

the same seller.

Need for “tortious action”?

• Störerhaftung limited to injunctive relief.

• Scholars argue it should be developed into a tortious

action of contributory liability since indirect liability

based on a violation of a reasonable duty of care is also

an established element of contributory tortious liability in

general civil law (Haftung wg. Verkehrspflichtverletzung).

• Could cover claims for damages.

• Indeed BGH has in the past (Jugendgefährdende

Medien) based liability of an internet auction house for

prospective acts of unfair competition by its commercial

users on violation of an independent, tortious duty of

care to prevent 3rd party acts of unfair competition.


• In Halsband (BGH, GRUR 2009, 597) based contributory

liability of an eBay-account holder for trade mark

infringements, committed by using his account data, on

tortious liability due to a violation of a duty of care by

account holder to effectively control access to his

confidential account data.

• BGH subsequently in Sommer unseres Lebens (BGH, I

ZR 121/08 of 12 May 2010) emphasised that new

concept of tortious contributory liability was limited

to unfair competition law, specifically to the issue of

account liability.

• BGH expressly clarified that the findings in

Jugendgefährdende Medien did not apply to trade mark

and copyright law.

Need for a “tortious action”?

• In Sommer unseres Lebens, BGH refused to hold the

operator of an insecure internet access that had been

used by a third party for copyright infringement liable as

an (additional) tortfeasor.

• Operator had not complied with his reasonable duty of

care to secure his WLAN access, but did not fall under

specific requirements for infringement under Article 19a

(‘making available right’) German Copyright Act.

• BGH: insecure WLAN cannot be equated with the

specific act of making a copyrighted work available to the

public.


• In BearShare (I ZR 169/12 of 8 January 2014) BGH held that

the owner of an internet connection was not liable – not even

as interferer - for copyright infringing ‘file sharing’ committed

by a grown up family member, provided there had been no

previous indications of such behaviour.

• BGH (1st Civil Senate) very clearly has no plans to change

Störerhaftung into a concept of tortious liability for any willful,

negligent general contribution to copyright or trade mark

infringing acts by third parties

• BGH (10th Civil Senate) for patent law, however, assumes an

independent head of tortious ISP liability for indirect

infringement through wilful, negligent causation.

Contributory liability in Patent Law

• In patent law, BGH assumes that a knowing

contribution combined with a violation of a

reasonable duty of care (= negligence) can already

trigger indirect tortious ISP liability; (see for example: BGH,

GRUR 1999, 977 - Räumschild; BGH, GRUR 2002, 599 – Funkuhr; BGH,

GRUR 2007, 313 – Funkuhr II: BGH, GRUR 2009, 1142 – MP3 Player

Import)

• Legal consequences include damages and are more far-

reaching than interferer liability.

• No general rule of contributory liability for the

different kinds of IP in Germany.

Short Definition of Störerhaftung

“Issuing an injunction against hosting providers in Internet law is

based on the German principle of Störerhaftung which can be

translated as the liability of a “disturber” or “interferer”. It is important

to note that interferer liability is a long-standing principle which has

existed for many years and is now being applied to Internet law. This

principle protects absolute rights pursuant to secs 823, 1004 of the

German Civil Code. It means that anyone who somehow contributes

deliberately and adequately causal to the infringement of a

protected right can be subject to an injunction, without being the

perpetrator or an accessory. Trade marks are such protected

absolute rights. Injunctions can be issued regardless of negligence or

fault. However, this action does not result in monetary compensation

for the trade mark owner.

(Arnold, in: L'Oreal v Ebay; [2009] EWHC 1094 (Ch))

ISP Liability through

“Interference” in Germany –

an overview

Birgit Clark, IPKat event

1 April 2014, Bristows LLP