NEUTRAL ISPs AND STAY ORDERS, WHEN YOUTUBE IS UNDER THE DUTY TO PREVENT FUTURE POSSIBILE UPLOAD OF INFRINGING CONTENTS BY USERS
The Court of Turin, with judgment published on 7 April 2017, for the most part accepted the claims of Delta TV Programs S.r.l., finding the defendants Google Inc., Google Ireland Holdings and Youtube LLC liable for the infringement of the intellectual property rights of Delta TV Programs S.r.l. and in particular its economic rights over television series uploaded on Youtube. The defendants were ordered to remove and eliminate such audiovisual content from Youtube and to prevent its future upload. The Court also ordered that the defendants pay damages to the claimant for a total sum of 250.000,00 Euros.
Delta TV S.r.l. is a company operating in the fields of editing, production, rental and distribution of audiovisual and television programmes. The company is the exclusive holder of economic rights in Italy over certain South American television series. Delta TV also holds the rights over the Italian version of such audiovisual works, in so far as it dubbed with its own means the works in their original language. The claimant learned that a certain number of episodes of the television series, in their Italian version, had been uploaded on the internet web sites youtube.com and youtube.it, where they could be watched directly and for free by all internet users. For this reason, Delta TV started proceedings against Google and Youtube asking for the ascertainment of its copyright over the television programmes.
The defendants firstly complained that no evidence was given as to the ownership of the claimant with regard to the economic rights over the television series. The Court of Turin rejected this preliminary argument and observed that the claimant had provided documental proof related to the existence of license agreements concerned with the exploitation of economic rights over almost all of the audiovisual works being discussed; while, for the other works, the Court stated that it mattered little that no evidence had been produced, given that the claimant was acting for the protection of its economic rights over the Italian version of the television series which, in itself, amounts to a derived work that may be independently protected under art. 4 of the Copyright Law.
On the merits, Youtube LLC was qualified as a “hosting provider” and so the provisions of Legislative Decree 70/2003 (implementing EC Directive 2000/31) were applicable to it. Consequently, Youtube had no obligation to preliminarily verify the actual copyright ownership of the individuals who uploaded the videos, also considering that a hypothesis of liability would only arise if Youtube was informed of the unlawful nature of the uploaded videos. The Court also noted that such “ex post” obligation could only arise if a cease and desist communication was sent to Youtube containing the exact URL identifying the presumably unlawful upload.
As for the case at hand, the duty of the defendants to check and remove the unlawful content had only arisen with the serving of the writ of summons containing the exact URLs, and not with the generic cease and desist letter (which did not contain the disputed URLs) that the claimant had sent to the defendants approximately 9 months prior to the commencement of the proceedings.
The evidence was examined in the course of the trial and it confirmed the existence of a legal obligation of the Youtube administrators to actively prevent new uploads of videos that had already been reported and removed. In this regard, it was observed that such videos had never been removed but only obscured by the defendants, which meant that those videos were still visibile from abroad and also from within Italy itself if one were able to simulate usage of a foreign connection.
The Court of Turin therefore confirmed the liability of the defendants for the infringement of art. 16 of Legislative Decree 70/2003, assessed as having occurred from the date of serving of the writ of summons. The defendants were also ordered to pay damages to Delta TV S.r.l.. Moreover, the defendants were ordered to cancel and remove the disputed videos pursuant to art. 156 of the Copyright Law and to prevent the further uploading on Youtube of such videos. The additional criminal measures and the requested publication of the judgment were, however, held to be disproportionate considering the nature of the case in question and, for that reason, those claims were rejected.