Never Too Late: If you missed the IPKat this week

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Were you away and missed the last week of the IPKat? Never Too Late 106 is here to bring you what you missed.

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* Federal Court of Justice greenlights colour mark red

Mark Schweizer presents Germany's Federal Court of Justice (BGH) decision to uphold a contourless red colour mark, overruling the German Federal Patent Court's decision to cancel the registration.

* Paris Tribunal de Grande Instance rejects request to filter 'torrent' searches on Bing

The Tribunal de Grande Instance (TGI) rules that it is not possible to filter all search results for certain keywords.. "torrent" for instance. This would amount to a general surveillance measure and therefore not be an acceptable measure.

* Book Review: Innovation & IPRs in China & USA

Katonomist Nicola Searle is impressed by this book edited by Kung-Chung Liu and Uday S. Racherla., particularly the empirical analyis modelling innovation and IPRs, and the use of diagrams and figures.

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Paris Tribunal de Grande Instance rejects request to filter 'torrent' searches on Bing

... possibly true

Can search engines be ordered to filter all results containing certain keywords or a combination of certain keywords?

In a nutshell, this was the issue that the Tribunal de Grande Instance de Paris (TGI) addressed in the context of litigation between SNEP [the French Syndicate of Phonographic Publishing] and Microsoft. In its decisionon 8 July 2016 [this post has been written relying on the original French version of the judgment]the TGI answered the question above in the negative.

Background

Claiming that through Microsoft’s search engine Bing users could access infringing copies of phonograms or video recordings, SNEP sought an injunction against Microsoft to implement filters on Bing (under all top level domains) to prevent – for a period of 12 months – the display of results containing in their domain name the word ‘torrent’ and provided when conducting the following queries: Kendji Girac/Shy’m/Christopher Willem [these being among the most popular French artists of the moment] + torrent. 

According to SNEP, in fact, in relation to these artists, among the first 20 results displayed further to a query of this kind on bing.fr, the vast majority (70%) related to unlicensed sources.

SNEP’s action was based on Article L336-2 of the French Intellectual Property Code (IPC), by which France transposed Article 8(3) of the InfoSoc Directive into its own national law. This provision of EU law mandates upon Member States to “ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right.”

Microsoft claimed that SNEP’s action should be dismissed on grounds that – among other things -  SNEP, instead of seeking a filtering injunction of this kind, should have first used Bing’s free reporting and removal tool and requested to have relevant results (identified by means of appropriate URLs) [for a different approach to the need for URLs, see hereand here]de-indexed.  

Kendji Girac:
not much to celebrate this time

The decision

Injunctions are independent from a finding of intermediary liability

The TGI noted at the outset how injunctions pursuant to Article L336-2 IPC/Article 8(3) InfoSoc Directive can be sought independently from a finding of liability of the online intermediary at hand [this conclusion is not surprising also in light of the Ecommerce Directive and has been recently confirmed by Advocate General Szpunar at para 83 of his Opinion in Mc Fadden, on which see here].

No need for notice-and-takedown first

This said, the court rejected Microsoft’s argument that SNEP should have first reverted to the submission of notice-and-takedown requests. There is nothing in Article L336-2 ICP that suggests the contrary.

Yet, one cannot seek to de-index all ‘torrent’ queries

However, the TGI dismissed SNEP’s action, on grounds that injunctions pursuant to Article L336-2 ICP can be granted in relation to specific, identifiable contents, and the measures sought must be determined, proportionate, efficient and specific in relation to each listed site. This was not the case of SNEP’s request.

'torrent' is not just 
a copyright-related term though

According to the court, SNEP’s request was:

• Indeterminate, in that it was not limited to the existing phonograms of Kendji Girac, Shy’m, and Christopher Willem, but also future works yet to be created and released;
• General (as opposed to specific) in that it did not concern an identified site, but rather all sites made available through Bing in response to users’ queries for [artist’s name] + torrent;
• Ineffective and not strictly necessary, since it would obtain a limited result and it could be easily circumvented by users.

According to the TGI, ‘torrent’ is not necessarily associated with infringing content [indeed, 'torrent' also mean "a strong and fast-moving stream of water or other liquid", although Urban Dictionary defines it as "The RIAA's worst Nightmare"], but is rather a neutral term referring to a communication protocol developed by BitTorrent. 

According to the TGI, the measure sought by SNEP, ie de-indexing of queries for artists associated with ‘torrent’, would amount to a general surveillance measure and could unduly cause the blocking of legitimate sites.