Case C‑597/19
Mircom International Content Management Consulting (M.I.C.M.) Limited
v
Telenet BVBA
(Request for a preliminary ruling from the Ondernemingsrechtbank Antwerp)
Judgment of the Court (Fifth Chamber), 17 June 2021
(Reference for a preliminary ruling – Intellectual property – Copyright and related rights – Directive 2001/29/EC – Article 3(1) and (2) – Concept of ‘making available to the public’ – Downloading of a file containing a protected work via a peer-to-peer network and the simultaneous provision for uploading pieces of that file – Directive 2004/48/EC – Article 3(2) – Misuse of measures, procedures and remedies – Article 4 – Persons entitled to apply for the application of measures, procedures and remedies – Article 8 – Right of information – Article 13 – Concept of ‘prejudice’ – Regulation (EU) 2016/679 – Point (f) of the first subparagraph of Article 6(1) – Protection of natural persons with regard to the processing of personal data – Lawfulness of processing – Directive 2002/58/EC – Article 15(1) – Legislative measures to restrict the scope of the rights and obligations – Fundamental rights – Articles 7 and 8, Article 17(2) and the first paragraph of Article 47 of the Charter of Fundamental Rights of the European)
1. Approximation of laws – Copyright and related rights – Directive 2001/29 – Harmonisation of certain aspects of copyright and related rights in the information society – Communication to the public – Making a work available to the public – Concept – Automatic uploading, through a peer-to-peer network, of pieces of a media file containing a protected work – Included
(Charter of Fundamental Rights of the European Union, Arts 11 and 17(2); European Parliament and Council Directive 2001/29, recitals 3, 9, 10 and 31 and Art. 3(1) and(2)(c))
(see paragraphs 41, 46-48, 51, 52, 56, operative part 1)
2. Approximation of laws – Enforcement of intellectual property rights – Directive 2004/48 – Measures, procedures and remedies – Persons entitled to apply for their application
(European Parliament and Council Directive 2004/48, recital 18 and Art. 4)
(see paragraphs 62-69)
3. Approximation of laws – Enforcement of intellectual property rights – Directive 2004/48 – Measures, procedures and remedies – Award of damages – Persons entitled to request recovery
(European Parliament and Council Directive 2004/48, recital 10 and Arts 4 and 13)
(see paragraphs 72, 74-77)
4. Approximation of laws – Enforcement of intellectual property rights – Directive 2004/48 – Right to information in the context of an action for infringement of an intellectual property right – Scope – Request for information brought in separate proceedings preceding the action for damages – Whether permissible
(Charter of Fundamental Rights of the European Union, Arts 17(2) and 47; European Parliament and Council Directive 2004/48, Art. 8(1))
(see paragraphs 80-84)
5. Approximation of laws – Enforcement of intellectual property rights – Directive 2004/48 – Measures, procedures and remedies – Conditions under which applicable – Act carried out on a commercial scale – Requirement of a limited scope
(European Parliament and Council Directive 2004/48, recital 14 and Arts 6(2), 8(1), 9(2) and Art. 13)
(see paragraphs 88-90)
6. Approximation of laws – Enforcement of intellectual property rights – Directive 2004/48 – Measures, procedures and remedies – Conditions under which applicable – Non-abusive use – Request for information – Requirements – Justification and proportionality – Verification by the referring court
(European Parliament and Council Directive 2004/48, Arts 3 and 8)
(see paragraphs 94-96, operative part 2)
7. Protection of individuals with regard to the processing of personal data – Regulation 2016/679 – Scope – Concept of the processing of personal data – Registration, by a holder of intellectual property right or by a third party, of IP addresses of users of a peer-to-peer network for the purposes of an action for damages – Included – Condition – Existence of a legal means enabling the holder to identify the users
(European Parliament and Council Directive 2016/679, Art. 4(1) and (2))
(see paragraphs 102-104)
8. Protection of individuals with regard to the processing of personal data – Regulation 2016/679 – Directive 2002/58 – Conditions governing the lawfulness of the processing of personal data – Purposes of the legitimate interests pursued by the data processing controller or by a third party – Systematic recording, by the holder of intellectual property rights or by a third party, of IP addresses of users of a peer-to-peer network and communication of their names and postal addresses to that holder for the purposes of an action for damages – Whether permissible – Condition – Request justified, proportionate and not abusive and provided for by a national legislative measure limiting the scope of certain rights and obligations
(Charter of Fundamental Rights of the European Union, Art. 8; Regulation of the European Parliament and of the Council 2016/679, Arts 4(9) and (10), 6 (1), 1st subpara., (f), 9(2)(e) and (f), 23(1)(j) and 94(2); European Parliament and Council Directives 2002/58, Art. 1(2), Arts 5, 6 and 15(1), and 2004/48, Art. 8 (1))
(see paragraphs 106-108, 118, 120, 132, operative part 3)
Résumé
The systematic registration of IP addresses of users and the communication of their names and postal addresses to the holder of intellectual property rights or to a third party in order to enable an action for damages to be brought is permissible under certain conditions. The request for information from a holder of intellectual property rights cannot be abusive and must be justified and proportionate.
The undertaking Mircom International Content Management Consulting (M.I.C.M.) Limited (‘Mircom’) submitted a request for information against Telenet BVBA, an internet service provider, to the Ondernemingsrechtbank Antwerpen (Companies Court, Antwerp, Belgium; ‘the referring court’). That request seeks a decision requiring Telenet to produce the identification data of its customers on the basis of IP addresses collected, by a specialised company, on behalf of Mircom. The internet connections of Telenet’s customers have been used to share films in the Mircom catalogue, on a peer-to-peer network, using the BitTorrent protocol. Telenet challenges that request.
It is in that context that the referring court, first of all, asked the Court whether the sharing of pieces of a media file containing a protected work on that network constitutes a communication to the public under EU law. Next, it sought to ascertain whether the holder of intellectual property rights, such as Mircom, which does not use them, but claims damages for alleged infringements, can benefit from the measures, procedures and remedies provided for by EU law in order to ensure that those rights are enforced, for example by requesting information. Finally, the referring court asked the Court of Justice to clarify the question of the lawfulness, first, of the way in which the customers’ IP addresses have been collected by Mircom and, second, of the communication of the data requested by Mircom from Telenet.
In its judgment, the Court holds, first, that uploading of pieces of a media file onto a peer-to-peer network, such as that at issue, constitutes making available to the public within the meaning of EU law. (1) Second, a holder of intellectual property rights such as Mircom may benefit from the system of protection of those rights, but its request for information, in particular, must be non-abusive, justified and proportionate. (2) Third, the systematic registration of IP addresses of users and the communication of their names and postal addresses to that holder of intellectual property rights or to a third party in order to enable an action for damages to be brought are permissible under certain conditions. (3)
Findings of the Court
In the first place, the Court, which has already ruled on the concept of ‘communication to the public’ in the context of copyright protection, clarifies that the uploading of pieces, previously downloaded, of a media file containing a protected work using a peer-to-peer network constitutes ‘making [a work] available to the public’, even though those pieces are unusable in themselves and the uploading is automatically generated when the user has subscribed to the BitTorrent client sharing software in giving his or her consent to its application after having duly been informed of its characteristics.
It should be noted that any user of that network can easily reconstruct the original file from pieces available on the computers of other users. By downloading the pieces of a file, that user simultaneously makes them available for uploading by other users. In that regard, the Court finds that the user must not in fact download a minimum threshold of pieces and that any act by which he or she gives access to protected works in full knowledge of the consequences of his or her conduct may constitute an act of making available. The present case indeed concerns such an act, because it refers to an indeterminate number of potential recipients, involves a fairly large number of persons and is carried out with regard to a new public. That interpretation seeks to maintain the fair balance between the interests and fundamental rights of the holders of intellectual property rights, on the one hand, and users of protected subject matter, on the other.
In the second place, the Court considers that the holder of intellectual property rights, such as Mircom, which acquired those rights by assigning claims and does not use them, but seeks damages from alleged infringers, may, in principle, benefit from the measures, procedures and remedies provided for by EU law, unless that holder’s claim is abusive. The Court states that any finding of such an abuse is a matter for the referring court, which could, for example, ascertain, for that purpose, whether legal proceedings have actually been brought in the event of an amicable settlement being refused. As regards, in particular, a request for information, such as that made by Mircom, the Court finds that it cannot be regarded as inadmissible on the ground that it is made during a pre-litigation stage. However, that request must be rejected if it is unjustified or disproportionate, which is for the referring court to determine. By that interpretation, the Court seeks to ensure a high level of protection of intellectual property in the internal market.
In the third place, the Court holds that EU law does not preclude, in principle, the systematic registration, by the holder of intellectual property rights or by a third party on his or her behalf, of IP addresses of users of peer-to-peer networks whose internet connections have allegedly been used in infringing activities (upstream processing of data), or the communication of the names and of postal addresses of users to that holder or to a third party for the purposes of an action for damages (downstream processing of data). However, initiatives and requests in that regard must be justified, proportionate, not abusive and provided for by a national legislative measure which limits the scope of rights and obligations under EU law. The Court states that the latter does not impose an obligation on a company such as Telenet to communicate personal data to private individuals in order to be able to bring proceedings before the civil courts for copyright infringements. However, EU law allows Member States to impose such an obligation.