the matter at hand
Mircom International Content Management & Consulting (M.I.C.M.) Limited (“Mircom”) is a company that holds licenses for communicating to the public pornographic films on P2P networks.
In 2019, Mircom brought an action before the Ondernemingsrechtbank Antwerpen (Companies Court, Antwerp, Belgium), seeking that internet service provider Telenet be ordered to produce the identification data for its customers whose internet connections had been used to share films from the Mircom catalogue on P2P networks.
First, the referring court asks whether the downloading of a file via a peer-to-peer network and the simultaneous provisions for uploading of parts thereof constitute a communication to the public. More specific, the referring court asks, if this is the case if those pieces are unusable in themselves and that, because of the configurations of the BitTorrent client sharing software, the uploading is automatically generated by that software (and thus without the user’s knowledge).
Further, the referring court sought to clarify whether the Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as meaning that a person who is the contractual holder of the copyright (or related rights), but does not himself exploit those rights and merely claims damages from alleged infringers – and whose economic business model thus depends on the existence of piracy, not on combating it – enjoys the same rights as those conferred by Chapter II of the Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights on authors or licence holders who exploit copyright in the normal way.
Finally, the referring court asks, in essence, whether Article 6(1)(f) of Regulation 2016/679 must be interpreted as precluding, first, the systematic registration, by the holder of intellectual property rights and by a third party acting on that holder’s behalf, of the IP addresses of users of peer-to-peer networks whose Internet connections have allegedly been used in infringing activities and, second, the communication of the names and of postal addresses of those users to the rightholder or to a third party in order to enable him or her to bring a claim for damages before a civil court for prejudice allegedly caused by those users.
the judgment of the ecj
With regard to the first question, the ECJ clarifies that the uploading of pieces, previously downloaded, of a media file containing a protected work using a peer-to-peer network constitutes ‘making available to the public’, even though those pieces are unusable in themselves and generated automatically when the user has subscribed to the BitTorrent client sharing software in giving his or her consent to its application after having been informed of its characteristics.
Further, the ECJ notes that the pieces are not parts of works, but parts of the files containing those works, used for transmitting those files under the BitTorrent protocol. Accordingly, the fact that the pieces which are transmitted are unusable in themselves is irrelevant since what is made available is the file containing the work, that is to say the work in digital format. Any user of the peer-to-peer network can easily reconstruct the original file from pieces available on the computers of users participating in the same ‘swarm’. In order to establish that there is ‘making available’ in such a situation, “it is not necessary to prove that the user concerned has previously downloaded a number of pieces representing a minimum threshold” (paragraph 46).
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 (paragraph 58).
With regard to the second question, the ECJ holds that “a person who is the contractual holder of certain intellectual property rights, who does not however use them himself or herself, but merely claims damages from alleged infringers, may benefit, in principle, from the measures, procedures and remedies provided for in Chapter II of that directive, unless it is established, in accordance with the general obligation laid down in Article 3(2) of that directive and on the basis of an overall and detailed assessment, that his or her request is abusive” (paragraph 96).
With regard to the third and fourth question, the ECJ holds that Article 6(1) of Regulation 2016/679, read in conjunction with Article 15(1) of Directive 2002/58, “must be interpreted as meaning that it precludes in principle, neither the systematic recording, by the holder of intellectual property rights as well as 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, nor the communication of the names and of the postal addresses of those users to that rightholder or to a third party in order to enable it to bring claim for damages before a civil court for prejudice allegedly caused by those users, provided, however, that the initiatives and the requests to that effect by that rightholder or such a third party are justified, proportionate and not abusive and have their legal basis in a national legislative measure, within the meaning of Article 15(1) of Directive 2002/58, which limits the scope of the rules laid down in Articles 5 and 6 of that directive” (paragraph 132).