Facts

The Cypriot company, Mircom International Content Management & Consulting (MICM) Ltd, entered into licences with various erotic film producers established in the US and Canada, giving it the right to communicate the films to the public in Europe via peer-to-peer networks and internet file-sharing networks. Under the licences, Mircom was required to investigate acts of infringement of the producers’ exclusive rights across the networks and to take legal action in its own name against the perpetrators in order to obtain compensation, 50% of which it was obliged to pass on to the producers.

In June 2019, Mircom issued proceedings in the Belgian courts against three Belgian ISPs seeking, inter alia, an order that they produce the identification data of their customers whose internet connections had been used to share films from the Mircom catalogue on a peer-to-peer network using the BitTorrent protocol.

The Belgian court referred various questions to the CJEU concerning its doubts as to the merits of Mircom’s application. First, it is unsure whether, in view of the specific nature of peer-to-peer networks, users carry out acts of communication to the public under Article 3 of the Copyright Directive (2001/29/EC) of the works they share on the networks concerned. Secondly, it has doubts whether a company such as Mircom is able to benefit from the protection conferred by EU law in respect of the enforcement of intellectual property rights under Chapter II of the Enforcement Directive (2004/48/EC), since Mircom does not actually exploit the rights acquired by the film producers, but merely claims damages from alleged infringers, i.e. it is a “copyright troll”. Finally, the Belgian court has doubts as to the lawfulness of collecting the IP addresses of internet users who have allegedly shared protected works on peer-to-peer networks.

Opinion

Attorney General Szpunar opined that Article 3 of the Copyright Directive should be interpreted as meaning that the act of making pieces of a file containing a protected work available for download within the context of a peer-to-peer network, even before the user concerned has himself downloaded that file in its entirety, falls within the scope of the right to make works available to the public, in accordance with Article 3(1), and that the user’s full knowledge of the facts is not decisive. In the AG’s view, the fragments of files that a user of a file-sharing network downloads and uploads were not parts of works, but parts of files containing those works, and those parts were merely the mechanism for transmitting the files under the BitTorrent protocol. The fact that the pieces transmitted were unusable in themselves was irrelevant since what was made available was the file containing the work, i.e. the work in digital format.

Further, the AG opined that Article 4(b) of the Enforcement Directive should be interpreted as meaning that a body which, although it has acquired certain rights over protected works, does not exploit them, but merely claims damages from individuals who infringe those rights, does not have the status to benefit from the measures, procedures and remedies provided for in Chapter II of that Directive, insofar as the national court finds that the acquisition of rights by that body was solely for the purpose of obtaining that status, which is an improper purpose and therefore an abuse of rights. The Enforcement Directive neither requires nor precludes the Member State from attributing that status, in its national legislation, to an assignee of claims relating to infringements of IP rights.

In addition, the AG said that Article 8(1) of the Enforcement Directive, read in conjunction with Article 3(2) thereof, should be interpreted as meaning that the national court must refuse to grant entitlement to the right of information provided for in Article 8 if, in the light of the circumstances of the dispute, it finds that the request for information is unjustified or unlawful, i.e. because it is in effect an abuse of the IP rights granted under the licence. (Case C-597/19 Mircom International Content Management & Consulting (MICM) Ltd v Telenet BVBA EU:C:2020:1063 (Opinion of Advocate General) (17 December 2020) — to read the judgment in full, click here).