YouTube not liable for posting of television programmes
On May 29 2012 the Paris Court of First Instance issued its decision in a case involving the video-sharing website YouTube.
In 2007 several television programmes were posted by internet users on the website 'youtube.fr'. Some French television channels decided to sue YouTube LLC on various grounds, including copyright infringement, hosting provider or content editor liability, trademark infringement and unfair competition. In addition to the usual issues of copyright protection on the internet, the court had to determine the legal status of the participative platform YouTube.
The court held that the only relevant criteria to determine whether a party can be granted hosting provider status is whether it controls the editorial content. The court stated that such a control could not be implied by:
- content re-encoding and formatting operations;
- the marketing of advertising space;
- the provision of classification and presentation tools, conditions of use and general information about the website; and
- the fact that it is a paid service.
The court held that, in the present case, YouTube was a hosting service provider, but not an editor of content because it did not control it.
According to Law 2004-575 of June 21 2004 (Loi pour la confiance dans l’économie numérique), hosting providers are not responsible for the content posted on their websites provided that they remove it as soon as they become aware that it is an illegal upload. In the present case, the court stated that YouTube had removed the videos at issue too late after being notified of the litigious content; however, it found that YouTube was not liable under Article L216-1 of the Intellectual Property Code, since the test set forth in this provision was not met. Article L216-1 provides that:
“the reproduction of programmes, their offering for sale, their hiring or exchange, their broadcasting and the communication of such programmes to the public in a place accessible to the public on a paying basis are subjected to the authorisation of the audio-visual communication company”.
The court stated that YouTube was not liable for the communication of the programmes at issue to the public, as internet users can watch videos on 'youtube.fr' for free. This conclusion might be explained by the fact that the litigious content was not obviously illegal and, therefore, YouTube had no obligation to remove it.
In addition, the court had to decide whether the use of the television channels' logos on the videos posted by internet users constituted trademark infringement by YouTube. The court first stated that the logos were posted on 'youtube.fr' by internet users and that the television channels did not notify YouTube that their trademarks were being used. Consequently, as YouTube was not informed of this alleged infringement, it could not be held liable for not removing the videos. The court also found that the television channels had not proved that YouTube used the trademarks at issue for commercial purposes to designate its own goods or services.
Therefore, the court stated that there was no likelihood of confusion between the videos posted by internet users and the services provided by YouTube. It added that such use of the trademarks did not affect their function as indicators of origin. The court concluded that there was no trademark infringement in the present case.
The decision is in line with EU case law, which provides that the exclusive rights conferred by a trademark under Article 5(1) of the First Trademarks Directive (89/104/EEC) enable the trademark owner to protect its specific interests - that is, to ensure that the mark can fulfil its functions. Therefore, the exercise of these rights must be limited to cases where a third party’s use of a sign affects, or is liable to affect, the functions of the trademark, in particular its essential function of guaranteeing the origin of the goods (see Arsenal Football Club v Reed (Case C-206/01), Paragraph 51; Adam Opel AG v Autec AG (Case C-48/05), Paragraph 21).
This case law was applied by the Paris court, which expressly quoted five decisions of the Court of Justice of the European Union. Based on these decisions, the court stated that there is trademark infringement only if the trademark at issue is used in the course of trade to distinguish the goods or services of the alleged infringer.
Further, the court examined issues of unfair competition and parasitism. It stated that unfair competition must be assessed in light of the principle of freedom of trade. According to the court, this principle implies that a sign or a product which is not protected by IP rights can be freely reproduced, provided that such reproduction does not create a likelihood of confusion among the public concerned. The court also held that parasitism occurs whenever a party copies, without any justification, the economic value of another party, where this economic value provides a competitive advantage and is the result of know-how, intellectual effort and financial investment.
The court held that, in the present case, there was no competitive relationship between the television channels and YouTube; therefore, it rejected the unfair competition claim. It added that the television channels had not proved that YouTube had copied their economic value, and concluded that there was no parasitism in the present case.
Consequently, the complaint was rejected in its entirety, and the television channels were ordered to pay €80,000 in lawyer's fees to YouTube.
Richard Milchior, Granrut Avocats, Paris
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