3rd Party Posted a Copyrighted Image to my Forum

[sciencechris]

I would be grateful for some advice please.

I run a website that includes a public discussion forum, a bit like this one, where members of the general public may register and then post freely on a range of topics. They may also upload images. On joining the forum they must sign an online agreement stipulating that they will follow our rules, which includes not uploading copyright material.

The forum is free to use, but the trade off is that users are served advertising (Google Ads and Freestar Ads) to generate revenue that supports the venture.

I have just received a registered delivery letter from a French copyright advocate representing a photographer and claiming infringement on our website for an image discovered by "Pixways" and asking me for about 1500 Euros in "amicable" compensation.

I've checked the URL they supply and it is a post to our forum by a member of the general public dating from 2014; the user in question is in no way connected to us; they are unknown to us, they've never worked for or with us, or corresponded with us. They have posted the image in question as part of a discussion they were having with other forum members.

My interpretation of the situation is that our web forum constitutes an ISS (information society service) and, per section ?19 "Hosting", is exempt from this sort of challenge so long as we promptly remove the image as soon as we are made aware of this breach. This we have done.

Is my argument reasonable, and how should I respond to the claim?

Guidance would be most welcome please.

[AndyJ]

Hi sciencechris,

Yes, your thinking on this is entirely correct. The law you can rely on originates in an EU Directive which also applies to France and was incorporated into UK law before Brexit so forms part of our law. To a large extent this directive mirrors was is found in the US Digitial Millennium Copyright Act (DMCA). Both of these laws protect most types of online service providers from liability for acts of infringement performed by users of the service. This protection from liability requires that you expeditiously remove the alleged infringing image once you have been informed about it, which you have done. Furthermore, there is no requirement for website operators to proactively monitor the materiial which is being uploaded by their users (Article 15).

The Directive is the eCommerce Directive 2000/31/EC dated 8 June 2000. The relevant part is Article 14 which says:

Article 14

Hosting

1. Where an information society service is provided that consists of the storage of information provided by a recipient of the service, Member States shall ensure that the service provider is not liable for the information stored at the request of a recipient of the service, on condition that:

(a) the provider does not have actual knowledge of illegal activity or information and, as regards claims for damages, is not aware of facts or circumstances from which the illegal activity or information is apparent; or

(b) the provider, upon obtaining such knowledge or awareness, acts expeditiously to remove or to disable access to the information.

2. Paragraph 1 shall not apply when the recipient of the service is acting under the authority or the control of the provider.

3. This Article shall not affect the possibility for a court or administrative authority, in accordance with Member States' legal systems, of requiring the service provider to terminate or prevent an infringement, nor does it affect the possibility for Member States of establishing procedures governing the removal or disabling of access to information.

EU law has since been modified by the Digital Single Market Directive 2019/790 dated 17 April 2019. In particular Article 17 of the new Directive, which is quite long and complicated, essentially says:

An online content-sharing service provider shall therefore obtain an authorisation from the rightholders referred to in Article 3(1) and (2) of Directive 2001/29/EC, for instance by concluding a licensing agreement, in order to communicate to the public or make available to the public works or other subject matter.

The French have incorporated this Directive into their domestic law in a quite restrictive way which fails to take account of the latitude that other parts of the DSM directive provided. However, more importantly the UK did not implement the DSM Directive due to Brexit and therefore it has no binding effect here.

In other words, I suspect that the French lawyer is relying on the Article 17 DSM provisions possibly without realising that they are inapplicable within the UK. Furthermore it is possible that if the image was posted by your user for the purpose of review or criticism and a credit to the photographer was provided, the uploading may be permissible as fair dealing (see section 30 of the Copyright Designs and Patents Act 1988) - something which EU law and in particular Article 17 of the DSM Directive also recognises in paragraph 7:

7. The cooperation between online content-sharing service providers and rightholders shall not result in the prevention of the availability of works or other subject matter uploaded by users, which do not infringe copyright and related rights, including where such works or other subject matter are covered by an exception or limitation. Member States shall ensure that users in each Member State are able to rely on any of the following existing exceptions or limitations when uploading and making available content generated by users on online content-sharing services:
(a) quotation, criticism, review;
(b) use for the purpose of caricature, parody or pastiche.

I've tried to provide a fairly comprehensive explanation of the law as it stands on both sides of the Channel in the hope that you can put together a reply to this French lawyer which has the correct references, although in practice you don't need to do so. You could just tell him to allez-vous-en.

[sciencechris]

Thank you very much indeed for this prompt and helpful reply. The user who posted the image did so without attribution.

The letter from the French attorney cites the Berne Convention of 1886 and article L.122-4 of the French intellectual property code, "Any complete or partial performance... shall be unlawful".

Is there a standard form of words that should be used to reply in this case?

Many thanks again.

[AndyJ]

Hi again chris,

There is no particular formal set of words for this. The basic point I think you need to get across is that your site is protected from liability due to Article 14 of the eCommerce Directive, which you have fully complied with by removing the image once you were notified about it. Secondly, the French Intellectual Property Code only applies in France. You are therefore outside the jurisdiction of French law. Since I assume your site operates in English, that means that it is not specifically aimed at readers and users in based in France. As for the Berne Convention reference, although that treaty requires the signatory parties (which include the UK, the EU and France) to provide the same level of protection to works originating in another member's country as would apply to a domestic work, it does not require a member state to apply the law which would apply in the originating country. And in this instance, the EU Directive supercedes the Convention on this aspect since the internet was not contemplated at the time of the last revision of the Convention (which was in 1979).

[sciencechris]

Thank you; I think you've anticipated my next question, which was where cases like this are prosecuted? Would they not be able to file a claim in France and therefore prosecute it under French law, making irrelevant my defence of those rules not applying in the UK?

[AndyJ]

Hi chris

Yes in theory they could sue you in the French courts, but it would be fairly pointless as the French court has no jurisdiction over you, and supposing they won, they (the photographer or copyright owner) would have to try and enforce the judgment (ie the order for damages) through the UK High Court. However, assuming of course that you opposed it, which you could do relatively easily, the High Court would refuse to enforce a foreign judgment for something which wasn't infringement under UK law. However I would hope that a French court would refuse to deal with the claim in the first place based on the facts, since I am pretty sure this would be a bad claim there also, due to the Article 14 protection.

[sciencechris]

Thank you Andy. I'll let you know what response I receive, if any, from the other party once I respond formally to them.

Out of interest, presumably there are precedents for forum sites defending themselves under Article 14 in this way?

[AndyJ]

Hi chris,

I can't think of a case in the UK although there may have been one in the IPEC Small Claims Court whose judgments are not routinely published.

However probably of more relevance in this instance, there have been a couple of cases before the Court of Justice of the European Union (CJEU) which have included this point of law among other subjects. The most recent of these is the joined cases of Peterson v Google Germany and Elsevier v Cyando C-682/18 &C-683/18. These two cases involved the unauthorised uploading of music (the first case) and the text of books (the second case) to the hosting platforms Youtube (first case) and Uploaded (second case). It's quite a lengthy judgment because the two cases involve several other points of law which are not concerned with Article 14 of the eCommerce Directive, so you could skip to paragraphs 117 and 118 to see what the court says about sites qualifying for Article 14 protection.

Unfortunately I don't know of a case which involves forums. I think that this is simply because it is so obvious that they qualify under Article 14.

[sciencechris]

Thank you; I'll review this.

[sciencechris]

I wanted to provide an update on this case I highlighted last year, since I know, from reading the threads here that there are often more questions than resolutions reported.

My contribution today is short and sweet: I responded to the French lawyer, mentioned that the image they were contesting had been posted by a third party, unknown to us and not operating under our instruction, to a public forum that operates as an information society service (ISS). As such, I argued, the copyright claim against us was invalid. I also removed the image in question.

I never heard back from them. It's been about 12 months since that interaction, so I'm comfortable to assume that the case is closed.

In closing on this thread, I'd like to say thank you to those who operate and contribute to this forum. It's an incredibly valuable service.