Federal Court of Justice specifies the Measures that have to be undertaken by Holders of Rights before they may lodge a Claim for the Blocking of certain Websites

Année d'émission 2022
Date de publication 13.10.2022

Judgment of 13 October 2022 (I ZR 111/21) - DNS-Blocking

The First Civil Panel of the Federal Court of Justice competent, amongst other matters, for copyright law has ruled on the conditions under which holders of rights can claim the blocking of access to certain websites from internet access providers pursuant to section 7 (4) of German Tele-Media Act (Telemediengesetz, TMG).

Facts and circumstances:

The defendant is a telecommunications company. The plaintiffs are scientific publishing houses. They demand of the defendant to block the access to the websites of two internet services, where, according to the plaintiffs, scientific articles and books to which the plaintiffs have exclusive exploitation rights are made available.

Previous proceedings:

The regional court granted the claim. Upon the defendant’s appeal on facts and law, the higher regional court reversed the judgment of the regional court and dismissed the claim. The higher regional court assumed that the plaintiffs had not exhausted all available options in order to remedy the infringement of their rights, contrary to section 7 (4) TMG. Prior to a claim against the defendant, it would have been reasonable for the plaintiffs to file a demand for the disclosure of information against the host provider of the two internet services, a company based within the European Union (Sweden), and, subsequently, to take legal action against the internet services’ operators using the information obtained.

The Federal Court of Justice’s ruling:

The result of the appellate court’s assessment stands up to legal review.

In the meaning of section 7 (4) sentence 1 TMG the holders of rights have no other option to remedy the infringement of their rights, if reasonable efforts to claim against the parties, who have either committed the infringement themselves or have contributed to it by providing services, have failed or if such efforts are lacking any prospect of success. The access provider, who merely provides general access to the internet , shall bear only secondary liability towards those parties who (like the website operators) have committed the relevant infringement themselves or (like the host provider) have contributed to such infringement by providing services and who, therefore, are significantly closer connected to the infringement.

As suitable blocking measure the DNS (domain-name-system)-blocking requested by the plaintiffs comes into consideration. This measure prevents the mapping between the domain name entered into the browser address bar and the IP-address of the internet service on the access provider’s DNS-server, so that the domain name no longer leads to the corresponding website which is, however, still accessible under its IP-address.

What efforts are reasonable to claim against the website operators and the host provider depends on the individual case. The holder of a right is obliged, to a reasonable extent, to conduct investigations to identify those parties against whom legal action shall be directed with priority. Generally it will also be reasonable for the holder of rights to require, by way of extrajudicial procedure, a known website operator or host provider to remove any contents infringing the copyright. With regard to court proceedings for injunctive relief and right to information, particular consideration will certainly have to be given to the fact that measures which would delay the enforcement of a claim in unreasonable manner must not be imposed upon the holder of rights. However, the holder of rights, as a rule, has to initiate interlocutory relief proceedings against operators or host providers based within the European Union. Generally reasonable efforts may remain undone in the individual case, if they lack any prospects of success due to reasons to be substantiated by the claimant.

According to these standards the appellate court’s assessment that it would have been reasonable for the plaintiffs to file a demand for the disclosure of information in Sweden against the host provider of the respective internet services before making a claim against the defendant is not free of legal error. The court’s findings on the legal situation in Sweden leave open whether a remedy of interlocutory relief required for filing a demand for the disclosure of third-party information against the Sweden-based host provider would have been available to the plaintiffs in Sweden.

The judgment of the appellate court, however, turns out to be correct for other reasons. At least, the plaintiffs are required to attempt to file a demand for the disclosure of information against the Swedish host provider by means of an interlocutory injunction in a German court. There is no reason to remit the case to the appellate court. The plaintiffs have made comprehensive submissions on the measures undertaken by them. The principle of fair trial does not require providing the plaintiffs with the option to initiate further investigative measures omitted so far by remission of the case.

Lower Courts:

Regional Court Munich I - judgment of 25 October 2019 - 21 O 15007/18
Higher Regional Court Munich - judgment of 27 May 2021 - 29 U 6933/19

Relevant legal provisions:

Section 7 (4) of German Tele-Media Act (Telemediengesetz, TMG)

If a tele-media service has been employed by a user to infringe the intellectual property rights of another person and if the holder of the respective intellectual property right has no other option available to remedy the right’s infringement, the holder of the right may require the respective service provider pursuant to section 8 (3) to block the use of information in order to avoid the infringement to be repeated. The blocking has to be reasonable and proportionate...

Karlsruhe, 13. Oktober 2022

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